`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner,
`____________
`
`Case IPR2021-01041
`Patent 8,095,879
`____________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`2.
`
`PETITIONER’S ROBERTSON-GROUNDS FAIL FOR FIVE
`INDEPENDENTLY SUFFICIENT REASONS. ........................................ 1
`Petitioner Fails To Prove That Its Robertson-Grounds Render
`A.
`Obvious The “Gliding … Away” Limitation. ...................................... 1
`Petitioner Does Not Attempt To Prove That A “Flick” Is A
`1.
`“Glide.” ....................................................................................... 1
`Petitioner Arguments Rely On “Gliding … Away” Meaning
`Any “Movement.” ...................................................................... 4
`a.
`Petitioner Disregards The Prosecution History. ............... 4
`b.
`Petitioner’s Written Description Argument Is Irrelevant
`And Incorrect. .................................................................. 6
`Petitioner’s Reliance On Robertson’s “Insert” Gesture Fails. .... 8
`3.
`Petitioner Fails To Prove The Robertson-Grounds Disclose
`“Wherein The Representation Consists Of Only One Option For
`Activating The Function.” .................................................................. 10
`Petitioner Fails To Show That Its Robertson-Grounds Disclose Or
`Render Obvious The Preamble’s Computer Program Code Being
`“Read By A Mobile Handheld Computer Unit.” ................................ 13
`Petitioner’s Robertson-Grounds Fail To Disclose Or Render
`Obvious The Preamble’s “Mobile Handheld Computer Unit.” .......... 14
`Petitioner’s Belated Attempt To Show Robertson Is Analogous Art
`Fails. .................................................................................................... 17
`THE TARPENNING GROUNDS FAIL. .................................................. 19
`II.
`III. PETITIONER FAILS TO REFUTE NEONODE’S EVIDENCE OF
`SECONDARY CONSIDERATIONS. ....................................................... 22
`IV. CONCLUSION ............................................................................................ 28
`
`
`B.
`
`C.
`
`D.
`
`E.
`
` i
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`FEDERAL CIRCUIT DECISIONS
`Biogen Idec. Inc. v. GlaxoSmithKline LLC,
`713 F.3d 1090 (Fed. Cir. 2013) ............................................................................ 18
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .............................................................................. 7
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) ............................................................................ 26
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) ............................................................................ 12
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ................................................................................ 7
`PAR Pharm, Inc. v. TWI Pharms, Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................................ 21
`Personal Web Techs., LLC v. Apple, Inc.,,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 16
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) .............................................................................. 6
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................................ 16
`Trimed, Inc. v. Stryker Corp.,
`608 F.3d 1333 (Fed. Cir. 2010) ............................................................................ 22
`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) .............................................................................. 19
`Wasica Fin. GmbH v. Cont’l Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 12
`BOARD DECISIONS
`Apple Inc. v. OpenTV, Inc.,
`IPR2015-00969, Paper 30 (Sept. 20, 2016) ........................................................... 6
`Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`IPR2016-00393, Paper 62 (PTAB Jun. 23, 2017) .................................................. 1
`
` ii
`
`

`

`
`
`Samsung Elecs. v. Neonode Smartphone,
`IPR2021-00145, Paper 71 (PTAB July 6, 2022) .................................................. 26
`STATUTES
`35 U.S.C. § 311 ......................................................................................................... 6
`
` iii
`
`

`

`
`
`EXHIBIT LIST
`
`2001
`
`Declaration of Craig Rosenberg, Ph.D. [Rosenberg-Decl.]
`
`2002
`
`CV of Craig Rosenberg, Ph.D. [Rosenberg CV]
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Mobile Application Distribution Agreement (Android) between
`Google Inc. and Samsung Electronics Co., Ltd. dated January 1,
`2011 [Mobile-Application-Distribution-Agreement]
`
`Complaint (June 8, 2020), in the matter of Neonode Smartphone,
`LLC v. Apple Inc., Dkt. #1, Case No. 6:20-cv-00505, United States
`District Court for the Western District of Texas, Waco Division
`[Neonode-Apple-Complaint]
`
`Declaration of William Stevens in Support of Patent Owner’s
`Preliminary Response [Stevens-Decl.]
`
`Microsoft Press Computer Dictionary, p. 243 (3d ed. 1997)
`[Microsoft-Dictionary]
`
`Declaration of Ulf Martensson in Support of Patent Owner’s
`Preliminary Response [Martensson-Decl.]
`
`Declaration of Joseph Shain in Support of Patent Owner’s
`Preliminary Response [Shain-Decl.]
`
`Declaration of Marcus Backlund in Support of Patent Owner’s
`Preliminary Response [Backlund-Decl.]
`
`2010
`
`Excel Spreadsheet documenting Neonode sales [Neonode-Sales]
`
`2011
`
`2012
`
`Declaration of Per Bystedt in Support of Patent Owner’s
`Preliminary Response
`
`Neonode Confidential Investment Memorandum, Jan.2004
`[Neonode-Investment-Memo]
`
` iv
`
`

`

`
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`“Pen Computing Magazine: The NeoNode Nl”
`(https://pencomputing.com/WinCE/neonode-nl-review.html last
`accessed October 15, 2021) [Pen-Computing-Magazine-N1-
`Phone-Review]
`
`Research & Development and License Agreement between
`Neonode and Samsung Electronics Co., Ltd., effective July 13,
`2005 [Samsung-License-Agreement]
`
`Defendant Apple Inc.’s Motion to Transfer Venue to the Northern
`District of California, Dkt. #27, Case No. 6:20-cv-00505, United
`States District Court for the Western District of Texas [Motion-to-
`Transfer-Venue]
`
`Apple Inc.’s Petition for Writ of Mandamus, Dkt. #2-1, Case No.
`21-181, United States Court of Appeals for the Federal Circuit
`[Petition-for-Writ-of-Mandamus]
`
`Complaint (June 8, 2020), in the matter of Neonode Smartphone,
`LLC v. Samsung Electronics Co. Ltd., et al., Dkt. #1, Case No.
`6:20- cv-00507, United States District Court for the Western
`District of Texas, Waco Division [Neonode-Samsung-Complaint]
`
`Deposition Transcript of Petitioner’s Expert, Dr. Jacob O.
`Wobbrock, Mar. 25, 2022 [Wobbrock-1st-Depo]
`
`Second Declaration of Craig Rosenberg, Ph.D. [Rosenberg-2nd-
`Decl.]
`
`N2 Advertisement Video (uploaded Oct. 18, 2007) (available at
`https://www.youtube.com/watch?v=Hq3S8Crxf2s) [N2-
`Advertisement-Video]
`
`2021
`
`Reserved
`
`2022
`
`Apple Developer, Human Interface Guidelines, Gestures
`[Gestures]
`
` v
`
`

`

`
`
`2023
`
`2024
`
`2025
`
`Bryan M. Wolfe and Rene Ritchie, iPhone 12 and iPhone 12 Pro
`Tricks: 17 ways to do more, faster!, iMore, Oct. 23, 2020 [iMore-
`Website]
`
`Conrad H. Blickenstorfer, Neonode N2, A New Version Of The
`Phone That Pioneered Touchscreens, Pen Computing Magazine,
`Nov. 4, 2007 [Pen-Computing-Magazine-N2-Phone-Review]
`
`Android Developer, Test Android apps for cars [Test-Android-
`apps-for-cars]
`
`2026
`
`Android Developer, Ice Cream Sandwich [Ice-Cream-Sandwich]
`
`2027
`
`Android Developer, Scroller [Scroller]
`
`2028
`
`Android Developer, Navigation [Navigation]
`
`2029
`
`Apple Developer, Human Interface Guidelines, Terminology
`[Terminology]
`
`2030
`
`U.S. Publication No. 2002/0027549 [Hirshberg]
`
`2031
`
`Bill Hennessy, The Neonode N2, Trend Hunter, Aug. 18, 2008
`[Trend-Hunter-Article]
`
`2032
`
`Trend Hunter, About page [Trend-Hunter-About]
`
`2033
`
`Neonode N1m First Impression [tnkgrl-Media-post]
`
`2034
`
`Tnkgrl About Page [tnkgrl-Media-About]
`
`2035
`
`Hunting The iPhone Killer; Swedish Neonode Generates Buzz For
`Device, RCR Wireless, Apr. 7, 2007 [iPhone-Killer]
`
`2036
`
`Wikipedia, iPhone [Wikipedia-iPhone-Release-Dates]
`
` vi
`
`

`

`
`
`2037
`
`2038
`
`2039
`
`Wikipedia, Android (operating system) [Wikipedia-Android-
`Operating-System]
`
`Neonode the only original, Sep. 13, 2007 (available at
`https://www.youtube.com/watch?v=D9N3H1rSxHk) [User-Video]
`
`Jurek Breuninger PhD Dissertation, Nov. 13, 2019 [PhD-
`Dissertation]
`
`2040
`
`Andreas Hollatz Dissertation, Oct. 2015 [Hollatz-Dissertation]
`
`2041
`
`2042
`
`2043
`
`2044
`
`2045
`
`2046
`
`2047
`
`2048
`
`Neonode N1m review, Jun. 29, 2007 (available at
`https://www.youtube.com/watch?v=Tj-KS2kfIr0) [Neonode N1m
`video-review]
`
`Timothy B. Lee, If Android Is A “Stolen Product,” Then So Was
`The Iphone, Ars Technica, Feb. 23, 2012 [Ars-Technica-Article]
`
`User Online Comments of Neonode N2 Overview [Neonode-
`Comments-2]
`
`User Online Comments of Neonode N2 instructions film
`[Neonode-Comments-1]
`
`User Online Comments of Neonode N2 unbox and review video
`[Neonode-Comments-3]
`
`Euro Dollar Exchange Rate (EUR USD) - Historical Chart
`(available at https://www.macrotrends.net/2548/euro-dollar-
`exchange-rate-historical-chart) [Euro-Dollar-Exchange-Rate]
`
`US Inflation Calculator (available at
`https://www.usinflationcalculator.com/) [Inflation-Calculator]
`
`Smartphone Shipments Declined in the Fourth Quarter But 2021
`Was Still a Growth Year with a 5.7% Increase in Shipments,
`According to IDC, Jan. 27, 2021 (available at
`https://www.idc.com/getdoc.jsp?containerId=prUS48830822)
`[Smartphone-Shipments]
`
` vii
`
`

`

`
`
`2049
`
`2050
`
`Paperback Oxford English Dictionary, Seventh Edition, p. 273,
`306 (7th ed. 2012) [Oxford-English-Dictionary]
`
`The American Heritage College Dictionary, p. 520, 579 (3rd ed.
`1997) [The-American-Heritage-College-Dictionary]
`
`2051
`
`U.S. Publication No. 2004/0021643 [Hoshino]
`
`2052
`
`Merriam-Webster’s Collegiate Dictionary, p. 445-446, 495 (10th
`ed. 1993) [Merriam-Webster’s-Collegiate-Dictionary]
`
`2053
`
`Declaration of Parham Hendifar
`
`2054
`
`Second Declaration of Ulf Martensson [Martensson-Decl.]
`
`2055
`
`Refiled Declaration of Per Bystedt [Bystedt-Decl.]
`
`2056
`
`Refiled Declaration of Marcus Backlund [Backlund-Decl.]
`
`2057
`
`Concise Oxford English Dictionary, Revised Tenth Edition, p.
`542, 602 (2002) [Oxford-English-Dictionary]
`
`2058
`
`Redline of Default Protective Order
`
`2059
`
`Joint Proposed Protective Order
`
`2060
`
`Patent Owner’s Response – Public Redacted Copy
`
`2061
`
`Exhibit 2055 – Public Redacted Copy
`
`2062
`
`Second Deposition Transcript of Petitioner’s Expert, Dr. Jacob O.
`Wobbrock, Sep. 8, 2022 [Wobbrock-2nd-Depo]
`
` viii
`
`

`

`
`
`I.
`
`PETITIONER’S ROBERTSON-GROUNDS FAIL FOR FIVE
`INDEPENDENTLY SUFFICIENT REASONS.
`
`A.
`
`Petitioner Fails To Prove That Its Robertson-Grounds Render
`Obvious The “Gliding … Away” Limitation.
`
`The claims concern activating a representation of a function by “gliding ...
`
`away.” Petitioner contends that the claimed “gliding” is satisfied by Robertson’s
`
`“flick” gesture but fails to prove that a “flick” is a “glide.” See Section I.A.1,
`
`infra. Instead, Petitioner seeks to erase the “gliding ... away” limitation, arguing
`
`instead that any movement is “gliding ... away” in contravention of the plain
`
`meaning and the intrinsic record. See Section I.A.2, infra. Relying upon this same
`
`errant interpretation, Petitioner similarly fails to prove that Robertson’s “insert
`
`gesture” is “gliding ... away.” See Section I.A.3, infra.
`
`1.
`
`Petitioner Does Not Attempt To Prove That A “Flick” Is A
`“Glide.”
`
`The POR demonstrated that Robertson’s “flick” does not disclose “gliding ...
`
`away” under the plain meaning and the intrinsic record. POR, 31-44. Petitioner’s
`
`Reply does not even attempt to prove otherwise. Critically, Petitioner’s expert
`
`elected not to address the meaning of “gliding” and “flicking” even in his second
`
`declaration. See Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC, IPR2016-
`
`00393, Paper 62, 37 (PTAB Jun. 23, 2017) (“We also note the absence of further
`
`declaration testimony ... in support of Petitioner’s Reply .... Such untethered
`
`
`
`1
`
`

`

`
`
`reference to conclusory attorney-argument are insufficient ... [to show
`
`obviousness]”).
`
`And even Petitioner’s attorney argument evades Neonode’s evidence.
`
`Petitioner does not address the fact that “gliding” and “flicking” connote entirely
`
`different motions. POR, 37-38 (comparing images of “flicks” versus “gliding”). A
`
`picture is worth a thousand words and, yet, Petitioner has nothing to say about
`
`those images. Nor does Petitioner identify any instance wherein a “flick” refers to
`
`a “gliding” movement.
`
`Petitioner provides no dictionary definitions in support of its position but
`
`quibbles with Neonode’s numerous dictionary definitions as being “unavailing
`
`because they are either after-arising or improperly contradict the intrinsic record.”
`
`Reply, 10. Neither is true. Neonode provided dictionary definitions from
`
`approximately the time of Robertson in the early 1990s (Ex. 2052, 2050) to ’879’s
`
`filing date (2002) (Ex. 2057) to a decade later in 2012 (Ex. 2049), all consistently
`
`showing the same distinction between a “flick” and a “glide.” POR, 36.
`
`Furthermore, none of those definitions “contradict” the intrinsic record. As
`
`explained, the Applicant, by words and video, described the claimed “gliding” as a
`
`“swipe” gesture, which is entirely consistent with the dictionary definitions of
`
`“gliding.” See Section I.A.2, infra.
`
`
`
`2
`
`

`

`
`
`Petitioner also claims that the undisputed evidence of leading manufacturers
`
`such as Apple and Petitioner Google itself distinguishing between a “flick” and a
`
`“swipe” is “irrelevant because they do not describe the terms in 2002.” Reply, 10
`
`n. 2. But Petitioner presents no evidence for the insinuation that these terms were
`
`used differently in 2002.
`
`Petitioner also disingenuously asserts that Neonode’s expert “admitted” that
`
`the distinction between “flick” and “glide” is “arbitrary because [their]
`
`classification depends [on] how the system is configured.” Reply, 8, 11. Dr.
`
`Rosenberg made no such admission. Rather, he explained 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, whether a
`
`stylus or finger is used. Ex. 1031 [Rosenberg-Decl.] 28:16-29:6. For example,
`
`whether a given movement is considered long or short, or “smooth” and “sharp,”
`
`may depend on whether the screen on which it is being performed is, for example,
`
`3” or 50.” That does not make the distinction between the two gestures
`
`“arbitrary.” In fact, Petitioner Google itself is able to distinguish between a swipe
`
`and a flick in its own documents outside of this litigation. POR, 40-41.
`
`Accordingly, Petitioner fails to show that Robertson’s “flick” discloses
`
`“gliding … away.”
`
`
`
`3
`
`

`

`
`
`2.
`
`Petitioner Arguments Rely On “Gliding … Away” Meaning Any
`“Movement.”
`
`As discussed, Petitioner failed to prove a “flick” discloses a “glide” based on
`
`the plain meaning or by proffering any construction. Instead, Petitioner’s Reply
`
`confirms that Petitioner is simply arguing that a “glide” is any movement. Reply,
`
`7-8. Neonode demonstrated that this notion is refuted by the plain meaning and
`
`prosecution history. POR, 32-35. Petitioner’s Reply fails to rebut that
`
`demonstration.
`
`a.
`
`Petitioner Disregards The Prosecution History.
`
`Petitioner neglects the prosecution history, which confirms that “gliding” is
`
`not just any “movement.” POR, 33-35. Petitioner argues that the Applicant “never
`
`distinguished ‘gliding’ from other gestures or movements generally.” Reply, 8.
`
`This is false. The Applicant expressly amended the claims from “moving-from-to”
`
`to “gliding ... away,” after a video demonstration and an examiner interview, to
`
`“properly claim the present invention.” POR, 34-35. This change informs a
`
`POSITA that a “glide” is not just any movement, Ajinimoto,1 and forecloses
`
`Petitioner’s suggestion to the contrary.
`
`Petitioner also asserts that the Applicant “equated other gestures,” such as a
`
`“drag,” with a “glide.” Reply, 8. Even were this true, it would have no bearing on
`
`
`1 Notably, Petitioner does not even attempt to distinguish Ajinomoto. POR,
`
`35.
`
`
`
`4
`
`

`

`
`
`whether a “flick” is a glide. And it is not true. The Applicant explained that
`
`Hoshino’s drag-and-drop operation did not meet the “gliding … away” limitation
`
`(see Ex. 1002 [Prosecution-History] 498; see also Section II, infra) and in the
`
`pages cited by Petitioner (Reply, 8, citing Ex. 1002, 496-497), the Applicant
`
`repeatedly described Hoshino’s movement as a drag and distinguished its
`
`conventional “drag-and-drop” from the claimed “novel touch-and-glide”:
`
`
`
`Ex. 1002, 497. In another figure, the Applicant highlighted the different ordering
`
`of actions between the claimed invention and Hoshino. Id. In Hoshino, the
`
`movement happens after activation, but in the claimed invention, the movement
`
`happens before activation. Id.
`
`Conversely, where the Applicant did address the meaning of “gliding,” it
`
`equated “gliding” to, e.g., “swiping,” “rubbing,” or “sliding,” but not to a flick (or
`
`drag). Ex. 1002, 273, 390.
`
`Petitioner also claims that Neonode’s video demonstration is not relevant to
`
`the meaning of “gliding,” because it was supposedly submitted to show that the
`
`representation of the function is not relocated or duplicated. Reply, 8-9. Not so.
`
`At the time the Applicant “encouraged” the Examiner to “watch the video
`
`
`
`5
`
`

`

`
`
`demonstration,” and after the Examiner acknowledged the invention, the claims
`
`were amended from “moving” to “gliding.” POR, 33-34. The Applicant did not
`
`make any arguments regarding “duplication or relocation” of the representation of
`
`the function in connection with the video demonstration, and this language was not
`
`added to the claim until later.
`
`b.
`
`Petitioner’s Written Description Argument Is Irrelevant
`And Incorrect.
`
`The thrust of Petitioner’s argument is that the proper construction of
`
`“gliding” as being distinct from any generic movement “renders all claims invalid
`
`for lack of written description and cannot be correct.” Reply, 7. Petitioner’s
`
`argument is improper and wrong.
`
`First, “compliance with the written description requirement of Section 112,
`
`Paragraph 1, is not an issue that Petitioner is permitted to raise in the Petition.”
`
`Apple Inc. v. OpenTV, Inc., IPR2015-00969, Paper 30, 19 (PTAB Sept. 20, 2016)
`
`(citing 35 U.S.C. § 311(b)). Thus, where the applicant makes the meaning of a
`
`claim term clear in prosecution, the Board adopts that construction even if it may
`
`raise written description issues. Id., 19-20; see also Straight Path IP Grp., Inc. v.
`
`Sipnet EU S.R.O., 806 F.3d 1356, 1363 (Fed. Cir. 2015) (“written-description and
`
`enablement challenges were not, and could not have been, part of the inter partes
`
`review that is now before us. ... Sipnet’s arguments about insufficient support for
`
`
`
`6
`
`

`

`
`
`the claims if they are given their plain meaning ... do not alter our conclusion about
`
`claim construction.”).
`
`Second, the “axiom of construing claims to preserve their validity” (Apple,
`
`IPR2015-00969, Paper 30, 19) does not apply here because it is a last resort if the
`
`claim is “still ambiguous” after “applying all the available tools of claim
`
`construction.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir.
`
`2004) (citations omitted). Here, as explained above, the prosecution history clearly
`
`and unambiguously informs a POSITA that the claimed “gliding ... away” is
`
`distinct from “moving-from-to.” POR, 34-35. More significantly, Petitioner does
`
`not make any attempt to show that “gliding”—a particular and familiar type of
`
`movement—encompasses any “movement.” Thus, Petitioner’s entire discussion
`
`on this point is simply irrelevant.
`
`Petitioner’s assertion that “gliding” lacks written support is also incorrect.
`
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1346 (Fed. Cir. 2016)
`
`(finding “the Board placed undue weight on the absence of the terms in the
`
`specification,” as figures and diagrams may provide necessary written support).
`
`
`
`7
`
`

`

`
`
`Figure 2 clearly shows a finger movement consistent with a “glide.” It does not
`
`show a “flick.” See also POR, 36-38.2
`
`3.
`
`Petitioner’s Reliance On Robertson’s “Insert” Gesture Fails.
`
`Neonode explained that Petitioner failed to show that Robertson’s “insert”
`
`gesture disclosed “gliding … away.” POR, 47-49. Petitioner has no response
`
`other than again arguing that “gliding” encompasses any movement. Reply, 11.
`
`Indeed, Petitioner expressly relies upon its deficient “flick” argument for the
`
`“insert” gesture as well. Reply, 11. Petitioner further does not dispute Neonode’s
`
`showing that the Petition provided a misleading depiction of Robertson’s insert
`
`gesture. POR, 49-50. Nor did Petitioner respond to Neonode’s detailed showing
`
`that the “insert gesture” does not resemble a gliding ... away/swiping gesture
`
`(POR, 48 (citing Ex. 2019 [Rosenberg-2nd-Decl.] ¶ 100)). Thus, because
`
`Petitioner’s underlying premise that “gliding” is any movement is wrong, and
`
`because Petitioner does not show why an “insert” gesture discloses “gliding ...
`
`away,” its reliance on the “insert” gesture fails.
`
`
`2 Moreover, there is ample evidence, including the N1 protype and the
`
`testimony of Mr. Goertz, establishing that the inventor was in possession of the
`
`concept of “gliding” as of the ’879’s priority date. See, e.g., Ex. 1044 [Goertz-
`
`Depo.] 66:8-12; 91:7-12.
`
`
`
`8
`
`

`

`
`
`Neonode also explained that Robertson’s “insert” gesture fails for the second
`
`reason that it does not activate a “represented function.” POR, 45-47. This is
`
`because Robertson’s insert gesture has nothing to do with the function of any icon;
`
`rather, it is a generic gesture that allows editing of any icon similar to how a right-
`
`click of a mouse allows editing of a Microsoft Word icon, unrelated to the icon’s
`
`word-processing function. Id.
`
`In response, Petitioner argues that “Neonode does not explain why
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`Robertson’s phone button cannot represent more than one function,” and that
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`“Neonode’s arguments appears to be that the button must visibly show or identify
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`the function.” Reply, 12. Both statements misapprehend Neonode’s argument.
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`The function of the icon may be, e.g., emailing or printing. Editing the icon, e.g.,
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`changing its size or position on the screen does not perform the icon’s function.
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`By analogy, the function of a car is to drive. That a car can be painted different
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`colors is not a function of the car. Thus, the issue is not that a Robertson button
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`cannot have more than function or that the function must be visible; rather, editing
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`an icon is not a “function” of the icon at all. While Petitioner now argues that the
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`editor is a function of Robertson’s phone button (Reply, 12), it argued just the
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`opposite in the Petition:
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`The location of the “Phone” button (representation) includes only a
`phone function and not touch functionality for a different function,
`e.g., printing.
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`9
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`Pet., 46. Thus, Petitioner’s reliance on the insert gesture to disclose “gliding …
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`away” fails.
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`B.
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`Petitioner Fails To Prove The Robertson-Grounds Disclose
`“Wherein The Representation Consists Of Only One Option For
`Activating The Function.”
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`The limitation “the representation consists of only one option for activating
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`the function” was added during prosecution to overcome Hirshberg’s disclosure of
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`providing the user with multiple options for what action to take depending on the
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`input gesture. POR, 51. As Neonode explained, Robertson is just like Hirshberg
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`in that respect. POR, 52-53. For example, Robertson’s phone button gives users
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`the options of showing the telephone number by clicking or dialing the telephone
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`number by right-flick. Id. Petitioner’s expert did not “recall” analyzing the
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`prosecution history in this regard for his opening declaration, Ex. 2018
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`[Wobbrock-1st-Depo.] 98:16-20, and did not address it in his second declaration
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`either. The Reply’s attorney arguments fail.
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`Petitioner misapprehends Neonode’s position as requiring “that the
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`representation represents only one function” (Reply, 13). Petitioner then aims its
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`fire at that misapprehension, arguing that it contradicts the specification and is
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`rebutted by claim differentiation. Reply, 13. But Neonode does not argue that the
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`representation must represent “only one function.” Rather, Neonode argues that
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`even if the representation may represent different functions depending on the
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`10
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`context, the user is provided with only one option on what action to initiate in that
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`context.
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`Neonode’s understanding is confirmed by the same portion of the ’879’s
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`specification cited by Petitioner. Reply, 13 (citing Ex. 1001, 4:4-5, 4:12-15). The
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`’879 explains that “the first function 21” is application dependent and may
`
`represent different functions depending on the context. Ex. 1001, 4:4-5, 4:12-15.
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`However, the user is not provided with those different options to choose from;
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`rather, as the user “glide[s] … away,” there is only a single option with respect to
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`the representation of the function in a particular context regardless of the direction
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`of “gliding.” Ex. 2019 [Rosenberg-2nd-Decl.] ¶ 105. Petitioner does not rebut this
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`interpretation of the claim, but only its misapprehension of Neonode’s position.
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`Petitioner also argues that the Applicant distinguished Hirshberg on the basis
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`that it activated a function by “both glide and ‘conventional touch’” depending “on
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`whether the device is in a single or multi-function mode.” Reply, 14 (citing Ex.
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`1002, 541-542). In fact, the Applicant explained Hirshberg teaches that single-
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`character keys in both the single and multi-function modes were activated the same
`
`way: upon touch. Thus, different activations based on the single or multi-function
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`modes was not the issue. Ex. 1002 [Prosecution-History] 542 (quoting Hirshberg,
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`[0055], [0074]). Rather, the Applicant explained that Hirshberg teaches a touch-
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`and-glide activation only for keys that comprise several characters, and for those
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`11
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`keys, the user had multiple options of what letter to activate depending on the
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`direction of the glide. Ex. 1002 [Prosecution-History] 541-542. “In distinction” to
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`Hirshberg’s operation providing multiple options to the user for multi-character
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`keys, the Applicant explained that “the claimed invention uses a multi-step touch-
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`and-glide operation for representations that consist of only one option for
`
`activating the function.” Id., 542.
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`Finally, Petitioner presents a new theory of unpatentability for claim 1,
`
`arguing that a POSITA would have been motivated to modify Robertson’s buttons
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`“to representing only one function,” as supposedly discussed in the Petition in
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`connection with claim 17. Reply, 14. Petitioner’s untimely argument should not
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`be considered. Wasica Fin. GmbH v. Cont’l Auto. Sys., 853 F.3d 1272, 1286-1287
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`(Fed. Cir. 2017); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-1331
`
`(Fed. Cir. 2019). Petitioner’s argument is also incorrect. As Dr. Rosenberg
`
`explained, Robertson trumpets its multi-action buttons as a major improvement and
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`as “[an] additional goal[].” Ex. 2019 [Rosenberg-2nd-Decl.] ¶¶ 110-111 (quoting
`
`Ex. 1005 [Robertson] 37). Petitioner provides no reason why a POSITA would
`
`undo Robertson’s “additional goal.” There is also no basis for Petitioner’s
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`assertion that even if a POSITA would, contrary to Robertson’s teaching, assign a
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`single function to XButtons, she would use a flick gesture over the much faster and
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`simpler tap in order to avoid “accidental activation.” Pet., 46. There is no
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`12
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`
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`indication that Robertson, which is intentionally a complex, multi-gesture button
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`system, has any “accidental activation” problems, or any evidence that flicks were
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`less accident prone or were a known method of preventing accidental activation.
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`See also Ex. 2019 [Rosenberg-2nd-Decl.] ¶ 146.
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`Thus, Petitioner fails to show that Robertson discloses the “one-option”
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`limitation.
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`C.
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`Petitioner Fails To Show That Its Robertson-Grounds Disclose Or
`Render Obvious The Preamble’s Computer Program Code Being
`“Read By A Mobile Handheld Computer Unit.”
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`The POR explained why, as the Petition conceded, Robertson does not
`
`disclose that the program code for its user interface be on the same device as the
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`display unit, and why Petitioner’s proffered motivation to modify Robertson to so
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`operate was inadequate. POR, 62-64. 3
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`In response, Petitioner attempts to re-write the Petition, stating that
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`“Neonode wrongly argues that Robertson uses a client-server architecture that does
`
`not store the computer program code on the same device displaying the user
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`interface,” and claiming that “[t]he Petition explains” why that is not true. Reply,
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`18-19. But the Reply does not cite the Petition for what it supposedly explained.
`
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`3 Petitioner does not present any argument challenging Neonode’s showing
`
`that the preamble is limiting. POR, 55 n.3; Reply, 15.
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`13
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`Nor does it cite Robertson for how it supposedly operates. It cites to its expert
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`declaration (Ex. 1003, ¶ 115) for the different claim 2, but that cannot override the
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`Petition’s and its expert’s express allegation relating to claim 1 that “it would have
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`been obvious” to modify Robertson because doing so would “provide a unitary
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`system.” Ex. 1003 [Wobbrock-Decl.] ¶ 86; Pet, 14.
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`Thus, the Robertson-Grounds all fail.
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`D.
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`Petitioner’s Robertson-Grounds Fail To Disclose Or Render
`Obvious The Preamble’s “Mobile Handheld Computer Unit.”
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`Petitioner argues that the combination of Robertson and Maddalozzo renders
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`the preamble’s “mobile handheld computer unit” obvious. Pet., 12 n.1. The
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`premise behind Petitioner’s argument is that Robertson is silent on the type of
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`system that it utilizes, and a POSITA would have been motivated to import
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`Robertson’s X-Button in Maddalozzo’s mobile handheld computer unit. Pet., 14-
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`15. As Neonode explained, however, Robertson’s system is not intended for a
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`“mobile handheld computer unit. POR, 56-58. Thus, the premise of Petitioner’s
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`combination is incorrect.4
`
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`4 Petitioner asserts that Neonode “does not challenge” the Institution
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`Decisions’ finding that a “mobile handheld computer unit” may encompass
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`laptops. Reply, 16. But that does not mean that any laptop, regardless of size and
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`14
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`Moreover, regardless of whether Robertson allows implementation in a
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`“mobile handheld computer unit,” Neonode explained why a POSITA would not
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`have been motivated to implement it in Maddalozzo’s system. POR, 58-61.
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`Petitioner responds that its combination “does not rely on Maddalozzo’s interface,
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`but rather Maddalozzo’s disclosure of mobile computers running on the same Unix
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`and X-based systems.” Reply, 18. In essence, Petitioner argues that it is not really
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`relying on Maddalozzo’s device, and is not really combining Maddalozzo with
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`Robertson, but it is merely using Maddalozzo as a prop for some undefined,
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`generic “mobile handheld computer unit” with no provided specification or user-
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`interface for Neonode to respond to or analyze. What functions are available on
`
`the display? How are the icons arranged and what is their spacing? What are the
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`technical specification and processing power of the device? Without this and
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`additional information, it is impossible to assess, and for Neonode to address, how
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`or why a POSITA would have been motivated and able to import Robertson’s X-
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`Buttons into another