UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioners,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner,
`____________
`
`Case IPR2021-01041
`Patent 8,095,879
`____________
`
`EXHIBIT 2019
`
`SECOND DECLARATION OF CRAIG ROSENBERG, PH.D.
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioners,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner,
`____________
`
`Case IPR2021-01041
`Patent 8,095,879
`____________
`
`EXHIBIT 2019
`
`SECOND DECLARATION OF CRAIG ROSENBERG, PH.D.
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .........................................................................................1
`I.
`II. QUALIFICATIONS .....................................................................................2
`III. APPLICABLE LEGAL STANDARDS .......................................................8
`A.
`Priority Date of the Patent ..................................................................... 8
`B.
`Level of Ordinary Skill in the Art ......................................................... 9
`C. My Understanding of Legal Standards ............................................... 10
`IV. OPINIONS ...................................................................................................12
`A. Objective Evidence Of Non-Obviousness. ......................................... 12
`B.
`The Robertson-Grounds (Grounds 1-3). ............................................. 20
`1.
`Robertson Is Not Analogous Art To The ’879 Patent. ............ 20
`Petitioner Has Not Shown That Robertson Is In The
`a.
`Same Field Of Endeavor As The ’879 Patent. ...............22
`Petitioner Has Not Shown That Robertson Is Reasonably
`Pertinent To The Problem With Which The Inventors Of
`The ’879 Patent Were Involved. .....................................27
`The Robertson Combination Does Not Disclose Or Render
`Obvious The “Gliding … Away” Limitation. ......................... 30
`a.
`“Movement Is Not Synonymous With Gliding. .............31
`b.
`Robertson’s Flick Is Not Shown To Be Gliding. ...........34
`c.
`Robertson’s Insert Gesture Does Not Disclose The
`Claims. ............................................................................43
`Robertson’s Insert Gesture Does Not “Activate” A
`i.
`“Represented” Function. ......................................43
`
`b.
`
`2.
`
` i
`
`
`
`
`
`3.
`
`4.
`
`ii.
`
`Petitioner Does Not Show That Robertson’s
`“Insert” Is “Gliding … Away.” ............................46
`The Robertson-Grounds Do Not Disclose “Wherein The
`Representation Consists Of Only One Option For Activating
`The Function.” ......................................................................... 48
`Robertson-Grounds Do Not Disclose Or Render Obvious The
`Preamble For Two Reasons. .................................................... 52
`Robertson-Grounds Fail To Disclose Or Render Obvious
`a.
`“A Mobile Handheld Computer Unit.” ..........................54
`Robertson Does Not Disclose Or Suggest “A
`i.
`Mobile Handheld Computer Unit.” ......................55
`Dr. Wobbrock Does Not Show Why A POSITA
`Would Have Implemented Robertson’s XButtons
`In Maddalozzo’s Device. .....................................57
`Petitioner Does Not Show That Robertson-Grounds
`Disclose Or Render Obvious The Claimed Computer
`Program Code Being “Read By A Mobile Handheld
`Computer Unit.” .............................................................60
`The Tarpenning Grounds Do Not Disclose The Claims. .................... 62
`C.
`V. CONCLUSION ............................................................................................70
`
`
`ii.
`
`b.
`
` ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`I, Craig Rosenberg, declare as follows:
`
`1.
`
`I have been retained on behalf of Neonode Smartphone LLC
`
`(“Neonode” and/or “Patent Owner”) for the above-captioned inter partes review to
`
`provide my expert opinions and expert knowledge. I understand that this
`
`proceeding involves U.S. Patent No. 8,095,879 (“the ’879 patent”). I understand
`
`that the ’879 patent is currently assigned to Neonode.
`
`2.
`
`I understand that the present Petition for inter partes review challenges
`
`claims 1-7, 9, 12-13, 15-17 (“the challenged claims” or “claims”) of the ’879
`
`patent and was filed by Petitioner Google Inc. (“Petitioner”).
`
`3.
`
`I have been asked to provide my independent review, analysis,
`
`insights, and opinions regarding technical aspects of the ’879 patent and the
`
`Petition challenging the patentability of its claims. In particular, I have been asked
`
`to provide my analysis, insights, and opinions regarding the state of the art at the
`
`time of the alleged invention and how a person of ordinary skill in the art would
`
`have understood the ’443 patent disclosure at that time.
`
`4.
`
`In preparing this declaration, I have reviewed all of the references cited
`
`herein and in the Petition. In particular, I have reviewed and am familiar with the
`
`’879 patent and its prosecution history, and the references cited against it,
`
`discussed further below.
`
`
`
`1
`
`
`
`
`
`5.
`
`In this declaration, I set forth the independent opinions that I have
`
`reached and the basis for those opinions in view of the information currently
`
`available to me. Such opinions are based, at least in part, on my knowledge,
`
`experience, education, and trialing over the past thirty four years in the areas of
`
`human factors, human computer interaction, and user interfaces. I reserve the right
`
`to supplement or revise my opinions should additional documents or other
`
`information be provided to me.
`
`6.
`
`I am being compensated at an hourly rate of $450/hour for my work on
`
`this case. My compensation is not dependent upon my opinions, my testimony, or
`
`the outcome of this case.
`
`II. QUALIFICATIONS
`
`7. All of my opinions stated in this declaration are based on my own
`
`personal knowledge and professional judgment. In forming my opinions I have
`
`relied on my knowledge and experience in human factors, user interface design, user
`
`interaction design, human-computer interaction, and software engineering.
`
`8. My qualifications to testify about the ’879 patent and the relevant
`
`technology are set forth in my curriculum vitae (“CV”), which I have included as
`
`Ex. 2002. In addition, a brief summary of my qualifications is included below:
`
`9.
`
`I hold a Bachelor of Science in Industrial Engineering, a Master of
`
`Science in Human Factors, and a Ph.D. in Human Factors from the University of
`
`
`
`2
`
`
`
`
`
`Washington School of Engineering. For 30 years, I have worked in the areas of
`
`human factors, user interface design, software development, software architecture,
`
`systems engineering, and modeling and simulation across a wide variety of
`
`application areas, including aerospace, communications, entertainment, and
`
`healthcare.
`
`10.
`
`I graduated from the University of Washington in 1988 with a B.S. in
`
`Industrial Engineering. After graduation, I continued my studies at the University of
`
`Washington. In 1990, I obtained an M.S. in Human Factors. In 1994, I graduated
`
`with a Ph.D. in Human Factors. In the course of my doctoral studies, I worked as an
`
`Associate Assistant Human Factors Professor at the University of Washington
`
`Industrial Engineering Department. My duties included teaching, writing research
`
`proposals, designing and conducting funded human factors experiments for the
`
`National Science Foundation, as well as hiring and supervising students. While
`
`studying at the University of Washington, I also worked as a human factors
`
`researcher and designed and performed advanced human factors experiments
`
`relating to virtual environments and interface design, stereoscopic displays, and
`
`advanced visualization research, which was funded by the National Science
`
`Foundation. My duties included user interface design, systems design, software
`
`development, graphics programming, experimental design, as well as hardware and
`
`software interfacing.
`
`
`
`3
`
`
`
`
`
`11.
`
`I have published twenty-one research papers in professional journals
`
`and proceedings in the areas of user interface design, computer graphics, and the
`
`design of spatial, stereographic, and auditory displays. I also authored a book chapter
`
`on augmented reality displays in the book “Virtual Environments and Advanced
`
`Interface Design” (Oxford University Press, 1995). In addition, I created one of the
`
`first virtual spatial musical instruments called the MIDIBIRD that utilized the MIDI
`
`protocol, two six-dimensional spatial trackers, a music synthesizer, and a computer
`
`graphics workstation to create an advanced and novel musical instrument.
`
`12. For the past 21 years, I have served as a consultant for Global Technica,
`
`Sunny Day Software, Stanley Associates, Techrizon, CDI Corporation, and the Barr
`
`Group. In this capacity, I have provided advanced engineering services for many
`
`companies.
`
`13.
`
`I consulted for the Boeing Company for over 16 years as a senior human
`
`factors engineer, user interface designer, and software architect for a wide range of
`
`advanced commercial and military programs. Many of the projects that I have been
`
`involved with include advanced software development, user interface design, agent-
`
`based software, and modeling and simulations in the areas of missile defense,
`
`homeland security, battle command management, computer aided design,
`
`networking and communications, air traffic control, location-based services, and
`
`Unmanned Aerial Vehicle (“UAV”) command and control. Additionally, I was the
`
`
`
`4
`
`
`
`
`
`lead system architect developing advanced air traffic controller workstations and air
`
`traffic control analysis applications, toolsets, and trade study simulations for Boeing
`
`Air Traffic Management.
`
`14.
`
`I was also the architect of the Boeing Human Agent Model. The Boeing
`
`Human Agent Model is an advanced model for the simulation of human sensory,
`
`cognitive, and motor performance as applied to the roles of air traffic controllers,
`
`pilots, and UAV operators. In another project, I was the lead human factors engineer
`
`and user interface designer for Boeing’s main vector and raster computer aided
`
`drafting and editing system that produces the maintenance manuals, shop floor
`
`illustrations, and service bulletins for aircraft produced by the Boeing Commercial
`
`Aircraft Company. Additional responsibilities in my time as a consultant include
`
`system engineering, requirements analysis, functional specification, use case
`
`development, user stories, application prototyping, modeling and simulation, object-
`
`oriented software architecture, graphical user interface analysis and design, as well
`
`as UML, C++, C#, and Java software development.
`
`15.
`
`In 1995 and 1996, I was hired as the lead human factors engineer and
`
`user interface designer for the first two-way pager produced by AT&T. Prior to this
`
`technology, people could receive pages but had no way to respond utilizing their
`
`pager. This new technology allowed users to use a small handheld device to receive
`
`and send canned or custom text messages, access and update an address book, and
`
`
`
`5
`
`
`
`
`
`access and update a personal calendar. This high-profile project involved designing
`
`the entire feature set, user interface/user interaction design and specification, as well
`
`as all graphical design and graphical design standards.
`
`16. From 1999–2001, I was the lead human factors engineer and user
`
`interface designer for a company called Eyematic Interfaces that was responsible for
`
`all user interface design and development activities associated with real-time mobile
`
`handheld 3D facial tracking, animation, avatar creation and editing software for a
`
`product for Mattel. My work involved user interface design, human factors analysis,
`
`requirements gathering and analysis, and functional specifications.
`
`17.
`
`In 2001, I was the lead user interface designer for a company called
`
`Ahaza that was building IPv6 routers. I designed the user interfaces for the
`
`configuration and control of these advanced network hardware devices. My
`
`responsibilities included requirements analysis, functional specification, user
`
`interface design, user experience design, and human factors analysis.
`
`18.
`
`In 2006-07, I was the lead user interface designer for a company called
`
`ObjectSpeed that developed a portable handheld telephone for use in homes and
`
`businesses that had many of the same capabilities that we take for granted in mobile
`
`cellular phones. This portable multifunction device supported voice, email, chat,
`
`video conferencing, internet radio, streaming media, Microsoft Outlook integration,
`
`
`
`6
`
`
`
`
`
`photo taking and sharing, etc. The ObjectSpeed device was specifically designed and
`
`developed as a portable handheld device.
`
`19.
`
`I am the founder, inventor, user interface designer, and software
`
`architect of WhereWuz. WhereWuz is a company that produces advanced mobile
`
`software running on GPS-enabled smartphones and handheld devices. WhereWuz
`
`allows users to record exactly where they have been and query this data in unique
`
`ways for subsequent retrieval based on time or location. WhereWuz was specifically
`
`designed and developed to run on small handheld devices.
`
`20.
`
`I am the co-founder of a medical technology company called Healium.
`
`Healium developed advanced wearable and handheld user interface technology to
`
`allow physicians to more effectively interact with electronic medical records.
`
`21.
`
`I am the co-founder of a medical technology company called
`
`StratoScientific. StratoScientific is developing an innovative case for a smartphone
`
`that turns a standard handheld smartphone into a full featured digital stethoscope that
`
`incorporates visualization and machine learning that can be utilized for telemedicine
`
`and automated diagnosis.
`
`22.
`
`In 2012-13, I designed and developed a large software project for
`
`Disney World called xVR that allowed the operational employees of Disney World
`
`to utilize a handheld device to view the current and historical status of all of the
`
`guests of Disney World within multiple attractions as well as within one of their
`
`
`
`7
`
`
`
`
`
`restaurants. The application could run in a real-time/live mode where it would
`
`display data collected from sensors that showed the location and status of all guests
`
`within the attraction; the application could also be run in a fast-time/simulated mode.
`
`The application was developed on a laptop computer and was specifically designed
`
`to run on a variety of devices, including laptops, PCs, smartphones, and tablets.
`
`23.
`
`I have received several awards for my engineering work relating to
`
`interface design, computer graphics, and the design of spatial, stereographic, and
`
`auditory displays, including a $10,000 scholarship from the I/ITSEC for advancing
`
`the field of interactive computer graphics for flight simulation and a Link Foundation
`
`award for furthering the field of flight simulation and virtual interface design. I have
`
`also created graphics for several popular book covers as well as animations for a
`
`movie produced by MIRAMAR.
`
`III. APPLICABLE LEGAL STANDARDS
`
`24. When considering the ’879 patent and stating my opinions, I rely on
`
`the following legal standards as described to me by the attorneys for Neonode.
`
`A.
`
`Priority Date of the Patent
`
`25.
`
`I understand that the analysis of alleged obviousness of the Patent
`
`should be performed from the perspective of a POSITA as of the priority date of
`
`the Patent. The Patent was filed on December 10, 2002. My opinions in this
`
`
`
`8
`
`
`
`
`
`matter are from the perspective of a POSITA as of that date; however, my opinions
`
`do not change if the priority date is slightly changed.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`26.
`
`I understand that various factors should be considered when
`
`determining the person of ordinary skill in the art in connection with a particular
`
`patent. I understand that these include, without limitation: (a) the educational level
`
`of the inventors and that of practitioners and other inventors in the art (e.g.,
`
`degrees, subjects, etc.); (b) the type of problems encountered in the art; (c) prior art
`
`solutions to such problems; (d) the speed at which innovations are made in the art;
`
`and (e) the sophistication of the invention.
`
`27. Dr. Wobbrock opines that a “a person of ordinary skill in the art of the
`
`’879 patent as of its filing date would have 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. In my opinion, relevant work experience can substitute
`
`for formal education and advanced degree studies could substitute for work
`
`experience.” Ex. 1003 [Wobbrock-Decl.] ¶ 49. For the purpose of this declaration,
`
`I will apply the same definition of the level of skill of a POSITA.
`
`28. Based on my experience, education, and training, I met the definition of
`
`a POSITA in December of 2002, the time of filing of the application that issued as
`
`
`
`9
`
`
`
`
`
`the ’879 Patent. I also had greater knowledge and experience than a POSITA. I
`
`worked with POSAs in 2002, and I am able to render opinions from the perspective
`
`of a POSITA based on my knowledge and experience. My opinions concerning the
`
`’879 Patent claims and the prior art are from the perspective of a POSITA, as set
`
`forth above.
`
`29. As further discussed below, my opinions as stated in this declaration
`
`are valid even if the Board adopts a slightly different level of ordinary skill in the
`
`art.
`
`C. My Understanding of Legal Standards
`
`30.
`
`I understand that a patent claim is unpatentable if the claimed
`
`invention would have been obvious to a person of ordinary skill in the art at the
`
`time of the purported invention.
`
`31.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention in view
`
`of the prior art and in light of the general knowledge in the art as a whole. I also
`
`understand that obviousness is ultimately a legal conclusion based on underlying
`
`facts of four general types, all of which must be considered: (1) the scope and
`
`content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
`
`
`
`10
`
`
`
`
`
`between the claimed invention and the prior art; and (4) any objective indicia of
`
`non-obviousness.
`
`32.
`
`I also understand that obviousness may be established under certain
`
`circumstances by combining or modifying the teachings of the prior art. Specific
`
`teachings, suggestions, or motivations to combine any first prior art reference with
`
`a second prior art reference can be explicit or implicit, but must have existed
`
`before the date of purported invention. I understand that prior art references
`
`themselves may be one source of a specific teaching or suggestion to combine
`
`features of the prior art, but that such suggestions or motivations to combine art
`
`may come from the knowledge that a person of ordinary skill in the art would have
`
`had.
`
`33.
`
`I understand that a reference may be relied upon for all that it teaches,
`
`including uses beyond its primary purpose, but also including teachings that lead
`
`away from the invention. I understand that a reference may be said to teach away
`
`when a person of ordinary skill, upon reading the reference, would be discouraged
`
`from following the path set out in the reference, although the mere disclosure of
`
`alternative designs does not teach away.
`
`34.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`analysis.
`
`
`
`11
`
`
`
`
`
`35.
`
`I understand that it is improper to use hindsight to combine references
`
`or elements of references to reconstruct the invention using the claims as a guide.
`
`My analysis of the prior art is made from the perspective of a person of ordinary
`
`skill in the art at the time of the invention.
`
`36.
`
`I am not offering any legal opinions in this declaration nor am I
`
`qualified to do so. I only consider such legal standards in framing my opinions and
`
`conclusions as well as placing assertions made by Petitioner in the Petition into the
`
`proper context. Additionally, from a subject matter perspective, I understand that
`
`the petitioner always has the burden of persuasion regarding a challenge of
`
`patentability of an invention under an inter partes review.
`
`IV. OPINIONS
`
`A. Objective Evidence Of Non-Obviousness.
`
`37.
`
`I understand that Neonode’s N1 phone was introduced in Spring 2002
`
`and commercially sold starting in 2004. I further understand that Neonode’s N2
`
`phone was sold starting in 2054. Ex. 2022, ¶ 6.
`
`38.
`
`I have reviewed Neonode’s promotional material, which highlight the
`
`phone’s swipe-based user interface. Neonode specifically touted its “specially
`
`designed interface” that allows “you to easily access the different applications with
`
`simple sweeping gestures ... on the screen.” Ex. 2020 [N2 Advertisement Video]
`
`(00:27-00:35); see also id., (00:45-00:51) (“And you can easily access all of the
`
`
`
`12
`
`
`
`
`
`Neonode N2’s content using the seven available sweeps.”). As Neonode explained,
`
`“there is nothing else you need other than your intuition.” Id., (01:25-01:27).
`
`39. From my review of Neonode’s promotional video and other materials,
`
`the “swipe” gesture of Neonode’s user interfaces in the N1 and N2 phones is covered
`
`by claim 1. The claimed inventions concern a user interface for a mobile handheld
`
`computer unit that includes a touch sensitive area that includes a representation of a
`
`function wherein the representation consists of only one option for activating the
`
`function wherein an object (e.g., a finger) touches the touch sensitive area where the
`
`representation is provided and then the “object,” the finger in our example, “glid[es]
`
`along the touch sensitive area away from the touched location, wherein the
`
`representation of the function is not relocated or duplicated during the gliding.” I
`
`have also reviewed the Shain Declaration (Ex. 2008), and his testimony further
`
`confirms that the N1 and N2 devices practiced the claim 1 limitations:
`
`Both the Neonode N1 and N2 presented three icons in a strip along the
`lower edge of the display immediately following unlocking of the
`phone. One of the icons represented the Start Menu, one represented
`the Keyboard Menu, and the third represented the Tools Menu. Each of
`the icons consisted of only one option for activating the associated
`function. Each of the icons were activatable by a gesture in which a
`thumb or finger touches the icon, and swipes up toward the center of
`the screen before lifting off of the screen. None of the icons were
`relocated or duplicated during the swiping gesture.
`
`
`
`13
`
`
`
`
`
`40. The Applicant also equated the “gliding ... away” motion with
`
`“swiping.” Ex. 1002 [Prosecution-History] 273 (“the touch-and-glide thumb
`
`movement, variously referred to as ‘swiping,’ ... ‘gliding’ ...’”); 390 (similar). The
`
`Applicant also specifically referenced and provided a link to its promotional video
`
`for a commercial embodiment, the Neonode N2 phone, and asked the Examiner to
`
`“view the demonstration video … prior to reviewing Applicant’s arguments ….”
`
`Ex. 1002 [Prosecution-History] 214-215; Ex. 2020 [N2-Advertisement-Video]. As
`
`the screen shots below from the video show, the “gliding … away” gesture is similar
`
`to what many of today’s systems refer to as a “swipe” gesture and is distinct from a
`
`drag-and-drop operation. Specifically, the thumb is placed on a representation of a
`
`function (an arrow) and through a swiping motion, the menu screen opens:
`
`See Ex. 2020 [N2-Advertisement-Video ] (screenshots from 00:26-00:27).
`
`41. Such gliding corresponds to what is shown, for instance, in Figure 2
`
`which shows a thumb gliding along the touchscreen:
`
`
`
`
`
`14
`
`
`
`
`
`42. Moreover, there is striking similarity between the ’879 Patent’s figures
`
`and Neonode’s N1 and N2 phones:
`
`
`
`Ex. 1001 [’879] Figs. 3, 13; Ex. 2039 [PhD-Dissertation] 9, Figure 11.
`
`
`
`
`
`15
`
`
`
`
`
`43.
`
`I further have reviewed material showing praise for Neonode’s swiping
`
`user interface. For example, Pen Computing Magazine described Neonode N1
`
`phone’s swipe as “simple and brilliant” and different from the “dreaded gestures” of
`
`the pen computing devices (like Petitioner’s Hirayama-307):
`
`Swipe, swipe, swipe
`
`You see, instead of the usual menus and pulldowns, most operations are
`performed by sweeps of your finger—usually your thumb—across the
`surface of the Neonode’s display. […] If this sounds like the dreaded
`“gestures” that never really caught on in pen computing, it’s not. The
`swipes are much simpler, there are only a few, and they are consistently
`used throughout all applications. The idea here is to let you hold a
`phone in the palm of your hand and operate it entirely with your thumb.
`No need to push buttons, view tiny menus, pull out a tiny stylus, or use
`scroll wheels, rockers or other such vexing miniature controls. […]
`Neonode’s swiping interface is [] simple and brilliant.
`
`Ex. 2013, 2-3; id., 5 (“What’s the bottomline? The Neonode phone is quite
`
`obviously unique, ... The user interface is compelling and it’s easy to see how just
`
`a bit more development could provide almost total consistency and thus a user
`
`experience simpler than pretty much anything else that comes to mind. The speed
`
`is simply amazing. That’s the way a phone should operate.”).
`
`44.
`
`I have also reviewed material showing praise of Neonode’s swipe-based
`
`user interface by various technology observers. Exs. 2033, 1 (“I’ve been playing
`
`
`
`16
`
`
`
`
`
`with my N1m on and off, and I’m very impressed! It’s definitely a best kept secret
`
`device – Neonode’s touch-based user interface with gesture recognition ... is
`
`extremely intuitive ...”); 2031, 1 (“[The N2] has the most advanced touchscreen
`
`available, and has no buttons ... ‘Neonode N2 is designed for advanced simplicity.
`
`You do everything on-screen, simply and conveniently, with just one finger,
`
`Infibeam says. ‘The combination of an optical touch screen and specifically
`
`designed user interface makes access to all features and content of your Neonode N2
`
`both quick and easy.’”); 2032, 2034; Ex. 2035 [iPhone-Killer] 2 (“the N2 from
`
`Neonode Inc. – is the strongest contender for the title of ‘iPhone killer,’ ... ‘They’ve
`
`come out with a kick-ass device’... the [N1’s] screen reacts to the intuitive passage
`
`of a finger over the screen to initiate basic phone, Web browser and multimedia
`
`functions.”).
`
`45.
`
`I have also reviewed testimony that Senior management at Samsung’s
`
`mobile telecom division were extremely impressed by Neonode’s N1, and in early
`
`2005 began discussions with Neonode about licensing the N1’s gesture-based user
`
`interface and touch screen technology. Ex. 2055, ¶ 9. Ki-Tai Lee (K. T. Lee), head
`
`of Samsung’s mobile telecom division, presciently told Neonode that he believed
`
`Neonode’s intuitive user interface was “the future of mobile phones.” Id. Neonode
`
`had many hours of meetings with Samsung, including a meeting in London, attended
`
`by Marcus Bäcklund, Thomas Ericsson, and Per Bystedt. Id. Mr. Lee told
`
`
`
`17
`
`
`
`
`
`Samsung’s negotiators—in Neonode’s presence—that “we need this,” referring to
`
`the Neonode’s N1 gesture-based user interface and the license for the user interface.
`
`Id. I further understand that Samsung subsequently signed a licensing agreement
`
`with Neonode in 2005, and the licensing agreement covered, among other things,
`
`the application that ultimately issued as the ’879 patent. Ex. 2014, ¶ 10; Ex. 2056,
`
`¶¶ 13-14.
`
`46.
`
`I have further reviewed evidence demonstrating the belief among the
`
`technology observers that when Apple introduced the first iPhone in 2007 (see Ex.
`
`2036)1, its swiping gestures resembled that of Neonode. For example, Pen
`
`Computing Magazine wrote:
`
`Listening to Apple’s claims of all the patents covering the iPhone’s user
`interface one might assume the iPhone broke completely new ground
`and went where no phone had ever gone before.
`
`That is not entirely so. Neonode, a small Swedish company ...
`announced the Neonode N1 back in 2002. ... It did not use a stylus
`either. Instead, it used a swipe and tap system on a novel touch screen
`that used a grid of infrared beams to sense finger movement.
`
`... And if the iPhone’s swipes and taps seem futuristic, they are not.
`Neonode has been using them since the first N1 came out. In fact, the
`company’s Neno user interface is based entirely on swipes and taps.
`
`
`1 The first commercial phone utilizing Petitioner’s Android operating system was not released until September 2008.
`Ex. 2037 [Wikipedia-Android-Operating-System] 1.
`
`
`
`18
`
`
`
`
`
`Ex. 2024, 1. The author followed,
`
`[I]t must be vexing to see Apple essentially claim ownership of
`concepts the Neonode phone has been using for at least five years.
`
`Id., 9.
`
`47.
`
`I have also reviewed online videos made by the public about how
`
`Neonode’s “sweeping touch screen” was the “original,” to the iPhone “copycat”:
`
`Ex. 2038 [User-Video] (at 0:04, 0:06, 0:12, and 0:17).
`
`48.
`
`I have also reviewed a Ph.D. dissertation and a Master’s thesis that
`
`described Neonode as “the first smartphone to use a touchscreen as primary input
`
`
`
`
`
`19
`
`
`
`
`
`and to support touch gestures for several functions,” (Ex. 2039, 9), and “The
`
`Neonode N1 was the first commercially available mobile device to make extensive
`
`use of swipe gestures appropriate for one-handed use, including a browser that
`
`scrolled content vertically with swipes,” (Ex. 2040, 8).
`
`49.
`
`I have also reviewed testimony about commercial sales of Neonode
`
`phones, explaining that Neonode sold tens of thousands of its N1 and N2 phones to
`
`various operators around the world, including Mexico, Belgium and India. Ex. 2054,
`
`¶ 6; Ex. 2010; Ex. 2014; Ex. 2055, ¶ 11; Ex. 2056, ¶¶ 8-10. I understand that, as a
`
`small startup company without the backing of any major carrier, and with limited
`
`manufacturing experience, Neonode phones were priced up to $1,000, which is
`
`many times more expensive than the typical luxury phones of its time. Id.
`
`50. The above evidence, showing praise by industry observers, competitors
`
`and users, further support my conclusions below that the claims were not obvious at
`
`the time of the invention.
`
`B.
`
`The Robertson-Grounds (Grounds 1-3).
`
`1.
`
`Robertson Is Not Analogous Art To The ’879 Patent.
`
`51. Grounds 1-3 rely on the Robertson reference to render the claims
`
`obvious. Pet., 1-2. Based on the law regarding analogous art as explained to me
`
`by Neonode attorneys and summarized below, it is my opinion that Dr. Wobbrock
`
`has not shown Robertson to be analogous art to the ’879 Patent.
`
`
`
`20
`
`
`
`
`
`52.
`
`I understand that in order to be eligible as prior art and therefore form
`
`a reference in one of the instituted grounds, a reference must be analogous art to
`
`the ’879 Patent. I also understand that it is Petitioner’s burden to prove that
`
`Robertson is analogous art to the ’879 Patent. I am informed that in order to
`
`determine whether a reference such as Robertson is analogous art to the ’879
`
`Patent, a two-part test is applied as follows:
`
`Two separate tests define the scope of analogous prior art: (1) whether
`the art is from the same field of endeavor, regardless of the problem
`addressed and, (2) if the reference is not within the field of the
`inventor’s endeavor, whether the reference still is reasonably pertinent
`to the particular problem with which the inventor is involved.
`
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see also In re Clay, 966 F.2d
`
`656, 658 (Fed. Cir. 1992).
`
`53.
`
`I have not seen any analysis in Dr. Wobbrock’s declaration to show
`
`that Robertson is analogous art to the ’879 Patent, and, therefore, there is no
`
`analysis for me to respond to in that respect. However, for completeness, I address
`
`below why Robertson is neither in the same field of endeavor as the ’879 patent
`
`nor reasonably pertinent to the problem with which the ’879’s inventors were
`
`involved.
`
`
`
`21
`
`
`
`
`
`a.
`
`Petitioner Has Not Shown That Robertson Is In The Same
`Field Of Endeavor As The ’879 Patent.
`
`54. The ’879’s field of endeavor is “user interfaces for mobile handheld
`
`computer units” and is directed at “inexperienced users” using such consumer
`
`devices. The ’879
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
