Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`
`
`
`
`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
`
`JOINT SUBMISSION OF PROPOSED PROTECTIVE ORDER
`
`
`
`
`
`
`
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`
`
`
`
`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
`
`JOINT SUBMISSION OF PROPOSED PROTECTIVE ORDER
`
`
`
`
`
`
`
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`LIST OF EXHIBITS
`
`Exhibit No.
`1001
`
`Description
`U.S. Patent No. 8,812,993 (“the ’993 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Declaration of Benjamin B. Bederson
`
`File History for U.S. Patent No. 8,812,993
`
`Benjamin B. Bederson CV
`
`Certified translation of JP Published Patent Application No.
`2002-55750 (“Hisatomi”), published February 20, 2002
`
`Xiangshi Ren & Shinji Moriyama, “Improving Selection on Pen-
`Based Systems: A Study of Pen-Based Interaction for Selection
`Tasks,” ACM Transactions on Computer-Human Interaction,
`Vol. 7, No. 3, September 2000, pp. 384-416 (“Ren”)
`
`U.S. Patent No. 5,422,656 to Allard et al. (“Allard-656”)
`
`U.S. Patent No. 5,249,296 to Tanaka (“Tanaka”)
`
`U.S. Patent No. 5,615,384 to Allard et al. (“Allard-384”)
`
`U.S. Patent No. 5,537,608 to Beatty et al. (“Beatty”)
`
`U.S. Patent No. 5,903,268 to Hirayama (“Hirayama”)
`
`U.S. Patent No. 5,305,435 to Bronson (“Bronson”)
`
`U.S. Patent No. 6,133,898 to Ludolph et al. (“Ludolph”)
`
`Tammara T. A. Combs and Benjamin B. Bederson “Does
`zooming improve image browsing?” Proceedings of the Fourth
`ACM Conference on Digital Libraries (DL ’99), ACM, New
`York, NY, USA, (August 1999) 130-137
`
`1015
`
`Dean Harris Rubine, “The Automatic Recognition of Gestures,”
`CMU-CS-91-202, December, 1991.
`
`1016
`
`U.S. Patent No. 6,710,791 to Kodama et al. (“Kodama”)
`
`i
`
`
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`IBM Corp., User’s Manual, “Simon Says ‘Here’s How!’” Part.
`No. 82G2557 (1994) (“IBM”)
`
`Benjamin B. Bederson & James D. Hollan, Pad++: A Zooming
`Graphical Interface for Exploring Alternate Interface Physics,
`UIST ’94 Proceedings of the 7th Annual ACM Symposium on
`User Interface Software and Technology 17 (1994), DOI:
`http://dx.doi.org/10.1145/192426.192435
`
`David Rogers et al., Tossing Objects in a Desktop Environment,
`submitted to Conference on Human Factors in Computing
`Systems (1996)
`
`David Rogers et al., Exemplar Figure of Tossing from Tossing
`Objects in a Desktop Environment, submitted to Conference on
`Human Factors in Computing Systems (1996)
`
`Benjamin B. Bederson, Fisheye Menus, UIST ’00 Proceedings of
`ACM Conference on User Interface Software and Technology
`217 (2000), DOI: 10.1145/354401.317382
`
`Leslie E Chipman et al., SlideBar: Analysis of a Linear Input
`Device, 23 Behaviour & Info. Tech. 1 (2004), DOI:
`10.1080/01449290310001638487
`
`Hilary Browne et al., Designing a Collaborative Finger Painting
`Application for Children, HCIL-2000-17, CS-TR-4184,
`UMIACS-TR-2000-66 (Sept. 2000), available at
`https://hcil.umd.edu/pub-perm-link/?id=2000-17
`
`Pekka Parhi, Amy K. Karlson, and Benjamin B. Bederson. 2006.
`Target size study for one-handed thumb use on small
`touchscreen devices. In Proceedings of the 8th Conference on
`Human-Computer Interaction with Mobile Devices and Services
`(MobileHCI ’06). Association for Computing Machinery, New
`York, NY, USA, 203–210.
`DOI:https://doi.org/10.1145/1152215.1152260
`
`1025
`
`Karlson, Amy & Bederson, Benjamin & Contreras-Vidal, José.
`(2008). Understanding One-Handed Use of Mobile Devices.
`Handbook of Research on User Interface Design and Evaluation
`
`ii
`
`
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`for Mobile Technology. 86-101. DOI:10.4018/978-1-59904-871-
`0.ch006
`
`Apple Newton Message Pad Handbook (1993)
`
`Handbook for Palm m500 Series Handhelds (1998)
`
`HP Jornada 520 Series Pocket PC User Guide (2001)
`
`821,930 to Hansen (“Hansen”)
`
`U.S. Patent Application Publication No. 2005/0024341
`(“Gillespie”)
`
`Declaration of Mr. Jacob Munford
`
`Norman, D. A. (1988). The psychology of everyday things.
`BasicBooks. IBSN: 0-465-06709-3.
`
`U.S. Publication No. 2001/0043189 to Brisebois (“Brisebois”)
`
`Trial Delay Statistics
`
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D.Tex. Oct. 5,
`2020)
`
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc., 6:20-cv-00507 (W.D.Tex. Oct. 5,
`2020)
`
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505
`(W.D.Tex.) (W.D.Tex. [[DATE]])
`
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Samsung Electronics Co.
`Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D.Tex. Oct. 7, 2020)
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`iii
`
`
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Apple Inc., 6:20-cv-00505 (W.D. Tex. Oct. 26, 2020)
`
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Samsung Electronics Co. Ltd. and Samsung Electronics America,
`Inc., 6:20-cv-00507 (W.D. Tex. Oct. 26, 2020)
`
`November 5, 2020 Letter from Apple Counsel to Neonode
`Counsel
`
`November 5, 2020 Letter from Samsung Counsel to Neonode
`Counsel
`
`“Order Staying Case Pending Completion of Venue Discovery”
`filed 12/08/20 in Neonode Smartphone LLC v. Apple Inc., 6:20-
`cv-00505 (W.D. Tex.)
`
`“Text Order GRANTING [36] Motion to Stay Case” filed
`12/11/20 in Neonode Smartphone LLC v. Samsung Electronics
`Co. Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D. Tex.)
`
`“Plaintiff Neonode Smartphone LLC’s Unopposed Motion to
`Extend Venue Discovery Deadlines” filed 02/16/21 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (.D. Tex.)
`
`“Amended Agreed Scheduling Order” filed 11/13/20 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`
`Proposed Redacted Version of Patent Owner’s Response
`
`Proposed Redacted Version of Patent Owner’s Exhibit 2015
`
`Marked-Up Version of Samsung and Neonode Joint Proposed
`Protective Order
`
`1039
`
`1040
`
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`
`
`iv
`
`
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`Pursuant to the Board’s November 2, 2021 Order (Paper 34), Petitioners
`
`Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. and Patent
`
`Owner, Neonode Smartphone LLC, hereby submit the joint proposed protective
`
`order appended below as Appendix A, and Exhibit 1049, Marked-Up version of
`
`Samsung and Neonode Joint Proposed Protective Order.
`
`Good cause exists to deviate from the Default Protective Order. Samsung
`
`Petitioners seek to seal an agreement (Exhibit 2025) between Samsung Electronics
`
`Co. Ltd and Neonode Sweden AB, a predecessor in interest to Neonode
`
`Smartphone LLC in the 8,812,993 patent. Apple, Inc., one of the Petitioner parties
`
`to this IPR, is not a party to the agreement. Neonode Smartphone opposes
`
`(Paper 32) the Samsung Petitioners’ motion to seal the agreement and related
`
`information (Paper 31), but jointly submits the form of Protective Order submitted
`
`herewith to govern disclosure of the agreement and related information in the event
`
`that the Board grants Samsung’s motion. The proposed modifications to the
`
`Default Protective Order aim to account for providing Neonode party
`
`representatives and persons with knowledge of the agreement access to the
`
`document, and excluding access to in-house personnel at Apple, Inc.
`
`1
`
`
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`For the foregoing reasons, good cause exists for entering the proposed
`
`Protective Order in this proceeding.
`
`Dated: November 19, 2021
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`/Tiffany C. Miller/
`Tiffany C. Miller, Reg. No. 52,032
`James M. Heintz, Reg. No. 41,828
`
`Attorneys for Samsung-Petitioners
`
`
`/Philip J. Graves/
`Robert M. Asher
`Reg. No. 30,445
`rasher@sunsteinlaw.com
`SUNSTEIN LLP
`100 High Street
`Boston, MA 02110-2321
`(617) 443-9292 (phone)
`(617) 443-0004 (fax)
`
`Philip J. Graves (pro hac vice)
`philipg@hbsslaw.com
`Greer N. Shaw (pro hac vice)
`greers@hbsslaw.com
`HAGENS BERMAN SOBOL
`SHAPIRO LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101-4129
`(213) 330-7150 (phone)
`(213) 330-7152 (fax)
`
`Attorneys for Neonode Smartphone
`LLC, Patent Owner
`
`
`
`Joint Submission of Proposed Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that service
`
`was made on the Patent Owner as detailed below:
`
`Date of Service:
`
`November 19, 2021
`
`Manner of Service:
`
`Electronic Mail
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`philipg@hbsslaw.com
`greers@hbsslaw.com
`markc@hbsslaw.com
`sunsteinip@sunsteinlaw.com
`
`Documents Served:
`
`Joint Submission of Proposed Protective Order
`
`Persons Served:
`
`Robert M. Asher, Bruce D. Sunstein, Timothy M.
`Murphy, Arne Hans, Phil J. Graves, Greer N.
`Shaw, Mark S. Carlson
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`Appendix A
`Appendix A
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`Patent No. 8,812,993
`
`
`
`
`
`SAMSUNG AND NEONODE JOINT PROPOSED PROTECTIVE ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PROTECTIVE ORDER
`
`The following Protective Order will govern the filing and treatment of Samsung-
`
`Neonode confidential information in the proceeding:
`
`Protective Order
`
`This protective order governs the treatment and filing of confidential information,
`
`including documents and testimony.
`
`1.
`
`Confidential information shall be clearly marked “SAMSUNG-
`
`NEONODE-CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY.”
`
`2.
`
`Access to confidential information marked “SAMSUNG-NEONODE-
`
`CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY” is limited to the
`
`following individuals who have executed the acknowledgment appended to this
`
`order:
`
`(A) Samsung and Neonode Parties and Representatives. Officers, employees,
`
`directors, agents and representatives of, including counsel of record for,
`
`Neonode Smartphone LLC, Neonode Inc., Samsung Electronics Co. Ltd., and
`
`Samsung Electronics America, Inc.
`
`(B) Persons with Knowledge. Persons who, (i) participated or were involved
`
`in the negotiations and process resulting in the preparation or drafting of any
`
`materials marked SAMSUNG-NEONODE-CONFIDENTIAL – APPLE
`
`ATTORNEYS’ EYES ONLY, or (ii) in connection with their work or duties
`
`
`
`
`
`
`
`
`
`for Neonode Smartphone LLC, Neonode Inc., Samsung Electronics Co. Ltd.,
`
`and Samsung Electronics America, Inc., or any of their predecessors in
`
`interest, had access to materials marked SAMSUNG-NEONODE-
`
`CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY.
`
`(C) Apple Outside Counsel. Outside counsel of record for the Apple Inc. and
`
`any other party in this proceeding, including employees, of counsel, and
`
`contractors of outside counsel of record’s law firm(s) to whom it is
`
`reasonably necessary to disclose this information to assist outside counsel of
`
`record in connection with this proceeding, including members of their firms,
`
`associate attorneys, attorneys who are not employees of counsel of record
`
`who are retained to assist counsel of record on an hourly basis, and paralegal,
`
`clerical, and other regular employees of such counsel. All in-house counsel
`
`and other representatives of the parties (other than outside counsel of record
`
`as defined above) shall not be allowed to view SAMSUNG-NEONODE-
`
`CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY Information.
`
`(D) Experts. Retained experts of a party in the proceeding who further certify
`
`in the Acknowledgement that they are not a competitor to any party, or a
`
`consultant for, or employed by, such a competitor with respect to the subject
`
`matter of the proceeding.
`
`
`
`
`
`
`
`
`
`(E) Support Personnel. Administrative assistants, clerical staff, court
`
`reporters and other support personnel of the foregoing persons who are
`
`reasonably necessary to assist those persons in the proceeding shall not be
`
`required to sign an Acknowledgement, but shall be informed of the terms and
`
`requirements of the Protective Order by the person they are supporting who
`
`receives confidential information.
`
`(F) The Office. Employees and representatives of the United States Patent
`
`and Trademark Office who have a need for access to the confidential
`
`information shall have such access without the requirement to sign an
`
`Acknowledgement. Such employees and representatives shall include the
`
`Director, members of the Board and their clerical staff, other support
`
`personnel, court reporters, and other persons acting on behalf of the Office.
`
`3. Employees (e.g., corporate officers), consultants, or other persons
`
`performing work for a party, other than those persons identified above in (2)(A)-
`
`(E), shall be extended access to confidential information only upon agreement of
`
`the parties or by order of the Board upon a motion brought by the party seeking to
`
`disclose confidential information to that person and after signing the
`
`Acknowledgment. The party opposing disclosure to that person shall have the
`
`burden of proving that such person should be restricted from access to confidential
`
`information.
`
`
`
`
`
`
`
`4. Persons receiving confidential information shall use reasonable efforts to
`
`maintain the confidentiality of the information, including:
`
`
`
`(A) Maintaining such information in a secure location to which persons not
`
`authorized to receive the information shall not have access;
`
`(B) Otherwise using reasonable efforts to maintain the confidentiality of the
`
`information, which efforts shall be no less rigorous than those the recipient
`
`uses to maintain the confidentiality of information not received from the
`
`disclosing party;
`
`(C) Ensuring that support personnel of the recipient who have access to the
`
`confidential information understand and abide by the obligation to maintain
`
`the confidentiality of information received that is designated as confidential;
`
`and
`
`(D) Limiting the copying of confidential information to a reasonable number
`
`of copies needed for conduct of the proceeding and maintaining a record of
`
`the locations of such copies.
`
`5.
`
`Persons receiving confidential information shall use the following
`
`procedures to maintain the confidentiality of the information:
`
`(A) Documents and Information Filed With the Board.
`
`(i) A party may file documents or information with the Board along with a
`
`Motion to Seal. The Motion to Seal should provide a non-confidential
`
`
`
`
`
`
`
`
`
`description of the nature of the confidential information that is under seal,
`
`and set forth the reasons why the information is confidential and should
`
`not be made available to the public. A party may challenge the
`
`confidentiality of the information by opposing the Motion to Seal. The
`
`submission shall be treated as confidential and remain under seal, unless
`
`the Board determines that the documents or information does not qualify
`
`for confidential treatment. The information shall remain under seal unless
`
`the Board determines that some or all of the information does not qualify
`
`for confidential treatment.
`
`(ii) Where confidentiality is alleged as to some but not all of the information
`
`submitted to the Board, the submitting party shall file confidential and
`
`non-confidential versions of its submission, together with a Motion to
`
`Seal the confidential version setting forth the reasons why the
`
`information redacted from the non-confidential version is confidential
`
`and should not be made available to the public. A party may challenge
`
`the confidentiality of the information by opposing the Motion to Seal.
`
`The non-confidential version of the submission shall clearly indicate the
`
`locations of information that has been redacted. The confidential version
`
`of the submission shall be filed under seal. The redacted information
`
`
`
`
`
`
`
`
`
`shall remain under seal unless the Board determines that some or all of
`
`the redacted information does not qualify for confidential treatment.
`
`(B) Documents and Information Exchanged Among the Parties. Documents
`
`(including deposition transcripts) and other information designated as
`
`confidential that are disclosed to another party during discovery or other
`
`proceedings before the Board shall be clearly marked as “SAMSUNG-
`
`NEONODE-CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY”
`
`and shall be produced in a manner that maintains its confidentiality.
`
`6. Within 60 days after the final disposition of this action, including the
`
`exhaustion of all appeals and motions, each party receiving confidential
`
`information must return, or certify the destruction of, all copies of the confidential
`
`information to the producing party.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., APPLE INC. v. NEONODE SMARTPHONE LLC
`Case IPR2021-00145
`Patent No. 8,812,993
`
`
`Standard Acknowledgment for Access to Protective Order Material
`
`I __________________________________________, affirm that I have read
`
`the Protective Order; that I will abide by its terms; that I will use the confidential
`
`information only in connection with this proceeding and for no other purpose; that I
`
`will only allow access to support staff who are reasonably necessary to assist me in
`
`this proceeding; that prior to any disclosure to such support staff I informed or will
`
`inform them of the requirements of the Protective Order; that I am personally
`
`responsible for the requirements of the terms of the Protective Order and I agree to
`
`submit to the jurisdiction of the Office and the United States District Court for the
`
`Eastern District of Virginia for purposes of enforcing the terms of the Protective
`
`Order and providing remedies for its breach.
`
`
`Executed on
`
`
`
`
`
`
`
`
`, 20__.
`
`Signed: ______________________________
`
`
`
`
`
`
`
`
`
`
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