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
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`A.
`“An electronic device” (claim 1, preamble) .......................................... 1
`B.
`“tap-activatable” (limitation [1.b]) ........................................................ 2
`C.
`“system functions” (limitation [1.b]) .................................................... 3
`III. THE PRIOR ART INVALIDATES THE CHALLENGED CLAIMS ........... 5
`A. Hisatomi is Prior Art. ............................................................................ 5
`B.
`Ground 1A Renders Independent Claim 1 Obvious ............................. 6
`1.
`Ren Teaches Direct-On and Direct-Off are
`Interchangeable with Design Tradeoffs. ..................................... 7
`A POSA Would Have Been Motivated to Make
`Hisatomi’s Icons “tap-activable.” ............................................. 11
`“System Functions” .................................................................. 15
`3.
`Ground 2A Renders Independent Claim 1 Obvious ........................... 18
`1.
`“Electronic Device” .................................................................. 18
`2.
`“System Functions” .................................................................. 19
`3.
`“Tap-Absent State” ................................................................... 20
`4. Motivation to Combine Hansen and Gillespie .......................... 20
`The Dependent Claims are Obvious. .................................................. 21
`1.
`Hisatomi’s and Hansen’s Icons Are Not “within a
`window frame.” (claim 3) ......................................................... 21
`Allard is Analogous. ................................................................. 23
`A POSA Would Have Been Motivated to Make
`Hisatomi’s Icon a Help Function. ............................................. 24
`
`2.
`
`2.
`3.
`
`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`
`i
`
`C.
`
`D.
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`IV. SECONDARY CONSIDERATIONS ........................................................... 25
`A. Neonode is Not Entitled to a Presumption of Nexus. ......................... 26
`1.
`No Commercial Success. .......................................................... 27
`No Industry Praise. .............................................................................. 28
`B.
`No Skepticism of the Claimed Functionality. ..................................... 28
`C.
`D. No “Industry Respect.” ....................................................................... 29
`
`
`
`
`ii
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`
`EXHIBITS
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`1015
`
`1016
`1017
`
`1018
`
`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”)
`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
`
`iii
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`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
`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”)
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`
`iv
`
`

`

`1030
`
`1031
`1032
`
`1033
`1034
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`1041
`
`1042
`
`1043
`
`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`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. 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.)
`
`v
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`“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
`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)
`
`1044
`
`1045
`
`1046
`
`1047
`1048
`1049
`
`1050
`1051
`1052
`1053
`1054
`1055
`1056
`1057
`1058
`
`vi
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`
`I.
`
`INTRODUCTION
`In its Institution Decision, the Board correctly rejected Patent Owner’s
`
`(“Neonode’s”) arguments that (1) Hisatomi and Hansen did not disclose “system
`
`functions,” (2) there was no motivation to modify Hisatomi to incorporate the well-
`
`known “tap” selection technique, (3) Hansen does not disclose the preamble, and
`
`(4) Hansen does not disclose a tap-absent state. Neonode’s Response primarily
`
`focuses on these four issues, but its arguments fare no better. Neonode proposes
`
`unnecessary and flawed claim constructions, mischaracterizes the prior art, relies
`
`on speculation of its expert, and proposes obviousness requirements contrary to the
`
`law. Moreover, even under Neonode’s flawed proposed constructions, the prior art
`
`still renders the challenged claims unpatentable.
`
`II. CLAIM CONSTRUCTION
`A.
`“An electronic device” (claim 1, preamble)
`The Board should reject Neonode’s construction of this term. Resp., 5-7.
`
`First, the ordinary meaning is not limited to a “mobile handheld computer.”
`
`EX1051, ¶15; EX1052, 15:19-16:5. Second, the intrinsic record does not provide a
`
`definition of the term or any indication the inventors intended to limit its scope.
`
`EX1051, ¶16. On the contrary, claim 1 was amended during prosecution to
`
`remove the reference to “mobile handheld device” in favor of “electronic device.”
`
`EX1003, 403.
`
`Third, the claims make no reference to “mobile” or “handheld,” or any
`
`1
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`physical aspect of the device related to mobility or size. EX1051, ¶18-20.
`
`Similarly, the specification does not tie any of the claimed features (multiple
`
`“states,” “tap-activatable icons”) to problems presented by a “mobile handheld
`
`computer.” EX1051, ¶20.
`
`Fourth, the Board should disregard Neonode’s expert’s opinions about the
`
`construction of this term because they are not properly supported. EX2013, ¶¶38-
`
`43; Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir.
`
`2005) (expert testimony unsupported by industry publications or other independent
`
`sources is not useful).
`
`Even if “electronic device” is limited to a “mobile handheld computer,”
`
`Hisatomi discloses this limitation. Pet., 28.
`
`B.
`“tap-activatable” (limitation [1.b])
`The Board should reject Neonode’s proposed construction of this term.
`
`First, the specification does not define a tapping gesture or specify that the gesture
`
`of Figure 4 is the only meaning of “tap.” Figure 4 and its description are not a
`
`“manifest exclusion or restriction” and Neonode has not provided any evidence of
`
`the ordinary and accustomed meaning of the word “tap.” Golight, Inc. v. Wal-Mart
`
`Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“limitations from the
`
`specification are not to be read into the claims”). Also, the specification does not
`
`instruct when during the gesture of Figure 4 the selection occurs. EX1051, ¶23.
`
`2
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`Second, Neonode’s construction should be rejected to the extent it excludes
`
`Ren’s a→b→c→a route for Direct-Off, which Neonode’s expert conceded is
`
`within the scope of the claimed “tap.” EX1052, 83:11-84:2.
`
`Third, the ordinary meaning of “tap” does not require the “directly and
`
`immediately” temporal aspect of Neonode’s construction, nor does the
`
`specification disclose it. EX1051, ¶¶24-25.
`
`Fourth, the Board should disregard Neonode’s expert’s opinions about the
`
`construction of this term because they are not properly supported. EX2013, ¶¶44-
`
`48; Network Commerce, Inc., 422 F.3d at 1361.
`
`C.
`“system functions” (limitation [1.b])
`The Board should reject Neonode’s proposed construction of this term.
`
`Resp., 9-13. First, the ordinary meaning of the term is not limited to “services or
`
`settings.” The term “function” for example, does not exclude applications, as
`
`Neonode suggests. A POSA would have understood “function” consistent with a
`
`“program or routine,” and programs include applications. EX1057, 238, 31. A
`
`POSA would therefore not exclude an application from the meaning of “system
`
`functions.” Also, the claim recites the “system functions” are represented by
`
`icons; a POSA would recognize icons to correspond to applications. EX1051,
`
`¶¶28-29.
`
`Second, the intrinsic record confirms Neonode’s exclusion of applications is
`
`3
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`incorrect. Neonode argues the specification’s description that “services or settings
`
`of the operations system” may include “clock, alarm 215, …help 211” is the
`
`lynchpin for the claimed “system functions.” EX1001, 4:38-40 (referring to FIG.
`
`3); Resp., 10. But the applicant relied on this same disclosure as support for
`
`original dependent claims 23-26 that recited “the plurality of applications includes
`
`an alarm clock application,” “a help application,” “an application for setting the
`
`time for the clock,” and “an application for configuring a background picture for
`
`the touch sensitive display.” EX1003, 567 (emphasized), 572-573. Also, the ’993
`
`specification does not exclude implementation of clock, alarm, and help as an
`
`application. A POSA would therefore conclude applications were within the scope
`
`of the claimed “system functions.” EX1051, ¶32.
`
`Third, the ordinary meaning of “system functions” does not limit them to
`
`“the operating system.” The term includes functions that relate to the system of the
`
`particular device. For example, a mobile phone (i.e., system) would have “system
`
`functions” like a dialer or a map application; a digital camera (i.e., system) would
`
`have “system functions” related to taking and viewing photos. EX1051, ¶30.
`
`Fourth, even if the claimed functions are limited to those of “the operating
`
`system,” applications included with an operating system are such “system
`
`functions,” such as a PDA’s web browser or text editor, a mobile phone’s dialer
`
`and map application, and a camera’s picture-taking functionality. EX1051, ¶31.
`
`4
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`Neonode also argues this term means the claim is not satisfied if there is an
`
`active application. Resp., 9-11, 30-33. However, in doing so, Neonode
`
`mischaracterizes the specification as describing “two embodiments,” and that
`
`claim 1 “claims the second embodiment, not the first:” first in which there is a
`
`“current active application” (2:25-29, 4:20-35), and second in which there is “no
`
`application [] currently active” (2:31-34, 4:36-40). Resp., 10, quoting EX1001.
`
`The specification describes the functionality spanning both alleged “embodiments”
`
`as a single “user interface” of the “present invention.” EX1001, 3:57-4:40. The
`
`specification further teaches the “computer unit is adapted to run several
`
`applications simultaneously and to present an active application on top of any other
`
`application on the display area 3.” EX1001, 3:66-4:7. Therefore, there may be
`
`active applications that are displayed and other applications that are not displayed.
`
`EX1051, ¶¶35-36.
`
`Thus, there is no support that the claims are limited only to a use case where
`
`no application is currently active.
`
`III. THE PRIOR ART INVALIDATES THE CHALLENGED CLAIMS
`A. Hisatomi is Prior Art.
`To swear behind Hisatomi, Neonode has the burden of showing the inventor
`
`possessed every feature recited in the challenged claims. NHK Seating of Am., Inc.
`
`v. Lear Corp., IPR2014-01200 (Paper 29, Feb. 2, 2016). Neonode does not even
`
`5
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`attempt to connect its cited testimony, articles, or manuals to the features of the
`
`challenged claims, and therefore fails to meet its burden. Resp., 14-15. Neonode’s
`
`witnesses also confirmed the N1 devices lacked claim elements. See Section IV.
`
`Neonode also fails to meet its burden on corroboration by relying on
`
`documents from well after the critical date with no testimony as to their
`
`authenticity or accuracy. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985);
`
`Microsoft v. Surfcast, IPR2013-00292 (Paper 93, Oct. 14, 2014). Neonode also
`
`failed to submit testimony of the sole inventor. Neonode’s speculative attorney
`
`argument that “Goertz must have conceived” the claimed interface should be
`
`disregarded. Resp., 14-15.
`
`B. Ground 1A Renders Independent Claim 1 Obvious
`The only differences between Hisatomi and claim 1 disputed by Neonode
`
`are whether Hisatomi’s icons (1) are “tap-activatable,” and (2) are for “system
`
`functions.” There is no dispute the “tap” gesture well known to a POSA and
`
`disclosed by Ren satisfies Neonode’s “tap-activatable” construction. EX1050, ¶36;
`
`EX1052, 83:11-84:2. Ren teaches design tradeoffs for the common “tap” and
`
`“touch” gestures. Neonode’s arguments fatally turn on its expert’s
`
`misinterpretations of Ren and unsupported speculation, and ask the Board to set
`
`aside KSR’s flexible approach to obviousness.
`
`6
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`Ren Teaches Direct-On and Direct-Off are Interchangeable
`with Design Tradeoffs.
`Ren does not teach that Direct-Off (“tap”) was undesirable, that Direct-On
`
`1.
`
`(“touch”) was “superior” or even preferred, or discourage the use of Direct-Off.
`
`Resp., 24-26; EX1051, ¶41. Neonode’s expert admitted “Ren explicitly states no
`
`preference for one over the other.” EX2013, ¶87 (emphasis added). Neonode also
`
`admits Ren teaches tap and touch were “both viable for dense displays” and both
`
`“can” be used. Resp., 24.
`
`Neonode is wrong that Ren’s small target sizes make it “irrelevant to … the
`
`selection of icons in the real world.” EX2013, ¶94; Resp., 25. Ren, an academic
`
`paper, sought to explore differences in error rates and selection times across the
`
`handful of common target selection strategies known to a POSA. Ren, 385, 386,
`
`391 (“Direct On and Direct Off strategies are already in common use”). Testing
`
`with larger targets would induce fewer errors in selection and therefore be
`
`expected to yield little difference across the strategies—this would not be a useful
`
`experiment. Ren’s investigation therefore used smaller targets, and confirmed
`
`these expectations: lower error rates for Direct-Off using smaller targets, but not a
`
`statistically significant difference as the targets get larger. Ren, 397, 406 (Section
`
`4), 407. EX1051, ¶42.
`
`The icon size of an iPhone, released many years after the relevant time
`
`period, is irrelevant. Resp., 25; EX2013, ¶¶93-94; EX1052, 18:11-23. Also, pen-
`
`7
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`based interfaces like Ren and Hisatomi were typically designed with smaller
`
`targets than interfaces designed primarily for input by a user’s fingers. For
`
`example, Pocket PC devices used small targets: a standard screen of 3.5” on HP’s
`
`Jornada indicates targets of 3mm. EX1028, 21-23, 26 (showing a character input
`
`menu with “tap” selectable items), 55, 62 (showing various sized targets to “tap”).
`
`EX1051, ¶43.
`
`Neonode is also wrong that Ren’s second experiment showed Direct-Off is
`
`“superior” to Direct-On for larger targets, or that using Direct-Off would have been
`
`“predictably inferior in terms of speed and error rate.” EX2013, ¶95, 103; Resp.
`
`25-26. First, the values for Direct-Off and Direct-On in the three dimensional
`
`graph of Figure 10 are not accurately readable. It is therefore wrong to conclude
`
`there was any statistically significant difference between error rates for the two
`
`strategies—the difference is no more than due to chance. EX1051, ¶44. Second,
`
`the lack of a statistically significant difference is repeatedly recognized by Ren’s
`
`text: “there was no significant difference between the 6 strategies in error rate for
`
`each target size of 7 or 9 pixels.” Ren, 407-408, 406, (“when the target size was 9
`
`pixels, the significant difference between selection strategies was not apparent”),
`
`411. Ren therefore teaches “touch” and “tap” are at least interchangeable (with no
`
`preference) for targets 9 pixels (3.2 mm) and larger. This would have motivated a
`
`POSA to try both strategies (Direct-On and Direct-Off) for Hisatomi’s icons. Ren
`
`8
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`demonstrates the results would have merely been predictable. EX1051, ¶45.
`
`Third, the mean error rates for Ren’s second experiment (Figure 12) show
`
`lower error rates for Direct-Off versus Direct-On (25.6 versus 36.2), teaching the
`
`design advantage for Direct-Off with small targets, as known for a pen-based
`
`interface. Ren, 386, 405. Ren further teaches that, even though “error rates were
`
`not influenced … when target sizes were increased beyond a certain size,” the
`
`“results are important factors in the design strategies for selecting small targets in
`
`pen-based systems” such as PDAs where “users have to select smaller targets….”
`
`Ren, 405 (emphasized). For example, a POSA would have known that 2002
`
`Pocket PC’s used “small” targets activated by “tap.” See, e.g., EX1028, 21, 26
`
`(targets ~3mm), 55, 62 (various sized “tap” targets). Ren’s explicit teachings as to
`
`the design advantages of Direct-Off for pen-based systems on PDAs would have
`
`motivated a POSA to make the icons of Hisatomi’s PDA sized pen-based system
`
`“tap-activatable.” EX1051, ¶46-47.
`
`Neonode’s dismissal of Ren’s “lower mean error rate” for Direct-Off
`
`because they were allegedly due to “an artifact of the design of the Ren
`
`experiment” are baseless and should be rejected. Resp., 24-25; EX2013, ¶¶90-92.
`
`First, Neonode’s expert’s opinions are wholly unsupported. Second, Neonode’s
`
`expert agreed both Direct-Off routes satisfy Neonode’s construction of “tap”
`
`(EX1052, 83:11-84:2), and the two routes are one of the benefits of Direct-Off and
`
`9
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`why it is known to produce fewer errors than Direct-On. Third, Ren’s a→b→c→a
`
`route, which meets Neonode’s construction of “tap,” allows the user to recover
`
`from an incorrect landing by sliding on to the target. EX2013, ¶92; Ren, 7
`
`(“selection is made at the moment the pen is taken off the target”); Resp., 25.
`
`Ren, Fig. 3.
`This recognized benefit of “user recovery from potential error” provided by “tap”
`
`
`
`also applied to “real life-sized icons” (EX1052, 99:22-100:24; Allard (EX1007),
`
`5:65-6:1) and would have motivated a POSA to use Ren’s Direct-Off strategy.
`
`EX1051, ¶¶49-52.
`
`Ren therefore teaches tap and touch are viable selection options with design
`
`tradeoffs, provides study results evidencing those tradeoffs, and provides explicit
`
`teachings for pen-based interfaces like Hisatomi, all of which would have
`
`motivated a POSA to make Hisatomi’s icons “tap-activatable.” EX1051, ¶¶47-48;
`
`Pet., 17-18, 36-38.
`
`Even if Ren expressed a general preference for Direct-On (it does not), Ren
`
`does not discredit or discourage investigation of Direct-Off for the reasons
`
`discussed above, and therefore does not teach away from its use. DePuy Spine,
`
`10
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009),
`
`1327; In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Neonode “fails to cite
`
`any reference suggesting that the claimed invention would be unlikely to work
`
`using” tap-activatable icons, and therefore fails to meet the exacting standards of
`
`showing a teaching away. Id.
`
`2.
`
`A POSA Would Have Been Motivated to Make Hisatomi’s
`Icons “tap-activable.”
`Contrary to Neonode’s arguments (Resp. 27), Petitioners need not show
`
`“there was a known problem with the prior art system in order to articulate the
`
`required rational underpinning for the proposed combination.” Unwired Planet,
`
`LLC v. Google Inc., 841 F.3d 995 (Fed. Cir. 2016), 1002-1003. Instead, the “many
`
`potential rationales that could make a modification or combination of prior art
`
`references obvious to a skilled artisan” are described in KSR, and articulated in the
`
`Petition. Id. at 1003; Pet., 17-18, 36-38.
`
`For multiple reasons, Neonode is wrong that making Hisatomi’s icons “tap-
`
`activatable” would have “provided no benefit to Hisatomi in terms of…reduced
`
`error rates, ease of use, or any other relevant metric.” Resp., 28. Nor would
`
`incorporating “tap” (Ren’s Direct-Off) in Hisatomi “denigrate” or lead to lost
`
`benefits of Hisatomi’s interface. Resp., 27-29. EX1051, ¶¶53, 63.
`
`First, as established in Section III.B.1, Neonode’s arguments hinge on
`
`misrepresentations of Ren, which the Board should reject. Resp. 29.
`
`11
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`Second, Neonode is wrong that Hisatomi teaches the GUI function button is
`
`activated upon “touch.” Resp., 19. Hisatomi’s device determines whether the
`
`“function button…was selected by the input device 05 (S210); if it is selected, the
`
`selected function will be processed (S211).” EX1005, 55 (emphasized), FIG. 13.
`
`“Selection,” discussed more below, is a general term for a handful of known
`
`strategies and did not limit Hisatomi to “touch.” Hisatomi’s paragraph 55 does not
`
`restrict whether the button is “selected” upon touch-down or touch-up of the pen.
`
`Nor does pen coordinate detection confirm the use of touch—it is necessary for
`
`both “touch” and “tap.” Furthermore, Figure 13 is insufficient to conclude
`
`“selection” occurs upon touch-down–decision state S210 does not reference the
`
`action of the pen. If the GUI button only activates upon touch (as Neonode
`
`suggests), pen lift off would not matter after state S210 because the pen would
`
`have already activated the button. But this is not what Figure 13 or paragraph 55
`
`disclose. EX1051, ¶¶54-58.
`
`Even if the Board finds Hisatomi discloses icon selection by “touch,” it
`
`would have been obvious to use “tap” instead for the reasons discussed herein and
`
`expressed below and with regard to Ren. EX1051, ¶58.
`
`Third, Hisatomi identifies no benefit for “touch” over “tap,” nor teaches
`
`away from “tap.” The Board found Hisatomi was silent as to how to select the
`
`menu contents. Paper 24 at 29; EX1005, ¶55, Fig. 13. Hisatomi also uses the
`
`12
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`broader term “select” for the menu icons and the menus, which is done by a drag
`
`gesture. EX1005, 0003, 0020, 0036 (“GUI function button was selected”), 0038-
`
`39, 0255. The ’993 patent similarly uses “selection” to describe “tapping”
`
`(EX1001, 4:41-42) and a gliding gesture (EX1001, 5:11-16). Resp., 12. A POSA
`
`would have been motivated to implement Hisatomi’s icon “selection” with the
`
`handful of techniques known at the time. A POSA would have weighed design
`
`strategies, for example, for a still camera or notebook computer, and tried the
`
`standard and ubiquitous “tap” strategy known to a POSA and taught by Ren.
`
`EX1005, 0012, 0242-243; EX1052, 89:13-23, 107:3-108:22 (balancing design
`
`considerations such as speed and accuracy is important). Hisatomi’s image editor
`
`embodiment has no implicit need for fast selection times, therefore the designer
`
`might be motivated to prioritize accuracy and use “tap.” EX1005, 20-22. EX1051,
`
`¶¶59-63.
`
`Fourth, Neonode wholly ignores that tap was a common, standard selection
`
`strategy at the ’993 patent’s priority date, as Neonode’s expert agrees. EX1052,
`
`13:21-14:2; 23:17-24:2, 106:24-107:2. The inventors conceded that, “at the time
`
`of the invention, tap gestures were the most intuitive gestures for selecting and
`
`activating graphic user interface elements on a touch screen. It was therefore
`
`counterintuitive, at the time of the invention, to provide a graphic representation of
`
`a function in a touch screen user interface and not enable activating the function in
`
`13
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`response to a tap gesture on the representation.” EX1003, 321-322 (emphasized).
`
`These are significant motivations to use “tap.” There is no teaching in Hisatomi
`
`(or Ren) to move away from this standard selection strategy for Hisatomi’s icons.
`
`The prevalence of “tap” as the most intuitive gesture for selecting buttons/icons
`
`would have motivated a POSA to make Hisatomi’s icons “tap-activatable”, and
`
`would have yielded a predictable result because of its ubiquity and intuitiveness to
`
`users, in addition to the explicit teachings of Ren. EX1051, ¶66.
`
`Fifth, Neonode admits there are additional motivations to use “tap” to select
`
`Hisatomi’s icons. There is no dispute Hisatomi’s interface focuses on a drag
`
`gesture, in response to which a pull-out menu of icons or settings menu is
`
`displayed. EX1005, 0018-23, 0039, 0041-42, 0045-46, 00125-126, FIGs. 7, 10,
`
`29-30. As recognized by Neonode, a POSA would have been motivated to
`
`configure Hisatomi’s icons to activate upon pen-up (lift off) “to differentiate from
`
`certain functions executed based on a sustained contact with the display such as a
`
`drag and drop operation,” like Hisatomi’s drag gesture. Resp., 27; EX2013, ¶97;
`
`EX1052, 107:3-108:3; see also EX1002, ¶134; EX2018, 68:11-69:11, 71:2-72:11,
`
`74:16-75:14. This is because an interface that responds to a drag gesture that also
`
`activates targets upon touch-down would lead to undesirable results in multiple
`
`ways: 1—if a user intends a drag for a first target but accidentally touches down
`
`on a “touch” activated second target, they will have mistakenly activated that
`
`14
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`second “touch” target, 2—it would be confusing to users if an interface requires a
`
`touch-down followed by a drag and touch-up to move menu edges, but menu items
`
`are activated directly upon touch-down. EX1051, ¶64.
`
`Accordingly, a POSA would recognize in Hisatomi’s interface—in which
`
`some targets are activated by a drag—that icon selection upon touch-up would
`
`reduce error and confusion because a user would not accidentally activate an icon
`
`upon touch-down. See also, EX1007, 5:56-6:6. This combination of drag and the
`
`familiar “tap” in a single interface was well known (EX2013, ¶¶97, 100-101) and
`
`would have therefore yielded merely predictable results. The combination would
`
`have involved the application of a well-known technique (“tap”) to improve
`
`Hisatomi’s interface in which items are also selected using a drag, and would be
`
`done in the same way known to a POSA to yield predictable results in reducing
`
`errors and user confusion. EX1051, ¶65.
`
`3.
`“System Functions”
`Neonode’s argument that Hisatomi does not disclose this limitation is
`
`incorrect for several reasons. Resp., 30-33.
`
`First, the Board should reject Neonode’s construction of “system functions.”
`
`See Section II.C.
`
`Second, Hisatomi discloses “icons for…system functions” even under
`
`Neonode’s proposal. A “detailed settings menu” related to the “start button” is
`
`15
`
`

`

`IPR2021-00145 (8,812,993)
`Petitioners’ Reply
`displayed as shown in Hisatomi’s Figure 30 (screen D84). EX10