GOOGLE LLC,
`Petitioner,
`
`Vv.
`
`Case No. IPR2021-01041
`U.S. Patent No. 8,095,879
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`Petitioner,
`
`Vv.
`
`Case No. IPR2021-01041
`U.S. Patent No. 8,095,879
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`US. Patent 8,095,879
`IPR2021-01041
`
`Pursuant to 35 U.S.C. §§ 141(c), 142, and 319 and 37 C.F.R. § 90.2(a),
`
`Petitioner Google LLC (“Google”or “Petitioner”) hereby provides notice of appeal
`
`to the United States Court ofAppeals for the Federal Circuit from the Final Written
`
`Decision of the Patent Trial and Appeal Board (“Board”) entered on January 11,
`
`2023 (Paper No. 52) (“Final Written Decision”) and from all underlying orders,
`
`decisions, rulings, and opinionsrelating to the interpartes review ofU.S. Patent No.
`
`8,095,879 (879 patent”) in Case No. IPR2021-01041. This Notice is timely under
`
`37 C.F.R. § 90.3(a)(1), having been filed no later than sixty-three (63) days after
`
`issuance of the Final Written Decision.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner states that the issues
`
`on appeal include, but are not limited to:
`
`e
`
`the Board’s determinations that the combination of George Robertson,etal.,
`
`“Buttons as First Class Objects on an X Desktop” (“Robertson”) and U.S.
`
`Patent No. 7,768,501 (“Maddalozzo”) does not render obvious claims 1-5, 13,
`
`and 15-17 of the ’879 patent and that such claims are not unpatentable;
`
`e
`
`the Board’s determinations that the combination of Robertson, Maddalozzo
`
`and U.S. Patent No. 5,745,717 (“Vayda”) does not render obvious claims 6,
`
`7, and 9 ofthe ?879 patent and that such claimsare not unpatentable;
`
`
`
`US. Patent 8,095,879
`IPR2021-01041
`
`e
`
`the Board’s determinations that the combination of Robertson, Maddalozzo,
`
`and U.S. Patent No. 5,870,092 (“Bedford-Roberts”) does not render obvious
`
`claims 12 of the ’879 patent and that such claimsare not unpatentable;
`
`e
`
`the Board’s determinations that U.S. Patent No. 6,181,344 (“Tarpenning’)
`
`does not render obvious claims 1, 4-6, 13, and 15-17 of the ’879 patent and
`
`that such claims are not unpatentable;
`
`e
`
`the Board’s determinations that the combination of Tarpenning and Vayda
`
`does not render obvious claims 2, 3, 7, 9 of the ’879 patent and that such
`
`claims are not unpatentable;
`
`e
`
`the Board’s determinations that the combination of Tarpenning and Bedford-
`
`Roberts does not render obvious claims 12 of the ’879 patent and that such
`
`claims are not unpatentable;
`
`e
`
`the Board’s construction ofthe terms “gliding” and “gliding .
`
`.
`
`. away” as used
`
`in the ’879 patent;
`
`e
`
`the Board’s factual findings, conclusions of law, or other determinations
`
`supporting or related to the foregoing issues; and
`
`e
`
`all other issues decided adversely to Petitioner in any orders, decisions,
`
`rulings, or opinions underlying or supporting the Final Written Decision.
`
`A copy ofthe Final Written Decisionis attached to this Notice.
`
`
`
`U.S. Patent 8,095,879
`IPR2021-01041
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a)(1), this Notice is being
`
`filed with the Director ofthe United States Patent and Trademark Office, and a copy
`
`of this Notice is being concurrently filed with the Board. In addition, a copy of this
`
`Notice and the required docketing fees are being filed with the Clerk’s Office for the
`
`United States Court of Appeals for the Federal Circuit via CM/ECFin accordance
`
`with 37 C.F.R. § 90.2(a)(2), Federal Rule of Appellate Procedure 15, and Federal
`
`Circuit Rule 15.
`
`Date: March 13, 2023
`
`Respectfully submitted,
`
`/Erika H. Arner/
`Erika H. Arner. Lead Counsel
`Reg. No. 57,540
`
`°
`
`
`
`US. Patent 8,095,879
`IPR2021-01041
`
`CERTIFICATE OF SERVICE AND FILING
`
`I hereby certify that on March 13, 2023, in addition to being filed and served
`
`electronically through the Patent Trial and Appeal Board’s P-TACTSSystem,this
`
`PETITIONER’S NOTICE OF APPEAL was filed with and served on the
`
`Director of the United States Patent and Trademark Office by hand delivery at the
`
`following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`.
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
`
`I also hereby certify that on March 13, 2023, this PETITIONER’S
`
`NOTICE OF APPEAL andthe requisite docketing fees were filed with the
`
`Clerk’s Office of the United States Court of Appeals for the Federal Circuit via
`
`CM/ECF.
`
`I further hereby certify that on March 13, 2023, this PETITIONER’S
`
`NOTICE OF APPEAL was servedby electronic mail on the following counsel
`
`for Patent Owner:
`
`
`
`US. Patent 8,095,879
`IPR2021-01041
`
`Parham Hendifar
`hendifar@lowensteinweatherwax.com
`
`Philip J. Graves
`philipg@hbsslaw.com
`
`Hagens Berman Sobol Shapiro
`LLP
`301 North Lake Avenue, Suite
`920
`Pasadena, CA
`
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`Nathan Lowenstein
`lowenstein@lowensteinweatherwax.com
`
`Patrick Maloney
`maloney@lowensteinweatherwax.com
`
`Vinson Lin
`lin@lowensteinweatherwax.com
`
`Neonode_IPRs@LowensteinWeatherwax.com
`
`Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`
`Dated: March 13, 2023
`
`By:
`
`/Daniel E. Doku/
`Daniel E. Doku
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`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,AdministrativePatentJudges.
`
`OGDEN,Administrative PatentJudge.
`
`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 interpartes review ofclaims 1-7, 9, 12, 13, and 15—17 ofU.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”) thenfiled a Patent Owner Response
`underseal (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”).
`Weheld an oral hearing on October 17, 2022,andthetranscriptis
`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 challengedin the interpartes review are unpatentable. For the
`reasons below, we conclude that Google has not shownthatany claims of
`
`the °879 patent are unpatentable.
`
`Il. BACKGROUND
`
`A.
`
`RELATED PROCEEDINGS
`
`Theparties 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. SamsungElectronics Co., No. 6:20-
`cv-00507 (W.D.Tex. filed June 8, 2020). Pet. 106; Paper3, 2.
`The Boardhasissued a previousfinal written decision addressing the
`’879 patent. See SamsungElectronics Co. v. Neonode Smartphone LLC,
`
`IPR2021-00144, Paper59 (PTAB Dec. 15, 2022); Pet. 106, Paper3, 2.
`
`2
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`B.
`
` THE’879 PATENT (Ex.1001)
`
`The ’879 patentrelates to a user interface on a mobile handheld
`computerdevice 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
`
`interfaceis “specifically adapted to be used with a small computerunit
`wherethe size ofthe touch sensitive area is in the order of 2—3 inches” and
`
`the interface can “be operated by one hand.” /d. at 3:1-6.
`Figure 1 ofthe ’879 patent, reproducedbelow,illustrates such a user
`
`interface:
`
`3 i
`
`Fig. 1.
`Figure 1 depicts touch-sensitive area 1 on a mobile handheld device.
`Ex. 1001, 3:22—23, 3:51—53. It is divided into menuarea 2 and display area
`
`3. Id. at 3:53-54. Menuarea2 is a narrow strip along the lower part of
`
`touch-sensitive area 1 that contains predefined functions 21 (a general
`application-dependentfunction), 22 (a keyboard), and 23 (a task andfile
`
`manager).Id. at 4:1-6; see also id. at 2:7-10.
`Functions 21, 22, and 23 in menuarea 2 “can be activated when the
`
`touch sensitive area detects a movementof an object with its starting point
`
`within the representation ofthe function on the menuarea and with a
`
`3
`
`
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`IPR2021-01041
`Patent 8,095,879 B2
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`direction from the menuareato the display area.” Ex. 1001, 1:65—2:5, 2:11—
`
`14. This methodof activation is shownin Figure 2, reproduced below:
`
` 7
`
`3 Le2
`
`Fig. 2.
`Figure 2, above,illustrates a touch gesture by which a user mayactivate
`functions 21, 22, or 23 in area 2. See Ex. 1001, 3:24—25. This gesture begins
`whenobject 4 (a thumb as shownin Figure 2,butit could be anyfinger, a
`pen, or another pointing device, id. at 6:11—15) touches the display at point A
`within representation 21, 22, or 23, and movesin direction B away from
`menuarea 2 into display area 3. /d. at 4:7—11.
`
`Whena useractivatesthe 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:
`
`
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`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`21
`
`Fig. 3.
`
`Ex. 1001, 3:26. Figure 3, above, showsthat after a user activates function 21
`with the gestureasillustrated in Figure 2, display area 3 displays icons 211—
`216, which each represent services or functions depending onthe currently
`active application. /d. 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 thefirst function can include services such as “saveto disk,” “send
`99 ce
`
`as SMS,”or “delete,” or settings such as “resolution,”
`
`“colour,” or
`
`“brightness.” Id. at 4:24-28.
`Analogously, selecting function 22 activates a keyboard, andselecting
`function 23 activatesa library of available applications andfiles 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 servicesor settings ofthe operations
`system ofthe computerunit, such as backgroundpicture, clock alarm 215,
`users 213, help 211, etc.” Id. at 4:29-33.
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`C.
`
`CHALLENGED CLAIMS AND GROUNDS
`
`Claim 1, the only independentclaim,is as follows:
`
`1. Anon-transitory computer readable medium storing a
`computer program with computer program code, which, when read
`by a mobile handheld computerunit, allows the computerto
`present a userinterface for the mobile handheld computerunit, the
`userinterface comprising:
`[a]
`touch sensitive area in which a representation ofa function
`is provided,
`wherein the representation consists of only one option for
`activating the function and
`
`[b]
`
`[c]
`
`[d]
`
`wherein the function is activated by a multi-step operation
`comprising (i) an object touching the touch sensitive area
`at a location wherethe representation is provided and then
`(ii) the object gliding along the touchsensitive area away
`from the touchedlocation,
`wherein the representation ofthe function is not relocated
`or duplicated during the gliding.
`
`Ex. 1001, 6:45—59 (Google’s referenceletters added).
`
`Google argues six grounds for interpartes review, as shownin the
`
`following table:
`
`
`
`
`
`
`Claim(s) Challenged| 35 U.S.C. §|Reference(s)/Basis
`
`
`1-5, 13, 15-17
`103(a)!_—_|
`Robertson,” Maddalozzo?
`103(a)
`Robertson, Maddalozzo, Vayda‘
`Robertson, Maddalozzo, Bedford-
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`
`
`10340
`
`1, 4-6, 13, 15-17
`2, 3, 7,9
`
`[__103(a)
`103(a)
`
`
`
`Tarpenning, Vayda
`Tarpenning, Bedford-Roberts
`
`
`
`
`
`
`
`Pet. 1-2.
`
`D.
`
`DECLARATORY TESTIMONY
`
`Google submits two declarations ofDr. Jacob O. Wobbrockas 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). Neonodealso submits declarations of
`
`135 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 patentissued from an application filed
`on December 10, 2002, which is before the effective date ofthis amendment
`to section 103. See Ex. 1001, code (22).
`2 George G. Robertsonet al, Buttons as First Class Objects on an
`XDesktop, UIST: Proceedings ofthe ACM Symposium on UserInterface
`Software and Technology:Hilton Head, South Carolina, USA, 35-44 (Nov.
`11-13, 1991) (Ex. 1005).
`3 Maddalozzoet 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 Tarpenningetal., US 6,181,344 B1, issued Jan. 30, 2001 (Ex. 1009).
`
`7
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`Joseph Shain (Ex. 2008), Ulf Martensson (Ex. 2054), Per Bystedt (Ex. 2055
`
`under seal; public redacted copy as Ex. 2061), and Marcus Backlund
`
`(Ex. 2056) relating to alleged objective indicia ofnon-obviousness and the
`
`early development oftouch-screen phonesthat, accordingto Neonode,
`embodythe challenged claims.
`
`Ill. GROUNDSOF THE PETITION
`
`For the reasons below, we determine that Google has not shown, by a
`preponderanceofthe evidence, that claims 1—7, 9, 12, 13, and 15—17 ofthe
`
`°879 patent are unpatentable underthe groundsofthe Petition. Before
`
`analyzing these groundsin detail, we address two mattersthat will underlie
`
`ouranalysis:the level of ordinary skill in the art and the construction wewill
`
`applyto the claim terms.
`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`Thelevelof ordinary skill in the pertinentart at the time ofthe
`
`invention is a factor in how weconstruepatent 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 obviousoverthe prior art. See Graham v. John Deere Co., 383
`
`US. 1, 17-18 (1966).
`
`To assessthe level of ordinary skill, we construct a hypothetical
`“personofordinary skill in the art,” from whosevantage point we assess
`obviousness and claim interpretation. See Inre Rouffet, 149 F.3d 1350, 1357
`(Fed. Cir. 1998). This legal construct “presumesthat all prior art references
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`in the field ofthe invention are available to this hypothetical skilled artisan.”
`
`Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1993)).
`For Google, Dr. Wobbrocktestifies 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-ComputerInteraction, Symbolic
`Systems, or related engineering disciplines, and at least two years of
`experience designing and programming graphicaluserinterfaces,” but that
`“rJelevant work experience can substitute for formal education and
`advanceddegree studies could substitute for work experience.” Ex. 1003
`
`7 49.
`
`Testifying for Neonode, Dr. Rosenbergstates that for his declaration,
`he “will apply the samedefinition ofthe level of skill of a [person of
`
`ordinary skill in the art}” as Dr. Wobbrock. Ex. 2019 { 27.
`
`Wefind Dr. Wobbrock’s uncontested articulation to be reasonablein
`
`light ofthe subject matter involved in the ’879 patentandthe assertedprior
`art. See, e.g., Ex. 1001, 1:49-61 (stating that the ’879 patent addresses
`technical problemsincluding “to provide a user-friendly interface. ..ona
`
`small handheld computer unit”). Thus, we adoptit for our decision.
`
`B.
`
`CLAIM CONSTRUCTION
`
`In an interpartes 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 accordancewith the ordinary and
`customary meaning of such claim as understoodby one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Jd. The ordinary
`
`
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`Patent 8,095,879 B2
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`and customary meaning ofa claim term “‘is its meaning to the ordinary
`
`artisan after reading the entire patent,” and “asofthe effective filing date of
`the patentapplication.” Phillips, 415 F.3d at 1313, 1321. There are only two
`circumstancesin 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 disavowsthe full scope of
`a claim term eitherin the specification or during prosecution.” Thornerv.
`
`Sony Comput. Entm’tAm. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Any
`such special meaning of a term “mustbesufficiently clear in the
`specification that any departure from commonusage would be so understood
`
`by a person of experiencein the field ofthe invention.” Multiform
`
`Desiccants Inc. v. Medzam Ltd. , 133 F.3d 1473, 1477 (Fed. Cir. 1998).
`
`To construethe claim terms, “welook principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecutionhistory,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 constructionsin its
`
`Petition. See Pet. 4. Neonode doesnot proposeany explicit constructions
`either, but in its Response, Neonoderaises a numberofclaim construction
`
`arguments regarding the term gliding... away as it appearsin limitation 1c,
`
`to which Google respondsin 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
`
`interpretthis or any other terms, we address the terms below in the context
`
`ofthe 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
`
`
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`IPR2021-01041
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`‘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 independentclaim 1 andparticularly limitation
`1c (Pet. 25—29), after which we address the remaining claims and the
`
`remaining grounds.
`A claim is unpatentable under § 103(a) for obviousnessif the
`
`differences betweenthe claimed subject matter andthe prior art are “such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto 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 groundin a petition is based ona combinationofreferences,
`weconsider “whether there was an apparent reason to combine the known
`
`elements in the fashion claimed bythe patentat issue.” /d. at 418 (citing Jn
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`Webase our obviousnessinquiry on factual considerations mcluding
`
`(1) the scope and contentofthe prior art, (2) any differences between the
`claimed subject matter andtheprior art, (3) the level of skill in the art, and
`(4) any objectiveindicia of obviousness or non-obviousnessthat may be in
`
`evidence. See Graham, 383 U.S.at 17-18.
`
`11
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`IPR2021-01041
`Patent 8,095,879 B2
`
`Considering these factors, we determine for the reasons below that
`
`Google has not shown, by a preponderanceofthe evidence,that claim 1 is
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over Robertson in view of
`
`Maddalozzo.
`
`1.
`
`Overview ofRobertson (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 sometext
`that indicates whattheir action is, andmay includeafield for editabletext.
`Id. at 38. A group ofXButtons is shown in Figure 1, which we reproduce
`
`below.
`
`| Test Button iY Beage
`
`Drop Text Button | eater
`
`Figure 1: Sample Set of X Buttons.
`
`12
`
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`IPR2021-01041
`Patent 8,095,879 B2
`
`Figure 1, above,illustrates a sample set ofXButtons including onefor a
`“Phone”function. Ex. 1005, 38-39. XButtons can have multiple associated
`
`actions, each selected by simple mouseor 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.
`
`“Tfthe user is unfamiliar with the action of a particular button, a menu
`
`can be poppedupto reveal which gestures are supported (and what they
`do),” using a particular gesture. Ex. 1005, 39. The menuassociated with the
`“Phone” XButtonis shown in Figure 2, which we reproduce below.
`1a op ee
`
`Mait
`
`
`
`Phere
`
`Prd © Click —Cet phone tt
`
`) \
`
`Flick Aight - Dial phone H
`
`Pog Uese
`
`Comment
`
`Copy
`Celete
`Edit
`
`Halp
`
`Pignre 2: Sample Button Meru
`
`Figure 2, above,illustrates a sample menu for an XButton. Ex. 1005, 39-40.
`The menu showsall potential user manipulations ofthe XButton; for
`
`13
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`IPR2021-01041
`Patent 8,095,879 B2
`
`example, it showsthatthe “Click” gesture is associated with “Get phone #”
`and the “Flick Right” gesture is associated with “Dial phone #.” Jd.
`XButtons may also have associated with them a buttoneditor, as
`
`shown in Figure 3, which we reproduce below.
`
`Font:
`
`.
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`Titles Gttmap: Jrue
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`Foreground: blo-k
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`,
`.
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`Background: ,) igh=srey
`TextWidth: 20
`fhane velp
`
`Tye Un A name, Then Check to get Che perorre nurrihes,
`
`Bitmap:
`Taxt:
`
`Help:
`
`
`ee
`,
`Shelly /tinéesn
`
`Initialize:
`
`Click: phone FKB_Text
`
`Check:
`
`,
`
`Flick Hight: diaipione Sx3_Text,
`
`,
`Flick Left:
`Flick Up:
`
`_
`
`a ;
`
`Text: Cet phone %
`
`Text:
`
`,
`
`Taxt: Dial phone #
`
`Text: ,
`Text:
`,
`
`,
`Flick Dawn:
`Rubout: zbdelets
`Insert: ghedit
`
`;
`
`a Text:
`
`.
`
`Orup:
`
`Timed:
`
`,
`
`.
`
`Interval: A
`
`Attributes6 __
`
`es
`
`.
`
`{ Get attr ){ Ser actr J
`
` Button Editor Title: Phone:
`
`Value: Z
`
`File: facedia-ratertean’ buttons /Fhons, button
`
`)
`
`( Analy)" Reset jf Clear )( Cancel
`
`
`Figure 3: Structured Button Editor.
`
`Figure 3 showsa button editor for the “Phone” XButton whose menuis
`
`shownin Figure 2. Ex. 1005, 40-41. The button editoris a structured
`
`property-sheeteditor designed specifically for editing an XButton./d. at 40.
`Theeditor fields at the top specify the appearanceofthe button. Jd. The
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`14
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`
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`IPR2021-01041
`Patent 8,095,879 B2
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`middle ofthe editor specifies the action language, the various actions, and
`
`the text to appearin the menufor each action. /d. Toward the bottom ofthe
`editor are fields (“Attribute” and “Value”) that allow the user to view and
`
`replace user-defined properties.Jd.
`
`WA
`
`Limitation Ic
`
`Because wefind that Google has not shownthat the combination of
`
`Robertson and Maddalozzoteachesor suggests limitation 1c, we need only
`
`addressthat limitation in our decision. Moreover, because Google relies only
`
`on Robertsonfor limitation 1c, we need not address Google’s arguments
`
`concerning Maddalozzo. See Pet. 25~29 (not referring to Maddalozzo in the
`context oflimitation 1c).”
`
`Limitation Ic recites “wherein the function is activated by a multi-step
`
`operation comprising (i) an object touching the touch sensitive area at a
`location wherethe representationis provided andthen(ii) the object gliding
`along the touch sensitive area away from the touchedlocation.” Ex. 1001,
`6:52—57. An example ofthis operation is the gesture illustrated in Figure 2
`
`ofthe ’879 patent, which wediscuss above. See supra Section II.B.
`Google contendsthat Robertsondiscloses this recited multi-step
`operation by disclosing that a user can activate a “dialphone”functionto call
`a phone numberby “placing a pen on the phonebutton, thensliding 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 Maddalozzosolely for teaching the
`preamble. See Pet. 12-19.
`
`15
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`IPR2021-01041
`Patent 8,095,879 B2
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`that, according to Robertson,“‘gesture[s] must start in an XButton,’ but ‘can
`moveoutside 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 ofRobertson’s Figure 1,
`which we reproduce below:
`
`
`
`Pet. 26. Inthe abovefigure, 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 anda pathit would
`allegedly makestarting on the phone numberand ending outside the
`XButton. See Pet. 25-26.
`
`Alternatively, Google contends that Robertsondiscloses activating an
`“xbedit” function to open the “Phone”button’s buttoneditor by “touching a
`pen(or finger) to the phone button,then sliding the pen away from theinitial
`
`touchedlocation in the shape ofa caret to perform an ‘Insert gesture.””
`
`16
`
`
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`IPR2021-01041
`Patent 8,095,879 B2
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`Pet. 26—27 (citing Ex. 1005, 39-40; Ex. 1003 ¢ 108). Google depictsthis
`
`operation with another annotated version of Robertson’s Figure 1, which we
`
`reproduce below:
`
`4 Drop Text Button
`
`44 Test Button
`=
`
`Pet. 27. Shown aboveis Robertson’s Figure 1 that Google has annotated to
`
`highlight the “Phone” XButton (in which hasbeen entered a particular phone
`
`number) in blue and showing an orange pen and a path it would allegedly
`
`makestarting on the phone number, moving diagonally upward andto the
`right outside the XButton, andthen moving diagonally downward andto 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 contendsthat based on the prosecution history and
`
`17
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`IPR2021-01041
`Patent 8,095,879 B2
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`extrinsic evidence, the term g/idingmeans more than simply any movement
`
`along the touchsensitive area. See id. 32-35.
`
`In particular, Neonode notesthat during prosecution of the ’879
`
`patent, the original language describing the gesturein limitation 1c was
`
`“moving in a directionfromastarting pointthat is the representation [ofa
`
`function] .
`
`.
`
`. to said display area.” PO Resp.33 (alterations in original)
`
`(quoting Ex. 1002, 201). Neonode arguesthat, after the Examiner rejected
`
`claims with the above language, “[i]n further prosecution and in explaining
`the gesture the Applicant soughtto claim,” the applicant encouraged the
`Examinerto watch a video (Ex. 2020) demonstrating the gesture on
`
`Neonode’s N2 mobile device. /d. (citing Ex. 1002, 214-15). Neonode
`
`contendsthat this video depicts a gesturethatis “similar to what today’s
`
`systemsrefer to as a ‘swipe’ gesture, where,e.g., the thumb is placed ona
`
`representation ofa function (menu item with an arrow) and through a
`
`swiping motion, the menu screen opens.” /d. at 32-34 (citing Ex. 2020, time
`
`codes 00:26—00:27).
`
`Then, according to Neonode,“[i]n the subsequentoffice action, the
`
`Examiner acknowledgedthe ‘swiping’ gesture ofthe 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 Examinerfeels thatthe limitations, as claimed,
`
`.. are still too broad to suggest without research what was shown in the
`
`video demonstration.”)). Then, Neonodearguesthatafter 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.” /d. (quoting Ex. 1002, 334; then quoting id. at317—18).
`
`18
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`Thus, Neonode contendsthat a person of ordinary skill in theart
`
`would have understood from the prosecutionhistory 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. Neonodefirst points to dictionary
`
`definitions in which the wordflick denotes a sharp or jerky motion, whereas
`
`the word glide denotes a smooth, continuous motion. Jd. at 35-38 (citing
`
`Exs. 2049, 2052, 2050, 2057; Ex. 2019 4] 78-79). Neonodealso points to
`
`more recent developer guidelines to show that leading smart phone
`
`developers Apple and Google have distinguished between“flick” and
`“swipe”gestures. Jd. at 39-40 (citing Ex. 2022, 4; Ex. 2023, 6; Ex. 2029,2;
`Ex. 2019 f 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 movesat a given velocity, and gradually slows down,”
`
`whereas “a ‘swipe’ gesture is used to close an application.” Ex. 2019 4] 82—
`
`83 (citing Ex. 2025, 21; Ex. 2026, 5; Ex. 2027,8 (calling the gesture
`
`“fline”); Ex. 2028, 1).
`
`Neonodearguesthat the difference between “glide” (“swipe”) and
`
`“flick” gestures is analogousto 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
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`19
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`testifies that “[i]n a flick gesture, the pen would touchthe screen, but only
`
`moves onthe screen for a very short distance andis quickly lifted from the
`screen in a ‘jerky’ motion.” Ex. 2019 Ff 85-86.
`
`Thus, Neonodedisagrees with how Google depicts a “flick right”
`
`gesture in its annotated version ofRobertson’s Figure 1, reproduced above.
`
`POResp.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 doesnotreflect the plain meaning
`offlick as a “short, jerky motion.” /d. at 42-43. Although Neonode
`acknowledges that Robertson’s system is capable, in general, ofrecognizing
`
`gestures that begin within an XButton and extend outside ofit, Neonode
`
`disagrees that this would necessarily be the case forthe “flick right” gesture,
`
`unless the gesture began close to the edge of the XButton.Jd. at 43-44
`
`(citing Ex. 2019 J 89).
`
`Dr. Rosenberg also states that Robertson “discloses that a drag-and-
`
`drop operation can be performedon its XButtons,”so “[i]fRobertson’s
`
`‘flick’ was reallyaglide,” thenif the user performeda gesture as depicted in
`
`Google’s annotated version of Figure 1, “Robertson’s system would not
`know whether the movement ofa 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 dueto its higher speed and
`shorter distance—which,as Robertson indicates, is not intendedto (evenif it
`
`‘can’) go outside ofthe XButtonitself.”/d.
`
`Neonodealso disputes that a person of ordinary skill in the art would
`
`haveinterpreted Robertson’s “insert” gesture—whichRobertson describes
`>
`as “like an editor’s caret”—to comprise a “gliding ... away” movement.
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`20
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`PO Resp.45 (quoting Ex. 1005, 40). According to Neonode,“[a]n editor’s
`
`caret—‘’’—hasa sharp angle andis usually smaller than the text.” Id. at 47—
`48 (citing Ex. 2019 J 99). Accordingto Dr. Rosenberg, formingthis gesture
`would involve “twojerky movements connected together,” or “drawing a
`
`first sharp, short line, and then sharply changing direction and drawing a
`
`second sharp,short line.” Ex. 2019 J 100. Thus, Neonode disagrees with
`
`Google’s depiction oftwo large lines that extend outside the XButton and
`
`even over neighboring XButtons. PO Resp. 49-50(citing Ex. 2019 {J 101—
`
`102). Rather, according to Dr. Rosenberg, Robertson’s “insert” gesture
`
`would more closely resemble t
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