IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`APPLE INC.
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC
`Patent Owner.
`
`Case IPR2021-00145
`U.S. Patent No. 8,812,993
`
`
`SUPPLEMENTAL DECLARATION OF DR. BENJAMIN B. BEDERSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,812,993
`
`
`
`
`
`EXHIBIT 1051
`Samsung et al. v. Neonode,
`Page 1
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
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`TABLE OF CONTENTS
`
`Contents
`INTRODUCTION ...........................................................................................4
`I.
`BACKGROUND AND QUALIFICATIONS .................................................4
`II.
`INFORMATION CONSIDERED ..................................................................5
`III.
`IV. RELEVANT LEGAL STANDARDS .............................................................9
`
`SUMMARY OF MY OPINIONS ...................................................................9
`V.
`VI. THE ’993 PATENT ......................................................................................10
`A.
`Priority Date ........................................................................................10
`B.
`Level of Ordinary Skill in the Art .......................................................10
`C.
`Claim Construction .............................................................................10
`1.
`“An electronic device” (Claim 1, Preamble) ............................12
`2.
`“tap-activatable” (Claim 1, limitation [1.b]) ............................14
`3.
`“system function(s)” (Claim 1, limitation [1.b]) ......................16
`VII. DETAILED EXPLANATION OF UNPATENTABILITY ..........................21
`A.
`Claims 1-8 are rendered obvious by combinations based on
`Hisatomi (EX1005) in view of POSA Knowledge and/or Ren
`(EX1006). ............................................................................................21
`1.
`Ren Teaches a POSA to Try Direct Off (“tap”). ......................21
`
`3.
`
`2.
`
`A POSA, Given Hisatomi, Would Have Used Their
`Design Knowledge to Implement “tap-activable” Icons. .........29
`Hisatomi discloses “icons for a respective plurality of
`pre-designated system functions.” ............................................37
`Claim 4 is Obvious over Hisatomi, Ren/POSA Knowledge, and
`Allard. .................................................................................................42
`
`B.
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`1.
`2.
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`Allard is Analogous Art. ...........................................................42
`A POSA Would Have Been Motivated to Make
`Hisatomi’s Icon a Help Function in View of Allard. ...............44
`Claims 1-8 are rendered obvious by combinations based on
`Hansen (EX1029) in view of Gillespie (EX1030). .............................45
`1.
`Hansen Discloses an “Electronic Device,” Under That
`Term’s Plain and Ordinary Meaning ........................................46
`
`C.
`
`2.
`
`3.
`
`Hansen discloses “icons for a respective plurality of pre-
`designated system functions.” ..................................................49
`A POSA Would Have Ample Motivation to Combine
`Hansen and Gillespie. ...............................................................50
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNES ................53
`A. Alleged Commercial Success .............................................................55
`B.
`Industry Praise ....................................................................................56
`C.
`Skepticism by Experts .........................................................................57
`D.
`Industry Respect ..................................................................................58
`IX. CONCLUSION .............................................................................................58
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`I, Dr. Benjamin B. Bederson, declare as follows:
`
`1.
`
`I.
`
`INTRODUCTION
`2.
`I have been retained by Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., and Apple Inc. (collectively, “Petitioners”) as an
`
`independent expert consultant in this inter partes review (“IPR”) proceeding
`
`before the United States Patent and Trademark Office (“patent office”).
`
`3.
`
`I have been asked by Petitioners’ counsel (“Counsel”) to consider
`
`whether certain references teach or suggest the features recited in Claims 1-8 of
`
`U.S. Patent No. 8,812,993 (“the ’993 Patent”) (EX1001).
`
`4.
`
`I previously submitted a Declaration in this proceeding that I signed
`
`on November 5, 2020, and I understand that Declaration was marked as
`
`Exhibit 1002. That Declaration contained my opinions and the bases for them.
`
`Since submitting my Declaration (EX1002) I have considered the Board’s
`
`institution decision (Paper 24), Patent Owner’s Response (Paper 29), and the
`
`Declaration of Dr. Craig Rosenberg (EX2013) in support of Patent Owner’s
`
`Response. My opinions from my previous declaration have not changed.
`
`II. BACKGROUND AND QUALIFICATIONS
`5. My background and qualifications are set forth in my November 5,
`
`2020 declaration. I incorporate that section of my previous declaration here by
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`reference.
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`III.
`
`INFORMATION CONSIDERED
`6.
`In preparing this declaration, I have considered the materials
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
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`discussed in this declaration, including, for example, the ’993 Patent, the
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`references cited by the ’993 Patent, the prosecution histories of the ’993 Patent and
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`the application from which it derives (including the references cited therein),
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`various background articles and materials referenced in this declaration, and the
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`prior art references identified in this declaration. In addition, my opinions are
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`further based on my education, training, experience, and knowledge in the relevant
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`field.
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`1009
`1010
`1011
`
`Description
`U.S. Patent No. 8,812,993 (“the ’993 patent”)
`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”)
`
`EXHIBIT 1051
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`Exhibit No.
`1012
`1013
`1014
`
`1015
`
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`
`Description
`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
`Dean Harris Rubine, “The Automatic Recognition of Gestures,”
`CMU-CS-91-202, December, 1991.
`U.S. Patent No. 6,710,791 to Kodama et al. (“Kodama”)
`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
`
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`Exhibit No.
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`1030
`
`1031
`1032
`
`1033
`1034
`1035
`
`1036
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
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`Description
`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
`Karlson, Amy & Bederson, Benjamin & Contreras-Vidal, José.
`(2008). Understanding One-Handed Use of Mobile Devices.
`Handbook of Research on User Interface Design and Evaluation
`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)
`U.S. Patent No. 5,821,930 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)
`
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`Exhibit No.
`1037
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`1038
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`1039
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`1040
`
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`1048
`1049
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`
`Description
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505
`(W.D.Tex.) (W.D.Tex. Oct. 7, 2020)
`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)
`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 (W.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 Owners Response
`Proposed Redacted Version of Patent Owners Exhibit 2015
`Marked-Up Version of Samsung and Neonode Joint Proposed
`Protective Order
`
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`IPR2021-00145 (’993 Patent)
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`Exhibit No.
`1050
`1051
`1052
`1053
`1054
`1055
`1056
`1057
`1058
`
`Description
`Declaration of Zachary Loney
`Supplemental Declaration of Benjamin B. Bederson
`Craig Rosenberg Deposition Transcript, Nov. 17, 2021
`Joseph Shain Deposition Transcript, Dec. 1, 2021
`Ulf Martensson Deposition Transcript, Dec. 3, 2021
`Per Bystedt Deposition Transcript, Dec. 1, 2021
`Marcus Bäcklund Deposition Transcript, Nov. 30, 2021
`Microsoft Computer Dictionary, 5th Ed. (2002)
`Pen Lab Review: IBM ThinkPad 730TE (Nov./Dec. 1995)
`
`
`IV. RELEVANT LEGAL STANDARDS
`7.
`I set forth the relevant legal standards in my previous declaration, and
`
`I incorporate those legal standards here by reference.
`
`V.
`
`SUMMARY OF MY OPINIONS
`8.
`I have been asked to consider whether the claims of the ’993 Patent
`
`are anticipated or obvious over certain prior art references. As explained in my
`
`previous declaration and in further detail in this declaration, it is my opinion that:
`
`•
`
`•
`
`•
`
`•
`
`Claims 1-3 and 7-8 are rendered obvious by Hisatomi (EX1005) in
`view of Ren (EX1006) and/or POSA knowledge;
`
`Claim 4 is rendered obvious by Hisatomi in view of POSA knowledge
`and Allard 656 (EX1007) and/or Ren and Allard-656;
`
`Claim 5 is rendered obvious by Hisatomi in view of POSA knowledge
`and Tanaka (EX1008) and/or Ren and Tanaka;
`
`Claim 6 is rendered obvious by Hisatomi in view of POSA knowledge
`and Kodama (EX1016) and/or Ren and Kodama;
`
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`Claims 1-3, 7, and 8 are rendered obvious by Hansen (EX1029) and
`Gillespie (EX1030);
`
`Claim 4 is rendered obvious by Hansen in view of Gillespie and
`Allard-656;
`
`Claim 5 is rendered obvious by Hansen in view of Gillespie and
`Tanaka;
`
`•
`
`•
`
`•
`
`•
`
`Claim 6 is rendered obvious by Hansen in view of Gillespie and
`Kodama.
`VI. THE ’993 PATENT
`A.
`Priority Date
`9.
`For purposes of my analysis, I apply the date of filing of the
`
`application to which the ’993 patent claims priority, which is December 10, 2002.
`
`All of the prior art relied on in this declaration were published and/or filed before
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`the priority date I apply in my analysis.
`
`B.
`10.
`
`Level of Ordinary Skill in the Art
`I provided my opinion about a person of ordinary skill in the art
`
`(POSA) in my previous declaration, and I incorporate that opinion here by
`
`reference.
`
`C. Claim Construction
`11.
`I understand the claims of the ’993 Patent are to be interpreted
`
`according to the Phillips claim construction standard that is used to construe claims
`
`in a civil action. I understand from counsel that this includes construing the claim
`
`in accordance with the “ordinary and customary” meaning and scope of such claim
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`IPR2021-00145 (’993 Patent)
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`as understood by one of ordinary skill in the art (a POSA) at the time of the
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`invention.
`
`12.
`
`It is my understanding that the claim terms should be interpreted using
`
`their plain and ordinary meaning to one of ordinary skill in the art at the time of the
`
`invention, unless the inventor acted as his or her own lexicographer, coined new
`
`terms or redefined a well-known term of art. I also understand that the claim
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`language is to be viewed from the perspective of a person of ordinary skill in the
`
`art at the time of invention. I understand that the words in a claim are construed
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`based on the “intrinsic evidence,” which includes the claim language, language in
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`other claims of the patent in question or other patents in the same family, the
`
`specification, and the prosecution history including prior art cited in the
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`prosecution history. I understand that “extrinsic evidence” is all the information
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`that is not “intrinsic evidence,” including, for example, dictionaries, technical
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`treatises, and expert testimony. I understand extrinsic evidence may be used to
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`provide additional background for how a person of ordinary skill in the art would
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`understand the claim terms.
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`13. As stated in my previous Declaration, I do not believe that any
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`explicit claim construction is required to resolve the validity issues for this
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`Petition. I have considered Neonode’s arguments and Dr. Rosenberg’s opinions
`
`and claim construction proposals and respond as follows.
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`IPR2021-00145 (’993 Patent)
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`1.
`“An electronic device” (Claim 1, Preamble)
`I understand that Neonode’s position is that this term means “a mobile
`
`14.
`
`handheld computer.” Resp., 5-7. I disagree for multiple reasons.
`
`15. First, I disagree that the ordinary meaning of “an electronic device” to
`
`a POSA was limited to a mobile handheld computer.
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`16. Second, the intrinsic record does not provide a definition of the term
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`“electronic device” or any indication that the inventor used the term with the intent
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`to limit its scope. Nor does Neonode point to any instance in which the intrinsic
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`record uses the term “electronic device” inconsistent with its ordinary meaning.
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`17. Third, the inventors amended the claim that ultimately issued as
`
`claim 1 to remove the reference to a “mobile handheld device,” replacing it with
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`“electronic device.” EX1003, 403. This informs a POSA the inventors had a clear
`
`intention to not limit the claim to a “mobile handheld device.”
`
`18. Fourth, the claim language itself provides no indication that the term
`
`“electronic device” should be limited to a “mobile handheld computer.” Neither of
`
`the terms “mobile” or “handheld” are in the claim. Nor does the claim recite any
`
`language that would inform a POSA that the claimed device should be limited to a
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`“mobile handheld” device. On the contrary, the claim is directed to the user
`
`interface and does not limit the physical aspects of the device with regard to
`
`whether it is “mobile” or “handheld.” Nor are the dependent claims informative on
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`IPR2021-00145 (’993 Patent)
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`this issue as they, too, only reference the user interface and do not limit the claim
`
`to features of a “mobile” or “handheld” device.
`
`19. Fifth, I disagree with Dr. Rosenberg’s opinion that a POSA would
`
`understand the “electronic device” to “include[] a housing or hard enclosure,
`
`within which at least the processor and touch-sensitive display screen are disposed,
`
`because that is how devices with the recited structure and configuration were
`
`typically constructed in 2002,” and that “[s]uch a structure would be understood by
`
`a POSA in 2002 to identify a mobile handheld computer, as there were few if any
`
`computer units with such structure known in the art in 2002 that were not
`
`handhelds.” EX2013, ¶38. The claim makes no reference to a housing or
`
`enclosure. Nor would a POSA have considered a claim reciting an electronic
`
`device with a processor and touch-sensitive display to have been limited to a
`
`mobile handheld computer, as Dr. Rosenberg appears to suggest. Indeed, it was
`
`well known to a POSA that kiosks, which were typically neither mobile nor
`
`handheld, were an example of an electronic device with a processor and touch-
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`sensitive display that were enclosed in a housing. As another example, touch
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`screen tablet computers that varied from handheld sized to at least the size of a
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`standard piece of paper (8 ½ x 11” US) were also known to a POSA. See, EX1002
`
`(my previous declaration) at ¶55 (showing tablet devices of various sizes known to
`
`a POSA).
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`IPR2021-00145 (’993 Patent)
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`20. Sixth, I disagree that the specification speaks with any “force” as to
`
`what the invention is that limits it to a mobile handheld computer. Resp., 7-8. The
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`challenged claims are directed to a user interface with multiple “states,” “tap-
`
`activatable icons,” and a “multi-step user gesture.” See EX1001, claim 1. But the
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`specification makes no connection between these claimed features (indeed, the
`
`specification provides no description of the “states”) and any problem presented by
`
`a “mobile handheld computer.” Although Dr. Rosenberg suggests “a typical
`
`desktop implementation circa 2002 … would not correspond to the form factor that
`
`create the problem the ‘993 Patent solves,” he does not articulate this alleged
`
`problem or how claim 1 of the ’993 patent allegedly solves the problem.
`
`21. Regardless of whether Neonode’s construction of this term is adopted,
`
`the combination of Hisatomi and POSA knowledge and/or Ren satisfies the
`
`preamble of the claim. See Hisatomi (EX1005), 12 (PDA), 6 (“small image
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`display part”), 243 (“still camera, video camera, a notebook computer, … or the
`
`like”).
`
`2.
`“tap-activatable” (Claim 1, limitation [1.b])
`I understand Neonode proposes this term means “activatable upon
`
`22.
`
`completion of a gesture that involves the input device touching a screen followed
`
`directly and immediately by lifting off of the screen.” Resp., 8. I disagree.
`
`23. First, Dr. Rosenberg cites to FIG. 4 of the ’993 patent as apparently
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`IPR2021-00145 (’993 Patent)
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`“defin[ing]” a tapping gesture. EX2013, ¶46. However, the ’993 patent does not
`
`specify that the gesture depicted in FIG. 4 is the only gesture that satisfies a “tap”.
`
`See EX1001, 4:41-42. Rather, at most, the ’993 patent discloses that the term
`
`“tap” is broad enough to encompass the gesture illustrated in FIG. 4. At no point
`
`does the ’993 patent exclude other gestures from falling within the scope of the
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`term “tap”, and Dr. Rosenberg has cited to no extrinsic evidence to support his
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`contention that the term “tap” should only encompass his definition. Nonetheless,
`
`Dr. Rosenberg seeks to distinguish his narrow definition of a “tap” from “touch
`
`activation, in which processing is activated upon detecting the coordinates of the
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`initial touch.” EX2013, ¶45. However, the ’993 patent makes no such distinction
`
`between the terms “touch” and “tap.” In fact, when describing a “tapping”, the
`
`’993 patent does not indicate when with relation to the gesture illustrated in FIG. 4
`
`that a “selection” is registered by the ’993 patent’s computer unit. See EX1001,
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`4:41-42.
`
`24. Second, I disagree that the ordinary meaning of “tap” or “tap-
`
`activatable” requires the “directly and immediately” temporal aspect of Neonode’s
`
`proposal. Indeed, Dr. Rosenberg testified that “[t]he “Direct Off” strategy
`
`illustrated in Figure 3” of Ren “is an example of the tap activation (mouse up)
`
`strategy taught by the ‘993 patent.” EX2001, ¶69; see also EX2013, ¶87 (referring
`
`to the “Direct Off/tap teaching of Ren”); Rosenberg Dep. (EX1052), 83:11-84:2.
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`IPR2021-00145 (’993 Patent)
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`However, Ren says nothing about the duration of a pen’s contact with a target, and
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`instead defines “Direct Off” as simply a function of: (a) where the pen initiates
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`contact of a screen surface with respect to a target area; and (b) where the pen lifts
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`off the screen surface with respect to the target area. Ren actually goes further to
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`explicitly describe a version of Direct Off (a→b→c→a) that includes movement of
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`the pen after it contacts the screen and before it lifts off. See EX1006, 6-7. Dr.
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`Rosenberg also agreed Ren’s a→b→c→a route was within the scope of Neonode’s
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`construction of “tap-activatable.” Rosenberg Dep., 83:11-84:2.
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`25. Third, the “directly and immediately” requirement of Neonode’s
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`proposal is not supported by the specification. As I note above, Dr. Rosenberg
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`cites to FIG. 4 of the ’993 patent as apparently “defin[ing]” a tapping gesture.
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`EX2013, ¶46. However, the ’993 patent does not provide any indication of the
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`duration that the object 4 is in contact with the touch sensitive area 1, let alone that
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`it is “directly and immediately” lifted off.
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`26. Regardless of whether Neonode’s construction of this term is adopted,
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`(1) the combination of Hisatomi and POSA knowledge and/or Ren satisfies
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`limitation [1.b], and (2) Hansen satisfies limitation [1.b].
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`3.
`“system function(s)” (Claim 1, limitation [1.b])
`I understand Neonode proposes this term means “services or settings
`
`27.
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`of the operating system.” Resp., 9-13. I disagree for multiple reasons.
`EXHIBIT 1051
`Samsung et al. v. Neonode,
`Page 16
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`a. Neonode’s Construction Lacks Any Rational
`Underpinning
`28. First, the ordinary meaning of “system functions” is not limited to
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`“services or settings of the operating system.” A POSA would understand the term
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`“function” is not limited to services or settings, and does not exclude applications,
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`as Neonode suggests. The Microsoft Computer Dictionary, for example, does not
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`restrict a “function” to a “routine”—it also includes a “program.” EX1057, 228.
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`Thus, an application (which is a program, see id. at 31), would be within the scope
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`of the ordinary meaning of the term “system function.”
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`29. Second, the claim recites the “system functions” are represented by
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`icons. A POSA would recognize that icons that are activated in response to
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`tapping represent applications.
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`30. Third, the claim does not limit the “system functions” to an
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`“operations” or “operating” system. Nor does the ordinary meaning of system
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`functions indicate such a limitation. On the contrary, a POSA would understand
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`the term to include functions that relate to the system of the particular device. For
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`example, if the system was a mobile phone, a POSA would have understood the
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`“system functions” to be any functions the mobile phone (i.e., the system) is
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`capable of executing, , such as a dialer or a map application. If the system was a
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`digital camera, a POSA would understand the “system functions” to be any
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`EXHIBIT 1051
`Samsung et al. v. Neonode,
`Page 17
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`functions the digital camera (i.e., the system) is capable of executing, e.g.,
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`functions related to taking and viewing photos.
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`31. Fourth, even if the “system functions” are limited to operating system
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`functions, a POSA would have recognized that applications included with an
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`operating system are examples of such system functions. These would include, for
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`example, a PDA’s web browser or text editor, a mobile phone’s dialer and map
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`application, and a camera’s picture-taking functionality. A POSA also would have
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`recognized that dialers and camera functions are typically controlled by the
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`operating system in order to control the user’s privacy and which applications can
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`control the device. As another example, it was well-known to even a layperson by
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`2002 that Microsoft shipped its Windows operating system with a web browser,
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`which is an application a POSA would have recognized as an application that is
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`part of the operating system.
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`32. Third, the specification and prosecution history does not support
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`Neonode’s construction, and confirms that Neonode’s inclusion of “services and
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`settings” and exclusion of “applications” is arbitrary. The specification describes,
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`for example, that “services or settings of the operations system” may include
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`“background picture, clock, alarm 215, users 13, help 211, etc.” EX1001, 4:38-40.
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`A POSA would recognize that a clock, alarm, and help functions could be
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`implemented as “applications,” and the ’993 patent does not exclude such a
`EXHIBIT 1051
`Samsung et al. v. Neonode,
`Page 18
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`possibility. The specification also describes a “keyboard function” and a “task and
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`file manager” as “functions.” EX1001, 4:12-13. A POSA would recognize these
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`as “functions” that could be “system functions.”
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`33. The applicant’s intent to include “applications” as examples of
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`“system functions” is supported by the prosecution history. The applicant filed
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`original dependent claims 23-26 that recited “the plurality of applications includes
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`an alarm clock application,” “a help application,” “an application for setting the
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`time for the clock,” and “an application for configuring a background picture for
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`the touch sensitive display.” EX1003, 567. The applicant argued to the patent
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`office that these claims were supported by the icons of FIG. 3, and the text at 4:36-
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`40 (page 6, lines 8-11 in the application as filed). EX1003, 572-573. For at least
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`these reasons, and those discussed in reference to Hisatomi below, I disagree with
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`Neonode’s implicit arguments that an “application” is not a “system function.” A
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`POSA would recognize the ordinary meaning of the claimed “system function”
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`would at least include an “application.”
`
`b. The Board Should Reject Neonode’s “Two
`Embodiment” Argument
`I also disagree with Neonode’s characterization of the specification as
`
`34.
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`describing “two embodiments,” the first at 2:25-29, 4:20-35 in which there is a
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`“current active application,” and a second at 2:31-34 and 4:36-40 in which there is
`
`EXHIBIT 1051
`Samsung et al. v. Neonode,
`Page 19
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`“no application [] currently active,” and that claim 1 “claims the second
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`embodiment, not the first.” Resp. 10, quoting EX1001.
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`35. First, I disagree that a POSA would take the word “system” from the
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`claim, and use it to conclude claim 1 claims only the disclosed features in the same
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`sentence that word is used in the specification to the exclusion of other disclosed
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`features.
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`36. Second, the specification describes the functionality spanning both
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`alleged “embodiments” at 2:25-34 and 4:20-40 as a single “user interface” of the
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`“present invention.” EX1001, 3:57-4:40. The specification also teaches that the
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`“computer unit is adapted to run several applications simultaneously and to present
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`an active application on top of any other application on the display area 3.”
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`EX1001, 3:66-4:7. Accordingly, the specification teaches there may be active
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`applications that are displayed and other applications that are not displayed. This
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`was a common feature of user interfaces, particularly ones that had small screens
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`that could not display a large number of windows for all applications that might be
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`running.
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`37. Regardless of whether Neonode’s construction of this term is adopted,
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`Hisatomi alone or in combination with POSA knowledge satisfies this limitation.
`
`EXHIBIT 1051
`Samsung et al. v. Neonode,
`Page 20
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`IPR2021-00145 (’993 Patent)
`Bederson Decl. ISO Reply
`VII. DETAILED EXPLANATION OF UNPATENTABILITY
`A. Claims 1-8 are rendered obvious by combinations based on
`Hisatomi (EX1005) in view of POSA Knowledge and/or Ren
`(EX1006).
`I analyzed how these claims are obvious in view of Hisatomi in
`
`38.
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`combination with POSA knowledge and/or Ren in my previous declaration. I
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`incorporate that analysis here by reference. In this declaration, I further address
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`certain claim limitations and claim constructions that Neonode raised in its
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`Response.
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`39. A POSA would have been motivated to make Hisatomi’s icons “tap-
`
`activatable,” even under Neonode’s construction. Neonode’s argument that a
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`POSA would not have been motivated to make Hisatomi’s pull-out menu icons
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`“tap-activatable” is incorrect for several reasons. Resp., 22-30. At the outset, I
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`note that the “tap” selection technique well known to a POSA and also disclosed
`
`by Ren as the Direct Off strategy satisfies Neonode’s construction of “tap-
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`activatable.” Neonode’s arguments also hinge on Dr. Rosenberg’s incorrect
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`conclusion that Ren teaches away from Direct Off.
`
`1.
`Ren Teaches a POSA to Try Direct Off (“tap”).
`40. Neonode argues that a POSA would not have been motivated to
`
`combine Ren’s Direct Off strategy with His