UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`
`AMERICA, INC. AND APPLE, INC.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`
`U.S. Patent No. 8,812,993
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE
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`
`
`
`
`
`
`
`
`
`EXHIBIT 1047
`Samsung et al. v. Neonode
`IPR2021-00145
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`1
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`

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`TABLE OF CONTENTS
`
`
`IPR2021-00145
`Patent Owner’s Response
`
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 5
`
`A.
`
`B.
`
`C.
`
`“An Electronic Device” ......................................................................... 5
`
`“Tap-Activatable” ................................................................................. 8
`
`“System Function” ................................................................................ 9
`
`III. GROUNDS 1A-1D: PETITIONERS FAIL TO SHOW THAT
`CLAIMS 1- 8 ARE OBVIOUS OVER HISATOMI AND REN,
`AND ASSORTED OTHER REFERENCES ................................................13
`
`A. Ground 1A: Petitioners Fail to Prove that Claims 1-3, 7
`and 8 are Obvious Over the Combination of Hisatomi
`and Ren ................................................................................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Hisatomi is Not Prior Art ..........................................................13
`
`Claim 1 is Not Obvious Over Hisatomi/Ren ............................17
`
`a.
`
`Petitioners’ Purported Hisatomi/Ren
`Combination Does Not Disclose a Tap-
`Present State (Limitation 1[b]) .......................................17
`
`(1) Hisatomi Does Not disclose Tap-
`Activatable Icons or a Tap-Present State ................17
`
`(2) A POSA Would Not have been Motivated
`to Incorporate the aca Variant of
`Ren’s Direct Off Strategy into Hisatomi ................22
`
`b.
`
`Hisatomi does Not Disclose Icons for a
`Plurality of System Functions (Limitation 1[b]) ............30
`
`Claims 2, 7-8 are Not Obvious Over Hisatomi/Ren .................33
`
`Claim 3 is Not Obvious Over Hisatomi/Ren ............................33
`
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`IPR2021-00145
`Patent Owner’s Response
`
`
`B.
`
`Ground 1B: Petitioners Fail to Prove that Claim 4 is
`Obvious Over the Combination of Hisatomi/Ren and
`Allard-656 ...........................................................................................35
`
`1.
`
`Allard-656 is Not Analogous Art ..............................................36
`
`a.
`
`b.
`
`Allard-656 is Not in the Same Field of
`Endeavor as the ‘993 Patent ...........................................36
`
`Allard-656 is Not Reasonably Pertinent to
`the Problem Addressed by the ‘993 Patent ....................38
`
`2.
`
`A POSA Would Not have been Motivated to
`Combine Hisatomi and Allard-656 ...........................................40
`
`C.
`
`Ground 1C: Petitioners Fail to Prove that Claim 5 is
`Obvious Over the Combination of Hisatomi/Ren and
`Tanaka .................................................................................................42
`
`D. Ground 1D: Petitioners Fail to Prove that Claim 6 is
`Obvious Over the Combination of Hisatomi/Ren and
`Kodama................................................................................................43
`
`IV. PETITIONERS HAVE NOT SHOWN THAT CLAIMS 1- 8
`ARE RENDERED OBVIOUS BY THE PRIOR ART
`ASSERTED IN GROUNDS 2A-D ...............................................................45
`
`A. Ground 2A: Petitioners Fail to Prove that Claims 1-3, 7
`and 8 are Obvious Over the Combination of Hansen and
`Gillespie ...............................................................................................45
`
`1.
`
`Claim 1 is Not Obvious Over Hansen/Gillespie .......................45
`
`a.
`
`b.
`
`c.
`
`Hansen Does Not Disclose an “Electronic
`Device” As Recited in the Preamble
`(Limitation 1[pre]) ..........................................................45
`
`Hansen does Not Disclose Icons for a Plurality
`of System Functions (Limitation 1[b]) ...........................52
`
`Hansen Does Not Disclose a Tap-Absent
`State (Limitation 1[c]) ....................................................53
`
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`3
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`IPR2021-00145
`Patent Owner’s Response
`
`
`d.
`
`A POSA Would Not have been Motivated to
`Incorporate an “Otherwise Activatable Graphic”
`Into Hansen’s Display (Limitation 1[c]) ........................54
`
`(1) Hansen Teaches Away from Petitioners’
`Proposed Modification, and Petitioners’
`Modification would have Resulted in an
`Inferior System .......................................................55
`
`(2) Petitioners’ Proposed Modification to
`Hansen would have Provided No Benefit ...............56
`
`2.
`
`3.
`
`Claims 2, 7-8 are Not Obvious Over
`Hansen/Gillespie .......................................................................57
`
`Claim 3 is Not Obvious Over Hansen/Gillespie .......................58
`
`B.
`
`Ground 2B: Petitioners Fail to Prove that Claim 4 is
`Obvious Over the Combination of Hansen/Gillespie and
`Allard-656 ...........................................................................................59
`
`1.
`
`2.
`
`Allard-656 is not Analogous Art. .............................................59
`
`A POSA Would Not have been Motivated to
`Combine Hansen and Allard-656 .............................................60
`
`C.
`
`Ground 2C: Petitioners Fail to Prove that Claim 5 is
`Obvious Over the Combination of Hansen/Gillespie and
`Tanaka .................................................................................................61
`
`D. Ground 2D: Petitioners Fail to Prove that Claim 6 is
`Obvious Over the Combination of Hansen/Gillespie and
`Tanaka .................................................................................................61
`
`V.
`
`SECONDARY EVIDENCE OF NON-OBVIOUSNESS
`CONFIRMS THE PATENTABILITY OF THE
`CHALLENGED CLAIMS ............................................................................62
`
`A.
`
`B.
`
`The Neonode N1 and N2 Gesture-Based Interface
`Demonstrated the Commercial Success of the Challenged
`Claims ..................................................................................................62
`
`There was Significant Industry Praise of the Neonode N1
`and N2 Gesture-Based Interface .........................................................64
`iii
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`4
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`IPR2021-00145
`Patent Owner’s Response
`
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`C.
`
`D.
`
`The Neonode N1 and N2 Gesture-Based Interface
`Received Initial Skepticism from Neonode’s Competitors.................65
`
`Samsung Licensed the Application to which the ‘993
`Patent Claims Priority, Demonstrating Industry Respect ...................66
`
`VI. CONCLUSION ..............................................................................................67
`
`
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`iv
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`5
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`IPR2021-00145
`Patent Owner’s Response
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`
`Page(s)
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020) .................................................................... 26, 29
`
`Apple Inc. v. Voip-Pal.com, Inc.,
`976 F.3d 1316 (Fed. Cir. 2020) .............................................................. 28, 30, 57
`
`Arctic Cat Inc. v. Polaris Indus., Inc.,
`795 Fed. Appx. 827 (Fed. Cir. 2019) ............................................................ 28, 57
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 38
`
`Convolve, Inc. v. Compaq Comput. Corp.,
`812 F.3d 1313 (Fed. Cir. 2016) .......................................................................... 47
`
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 36
`
`E.I. du Pont De Nemours & Company v. Unifrax I LLC,
`921 F.3d 1060 (Fed. Cir. 2019) .................................................................... 16, 17
`
`Envtl. Designs, Inc. v. Union Oil Co.,
`713 F.2d 693 (Fed. Cir. 1983) ...................................................................... 65, 66
`
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) .............................................................. 27, 28, 63
`
`Honeywell Int’l., Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006) ............................................................................ 7
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .................................................................... 64, 65
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 36
`
`
`
`v
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`6
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`IPR2021-00145
`Patent Owner’s Response
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`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 41, 60
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed.Appx. 981 (Fed. Cir. 2016) ............................................................. 41, 60
`
`Pacing Techs., LLC v. Garmin Int’l., Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) ............................................................................ 5
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ................................................................ 22, 26, 29
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .................................................................... 26, 63
`
`Polygroup Ltd. MCO v. Willis Elec. Co.,
`759 Fed. Appx. 934 (Fed. Cir. 2019) .................................................................. 36
`
`Rolls-Royce, PLC v. United Techs. Corp.,
`603 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 29
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 62
`
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`701 Fed.Appx. 971 (Fed. Cir. 2016) ....................................................... 41, 60, 61
`
`Smith & Nephew, Inc. v. Hologic, Inc.,
`721 Fed. Appx. 943 (Fed. Cir. 2018) .................................................................. 38
`
`St. Jude Med., LLC v. Snyders Heart Valve LLC,
`977 F.3d 1232 (Fed. Cir. 2020) .......................................................................... 22
`
`Varma v. Int’l. Bus. Machines Corp.,
`816 F.3d 1352 (Fed. Cir. 2016) ........................................................ 47, 48, 49, 51
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .......................................................................... 62
`
`WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d. 1339 (Fed. Cir. 1999) ................................................................... 66, 67
`
`
`
`
`
`
`
`vi
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`7
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`IPR2021-00145
`Patent Owner’s Response
`
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`TABLE OF EXHIBITS
`
`Description
`
`Declaration of Craig Rosenberg, Ph.D. in Support of Patent Owner’s
`Preliminary Response
`
`NEO
`Exhibit
`Number
`
`2001
`
`2002
`
`Craig Rosenberg, Ph.D., Curriculum Vitae
`
`2003 MicroTouch Mac-‘n-Touch Technical Data Sheet
`
`2004
`
`US Patent No. 5,406,307 (Hirayama, et al.)
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Transcript of 30(b)(6) Videotaped Deposition of Neonode, Inc. by
`Joseph Shain and Thomas Eriksson (March 19, 2012) in the matter of
`Motorola Mobility, Inc. v. Apple Inc., CA No. 1:10cv023580, United
`States District Court for the Southern District of Florida.
`
`Transcript of Telephonic conference Before the Honorable Alan D.
`Albright (October 23, 2020), in the matter of Neonode Smartphone,
`LLC v. Apple, Inc., Docket No. WA 20-CA-505, Neonode
`Smartphone, LLC v. Apple, Inc., Docket No. WA 20-CA-507, United
`States District Court for the Western District of Texas, Waco Division
`
`Plaintiff Neonode Smartphone LLC’s Motion for Issuance of Letter of
`Request to Examine Persons, Inspect Documents, Inspect Property
`Pursuant to the Hague Convention on the Taking of Evidence Abroad
`in Civil or Commercial Matters, and Exhibit A thereto.
`
`Apple Inc.’s Unopposed Motion for Issuance of Letter of Request to
`Examine Persons and Inspect Documents Pursuant to Hague
`Convention, and Exhibit A thereto.
`
`Order Granting Plaintiff Neonode Smartphone LLC’s Motion for
`Issuance of Letter of Request to Examine Persons, Inspect
`Documents, Inspect Property Pursuant to the Hague Convention on
`the Taking of Evidence Abroad in Civil or Commercial Matters
`
`
`
`vii
`
`8
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`

`

`IPR2021-00145
`Patent Owner’s Response
`
`
`Description
`
`Declaration of Jakob Falkman in Support of Patent Owner’s
`Preliminary Response
`
`Declaration of Philip Graves in Support of Patent Owner’s
`Preliminary Response
`
`NEO
`Exhibit
`Number
`
`2010
`
`2011
`
`2012
`
`Neonode N1 Quick Start Guide, V 0.5
`
`2013
`
`Declaration of Craig Rosenberg, Ph.D. in Support of Patent Owner’s
`Response to Petition
`
`2014
`
`Neonode Confidential Business Plan, May 2003
`
`2015
`
`2016
`
`Declaration of Per Bystedt in Support of Patent Owner’s Response to
`Petition
`
`Declaration of Marcus Bäcklund in Support of Patent Owner’s
`Response to Petition
`
`2017
`
`US Patent No. 7,880,732
`
`2018
`
`2019
`
`2020
`
`2021
`
`Transcript of Deposition of Benjamin B. Bederson, Ph.D. dated
`August 18, 2021
`
`Declaration of Joseph Shain in Support of Patent Owner’s Response
`to Petition
`
`Neonode Development of Neonode N1 Terminal Accomplished and
`Remaining Development Phases
`
`“Neonode is Alive Again” certified translation from Swedish to
`English (https://www.mobil.se/business/neonode-lever-igen last
`accessed September 17, 2021)
`
`2022
`
`Declaration of Ulf Mårtensson in Support of Patent Owner’s
`Response to Petition
`
`
`
`viii
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`IPR2021-00145
`Patent Owner’s Response
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`
`NEO
`Exhibit
`Number
`
`2023
`
`Neonode History
`
`Description
`
`2024
`
`Neonode Confidential Investment Memorandum, January 2004
`
`2025
`
`Research & Development and License Agreement between Neonode
`and Samsung Electronics Co., Ltd., effective July 13, 2005
`
`2026
`
`Excel Spreadsheet documenting Neonode sales
`
`2027
`
`“Pen Computing Magazine: The NeoNode N1”
`(https://pencomputing.com/WinCE/neonode-n1-review.html last
`accessed September 21, 2021)
`
`
`
`
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`IPR2021-00145
`Patent Owner’s Response
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`I.
`
`INTRODUCTION
`
`Petitioners assert that claims 1-8 of U.S. Patent No. 8,812,993 (“the ‘993
`
`Patent”) are unpatentable on two principal grounds. They bear the burden of
`
`proving their case. They fail to do so.
`
`Ground 1: Hisatomi/Ren. Petitioners pitch two principal theories. The first
`
`is that claim 1 is obvious over the combination of Hisatomi and Ren, with Ren
`
`supplying the missing element of “tap-activatable icons.” This ground fails for
`
`three reasons. First, Hisatomi is not prior art. Magnus Goertz, the inventor of the
`
`‘993 Patent’s gesture-based interface, conceived of and was diligently working to
`
`reduce the invention to practice well in advance of Hisatomi’s February 20, 2002
`
`priority date. This is reflected in the fact that Goertz and his business partner
`
`Thomas Eriksson demonstrated a prototype of a mobile phone with the gesture-
`
`based interface already programmed into the phone at the March 2002 CeBIT trade
`
`show in Germany just three weeks after Hisatomi was published. It beggars belief
`
`that he conceived of and programmed the interface into the prototype in the span of
`
`three weeks; in fact, the evidence will show that Goertz conceived of the invention
`
`in 2000 and diligently worked to reduce it to practice thereafter. Without
`
`Hisatomi, Petitioners’ Ground 1 collapses.
`
`Second, Hisatomi does not disclose a tap-present state with tap-activatable
`
`icons. Instead, Hisatomi discloses touch-activatable icons. Petitioners attempt to
`
`
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`1
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`IPR2021-00145
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`bridge this gap by pointing to the “Direct Off” (tap) strategy referenced in the Ren
`
`research paper, but Ren’s experimental results teach a POSA that “Direct On”
`
`(touch) was the superior activation technique for a display like Hisatomi’s, with
`
`both superior speed and accuracy than Direct Off for icons in the relevant size
`
`range. Moreover, Petitioners’ combination would have addressed no deficiency in
`
`Hisatomi, and would have provided no benefit to the Hisatomi device. Simply put,
`
`a POSA would have seen no reason to denigrate Hisatomi’s touch functionality in
`
`favor of tap functionality that Ren itself found was inferior.
`
`Third, Hisatomi does not disclose icons for a plurality of system functions;
`
`rather, Hisatomi discloses icons for application functions. Petitioners proffer no
`
`other reference for this element, so Ground 1 fails.
`
`Ground 2: Hansen/Gillespie. Petitioners’ second theory is that claim 1 is
`
`obvious over the combination of Hansen and Gillespie, with Gillespie supplying
`
`the missing element of an “otherwise-activatable graphic.” This argument, too,
`
`fails for multiple reasons.
`
`First, Hansen does not disclose an “electronic device” including both a
`
`processor and a touch-sensitive display as recited in the preamble. The
`
`specification makes it clear that the “electronic device” is a mobile handheld
`
`computer, and Hansen discloses no such thing; even if the Board rejects Patent
`
`Owner’s construction of “electronic device,” the claim language itself commands a
`
`
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`2
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`conclusion that the system of Hansen does not disclose the electronic device of
`
`claim 1.
`
`Second, Hansen does not disclose icons for a plurality of system functions.
`
`Hansen discloses icons for applications; there is no suggestion in Hansen that its
`
`icons are for system functions.
`
`Third, Hansen does not disclose a tap-absent state, but rather a typical
`
`Windows environment in which tap-activatable icons are plainly present.
`
`Finally, Petitioners admit that Hansen lacks an “otherwise-activatable
`
`graphic,” and point to Gillespie for that element. However, a POSA would have
`
`had no motivation to incorporate Gillespie’s “affordances” into Hansen, because
`
`adding a graphic to Hansen would have provided no benefit – users of Hansen’s
`
`elaborate system in 2002 would have been experienced users who had educated
`
`themselves regarding the gestures necessary to control the system prior to buying
`
`it, and would have had no need for Petitioners’ color-coded graphic. In addition,
`
`Hansen expressly stated a purpose of providing an uncluttered workspace, which
`
`would have been undermined by adding a useless graphic that takes up an entire
`
`edge of the display.
`
`Dependent Claims. With respect to claims 2-3 and 7-8, Petitioners fail
`
`because they fail to invalidate claim 1. In addition, Hisatomi’s GUI function
`
`
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`3
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`13
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`buttons and Hansen’s icons are within a window frame, whereas claim 3 requires
`
`that they not be.
`
`With respect to claims 4-6, Petitioners’ attack fails across the board because
`
`a POSA would not have been motivated to modify either Hisatomi or Hansen to
`
`add the Help, clock and alarm icons that Petitioners propose. Petitioners proffer
`
`conclusory truisms – yes, a POSA would have known how to program a clock
`
`function – but proffer nothing to bolster their case that a POSA would have
`
`incorporated an icon for these functions into the specific devices of Hisatomi and
`
`Hansen. In fact, a POSA would have done no such thing: Hisatomi already
`
`included a Help function that was well-adapted to the Hisatomi display, and
`
`Hansen’s windows-based display would have included a Help function in a drop-
`
`down menu. And, a POSA would not have been motivated to add either a clock or
`
`alarm icon to either Hisatomi’s or Hansen’s display because a persistent time
`
`display was well-established and would accomplish the same purpose more
`
`efficiently than a buried icon would have done. Moreover, Allard-656 is not
`
`analogous art – it concerns a mechanical engineering solution and addresses an
`
`entirely different set of problems than those addressed by the ‘993 Patent.
`
`Secondary Considerations. Finally, there is substantial objective evidence of
`
`non-obviousness. Neonode made and sold approximately 60,000 mobile phones
`
`incorporating the ‘993 Patent’s swiping gesture interface, and received a great deal
`
`
`
`4
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`of industry praise for the “unique,” “brilliant” swiping interface – indeed, one
`
`article lauded the interface under a section heading entitled “swipe, swipe, swipe.”
`
`Although Neonode at first met with significant skepticism from mobile handset
`
`makers such as Nokia and Ericsson, Samsung was so impressed with the swiping
`
`gesture interface that the company licensed the application from which the ‘993
`
`Patent issued for a substantial up-front payment and running royalty. This
`
`secondary evidence, from objective industry sources as well as from one of the
`
`Petitioners, highlights the novelty of the invention claimed in the ‘993 Patent.
`
`The Board should determine that all claims are patentable.
`
`II. CLAIM CONSTRUCTION
`
`A.
`
`“An Electronic Device”
`
`Neonode requests that the Board construe the phrase “an electronic device,”
`
`found in the preamble of claim 1, as “a mobile handheld computer.”
`
`As an initial matter, the preamble of claim 1 is limiting because it provides
`
`antecedent basis for “the device” in the preamble and the “user interface” and “the
`
`display screen” limitations of the claim. Pacing Techs., LLC v. Garmin Int’l., Inc.,
`
`778 F.3d 1021, 1024 (Fed. Cir. 2015). “An electronic device” and “the electronic
`
`device,” as well as “computer readable medium,” “a touch-sensitive display
`
`screen,” and “a user interface,” are all recited before the transitional phrase
`
`“comprising” in the preamble of claim 1. Accordingly, the preamble is limiting.
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`In its Institution Decision, the Board rejected Neonode’s argument that
`
`Hansen does not disclose the recited device on the ground that “claim 1 does not
`
`explicitly require that the recited ‘electronic device’ have a processor and touch-
`
`sensitive display screen within a single housing. Though they may be separate
`
`components attached together with connectors, the parts of Hansen’s computer
`
`system function in a unified and interdependent way for implementing Hansen’s
`
`user interface.” Paper 24, pp. 41-42. The Board appears to have implicitly
`
`construed “device” to be coterminous with “system.” Yet that is contrary to the
`
`specification and to the plain meaning of the term. As set forth in Section IV.A.1.a
`
`below, Neonode believes that the plain meaning of “device” is sufficient to
`
`distinguish Hansen, but if a construction is necessary it should accord with the
`
`specification. The Board’s does not.
`
`The specification compels construction of the phrase to mean a mobile
`
`handheld computer. The Technical Field of “[t]he present invention relates to a
`
`user interface for a mobile handheld computer unit” and to “an enclosure for a
`
`handheld computer unit….” EX1001, 1:14-15, 22-23. The specification identifies
`
`“mobile handheld computers” as the relevant background art, and specifies that
`
`PDAs, mobile phones, and laptop computers are all examples of “mobile handheld
`
`computers.” EX1001, 1:33-43. The description identifies the need to avoid having
`
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`to make PDAs and mobile phones larger to provide a user-friendly interface “that
`
`is suitable for small handheld computer units.” Id., 1:44-53.
`
`The specification identifies the Technical Problems solved as adapting a user
`
`interface “to handle a large amount of information and different kinds of traditional
`
`computer-related applications on a small handheld computer unit,” and providing
`
`“a simple way to make the most commonly used functions for navigation and
`
`management available in the environment of a small handheld computer unit.”
`
`EX1001, 1:55-2:4. And the Solution takes as its “star[t]ing point” “a user interface
`
`for a mobile handheld computer unit, which computer unit comprises a touch
`
`sensitive area….” Id., 2:8-11. The illustrations of the user interface for the
`
`invention are of “a user interface for a mobile handheld computer unit.” EX1001,
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`3:57-58. And the device is consistently described and illustrated, as in Figure 13,
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`as a “mobile handheld computer unit.” EX1001, FIG. 13; see also EX1001, 6:11-
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`13.
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`When the specification speaks with such force regarding what the invention
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`is, the claims should be construed coterminously. E.g., Honeywell Int’l., Inc. v.
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`ITT Indus., Inc., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006). Here, a POSA would
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`have understood the phrase, as used and described in the ‘993 Patent, to mean “a
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`mobile handheld computer.” EX2013, ¶¶37-43.
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`IPR2021-00145
`Patent Owner’s Response
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`B.
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`“Tap-Activatable”
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`Neonode requests that the Board construe the term “tap-activatable,” found
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`in limitation 1.b of claim 1, as “activatable upon completion of a gesture that
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`involves the input device touching a screen followed directly and immediately
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`by lifting off the screen.”
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`The ‘993 Patent’s specification defines “tapping” as a gesture with at least
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`two components: “FIG. 4 shows that selection of a preferred service or setting is
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`done by tapping C, D on a corresponding icon 213.” EX1001, 4:41-42. Figure 4,
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`which illustrates “tapping,” is reproduced below:
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`
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`EX1001, FIG 4. “Tapping” as described in the specification is a gesture consisting
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`of a downward touch on the coordinates of the icon (C in Figure 4), followed
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`directly and immediately by an upward lift off of the icon (D in Figure 4). Id.
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`IPR2021-00145
`Patent Owner’s Response
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`A POSA would have understood that a “tap” as used in a gesture-based user
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`interface design for the touch-sensitive screen of a hand-operated computer unit,
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`means a gesture in which the input device (1) touches the screen, and then (2) lifts
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`directly and immediately off the screen. EX2013, ¶¶44-48. And a POSA would
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`have understood that a “tap” gesture as used in a gesture-based user interface for
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`touch sensitive screens activates a function or service upon the input device lifting
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`off of the screen. Id. This property would have distinguished tap, in the mind of
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`the POSA, from other known user interface gestures such as touch activation, in
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`which processing is activated upon detecting the coordinates of the initial touch.
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`Id. Accordingly, the Board should construe “tap-activatable” as set forth above.
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`C.
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`“System Function”
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`Neonode requests that the Board construe the term “system function,” as
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`used in limitation 1.b of claim 1, as “services or settings of the operating
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`system.”
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`The ‘993 Patent specification discloses three icons in the menu area of the
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`display, one of which is a general application-dependent function (item 21). The
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`specification describes at least two embodiments of the user interface as it pertains
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`to activating item 21. In the first embodiment, when an application is currently
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`active, “if the first function is activated, the display area is adapted to display icons
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`representing services or settings, depending on the current active application.”
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`EX1001, 2:25-29; 4:20-35 (emphasis added). The specification gives as an
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`example of such an application one that “handles a picture,” i.e., a camera
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`application, identifying services or settings such as “save to disk,” “send as SMS”
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`and resolution and color. Id., 4:31-35. Consistent with this, claims 4-6 recite that
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`the pre-designated system functions comprise a help function, a clock function and
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`an alarm function. Id., 7:6-13.
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`In the second embodiment, “[t]he icons are adapted to represent services or
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`settings of the operations system of said computer unit, such as background
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`picture, clock, users, help, etc. if no application is currently active on the computer
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`unit.” Id., 2:31-34; 4:36-40 (emphasis added). Claim 1, which recites “tap-
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`activatable icons for a respective plurality of pre-designated system functions, Id.,
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`6:54-58, claims the second embodiment, not the first.
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`In its Institution Decision, the Board stated that “Neonode appears to
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`concede that “services such as ‘save to disk’” constitute system functions.” Paper
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`24, p. 32. But Neonode made no such concession; in its PPOR, Neonode
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`explained that the ‘993’s specification disclosed two embodiments and noted that
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`Hisatomi does not disclose icons related to system functions as recited in the
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`claimed embodiment. Paper 23, pp. 33-34.
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`The Board also preliminarily found that “the ‘993 patent appears to disclose
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`at least one embodiment in which tap-activatable icons in the tap-present state
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`represent general applications that can be run on the device,” implicitly reasoning
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`from this that any application may be a “system function.” Paper 24, p. 44.
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`The Board’s reliance on this language in the ‘993 Patent’s specification to
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`elucidate “system function” is misplaced, for three reasons. First, the content cited
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`by the Board, EX1001, 5:3-6 and Fig. 6, describes applications, not system
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`functions. As shown above, the claimed “system functions” are described at col.
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`4:36-40 with respect to the “general application-dependent function,” item 21. The
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`text to which the Board points concerns an entirely different embodiment resulting
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`from activation of a task and file manager function by executing a touch and glide
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`gesture on the icon for the task and file manager, item 23. Id., 5:3-6, Fig. 1 [item
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`23]; Fig. 6. As the specification explains, Figure 6 depicts a list “with a library of
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`applications and files” that results from activating the task and file manager icon,
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`id.; there is nothing tying this to the “services or settings of the operations system”
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`that are displayed upon activation of the “general application dependent function”
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`by touch and gliding away from the associated icon, item 21. Id., 4:36-40; Fig. 1
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`[item 21]. This language concerns another embodiment not claimed in the ‘993
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`Patent, and the Board may not rely on it to conflate applications with system
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`functions.
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`Second, claim 1 requires “icons for . . . predesignated system functions . . . .”
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`Id., 6:55-56. The Board identified the images “adjacent to the text of each list
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`entry” as the “tap-activatable icons for a plurality of pre-designated system
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`functions.” However, those images do not represent any of the nine listed
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`applications individually, i.e., the icons are not “for” the listed applications,
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`because the images adjacent to the text are all identical for each application and for
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`the task manager function itself:
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`
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`Id., 5:3-5.
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`Third, none of these icons are tap-activatable. The specification explains
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`that the application or file is selected by “moving” the input device over the name
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`of the application or file so that it is highlighted (Figure 7, E), and then tapping on
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`the highlighted name or the “OK” button that appears next to the highlighted name
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`(see, FIG. 6, item 232). Id., 5:3-21; FIG. 7.
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`IPR2021-00145
`Patent Owner’s Response
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`Accordingly, the ‘993 Patent’s specification does not conflate applications
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`and system functions; the content cited by the Board speaks only to applications.
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`In light of this description in the specification, and of the plain meaning of the term
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`to one of skill in the art, a POSA would have understood the term to mean
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`“services or settings of the operating system.” EX2013, ¶¶49-53.
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`III. GROUNDS 1A-1D: PETITIONERS FAIL TO SHOW THAT CLAIMS
`1- 8 ARE OBVIOUS OVER HISATOMI AND REN, AND ASSORTED
`OTHER REFERENCES
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`A. Ground 1A: Petitioners Fail to Prove that Claims 1-3, 7 and 8 are
`Obvious Over the Combination of Hisatomi and Ren
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`1. Hisatomi is Not Prior Art
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`The ‘993 Patent is a continuation of an application filed December 10, 2002.
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`The Hisatomi patent, which is Petitioners’ primary reference for their Ground 1,
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`was published February 20, 2002. EX1005, at 2. So Hisatomi was published 9 ½
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`months prior to the claimed priority date.
`
`Howev