`
`
`
`
`
`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 DEMONSTRATIVE EXHIBITS
`(EXHIBIT 2063)
`
`
`
`
`
`
`
`
`Google LLC v. Neonode Smartphone LLC
`
`IPR2021-01041
`U.S. Patent No. 8,095,879
`
`Neonode Smartphone LLC
`October 17, 2022
`
`Nathan Lowenstein
`Parham Hendifar
`Lowenstein & Weatherwax LLP
`
`Demonstrative Exhibit – Not Evidence
`
`
`
`The Petition Presents Robertson And Tarpenning Grounds
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 1-2
`
`2
`
`
`
`Table Of Contents
`
`1.
`
`Secondary Indicia
`
`2. Robertson Grounds:
`i.
`“gliding … away” (All Claims)
`ii. One-Option limitation (All Claims)
`iii. Computer Program Code “read by a mobile handheld
`computer unit” (All Claims)
`iv. “a mobile handheld computer unit” (All Claims)
`v. Robertson Is Not Analogous Art (All Claims)
`
`3.
`
`Tarpenning Grounds Fail To Show “gliding … away” (All Claims)
`
`Demonstrative Exhibit – Not Evidence
`
`3
`
`
`
`Neonode Phone Introduced In 2002, Years Before Apple’s
`iPhone (2007) And Petitioner’s Android System (2008)
`
`Ex. 2020 [N2-Advertisement-Video] (00:26-00:27)
`
`Core Feature Was Swipe-Based User Interface
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 11
`
`4
`
`
`
`Applicant: “Swipes” Correspond To The Claimed “Gliding …
`Away” As Shown In N2 Video
`
`Ex. 1002 [Prosecution History] 273
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 5, 33
`
`5
`
`Ex. 1002 [Prosecution History] 214-215
`
`
`
`Neonode’s N1 Phone (2002) Was The First Swipe-Based Smartphone—
`Years Before iPhone (2007) And Google’s Android OS (2008)
`
`Ex. 2040 [Hollatz-Dissertation ] 8,
`
`Ex. 2039 [PhD-Dissertation ] 9
`
`Ex. 2024 [Pen-Computing-Magazine-N2-Review] 1
`
`“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. [I]t must
`be vexing to see Apple essentially claim ownership of
`concepts the Neonode phone has been using for at
`least five years”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 11, 13
`
`6
`
`
`
`Users Compared Neonode’s “Original” “Sweeping Touch
`Screen” With iPhone “Copycat”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2038 [User-Video ] (at 0:04, 0:06, 0:12, and 0:17);POR, 12
`
`7
`
`
`
`Neonode Phones’ Swiping Interface Received Effusive Praise
`
`Ex. 2013 [Pen-Computing-Magazine-N1-Review] 2-3
`
`Ex. 2031 [Trend-Hunter-Article] 1
`
`Ex. 2035 [iPhone-Killer ] 2
`
`Ex. 2013 [Pen-Computing-Magazine-N1-Review] 5
`
`“swipe, swipe, swipe … If this sounds like the dreaded
`“gestures” that never really caught on in pen computing, it’s
`not. The swipes are much simpler. … Neonode’s swiping
`interface is [] simple and brilliant”
`
`“designed for advanced simplicity. You do everything on
`screen, simply and conveniently, with just one finger.”
`
`“the strongest contender for the title of ‘iPhone killer,’ … the
`screen reacts to the intuitive passage of a finger over the
`screen to initiate basic phone …”
`
`“The Neonode phone is quite obviously unique, ... The user
`interface is compelling …. The speed is simply amazing.
`That’s the way a phone should operate.”
`
`Ex. 2033 [tnkgrl-Media-post] 1
`
`“definitely a best kept secret device–Neonode’s touch-
`based user interface with gesture recognition ... is extremely
`intuitive ...”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 8-9
`
`8
`
`
`
`Neonode Phones’ Swiping Interface Received Effusive Praise
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 14-15; Exs. 2043-2044
`
`9
`
`
`
`Samsung Praised And Licensed The Application From Which
`’879 Patent Issued
`
`“the future of
`mobile phones.
`We need this.”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 16-17
`
`10
`
`
`
`’879 Application Was One Of Only Two Licensed Applications,
`And Specifically Called Out In The Agreement
`
`The [Neonode] mobile handsets are based on the light beam controlled
`touch-screen, “zForce”, and software for interaction with the operating
`system of the device, “Neno”. Neonode is in possession of technology, -
`including zForce and Neno – intellectual property rights and know-how for
`development of mobile handsets (the ‘”Neonode IPR”)
`
`Ex. 2014 [Samsung-Agreement] 2
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 27-28
`
`11
`
`
`
`Neonode Phones Practiced The Claimed Inventions
`
`Ex. 2008 [Shain-Decl.] ¶¶4-6
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 23
`
`12
`
`
`
`Petitioner’s Attorney Argument: Video Shows N1/N2 Phones
`Activated Icon By Flick, Not Glide
`
`Refuted by the smooth, effortless glide shown in the video
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 22; Ex. 2020 [N2-Advertisement-Video] 00:24-00:28
`
`13
`
`
`
`Petitioner: Arrows Are “Relocated Or Duplicated” During
`Gliding
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 25
`
`14
`
`
`
`Neonode Phones’ “Representation Of Function” Were Printed
`Icons That Were Not “Relocated Or Duplicated” During Gliding
`
`“the Neonode N1 and N2 presented three icons in a strip
`along the lower edge … None of the icons were
`relocated or duplicated during the swiping gesture.”
`
`Ex. 2008 [Shain-Decl.] ¶6
`
`Ex. 1044 [Goertz] 151:20-152:7
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 23
`
`15
`
`
`
`Arrows Were Not “Relocated Or Duplicated” During Gliding, But
`Upon Touch And Before Glide To Show Possible Pathways
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 24
`
`16
`
`
`
`Additional Arrows Can Be Perpendicular To The Direction Of The
`Subsequent Glide
`
`Direction Of Subsequent Glide
`
`Direction Of Additional Arrows
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 24-25
`
`17
`
`
`
`Petitioner’s Ex-1048 Still Praised Neonode’s “Swipe” Even After iPhone
`And Six Years After ’879’s Filing, Only Criticized Other Phone Features
`
`Ex. 1048, 5
`
`Ex. 1048, 4
`
`Ex. 1048, 3
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 26-27
`
`18
`
`
`
`Table Of Contents
`
`1.
`
`2.
`
`Secondary Indicia
`
`Robertson Grounds:
`i.
`“gliding … away” (All Claims)
`ii. One-Option limitation (All Claims)
`iii. Computer Program Code “read by a mobile handheld
`computer unit” (All Claims)
`iv. “a mobile handheld computer unit” (All Claims)
`v. Robertson Is Not Analogous Art (All Claims)
`
`3.
`
`Tarpenning Grounds Fail To Show “gliding … away” (All Claims)
`
`Demonstrative Exhibit – Not Evidence
`
`19
`
`
`
`Petitioner Fails Prove “Gliding ... Away”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 31-49
`
`20
`
`
`
`Petitioner Relies On Robertson’s “Flick” And “Insert” Gestures To
`Disclose “gliding … away”
`
`Pet., 25
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 26-27
`
`POR, 31
`
`21
`
`
`
`Petitioner Assumes That Flick/Insert Disclose “gliding … away”
`Because It Equates A “Glide” With Any Movement
`
`Pet., 25-26
`
`Demonstrative Exhibit – Not Evidence
`
`Pet., 27
`
`POR, 32; Sur-Reply, 4
`
`22
`
`
`
`Petitioner Provided No Construction Of “gliding … away” To
`Show Why It Encompasses A “Flick” Or “Insert” (Caret)
`
`Pet., 4
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 35-36
`
`23
`
`
`
`Petitioner Presented No Other Evidence As To Why A “Glide”
`Encompasses A “Flick” Or “Insert” (Caret) Gesture
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 35-36
`
`24
`
`
`
`Plain Meaning Of “Glide” And “Flick” Are Distinct
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 36
`
`25
`
`
`
`Common Usage: “Glides” And “Flicks” Are Different
`
`Flick
`
`Glide
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 37-38
`
`26
`
`
`
`Smartphone Manufacturers Distinguish Between “Flick” And
`“Swipe” (i.e., “Glide”)
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2022 [Gestures] 4; POR, 39
`
`27
`
`
`
`Users Recognize The Distinction Between “Flick” And “Swipe”
`(i.e., “Glide”)
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2023 [iMore-Website] 6; POR, 40
`
`28
`
`
`
`Petitioner Google’s Operating Systems Distinguish Between
`“Flick” And “Swipe” (i.e., “Glide”)
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg-2nd-Decl.] ¶ 82; POR, 40-41
`
`29
`
`
`
`Even Though A “Flick” And A “Glide” (i.e., Swipe) Are Both Movements,
`They Are Distinct Just As Walking And Running Are Distinct Movement
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg-2nd-Decl.] ¶ 84; POR, 41
`
`30
`
`
`
`Petitioner’s Expert Chose Not To Address “Glide” v. “Flick” Even
`In His Second Declaration
`
`“We also note the absence of further
`declaration testimony ... in support of
`Petitioner’s Reply .... Such untethered
`reference to conclusory attorney-
`argument are insufficient ... [to show
`obviousness]”
`
`Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`IPR2016- 00393, Paper 62, 37 (PTAB Jun. 23, 2017)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 1-2
`
`31
`
`
`
`Petitioner’s Abject Failure Of Proof As To Why “Flick” Discloses
`“Glide”
`
`Flick
`≠
`Glide
`
`• No claim construction
`
`• No plain meaning analysis
`
`• No expert support or analysis
`
`• Refuted by dictionary plain
`meaning (flick v. glide)
`
`• Refuted by common usage
`
`• Refuted by phone manufacturers’
`usage (flick v. swipe)
`
`• Refuted by Petitioner’s own usage
`of flick v. swipe outside of litigation
`
`Demonstrative Exhibit – Not Evidence
`
`32
`
`
`
`Petitioner’s Response: ”gliding … away” Should Be Construed
`To Encompass All Movement
`
`Reply, 8
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 32; Sur-Reply, 4
`
`33
`
`
`
`Prosecution History: Claims Were Changed From “moving ...
`from ... to” To “gliding ... away”
`
`Original Pending Claim 1:
`“… each of said first, second, and third functions simultaneously
`represented in said menu area being activated by the single step
`of a blunt object moving in a direction from a starting point that is
`the representation of the corresponding one of said first, second,
`and third functions in said menu area to said display area …”
`
`Ex. 1002 [Prosecution History] 201
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 33
`
`34
`
`
`
`Applicant “Encouraged” Examiner To Watch N2 Video
`Demonstration Prior To Reviewing Applicant’s Arguments
`
`Ex. 1002 [Prosecution History] 214-215
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 33-34
`
`35
`
`Ex. 2020 [N2-Advertisement-Video] (00:26-00:27)
`
`
`
`Examiner “can now see the difference between prior art of record
`and present invention” “in light of the video demonstration”
`
`Ex. 1002 [Prosecution History] 258
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 34
`
`36
`
`
`
`After Examiner Interview, Applicant Changed “moving ... from
`... to” To “gliding ... away” To “properly claim the … invention”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 34-35
`
`37
`
`Ex. 1002 [Prosecution History] 317-318, 334
`
`
`
`CAFC: Amendments To Change A Word “suggest[s] ... the new
`word differs in meaning in some way from the original word.”
`
`“when a word is changed during prosecution, the
`change tends to suggest that the new word differs in
`meaning in some way from the original word. ”
`
`Ajinomoto Co. v. ITC
`932 F.3d 1342, 1351 (Fed. Cir. 2019)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 35
`
`38
`
`
`
`Petitioner’s Expert “Did Not Recall” Whether “gliding … away”
`Was “A Point Of Focus” In His Review Of Prosecution History
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2018 [Wobbrock-Depo.] 98:21-99:12; POR, 35
`
`39
`
`
`
`Applicant Never Equated “Gliding” To A “Flick”
`
`Ex. 1002 [Prosecution History] 273
`
`Ex. 1003 [Prosecution History] 390
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 5
`
`40
`
`
`
`Applicant Never Equated “Glide” With “Drag”
`Irrelevant: Drag ≠ Flick
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1002 [Prosecution History] 497-498; Sur-Reply, 5
`
`41
`
`
`
`Flick ≠ Drag
`
`Flick
`
`Drag
`
`Demonstrative Exhibit – Not Evidence
`
`42
`
`
`
`Flick v. Glide Is Not An Arbitrary Distinction
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1031 [Rosenberg-Decl.] 28:16-29:6; Sur-Reply, 3
`
`43
`
`
`
`Petitioner: Interpreting “Gliding” As Anything Other Than All
`Movement Lacks Written Support
`
`Demonstrative Exhibit – Not Evidence
`
`44
`
`Reply, 7
`
`
`
`Construction To Preserve Validity Is The Last Resort And Does
`Not Apply Where Plain Meaning And Intrinsic Record Are Clear
`
`“[U]nless the court concludes, after applying all the
`available tools of claim construction, that the claim
`is still ambiguous, the axiom regarding the
`construction to preserve the validity of the claim
`does not apply.”
`
`Liebel-Flarsheim Co. v. Medrad, Inc.
`358 F.3d 898, 911 (Fed. Cir. 2004)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 7
`
`45
`
`
`
`Written Description Is Not An IPR Issue And Cannot Overcome
`The Plain Meaning And Intrinsic Record
`
`“written-description … could not have been, part of the
`inter partes review that is now before us. ... Sipnet’s
`arguments about insufficient support for the claims if
`they are given their plain meaning ... do not alter our
`conclusion about claim construction.”
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1363 (Fed. Cir. 2015)
`
`“compliance with the written description requirement
`… 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)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 6-7
`
`46
`
`
`
`The Specification Need Not Say “Glide”
`
`“Accordingly, we conclude that the Board
`placed undue weight on the absence of the
`terms in the specification. … Our conclusion …
`further supported by the figures of the patent, the
`specification, and the claim language.”
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331, 1346 (Fed. Cir. 2016)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 7-8
`
`47
`
`
`
`Fig. 2 Shows A “Gliding” Movement, Not A “Flick”
`
`Ex. 2020 [N2-Advertisement-Video] (00:26-00:27)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 7-8
`
`48
`
`
`
`Petitioner’s Depiction Of “Flick” To Resemble “Glide” Is
`Unsupported By Robertson And Contrary To Plain Meaning
`
`Petitioner’s Unsupported Depiction Of
`Robertson’s Flick
`
`Robertson’s Flick, Consistent With Plain
`Meaning (Jerky, Quick, Short Motion)
`
`Pet., 26
`
`POR, 41-42
`
`Demonstrative Exhibit – Not Evidence
`
`49
`
`
`
`Petitioner’s Only Purported Support For Depicting Robertson’s “Flick”
`As A “Glide” Is That A Gesture “Can” Move Outside Of An XButton
`
`Ex. 1005 [Robertson] 43
`
`No evidence statement relates to a “flick” gesture
`
`Concerns a “problem,” not a principle of operation wherein
`gestures are intended to go outside XButtons
`
`Likely refers to where the gesture initiated at edge of XButton
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg-2nd-Decl.] ¶ 100
`
`POR, 48
`
`50
`
`
`
`Robertson’s “Insert” Gesture Fails To Disclose A “Glide” For Similar
`Reasons As “Flick”; Petitioner Presents No Separate Argument
`
`Pet., 26-27
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 11
`
`Sur-Reply, 8
`
`51
`
`
`
`Unrebutted: “Insert” And “Glide” Are Distinct In Terms Of Both
`Mechanical Movement And User Feel
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg-2nd-Decl.] ¶ 100; POR, 48
`
`52
`
`
`
`Petitioner’s Depiction Of Robertson’s “Insert” Is Unsupported By
`Robertson And Inconsistent With Plain Meaning
`
`Petitioner’s Incorrect Depiction Of
`Robertson’s Insert
`
`Robertson’s Insert, Consistent With Plain
`Meaning (Jerky, Quick, Short Motion)
`
`Pet., 27
`
`POR, 49-50
`
`Demonstrative Exhibit – Not Evidence
`
`53
`
`
`
`An “Editor’s Caret” Has A Sharp Angle And Is Usually Smaller
`Than Text
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 47-48
`
`54
`
`
`
`Table Of Contents
`
`1.
`
`Secondary Indicia
`
`2. Robertson Grounds:
`i.
`“gliding … away” (All Claims)
`ii. One-Option limitation (All Claims)
`iii. Computer Program Code “read by a mobile handheld
`computer unit” (All Claims)
`iv. “a mobile handheld computer unit” (All Claims)
`v. Robertson Is Not Analogous Art (All Claims)
`
`3.
`
`Tarpenning Grounds Fail To Show “gliding … away” (All Claims)
`
`Demonstrative Exhibit – Not Evidence
`
`55
`
`
`
`Petitioner Fails To Prove “wherein the representation consists of
`only one option for activating the function”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 50-51
`
`56
`
`
`
`The “one-option” Limitation Was Added During Prosecution To
`Distinguish From Hirshberg
`
`Ex. 1002 [Prosecution-History] 542
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 52
`
`57
`
`
`
`In Hirshberg, The Representation Of The Function Provides The Users With
`Multiple Options On What Action To Take Depending On The Input Gesture
`
`Moving the stylus/finger up
`towards zone 300 types “H”
`
`Moving the stylus/finger
`to the right towards
`zone 302 types “I”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg-2nd-Decl.] ¶ 104; POR, 51
`
`58
`
`
`
`The Applicant Distinguished Hirshberg Because Hirshberg
`“Teaches Touch And Glide Only For Keys” With Multiple Options
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1002 [Prosecution-History] 541-542
`Sur-Reply, 11-12
`
`59
`
`
`
`Robertson, Just Like Hirshberg, Provides The Users With Multiple
`Options On What Action To Take Depending On The Input Gesture
`
`Robertson:
`
`Hirshberg:
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg-2nd-Decl.] ¶ 107; POR, 52-53
`
`60
`
`
`
`In Relying On Robertson, Petitioner Assumed An Incorrect
`Interpretation Of The One-Option Limitation
`
`Pet., 23
`
`Petitioner implicitly interprets the one-option limitation to mean that each
`function is activated by only a single gesture
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 52
`
`61
`
`
`
`Petitioner’s Expert “Did Not Recall” Whether His Review Of Prosecution
`History “Particularly Focused” On The One-Option Limitation
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2018 [Wobbrock-Depo.] 98:16-20; POR, 52
`
`62
`
`
`
`Petitioner’s Second Expert Declaration: No Opinion Relating To
`The One-Option Limitation
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 10
`
`63
`
`
`
`Petitioner Misapprehends Neonode’s Argument As Requiring
`That The Representation Represents “Only One Function”
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 13
`
`Sur-Reply, 10-11
`
`64
`
`
`
`’879 Specification: A Representation May Represent Multiple Functions At
`Different Times, But Always Provides One-Option To The User At Any Time
`
`The User Is Provided With
`Only One Option
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 11
`
`65
`
`
`
`Petitioner Incorrectly Argues That Hirshberg Was Distinguished
`Because It Activated The Same Function By Multiple Gestures
`
`Demonstrative Exhibit – Not Evidence
`
`66
`
`Reply, 14
`
`
`
`Petitioner's Argument Is Incorrect: In Both Modes, Hirshberg Activates
`One-Letter Keys Upon Touch
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2030 [Hirshberg] [0055] [0074]; Sur-Reply, 11-12
`
`67
`
`
`
`The Reply Changes Its Theory For Claim 1 From Disclosure By
`Robertson To Obvious To Modify Similar To Claim 17
`
`Reply, 14
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12
`
`68
`
`
`
`Petitioner Argued For Claim 17 That A POSITA Would Have Found It
`Obvious To Associate Only One Function To Each XButton
`
`Pet., 46
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12
`
`69
`
`
`
`Petitioner’s New Theory Of Unpatentability For Claim 1 Is
`Untimely
`
`“Rather than explaining how its original petition
`was correct, Continental’s subsequent
`arguments amount to an entirely new theory
`of prima facie obviousness absent from the
`petition. Shifting arguments in this fashion is
`foreclosed by statute, our precedent, and Board
`guidelines.”
`
`Wasica Fin. GmbH v. Cont’l Auto. Sys., 853 F.3d 1272, 1286-1287 (Fed. Cir. 2017);
`see also Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-1331 (Fed. Cir. 2019)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12
`
`70
`
`
`
`Wrong On The Merits: Why Would A POSITA Undo A Main
`Objective Of X-Buttons By Eliminating Multiple Actions?
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 12-13
`
`71
`
`Ex. 1005 [Robertson] 37
`
`
`
`No Evidence That Even If A POSITA Were To Undo Robertson’s
`Advantage And Provide A Single Action Per XButton:
`
`The gesture would be a “flick” as opposed to the faster,
`simpler “tap”
`
`Robertson would have an “accidental activation”
`problem with the standard “tap” activation
`
`“Flick” was known to address accidental activation
`problems
`
`Demonstrative Exhibit – Not Evidence
`
`72
`
`
`
`Table Of Contents
`
`1.
`
`Secondary Indicia
`
`2. Robertson Grounds:
`i.
`“gliding … away” (All Claims)
`ii. One-Option limitation (All Claims)
`iii. Computer Program Code “read by a mobile handheld
`computer unit” (All Claims)
`iv. “a mobile handheld computer unit” (All Claims)
`v. Robertson Is Not Analogous Art (All Claims)
`
`3.
`
`Tarpenning Grounds Fail To Show “gliding … away” (All Claims)
`
`Demonstrative Exhibit – Not Evidence
`
`73
`
`
`
`The Processor Executing The Code To Display The Claimed Steps
`Must Be On The Same Handheld Unit Displaying The Interface
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 62
`
`74
`
`
`
`The Preamble Provides Antecedent Basis For The “Mobile
`Handheld Computer Unit” And The “User Interface”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 55 n.3
`
`75
`
`
`
`A “Mobile Handheld Computer Unit” Is A Defining Aspect Of The
`Invention
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶113; POR, 55
`
`76
`
`
`
`Petitioner Presents No Analysis Or Evidence To Challenge
`Neonode’s Showing That The Preamble Is Limiting
`
`Demonstrative Exhibit – Not Evidence
`
`77
`
`
`
`Relying On The Motivation Of Providing A “Unitary” System, The Petition Alleged
`That It Was “Obvious” To Implement Robertson To Disclose This Limitation
`
`Pet., 14
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1003 [Wobbrock-Decl.] ¶86
`
`POR, 62-63
`
`78
`
`
`
`Robertson Is An X-Window Operating System, Which Is Integral
`To Its Purpose Of Designing XButtons
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 1005 [Robertson] 35, 38; POR, 63-64
`
`79
`
`
`
`The X-Window System Is Designed For “Network Transparency”
`(i.e., A Distributed System), Not A “Unitary” Environment
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶131; POR, 63-64
`
`80
`
`
`
`Petitioner’s X-Window Reference Confirms: X-Window Is
`Designed For “Network Transparency”
`
`Ex. 1027 [X-Window-System] 33
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 64
`
`81
`
`
`
`The Distributed Nature Of X-Window Is By Design To Achieve
`Specific Benefits
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶131; POR, 63-64
`
`82
`
`
`
`Robertson, Like Conventional X-Window Systems, De-Couples The
`Display From The Processor That Executes Its Code
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶133; POR, 63-64
`
`83
`
`
`
`Petitioner Presents No Analysis Why A POSITA Would Undo X-
`Windows Principle Of Operation To Provide A “Unitary System”
`
`Netflix Inc. v. DivX, LLC, IPR2020-00052, Paper 82, 39
`(PTAB Apr. 22, 2021) (rejecting combination that would
`“chang[e] the basic principle of Vehviläinen’s
`operation, consequently dissuading the combination
`with Kadono.”)
`
`In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (proposed
`combination is improper where it would change basic
`principles of operation of one of the references)
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x.
`755, 759 (Fed. Cir. 2015) (“Such a change in a
`reference's "principle of operation" is unlikely to
`motivate a person of ordinary skill to pursue a
`combination with that reference.”)
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 6-7
`
`84
`
`
`
`Reply Belatedly And Improperly Attempts To Change The
`Petition’s Obviousness Theory For Claim 1
`
`Petition: “Obvious” To Implement
`Robertson To Disclose Limitation
`“A POSITA would have found it obvious
`to store Robertson’s user interface
`computer program code in a non-
`transitory computer readable medium
`of the laptop, PDA, or other handheld
`computing device to provide a unitary
`system.”
`
`Reply: The Petition Argued Robertson
`Inherently Discloses The Limitation
`“Neonode is wrong that Petitioner did
`not argue that Robertson teaches
`computer program code being read
`by a mobile handheld computer unit.
`POR 62-65. The Petition explains that a
`POSITA would have understood
`Robertson’s interface code would be
`stored on the device or the device
`would not function.”
`
`Pet., 14
`
`Demonstrative Exhibit – Not Evidence
`
`Reply, 18
`
`Sur-Reply, 13
`
`85
`
`
`
`That Robertson “Would Not Function” Unless The Same Device Executes
`Code And Presents User Interface Is Refuted By X-Window System
`
`Ex. 1027 [X-Window-System] 33
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 64
`
`86
`
`
`
`Table Of Contents
`
`1.
`
`Secondary Indicia
`
`2. Robertson Grounds:
`i.
`“gliding … away” (All Claims)
`ii. One-Option limitation (All Claims)
`iii. Computer Program Code “read by a mobile handheld
`computer unit” (All Claims)
`iv. “a mobile handheld computer unit” (All Claims)
`v. Robertson Is Not Analogous Art (All Claims)
`
`3.
`
`Tarpenning Grounds Fail To Show “gliding … away” (All Claims)
`
`Demonstrative Exhibit – Not Evidence
`
`87
`
`
`
`The Claims Require “a mobile handheld computer unit”
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 56
`
`88
`
`
`
`Petitioner Relies On Robertson, Or Alternatively, Robertson And
`Madallozzo For “a mobile handheld computer unit”
`
`Pet., 12
`
`Demonstrative Exhibit – Not Evidence
`
`89
`
`
`
`Undisputed: Robertson Does Not Disclose “a mobile handheld
`computer unit”
`
`Ex. 1003 [Wobbrock-Decl.] ¶87
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 56-57
`
`90
`
`
`
`Robertson (1991) Is Designed For A Client-Server Network Of
`Desktop Computers In A Research Setting Of The Early 90s
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶60; POR, 56
`
`91
`
`
`
`Robertson’s Use Of “mouse or pen” As An Input Device Does Not
`Mean It Is a “mobile handheld computer unit”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶119; POR, 57
`
`92
`
`
`
`Robertson’s Disclosure Of Generic Programming Languages Does Not
`Mean That It Is Designed For “a mobile handheld computer unit”
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2019 [Rosenberg Decl.] ¶120; POR, 57-58
`
`93
`
`
`
`Reply: The Combination Uses Maddalozzo As A Prop For A Blackbox,
`Unspecified Device To Implement Robertson’s “Interface”
`
`Demonstrative Exhibit – Not Evidence
`
`94
`
`
`
`The Petition: Implement Robertson’s XButtons And Gestures, Not
`Generic “Interface”
`
`Pet., 15
`
`Pet., 16
`
`Demonstrative Exhibit – Not Evidence
`
`95
`
`
`
`POPR: Without Specificity On The Mobile Unit’s Interface, It Is
`Impossible To Opine On Motivation To Implement XButtons In It
`
`Dr. Rosenberg’s First Declaration
`
`Demonstrative Exhibit – Not Evidence
`
`Ex 2001 [Rosenberg-1st-Decl.] ¶48; POPR (Paper 15), 26-27; Sur-Reply, 16
`
`96
`
`
`
`I.D.: The Combination Implements Robertson’s XButton’s “In
`Maddalozzo’s Mobile Handheld Devices” With Their User Interface
`
`Patent Owner contends that “Petitioner uses Maddalozzo as a prop for a different
`combination: Robertson and some undefined ‘mobile handheld computer unit’”
`and so Petitioner fails to clearly articulate its proposed combination and how it
`would operate. Prelim. Resp. 26–27. But Patent Owner appears to misunderstand
`Petitioner’s asserted ground. … Petitioner relies Maddalozzo as disclosing a mobile
`handheld device (e.g., laptop or PDA) with a touch-based user interface and
`argues that an ordinarily skilled artisan would have implemented Robertson’s code
`and XButtons on such a mobile handheld device. … As to Petitioner’s assertion that
`an ordinarily skilled artisan would have used Robertson’s XButtons in Maddalozzo’s
`mobile handheld devices to enhance user experience through more capable
`buttons, ….
`
`Demonstrative Exhibit – Not Evidence
`
`Paper 19 [Institution Decision] 35-36
`
`97
`
`
`
`None Of Petitioner’s Purported Motivations To Use Robertson’s
`XButtons Have Any Application To Madallozzo’s Mobile Device
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 59-62
`
`98
`
`
`
`Madallozzo’s Device Utilizes A Simple User Interface With Three
`Keys
`
`M-Key (mouse mode)
`presents a cursor
`
`K-Key (keyboard mode)
`presents a keyboard
`
`D-Key (display mode) takes
`device to normal display mode
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 59
`
`99
`
`
`
`Madallozzo Already Provides “A Small Form Factor With A
`Convenient User Interface”
`
`Pet., 16
`
`What Is The Benefit Of Petitioner’s Combination
`For Madallozzo’s Device?
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 60-61
`
`100
`
`
`
`Madallozzo Already Operates Without A Mouse Or A Keyboard
`
`Pet., 17
`
`What Is The Benefit Of Petitioner’s Combination
`For Madallozzo’s Device?
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 60-61
`
`101
`
`
`
`Petitioner Fails To Prove How Robertson’s Multi-Action XButtons Are
`“Simple[r]” Or “More Convenient” Than Madallozzo’s Existing System
`
`Robertson’s Button Editor With At Least Eight Gestures
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1005 [Robertson] Fig. 3; POR, 60; Pet., 8
`
`102
`
`
`
`Petitioner Fails To Show Any Reason Why A POSITA Would Have
`Implemented XButtons In Madallozzo’s Device
`
`“Because each device independently operates
`effectively, a person having ordinary skill in the
`art, who was merely seeking to create a better
`device to drain fluids from a wound, would have
`no reason to combine the features of both
`devices into a single device. .”
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012)
`
`“At the very least, Petitioner has not adequately
`supported its “good idea” rationale for storing
`recovery information in the main
`memory database.”
`Hulu LLC v. Sound View Innovations, IPR2018-00582, Paper 34, 20-21 (PTAB Aug. 5,
`2019) (informative)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 60-61
`
`103
`
`
`
`Even If XButtons Were Somehow “Better,” That Is Not Sufficient
`Motivation To Combine
`
`Rejecting as insufficient motivation that “you wanted
`to build something better. You wanted a system that
`was more efficient, cheaper, or you wanted a
`system that had more features, makes it more
`attractive to your customers, because by combining
`these two things you could do something new that
`hadn't been able to do before.”
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed.
`Cir. 2012)
`
`“[S]tatements of increased utility and minimal
`modifications are generic, and fail to provide
`necessary factual support—they are akin to stating
`in a conclusory fashion that the combination ‘would
`have been obvious.’”
`Samsung Austin Semiconductor, LLC v. Red Rock Analytics, LLC, IPR2018-00556,
`Paper 18, 21 (Aug. 20, 2018)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 60-61
`
`104
`
`
`
`Reply And Dr. Wobbrock’s Second Declaration Did Not Respond To
`Showing Of No Motivation To Implement XButtons In Madallozzo’s Device
`
`Demonstrative Exhibit – Not Evidence
`
`105
`
`
`
`Table Of Contents
`
`1.
`
`Secondary Indicia
`
`2. Robertson Grounds:
`i.
`“gliding … away” (All Claims)
`ii. One-Option limitation (All Claims)
`iii. Computer Program Code “read by a mobile handheld
`computer unit” (All Claims)
`iv. “a mobile handheld computer unit” (All Claims)
`v.
`Robertson Is Not Analogous Art (All Claims)
`
`3.
`
`Tarpenning Grounds Fail To Show “gliding … away” (All Claims)
`
`Demonstrative Exhibit – Not Evidence
`
`106
`
`
`
`Only Analogous Art Qualifies As Prior Art
`
`• “A reference qualifies as prior art for an
`obviousness determination under § 103 only when
`it is analogous to the claimed invention.”
`In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
`
`• “Non-analogous art is too remote to constitute
`prior art.”
`Penda Corp. v. United States, 29 Fed. Cl. 533, 557-58 (Fed. Cl. 1993)
`
`• “An assessment of whether relied-upon art is
`analogous is a threshold inquiry ...”
`Victoria’s Secret v. Andra Group, IPR2020-00853, Paper 14, 3 (PTAB Dec. 11, 2020)
`• “The threshold issue is whether [the reference] is
`analogous art...”
`Kingston v. Polaris, IPR2020- 00853, Paper 14, 3 (PTAB Dec. 11, 2020)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 18
`
`107
`
`
`
`Undisputed: Petitioner Has Burden Of Proving Robertson Is
`Analogous Art
`
`“Petitioner bears the burden of showing
`by a preponderance of evidence that
`the asserted prior art references are
`analogous art ... ”
`
`Schott Gemtron Corp. v. SSW Holding Co., Inc.
`IPR2013-00358, Paper 106, 26 (PTAB Aug. 20, 2014)
`
`The Board routinely denies institution where a petition fails to demonstrate
`reference is analogous (POR, 18-19, collecting cases)
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 18-19
`
`108
`
`
`
`The Petition Fails As A Matter Of Law Because It Provided No
`Analysis Regarding Analogous Art
`
`• No mention of “analogous art,”
`“field of endeavor” or “problem”
`in Petition
`
`• No analysis in Petition
`
`• No analysis in Dr. Wobbrock’s first
`declaration
`
`Demonstrative Exhibit – Not Evidence
`
`POR, 20-21
`
`109
`
`
`
`Petitioner Attempts For The First Time To Show Robertson Is
`Analogous Art In Its Reply
`
`Demonstrative Exhibit – Not Evidence
`
`Sur-Reply, 17
`
`110
`
`
`
`Two Analogous Art Tests
`
`“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 particul
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