Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 52
`Entered: January 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 52
`Entered: January 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`I. INTRODUCTION
`
`Petitioner Google LLC (“Google”) filed a Petition (Paper 6, “Pet.”)
`for inter partes review of claims 1–7, 9, 12, 13, and 15–17 of U.S. Patent
`No. 8,095,879 B2 (Ex. 1001, “the ’879 patent”). Based on the Petition and
`preliminary filings, the Board instituted trial. (Paper 19). Patent Owner
`Neonode Smartphone LLC (“Neonode”) then filed a Patent Owner Response
`under seal (Paper 29, “PO Resp.”; public redacted version as Ex. 2060),
`Google filed a Reply to the Patent Owner Response (Paper 35, “Pet.
`Reply”), and Neonode filed a Sur-reply (Paper 44, “PO Sur-reply”).
`We held an oral hearing on October 17, 2022, and the transcript is
`entered on the record. Paper 50 (“Tr.”).
`This is a final written decision under 35 U.S.C. § 318(a) as to whether
`the claims challenged in the inter partes review are unpatentable. For the
`reasons below, we conclude that Google has not shown that any claims of
`the ’879 patent are unpatentable.
`
`II. BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`The parties identify the following as related matters: Neonode
`Smartphone LLC v. Apple Inc., No. 6:20-cv-00505 (W.D. Tex. filed June 8,
`2020); and Neonode Smartphone LLC v. Samsung Electronics Co., No. 6:20-
`cv-00507 (W.D. Tex. filed June 8, 2020). Pet. 106; Paper 3, 2.
`The Board has issued a previous final written decision addressing the
`’879 patent. See Samsung Electronics Co. v. Neonode Smartphone LLC,
`IPR2021-00144, Paper 59 (PTAB Dec. 15, 2022); Pet. 106, Paper 3, 2.
`
`2
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`B.
`
`THE ’879 PATENT (EX. 1001)
`
`The ’879 patent relates to a user interface on a mobile handheld
`computer device that has a touch-sensitive display screen divided into a
`menu area and a display area. See Ex. 1001, 1:6–9, code (57). The user
`interface is “specifically adapted to be used with a small computer unit
`where the size of the touch sensitive area is in the order of 2–3 inches” and
`the interface can “be operated by one hand.” Id. at 3:1–6.
`Figure 1 of the ’879 patent, reproduced below, illustrates such a user
`interface:
`
`
`Figure 1 depicts touch-sensitive area 1 on a mobile handheld device.
`Ex. 1001, 3:22–23, 3:51–53. It is divided into menu area 2 and display area
`3. Id. at 3:53–54. Menu area 2 is a narrow strip along the lower part of
`touch-sensitive area 1 that contains predefined functions 21 (a general
`application-dependent function), 22 (a keyboard), and 23 (a task and file
`manager). Id. at 4:1–6; see also id. at 2:7–10.
`Functions 21, 22, and 23 in menu area 2 “can be activated when the
`touch sensitive area detects a movement of an object with its starting point
`within the representation of the function on the menu area and with a
`
`
`
`
`3
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`direction from the menu area to the display area.” Ex. 1001, 1:65–2:5, 2:11–
`14. This method of activation is shown in Figure 2, reproduced below:
`
`
`Figure 2, above, illustrates a touch gesture by which a user may activate
`functions 21, 22, or 23 in area 2. See Ex. 1001, 3:24–25. This gesture begins
`when object 4 (a thumb as shown in Figure 2, but it could be any finger, a
`pen, or another pointing device, id. at 6:11–15) touches the display at point A
`within representation 21, 22, or 23, and moves in direction B away from
`menu area 2 into display area 3. Id. at 4:7–11.
`When a user activates the first function, display area 3 displays icons
`representing services or settings, depending on the current active application.
`Ex. 1001, 2:18–20. Figure 3, reproduced below, illustrates the touch screen
`after function 21 has been activated:
`
`
`
`
`4
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`Ex. 1001, 3:26. Figure 3, above, shows that after a user activates function 21
`with the gesture as illustrated in Figure 2, display area 3 displays icons 211–
`216, which each represent services or functions depending on the currently
`active application. Id. at 4:12–15. If, for example, the active application
`handles a picture, then the icons showing on display area 3 after a user
`activates the first function can include services such as “save to disk,” “send
`as SMS,” or “delete,” or settings such as “resolution,” “colour,” or
`“brightness.” Id. at 4:24–28.
`Analogously, selecting function 22 activates a keyboard, and selecting
`function 23 activates a library of available applications and files on the
`device. Ex. 1001, 4:36–38, 4:63–65, Figs. 5–6. If there is no currently active
`application, the icons may “represent services or settings of the operations
`system of the computer unit, such as background picture, clock alarm 215,
`users 213, help 211, etc.” Id. at 4:29–33.
`
`
`
`
`5
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`C. CHALLENGED CLAIMS AND GROUNDS
`
`Claim 1, the only independent claim, is as follows:
`1. A non-transitory computer readable medium storing a
`computer program with computer program code, which, when read
`by a mobile handheld computer unit, allows the computer to
`present a user interface for the mobile handheld computer unit, the
`user interface comprising:
`[a] a touch sensitive area in which a representation of a function
`is provided,
`wherein the representation consists of only one option for
`activating the function and
`wherein the function is activated by a multi-step operation
`comprising (i) an object touching the touch sensitive area
`at a location where the representation is provided and then
`(ii) the object gliding along the touch sensitive area away
`from the touched location,
`wherein the representation of the function is not relocated
`or duplicated during the gliding.
`
`[b]
`
`[c]
`
`[d]
`
`Ex. 1001, 6:45–59 (Google’s reference letters added).
`Google argues six grounds for inter partes review, as shown in the
`following table:
`
`
`
`
`
`6
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–5, 13, 15–17
`103(a)1
`Robertson, 2 Maddalozzo3
`6, 7, 9
`103(a)
`Robertson, Maddalozzo, Vayda4
`Robertson, Maddalozzo, Bedford-
`12
`103(a)
`Roberts5
`1, 4–6, 13, 15–17
`103(a)
`Tarpenning6
`2, 3, 7, 9
`103(a)
`Tarpenning, Vayda
`12
`103(a)
`Tarpenning, Bedford-Roberts
`
`Pet. 1–2.
`
`D. DECLARATORY TESTIMONY
`
`Google submits two declarations of Dr. Jacob O. Wobbrock as expert
`testimony. Exs. 1003, 1032; see also Ex. 1004 (curriculum vitae). Google
`also relies on a declarations of Rachel J. Watters (Ex. 1018) and Kelley M.
`Hayes Greenhill (Ex. 1019) as to Robertson’s public availability.
`Neonode submits a declaration of Dr. Craig Rosenberg. Ex. 2019; see
`also Ex. 2002 (curriculum vitae). Neonode also submits declarations of
`
`
` 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act,
`Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
`(effective Mar. 16, 2013). The ’879 patent issued from an application filed
`on December 10, 2002, which is before the effective date of this amendment
`to section 103. See Ex. 1001, code (22).
`2 George G. Robertson et al., Buttons as First Class Objects on an
`X Desktop, UIST: Proceedings of the ACM Symposium on User Interface
`Software and Technology: Hilton Head, South Carolina, USA, 35–44 (Nov.
`11–13, 1991) (Ex. 1005).
`3 Maddalozzo et al., US 7,768,501 B1, issued Aug. 3, 2010 (Ex. 1006).
`4 Vayda et al., US 5,745,717, issued Apr. 28, 1998 (Ex. 1007).
`5 Bedford-Roberts, US 5,870,092, issued Feb. 9, 1999 (Ex. 1008).
`6 Tarpenning et al., US 6,181,344 B1, issued Jan. 30, 2001 (Ex. 1009).
`
`7
`
`
` 1
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`Joseph Shain (Ex. 2008), Ulf Mårtensson (Ex. 2054), Per Bystedt (Ex. 2055
`under seal; public redacted copy as Ex. 2061), and Marcus Bäcklund
`(Ex. 2056) relating to alleged objective indicia of non-obviousness and the
`early development of touch-screen phones that, according to Neonode,
`embody the challenged claims.
`
`III. GROUNDS OF THE PETITION
`
`For the reasons below, we determine that Google has not shown, by a
`preponderance of the evidence, that claims 1–7, 9, 12, 13, and 15–17 of the
`’879 patent are unpatentable under the grounds of the Petition. Before
`analyzing these grounds in detail, we address two matters that will underlie
`our analysis: the level of ordinary skill in the art and the construction we will
`apply to the claim terms.
`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the pertinent art at the time of the
`invention is a factor in how we construe patent claims. See Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). It is also one of
`the factors we consider when determining whether a patent claim would
`have been obvious over the prior art. See Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`To assess the level of ordinary skill, we construct a hypothetical
`“person of ordinary skill in the art,” from whose vantage point we assess
`obviousness and claim interpretation. See In re Rouffet, 149 F.3d 1350, 1357
`(Fed. Cir. 1998). This legal construct “presumes that all prior art references
`
`
`
`
`8
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`in the field of the invention are available to this hypothetical skilled artisan.”
`Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1993)).
`For Google, Dr. Wobbrock testifies that a person of ordinary skill in
`the art at the time of the invention, would have had “at least a bachelor’s
`degree in Computer Science, Human-Computer Interaction, Symbolic
`Systems, or related engineering disciplines, and at least two years of
`experience designing and programming graphical user interfaces,” but that
`“[r]elevant work experience can substitute for formal education and
`advanced degree studies could substitute for work experience.” Ex. 1003
`¶ 49.
`
`Testifying for Neonode, Dr. Rosenberg states that for his declaration,
`he “will apply the same definition of the level of skill of a [person of
`ordinary skill in the art]” as Dr. Wobbrock. Ex. 2019 ¶ 27.
`We find Dr. Wobbrock’s uncontested articulation to be reasonable in
`light of the subject matter involved in the ’879 patent and the asserted prior
`art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses
`technical problems including “to provide a user-friendly interface . . . on a
`small handheld computer unit”). Thus, we adopt it for our decision.
`
`B. CLAIM CONSTRUCTION
`
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). This
`generally includes “construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. The ordinary
`
`
`
`
`9
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`and customary meaning of a claim term “is its meaning to the ordinary
`artisan after reading the entire patent,” and “as of the effective filing date of
`the patent application.” Phillips, 415 F.3d at 1313, 1321. There are only two
`circumstances in which a construction departs from the ordinary and
`customary meaning: “1) when a patentee sets out a definition and acts as
`[their] own lexicographer, or 2) when the patentee disavows the full scope of
`a claim term either in the specification or during prosecution.” Thorner v.
`Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Any
`such special meaning of a term “must be sufficiently clear in the
`specification that any departure from common usage would be so understood
`by a person of experience in the field of the invention.” Multiform
`Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
`To construe the claim terms, “we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v.
`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006).
`Google does not propose any explicit claim constructions in its
`Petition. See Pet. 4. Neonode does not propose any explicit constructions
`either, but in its Response, Neonode raises a number of claim construction
`arguments regarding the term gliding . . . away as it appears in limitation 1c,
`to which Google responds in its Reply. See PO Resp. 31–50, 66–69; Pet.
`Reply 7–12, 19–21; see also PO Sur-reply 1–10, 19–21. We do not need to
`construe this term explicitly for our decision, and to the extent we need to
`interpret this or any other terms, we address the terms below in the context
`of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms
`
`
`
`
`10
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`C. GROUNDS BASED ON ROBERTSON
`
`In the first ground of the Petition, Google argues that claims 1–5, 13,
`and 15–17 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Robertson in view of Maddalozzo. Pet. 5–64. For this ground, we focus on
`Google’s challenge to sole independent claim 1 and particularly limitation
`1c (Pet. 25–29), after which we address the remaining claims and the
`remaining grounds.
`A claim is unpatentable under § 103(a) for obviousness if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). When a ground in a petition is based on a combination of references,
`we consider “whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`We base our obviousness inquiry on factual considerations including
`(1) the scope and content of the prior art, (2) any differences between the
`claimed subject matter and the prior art, (3) the level of skill in the art, and
`(4) any objective indicia of obviousness or non-obviousness that may be in
`evidence. See Graham, 383 U.S. at 17–18.
`
`
`
`
`11
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`Considering these factors, we determine for the reasons below that
`Google has not shown, by a preponderance of the evidence, that claim 1 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Robertson in view of
`Maddalozzo.
`
`1.
`
`Overview of Robertson (Ex. 1005)
`
`Robertson describes a high-level user interface toolkit, called
`“XButtons,” which supports on-screen buttons as first-class objects on an
`X Window system desktop. Ex. 1005, 35. According to Robertson, XButtons
`typically appear as small rectangular screen objects, usually have some text
`that indicates what their action is, and may include a field for editable text.
`Id. at 38. A group of XButtons is shown in Figure 1, which we reproduce
`below.
`
`
`
`
`12
`
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`Figure 1, above, illustrates a sample set of XButtons including one for a
`“Phone” function. Ex. 1005, 38–39. XButtons can have multiple associated
`actions, each selected by simple mouse or pen gestures such as “flick left,”
`“flick right,” “flick up,” “flick down,” “click,” “rubout,” “check,” or
`“insert.” Id. at 39. For example, “[t]he ‘Phone’ button will let you type the
`name of someone, then pop up a window with their phone number (by
`clicking) or dial the number (with the flick right gesture).” Id.
`“If the user is unfamiliar with the action of a particular button, a menu
`can be popped up to reveal which gestures are supported (and what they
`do),” using a particular gesture. Ex. 1005, 39. The menu associated with the
`“Phone” XButton is shown in Figure 2, which we reproduce below.
`
`
`Figure 2, above, illustrates a sample menu for an XButton. Ex. 1005, 39–40.
`The menu shows all potential user manipulations of the XButton; for
`
`13
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`example, it shows that the “Click” gesture is associated with “Get phone #”
`and the “Flick Right” gesture is associated with “Dial phone #.” Id.
`XButtons may also have associated with them a button editor, as
`shown in Figure 3, which we reproduce below.
`
`
`Figure 3 shows a button editor for the “Phone” XButton whose menu is
`shown in Figure 2. Ex. 1005, 40–41. The button editor is a structured
`property-sheet editor designed specifically for editing an XButton. Id. at 40.
`The editor fields at the top specify the appearance of the button. Id. The
`
`14
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`middle of the editor specifies the action language, the various actions, and
`the text to appear in the menu for each action. Id. Toward the bottom of the
`editor are fields (“Attribute” and “Value”) that allow the user to view and
`replace user-defined properties. Id.
`
`2.
`
`Limitation 1c
`
`Because we find that Google has not shown that the combination of
`Robertson and Maddalozzo teaches or suggests limitation 1c, we need only
`address that limitation in our decision. Moreover, because Google relies only
`on Robertson for limitation 1c, we need not address Google’s arguments
`concerning Maddalozzo. See Pet. 25–29 (not referring to Maddalozzo in the
`context of limitation 1c). 7
`Limitation 1c recites “wherein the function is activated by a multi-step
`operation comprising (i) an object touching the touch sensitive area at a
`location where the representation is provided and then (ii) the object gliding
`along the touch sensitive area away from the touched location.” Ex. 1001,
`6:52–57. An example of this operation is the gesture illustrated in Figure 2
`of the ’879 patent, which we discuss above. See supra Section II.B.
`Google contends that Robertson discloses this recited multi-step
`operation by disclosing that a user can activate a “dialphone” function to call
`a phone number by “placing a pen on the phone button, then sliding the pen
`to the right along the touch-sensitive interface to perform a ‘flick right’
`gesture.” Pet. 25 (citing Ex. 1005, 38–39; Ex. 1003 ¶ 107). Google contends
`
`
`
` 7
`
` For claim 1, Google relies on Maddalozzo solely for teaching the
`preamble. See Pet. 12–19.
`
`
`
`15
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`that, according to Robertson, “‘gesture[s] must start in an XButton,’ but ‘can
`move outside the XButton’ while performed.” Id. (alteration in original)
`(quoting Ex. 1005, 43) (citing Ex. 1005, 39; Ex. 1003 ¶ 106). Thus, Google
`depicts this operation with an annotated version of Robertson’s Figure 1,
`which we reproduce below:
`
`
`
`Pet. 26. In the above figure, Google annotates Robertson’s Figure 1 by
`highlighting the “Phone” XButton (in which has been entered a particular
`phone number) in blue and showing an orange pen and a path it would
`allegedly make starting on the phone number and ending outside the
`XButton. See Pet. 25–26.
`Alternatively, Google contends that Robertson discloses activating an
`“xbedit” function to open the “Phone” button’s button editor by “touching a
`pen (or finger) to the phone button, then sliding the pen away from the initial
`touched location in the shape of a caret to perform an ‘Insert gesture.’”
`
`16
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`Pet. 26–27 (citing Ex. 1005, 39–40; Ex. 1003 ¶ 108). Google depicts this
`operation with another annotated version of Robertson’s Figure 1, which we
`reproduce below:
`
`
`Pet. 27. Shown above is Robertson’s Figure 1 that Google has annotated to
`highlight the “Phone” XButton (in which has been entered a particular phone
`number) in blue and showing an orange pen and a path it would allegedly
`make starting on the phone number, moving diagonally upward and to the
`right outside the XButton, and then moving diagonally downward and to the
`right. See id.
`In its Response, Neonode contends that Google has failed to support
`its contention that Robertson’s “flick-right” and “insert” gestures reflect the
`stylus performing an operation that comprises “gliding . . . away.” See PO
`Resp. 31. First, Neonode contends that based on the prosecution history and
`
`
`
`
`17
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`extrinsic evidence, the term gliding means more than simply any movement
`along the touch sensitive area. See id. 32–35.
`In particular, Neonode notes that during prosecution of the ’879
`patent, the original language describing the gesture in limitation 1c was
`“moving in a direction from a starting point that is the representation [of a
`function] . . . to said display area.” PO Resp. 33 (alterations in original)
`(quoting Ex. 1002, 201). Neonode argues that, after the Examiner rejected
`claims with the above language, “[i]n further prosecution and in explaining
`the gesture the Applicant sought to claim,” the applicant encouraged the
`Examiner to watch a video (Ex. 2020) demonstrating the gesture on
`Neonode’s N2 mobile device. Id. (citing Ex. 1002, 214–15). Neonode
`contends that this video depicts a gesture that is “similar to what today’s
`systems refer to as a ‘swipe’ gesture, where, e.g., the thumb is placed on a
`representation of a function (menu item with an arrow) and through a
`swiping motion, the menu screen opens.” Id. at 32–34 (citing Ex. 2020, time
`codes 00:26–00:27).
`Then, according to Neonode, “[i]n the subsequent office action, the
`Examiner acknowledged the ‘swiping’ gesture of the claims, but recognized
`that the then drafted claims[] simply required ‘moving’ the object, and were
`thus too broad to limit the claims to a swipe/glide gesture.” PO Resp. 34
`(citing Ex. 1002, 258 (“[T]he Examiner feels that the limitations, as claimed,
`. . . are still too broad to suggest without research what was shown in the
`video demonstration.”)). Then, Neonode argues that after an examiner
`interview “to properly claim the present invention,” the applicant amended
`the claim to its current form, “gliding along the touch sensitive area away
`from the location.” Id. (quoting Ex. 1002, 334; then quoting id. at 317–18).
`
`
`
`
`18
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`Thus, Neonode contends that a person of ordinary skill in the art
`would have understood from the prosecution history that the word gliding as
`recited in limitation 1c carries a more specific meaning than mere
`movement. PO Resp. 35 (citing Ajinomoto Co. v. ITC, 932 F.3d 1342, 1351
`(Fed. Cir. 2019)).
`Next, Neonode argues that Google has failed to show that a person of
`ordinary skill in the art would have understood Robertson’s “flick” gesture
`to comprise “gliding.” PO Resp. 35. Neonode first points to dictionary
`definitions in which the word flick denotes a sharp or jerky motion, whereas
`the word glide denotes a smooth, continuous motion. Id. at 35–38 (citing
`Exs. 2049, 2052, 2050, 2057; Ex. 2019 ¶¶ 78–79). Neonode also points to
`more recent developer guidelines to show that leading smart phone
`developers Apple and Google have distinguished between “flick” and
`“swipe” gestures. Id. at 39–40 (citing Ex. 2022, 4; Ex. 2023, 6; Ex. 2029, 2;
`Ex. 2019 ¶¶ 80–81). According to Dr. Rosenberg, in Google’s Android
`operating system, a “flick” gesture simulates a fast spinning motion, and in
`later Android releases, the gesture “creates a momentum effect where the
`scroller initially moves at a given velocity, and gradually slows down,”
`whereas “a ‘swipe’ gesture is used to close an application.” Ex. 2019 ¶¶ 82–
`83 (citing Ex. 2025, 21; Ex. 2026, 5; Ex. 2027, 8 (calling the gesture
`“fling”); Ex. 2028, 1).
`Neonode argues that the difference between “glide” (“swipe”) and
`“flick” gestures is analogous to the difference between “walking and
`running,” which are distinct movements. PO Resp. 41 (citing Ex. 2019 ¶ 84).
`In the context of operating a touchscreen with a pen on a 1991 desktop
`(allegedly consistent with how the term is used today), Dr. Rosenberg
`
`
`
`
`19
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`testifies that “[i]n a flick gesture, the pen would touch the screen, but only
`moves on the screen for a very short distance and is quickly lifted from the
`screen in a ‘jerky’ motion.” Ex. 2019 ¶¶ 85–86.
`Thus, Neonode disagrees with how Google depicts a “flick right”
`gesture in its annotated version of Robertson’s Figure 1, reproduced above.
`PO Resp. 42. According to Neonode, neither Google nor Dr. Wobbrock have
`explained why the gesture would have been a several-inches-long
`continuous movement, as depicted, which does not reflect the plain meaning
`of flick as a “short, jerky motion.” Id. at 42–43. Although Neonode
`acknowledges that Robertson’s system is capable, in general, of recognizing
`gestures that begin within an XButton and extend outside of it, Neonode
`disagrees that this would necessarily be the case for the “flick right” gesture,
`unless the gesture began close to the edge of the XButton. Id. at 43–44
`(citing Ex. 2019 ¶ 89).
`Dr. Rosenberg also states that Robertson “discloses that a drag-and-
`drop operation can be performed on its XButtons,” so “[i]f Robertson’s
`‘flick’ was really a glide,” then if the user performed a gesture as depicted in
`Google’s annotated version of Figure 1, “Robertson’s system would not
`know whether the movement of a mouse/pen was a drag-and-drop operation
`or a glide gesture.” Ex. 2019 ¶ 90 (citing Ex. 1005, 39, 40, 42). On the other
`hand, “a ‘flick’ gesture is readily recognizable due to its higher speed and
`shorter distance—which, as Robertson indicates, is not intended to (even if it
`‘can’) go outside of the XButton itself.” Id.
`Neonode also disputes that a person of ordinary skill in the art would
`have interpreted Robertson’s “insert” gesture—which Robertson describes
`as “like an editor’s caret”—to comprise a “gliding . . . away” movement.
`
`
`
`
`20
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`PO Resp. 45 (quoting Ex. 1005, 40). According to Neonode, “[a]n editor’s
`caret—‘^’—has a sharp angle and is usually smaller than the text.” Id. at 47–
`48 (citing Ex. 2019 ¶ 99). According to Dr. Rosenberg, forming this gesture
`would involve “two jerky movements connected together,” or “drawing a
`first sharp, short line, and then sharply changing direction and drawing a
`second sharp, short line.” Ex. 2019 ¶ 100. Thus, Neonode disagrees with
`Google’s depiction of two large lines that extend outside the XButton and
`even over neighboring XButtons. PO Resp. 49–50 (citing Ex. 2019 ¶¶ 101–
`102). Rather, according to Dr. Rosenberg, Robertson’s “insert” gesture
`would more closely resemble the depiction shown in Neonode’s own
`annotated version of Figure 1, which we reproduce below:
`
`Ex. 2019 ¶ 102. Neonode’s annotated version of Robertson’s Figure 1
`depicts an orange caret roughly on the same scale as the text that would
`appear in the “Phone” XButton, and a pen “with the correct approximate
`
`
`
`
`
`
`21
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`scale of the size of the pen compared to a typical desktop of 1991.” PO
`Resp. 49 (citing Ex. 2019 ¶¶ 101–102).
`In its Reply, Google contends that we should decline to construe
`gliding . . . away as Neonode contends because doing so would render claim
`1 unpatentable for lack of written description, because the original disclosure
`of the ’879 patent only described general movements, not specifically a
`gliding gesture. Pet. Reply 7–8 (citing Ruckus Wireless, Inc. v. Innovative
`Wireless Sols., LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016); Novozymes A/S v.
`DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1346 (Fed. Cir. 2013); D
`Three Enters., LLC v. SunModo Corp., 890 F.3d 1042, 1050–51 (Fed. Cir.
`2018)).
`Neonode counters in its Sur-reply that the “gliding . . . away”
`language in limitation 1c finds support in Figure 2 of the original disclosure
`leading to the ’879 patent, which depicts a gliding motion and not a flick.
`PO Sur-reply 7–8 (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
`1331, 1346 (Fed. Cir. 2016)). But in any event, Neonode argues that
`construing terms to preserve validity is only “a last resort if the claim is ‘still
`ambiguous’ after ‘applying all the available tools of claim construction.’” Id.
`at 7 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed.
`Cir. 2004)). Neonode contends that this is not the case here, because “the
`prosecution history clearly and unambiguously informs a [person of ordinary
`skill in the art] that the claimed ‘gliding . . . away’ is distinct from ‘moving-
`from-to.’” Id.
`Next, Google contends that on cross-examination, Dr. Rosenberg
`could not delineate the boundary between a “flick” and a “glide,” and
`admitted that “both flick and glide gestures start at a touched location and
`
`
`
`
`22
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`move away from the touched location while continuing to touch the screen”
`and “that the distinction is arbitrary.” Pet. Reply 8, 9–10, 11 (citing
`Ex. 1031, 27:15–29:6, 31:15–32:12, 34:24–35:17; Ex. 1001, 2:61–67, 5:33–
`35). Google also argues that “Neonode’s citations to general-purpose
`dictionaries [or development guides] are unavailing because they are either
`after-arising or improperly contradict the intrinsic record, which describes
`only ‘movement’ without regard to speed or distance.” Id. at 10 (footnote
`omitted) (citing Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815
`F.3d 1314, 1320–21 (Fed. Cir. 2016); Profectus Tech. LLC v. Huawei Techs.
`Co., 823 F.3d 1375, 1380 (Fed. Cir. 2016); Seabed Geosolutions (US) Inc. v.
`Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021)).
`Neonode disagrees that Dr. Rosenberg admitted that the distinction
`between “flick” and “glide” is arbitrary; according to Neonode, he merely
`testified “that ‘one number’ would not suffice to distinguish between a ‘flick’
`and a ‘glide’ since it would depend on various factors such as screen size,
`resolution of the screen, [and] whether a stylus or finger is used.” PO Sur-
`reply 3 (citing Ex. 1031, 28:16–29:6). Neonode contends that this does not
`make the distinction arbitrary, and that Google has been able to distinguish
`between “flick” and “swipe” gestures in its own documentation for the
`Android operating system. Id. (citing PO Resp. 40–41).
`Neonode also contends that Google’s arguments in its Reply that
`Robertson’s “flick” falls within the scope of the recited “gliding . . . away”
`gesture are conclusory and untethered to any further testimony, including by
`Dr. Wobbrock. PO Sur-reply 1–2. And according to Neonode, while Google
`criticizes Neonode’s dictionary definitions, Google provides none of its own.
`Id. at 2. Neonode disagrees that its dictionary evidence is irrelevant because
`
`
`
`
`23
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`it is “after-arising,” because Neonode provides dictionary definitions from
`the early 1990s as well as later definitions to show consistency over time. Id.
`(citing Exs. 2049, 2052, 2050, 2057). As to the Apple and Google
`development guides, Neonode acknowledges that they are from after 2002,
`the earliest priority date of the ’879 patent, but contends that Google
`“presents no evidence for the insinuation that these terms were used
`differently in 2002.” Id. at 3.
`Next, Google contends that (1) during prosecution, the applicant
`“never distinguished ‘gliding’ from other gestures or movement generally,
`and in fact equated other gestures with a glide,” and “[t]he examiner also
`continued to search ‘flick as relevant after the amendment,” Pet. Reply 8
`(citing Ex. 1002, 381, 482, 496–497, 585); and (2) “Neonode’s citation
`[during prosecution] to its after-arising N2 advertisement . . . is not relevant
`because it was used to distinguish ‘the representation of the function is not
`relocated or duplicated during the gliding’ limitation [1d], not between
`‘gliding’ and another movement type,” id. at
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
