Joint Submission of Marked-Up 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
`
`
`
`
`
`
`

`

`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`1015
`
`1016
`1017
`
`1018
`
`1019
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`
`
`
`
`Motion for Protective Order
`IPR2020-00995 (U.S. Patent 9,553,880)
`
`LIST OF EXHIBITS
`
`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 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)
`
`1
`
`

`

`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`
`1033
`1034
`1035
`
`1036
`
`
`
`
`
`Motion for Protective Order
`IPR2020-00995 (U.S. Patent 9,553,880)
`
`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”)
`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)
`
`2
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`

`

`1037
`
`1038
`
`1039
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`1040
`
`
`1041
`1042
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`1048
`1049
`
`1050
`1051
`1052
`1053
`1054
`1055
`1056
`1057
`
`
`
`
`
`Motion for Protective Order
`IPR2020-00995 (U.S. Patent 9,553,880)
`
`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
`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)
`
`3
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`

`

`Motion for Protective Order
`IPR2020-00995 (U.S. Patent 9,553,880)
`
`Pen Lab Review: IBM ThinkPad 730TE (Nov./Dec. 1995)
`Redline of Default Protective Order
`
`1058
`1059
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`4
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`

`

`Joint Submission of Marked-Up Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`Pursuant to the Board’s December 3, 2021 Order (Paper 46), Petitioners
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc. (collectively
`
`“Samsung Petitioners”), Apple Inc., and Patent Owner, Neonode Smartphone LLC,
`
`hereby submit the joint proposed protective order appended below as Appendix A,
`
`and Exhibit 1059, 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.
`
`In addition, the joint protective order submitted by the parties adds a
`
`paragraph providing that persons with knowledge concerning confidential
`1
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`
`
`

`

`Joint Submission of Marked-Up Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`information marked “CONFIDENTIAL-PROTECTIVE ORDER MATERIAL”
`
`may have access to such material, regardless of their affiliation with a party to this
`
`proceeding or lack thereof. This provision is warranted due to the fact that
`
`Neonode has submitted declarations from four third party witnesses who have
`
`already been deposed in this proceeding, and in the event that one or more of the
`
`parties seeks to designate materials in this proceeding “CONFIDENTIAL-
`
`PROTECTIVE ORDER MATERIAL,” such witnesses (or possibly other third
`
`party witnesses) should be permitted access to such materials.
`
`Pursuant to the Board’s guidance in Paper 46, the Protective Order
`
`submitted herewith (1) retains the normal category of confidential information
`
`specified in the Default Protective Order, (2) adds a category for “SAMSUNG-
`
`NEONODE CONFIDENTIAL—APPLE ATTORNEY’S ONLY,” (3) defines the
`
`types of materials to be included in the “SAMSUNG-NEONODE
`
`CONFIDENTIAL—APPLE ATTORNEY’S ONLY” category, and (4) defines an
`
`additional category of persons who may access confidential information marked
`
`“CONFIDENTIAL-PROTECTIVE ORDER MATERIAL.” The Protective Order
`
`proposed herewith is also jointly submitted with Apple, Inc.
`
`
`
`2
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`

`

`Joint Submission of Marked-Up 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: December 17, 2021
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`/Tiffany C. Miller/
`W. Karl Renner, Reg., No. 41,265
`Tiffany C. Miller, Reg. No. 52,032
`David Holt, Reg. No. 65,161
`James M. Heintz, Reg. No. 41,828
`
`Attorneys for Petitioners
`
`
`/Philip J. Graves/
`Robert M. Asher, Reg., No. 30,445
`Philip J. Graves (pro hac vice)
`
`Attorneys for Patent Owner
`
`3
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`

`

`Joint Submission of Marked-Up Protective Order
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq., the undersigned certifies that
`
`on December 17, 2021, a complete and entire copy of this Joint Submission of
`
`Proposed Protective Order and Exhibit 1059 were provided via email to the
`
`Patent Owner as follows:
`
`Robert M. Asher
`Bruce D. Sunstein
`Timothy M. Murphy
`Arne Hans
`
` Phil J. Graves
`Greer N. Shaw
`Mark S. Carlson
`
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`philipg@hbsslaw.com
`greers@hbsslaw.com
`markc@hbsslaw.com
`sunsteinip@sunsteinlaw.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`1
`
`

`

`Appendix A
`Appendix A
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`

`

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`
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`The following Protective Order will govern the filing and treatment of confidential
`
`PROTECTIVE ORDER
`
`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 “CONFIDENTIAL-
`PROTECTIVE ORDER MATERIAL” or “SAMSUNG-NEONODE
`CONFIDENTIAL- APPLE ATTORNEYS’ EYES ONLY.”
`
`2.
`
`Samsung and Neonode Parties may designate as “SAMSUNG-
`
`NEONODE-CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY” for
`
`protection under this Order, in whole or in part, any document, information, or
`
`material that constitutes or includes, in whole or in part, confidential or proprietary
`
`information or trade secrets of the Party and shared between the Samsung and
`
`Neonode Parties or their predecessors in interest. 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.
`
`party in the 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.
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`

`
`
`3. Access
`information marked “CONFIDENTIAL-
`to confidential
`PROTECTIVE ORDER MATERIAL” is limited to the following individuals who
`have executed the acknowledgment appended to this order:
`(A) Parties. Persons who are owners of a patent involved in the proceeding
`and other persons who are named parties to the proceeding.
`(B) Party Representatives. Representatives of record for a party in
`the proceeding.
`Persons with Knowledge. Persons who, (i) participated or were
`(C)
`
`involved in the negotiations and process resulting in the preparation or
`
`drafting of the materials marked CONFIDENTIAL-PROTECTIVE ORDER
`
`MATERIAL, or (ii) in connection with their work or duties for a party, or
`
`any of their predecessors in interest, had access to the materials marked
`
`CONFIDENTIAL-PROTECTIVE ORDER MATERIAL.
`
`(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) In-house counsel. In-house counsel of a party.
`(F) 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.
`
`4. Employees (e.g., corporate officers), consultants, or other persons
`performing work for a party, other than those persons identified above in
`(d)(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.
`
`5. 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;
`
`
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`

`

`
`
`(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.
`
`Persons receiving confidential information shall use the following
`6.
`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 “CONFIDENTIAL-
`PROTECTIVE ORDER MATERIAL” or “SAMSUNG-NEONODE
`CONFIDENTIAL- APPLE ATTORNEYS’ EYES ONLY” and shall be
`produced in a manner that maintains its confidentiality.
`
`

`

`
`
`7. 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.
`
`(k) Standard Acknowledgement of Protective Order. The following form
`may be used to acknowledge a protective order and gain access to
`information covered by the protective order:
`
`
`
`

`

`[CAPTION]
`
`
`
`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.
`
`[Signature]
`
`
`
`
`
`
`i
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`