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
`U.S. Patent No. 8,095,879
`
`DECLARATION OF CRAIG ROSENBERG, PH.D.
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 1
`
`

`

`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. QUALIFICATIONS ............................................................................................ 1
`III. INFORMATION CONSIDERED .....................................................................10
`IV. RELEVANT LEGAL STANDARDS ...............................................................10
`A.
`Claim Interpretation ............................................................................10
`B.
`Perspective of one of Ordinary Skill in the Art ..................................11
`C. Anticipation .........................................................................................11
`D. Obviousness .........................................................................................12
`E.
`Summary of my Opinions ...................................................................15
`V. THE ‘993 PATENT .........................................................................................15
`A.
`Priority Date. .....................................................................................15
`B.
`Level of Skill Ordinary in the Art. ..................................................15
`VI. CLAIM CONSTRUCTION ............................................................................16
`VII. EXPLANATION OF PATENTABILITY ....................................................17
`A. Ground 1 ..............................................................................................17
`1.
`A POSA Would Not have been Motivated to Incorporate
`Robertson’s Interface into Maddalozzo or Some
`Undefined Mobile Handheld Computer Unit (Limitation
`1[Preamble]) ........................................................................................17
`Robertson’s Phone Button is Not a Representation of
`Either the xbedit or dialphone Functions (Limitation 1[a]) ................46
`B. Ground 4 ............................................................................................51
`
`2.
`
`i
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`EX2001
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`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 2
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`

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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`1.
`
`A POSA Would Not have been Motivated to Modify
`Tarpenning’s Book and Library Menu Icons for
`Activation by Touch and Glide (Limitation 1[c]) ...........................51
`C. Grounds 1-6 ........................................................................................56
`VIII. CONCLUSION ..............................................................................................57
`
`
`
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`ii
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`IPR2021-01041 (US 8,095,879)
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`I, Craig Rosenberg, Ph.D., declare as follows:
`
`1.
`
`I.
`
`INTRODUCTION
`I have been retained by Neonode Smartphone LLC (“Respondent”) as
`2.
`
`an independent expert consultant in this inter partes review (“IPR”) proceeding
`
`before the United States Patent and Trademark Office (“PTO”).
`
`3.
`
`I have been asked by Respondent’s counsel (“Counsel”) to consider
`
`whether certain references render Claims 1-6 and 12-17 of U.S. Patent No.
`
`8,095,879, (“the ‘879 Patent”) (EX1001) unpatentable for the reasons set forth in
`
`the Petition for Inter Partes Review of United States Patent No. 8,095,879, Case
`
`No. IPR2021-1041 (“the Petition”), and the accompanying Declaration of Jacob O.
`
`Wobbrock, Ph.D., and supporting exhibits. My opinions and the bases for my
`
`opinions are set forth below.
`
`4.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work, which is $450 per hour. My compensation is in no way contingent on
`
`the nature of my findings, the presentation of my findings in testimony, or the
`
`outcome of this or any other proceeding. I have no financial interest in this
`
`proceeding.
`
`II. QUALIFICATIONS
`All of my opinions stated in this declaration are based on my own
`5.
`
`personal knowledge and professional judgment. In forming my opinions I have
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`relied on my knowledge and experience in in human factors, user interface design,
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`user interaction design, human-computer interaction, and software engineering.
`
`6.
`
`I am over 18 years of age and, if I am called upon to do so, I would be
`
`competent to do testify as to the matters set forth herein. 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 EX2002. In addition, a brief
`
`summary of my qualifications is included below.
`
`7.
`
`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
`
`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.
`
`8.
`
`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,
`
`2
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`writing research proposals, designing and conducting funded human factors
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`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.
`
`9.
`
`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.
`
`10. For the past 21 years, I have served as a consultant for Global
`
`Technica, Sunny Day Software, Stanley Associates, Techrizon, CDI Corporation,
`
`3
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`and the Barr Group. In this capacity, I have provided advanced engineering
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
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`services for many companies.
`
`11.
`
`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
`
`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.
`
`12.
`
`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
`
`4
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`EX2001
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
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`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.
`
`13.
`
`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 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.
`
`14. 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.
`
`5
`
`EX2001
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
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`I was the lead user interface designer for a company called
`
`15.
`
`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, photo taking and sharing, etc. The ObjectSpeed device was
`
`specifically designed and developed as a portable handheld device.
`
`16.
`
`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.
`
`17.
`
`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.
`
`18.
`
`I am the co-founder of a medical technology company called
`
`Healium. Healium developed advanced wearable and handheld user interface
`
`6
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`EX2001
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`technology to allow physicians to more effectively interact with electronic medical
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`records.
`
`19.
`
`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.
`
`20.
`
`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 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.
`
`21.
`
`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
`
`7
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`EX2001
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`Foundation award for furthering the field of flight simulation and virtual interface
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`design. I have also created graphics for several popular book covers as well as
`
`animations for a movie produced by MIRAMAR.
`
`TESTIFYING EXPERIENCE
`
`
`• Foursquare Labs v. Silver State Intellectual Technologies, IPR2014-00159
`
`• Silver State Intellectual Technologies v. Garmin, District of Nevada, 2:11-
`cv-01578-PMP-PAL
`
`• Select Retrieval v. Overstock, District of Delaware, 1:11-cv-00812-RGA
`
`• Location Labs v. LocatioNet, IPR2014-00199
`
`• Intellectual Ventures v. Google, IPR2014-00787
`
`• FTC v. Amazon, 2:14-cv-01038-JCC (Eastern District of Texas)
`
`• Valmont v. Lindsay, IPR2015-01039
`
`• Ford Class Action, 13-cv-3072-EMC (N.D. California.)
`
`• BeUbiq v. Curtis Consulting Group, 1-14-cv-270691 (S.D.N.Y.)
`
`• Edulog v. DML, DV-06-1072 (Montana Fourth Judicial Court, Missoula)
`
`• GEMSA v. Alibaba, 6:16-cv-00098 (M.D. Florida)
`
`• Level One Technologies v. Penske Truck Leasing, 4:14-cv-1305-RWS (E.D.
`Missouri)
`
`• Title Source v. HouseCanary, 016-CI-06300 (Texas Dist. (state court), Bexar
`Co.)
`
`• Sony v. Arris, Pace, 337-TA-1049 (International Trade Commission case)
`
`8
`
`EX2001
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`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`
`• Tatsoft v. InduSoft, D-1-GN-14-001853 (Texas state court case)
`
`• Courthouse News Service v. Yamasaki, 8:17-cv-00126 AG (KESx) (C.D.
`Cal.)
`
`• Princeton Digital Image Corp. v. Konami, 12-1461-LPS-CJB (D. Del)
`
` •
`
` FCA US LLC Monostable Electronic Gearshift Litigation, 16-md-02744
`(E.D. Michigan)
`
` •
`
` Barbaro Technologies, LLC. v. Niantic, Inc., 3:18-cv-02955-RS (N.D.
`California)
`
` Blackberry Limited. v. Facebook, Inc., 2:18-cv-01844 (C.D. California)
`
` Blackberry Limited. v. Snap, Inc., 2:18-cv-02693 (C.D. California)
`
` Saracen LLC v. Marginal Unit, Inc., 4:18-cv-3714 (S.D. Texas)
`
` •
`
` •
`
` •
`
` •
`
` •
`
` Fidelity Information Services, LLC v. Groove Digital, Inc., IPR2019-00050
`
` U.S. Oil & Refining Co., v. City of Tacoma, 18-2-07232-3 (Superior Court of
`Washington)
`
` •
`
` •
`
` X One v. Uber, 5:16-CV-06050-LHK (N.D. California, San Jose Div.)
`
` Kipu Systems, LLC v. ZenCharts, LLC, 1:17-cv-24733-KMW-EGT (S.D.
`Florida)
`
` •
`
` Maxell, LTD., v. Apple Inc., 5:19-cv-0036-RWS (E.D. Texas)
`
`• Aatrix Software, Inc. v. Green Shades Software, Inc., 3:15-cv-00164-J-
`lOMCR (M.D. Florida)
`
`• Universal Electronics Inc. v. Roku, Inc., 337-TA-1200 (I.T.C)
`
`
`9
`
`EX2001
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`• Opal Labs, Inc., v. Sprinklr, Inc., 3:18-cv-01192-HZ (Dist. of Oregon,
`Portland Div.)
`
`• ExactLogix, Inc. d/b/a AccuLynx.com, v. JobProgress, LLC., 3:18-cv-50213
`(Northern Dist. of Illinois, Western Div.)
`INFORMATION CONSIDERED
`In preparing this declaration, I have considered the Petition, the
`22.
`
`III.
`
`Wobbrock Declaration, the exhibits filed with the Petition, and other materials
`
`discussed in this declaration, including, for example, the ’879 Patent, the
`
`references cited by the ’879 Patent, the prosecution file of the ’879 Patent, various
`
`background articles and materials referenced in this declaration, and any other
`
`materials identified in this declaration. In addition, my opinions are further based
`
`on my education, training, experience, and knowledge in the relevant field.
`
`IV. RELEVANT LEGAL STANDARDS
`I am not an attorney and offer no legal opinions. For the purposes of
`23.
`
`this Declaration, I have been informed about certain aspects of the law that are
`
`relevant to my analysis, as summarized below.
`
`A. Claim Interpretation
`I have been informed and understand that in an IPR proceeding,
`24.
`
`claims are to be interpreted according to the Phillips claim construction
`
`methodology, which, generally speaking, requires that claims be given their
`
`ordinary and customary meaning to a person of ordinary skill in the art at the time
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`10
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`of the invention, by considering the claims, the specification and the prosecution
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
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`history, as well as evidence extrinsic to the patent. Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005). I have been informed and understand that claim
`
`construction is a matter of law and that the final claim constructions for this
`
`proceeding will be determined by the Patent Trial and Appeal Board (“PTAB”).
`
`B.
`
`Perspective of one of Ordinary Skill in the Art
`I have been informed and understand that a patent is to be understood
`25.
`
`from the perspective of a hypothetical “person of ordinary skill in the art”
`
`(“POSA”). Such an individual is considered to possess normal skills and
`
`knowledge in a particular technical field (as opposed to being a genius). I
`
`understand that in considering what the claims of a patent require, what was known
`
`prior to that patent, what a prior art reference discloses, and whether an invention
`
`is obvious or not, one must use the perspective of such a POSA.
`
`C. Anticipation
`I have been informed and understand that a patent claim is anticipated
`26.
`
`under 35 U.S.C. § 102, and is therefore invalid, if all of the elements of the claim
`
`are disclosed by a single prior art reference.
`
`27.
`
`I understand that a claim is anticipated if each and every element as
`
`set forth in the claim is found, either expressly or inherently, in a single prior art
`
`reference. For example, I understand that a claim limitation is inherently disclosed
`
`11
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`if it is not explicitly present in the written description of the prior art, but would
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
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`necessarily be embodied or met by an apparatus or method as taught by the prior
`
`art. Moreover, I understand that anticipation does not require that the prior art use
`
`the same terminology recited within the patent claims.
`
`D. Obviousness
`I have been informed and understand that a patent claim is obvious
`28.
`
`under 35 U.S.C. § 103, and therefore invalid, if the claimed subject matter, as a
`
`whole, would have been obvious to a POSA as of the priority date of the patent
`
`based on one or more prior art references and/or the knowledge of a POSA.
`
`29.
`
`I understand that an obviousness analysis must consider (1) the scope
`
`and content of the prior art, (2) the differences between the claims and the prior art,
`
`(3) the level of ordinary skill in the pertinent art, and (4) secondary considerations,
`
`if any, of non-obviousness (such as unexpected results, commercial success, long
`
`felt but unmet need, failure of others, copying by others, and skepticism of
`
`experts).
`
`30.
`
`I understand that a prior art reference may be combined with other
`
`references to disclose each element of the invention under 35 U.S.C. § 103. I
`
`understand that a reference may also be combined with the knowledge of a POSA,
`
`and that this knowledge may be used to combine multiple references. I further
`
`understand that a POSA is presumed to know the relevant prior art. I understand
`
`12
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`that the obviousness analysis may take into account the inferences and creative
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
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`steps that a POSA would employ.
`
`31.
`
`In determining whether a prior art reference would have been
`
`combined with other prior art or other information known to a POSA, I understand
`
`that the following principles may be considered:
`
`a. whether the references to be combined involve non-analogous art;
`
`b. whether the references to be combined are in different fields of endeavor
`
`than the alleged invention in the Patent;
`
`c. whether the references to be combined are reasonably pertinent to the
`
`problems to which the inventions of the Patent are directed;
`
`d. whether the combination is of familiar elements according to known
`
`methods that yields predictable results;
`
`e. whether a combination involves the substitution of one known element
`
`for another that yields predictable results;
`
`f. whether the combination involves the use of a known technique to
`
`improve similar items or methods in the same way that yields
`
`predictable results;
`
`g. whether the combination involves the application of a known technique
`
`to a prior art reference that is ready for improvement, to yield
`
`predictable results;
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`h. whether the combination is “obvious to try”;
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
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`i. whether the combination involves the known work in one field of
`
`endeavor prompting variations of it for use in either the same field or a
`
`different one based on design incentives or other market forces, where
`
`the variations are predictable to a POSA;
`
`j. whether there is some teaching, suggestion, or motivation in the prior art
`
`that would have led one of ordinary skill in the art to modify the prior
`
`art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention;
`
`k. whether the combination requires modifications that render the prior art
`
`unsatisfactory for its intended use;
`
`l. whether the combination requires modifications that change the
`
`principle of operation of the reference;
`
`m. whether the combination is reasonably expected to be a success; and
`
`n. whether the combination possesses the requisite degree of predictability
`
`at the time the invention was made.
`
`32.
`
`I understand that in determining whether a combination of prior art
`
`references renders a claim obvious, it is helpful to consider whether there is some
`
`teaching, suggestion, or motivation to combine the references and a reasonable
`
`14
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`expectation of success in doing so. I understand, however, that a teaching,
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`suggestion, or motivation to combine is not required.
`
`E.
`
`Summary of my Opinions
`I have been asked to consider whether the claims of the ‘879 Patent
`33.
`
`identified in the Petition are unpatentable for the reasons asserted in the Petition
`
`and in Dr. Wobbrock’s declaration. As explained below in detail in this
`
`declaration, it is my opinion that none of the claims of the ‘879 Patent identified in
`
`the Petition and in Dr. Wobbrock’s declaration are unpatentable for the reasons
`
`asserted therein.
`
`V. THE ‘993 PATENT
`
`A. Priority Date.
`I assume that the priority date for the invention claimed in the ‘879
`34.
`
`Patent is December 10, 2002. Accordingly, when I reference the knowledge of a
`
`POSA, or how a POSA would understand various disclosures, I do so as of
`
`December 10, 2002. If the priority date of the ‘879 Patent were to be determined
`
`to be an earlier date in 2002, or in 2000 or 2001, my opinions expressed herein
`
`would not change.
`
`B. Level of Skill Ordinary in the Art.
`35. Dr. Wobbrock contends that “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
`
`15
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`EX2001
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`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 18
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`Computer Science, Human-Computer Interaction, Symbolic Systems, or related
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
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`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.” For the purpose of this declaration, I will apply the same
`
`definition of the level of skill of a POSA.
`
`36. Based on my experience, education, and training, I met the definition
`
`of a POSA in December 2002, the time of filing of the application that issued as
`
`the ’879 Patent, and I meet this definition today. I also had greater knowledge and
`
`experience than a POSA. I worked with POSAs in 2002, and I am able to render
`
`opinions from the perspective of a POSA based on my knowledge and experience.
`
`My opinions concerning the ’879 Patent claims and the prior art are from the
`
`perspective of a POSA, as set forth above.
`
`VI. CLAIM CONSTRUCTION
`I interpret the claims of the ’993 Patent according to the Phillips claim
`
`37.
`
`construction methodology referenced above. Phillips, 415 F.3d 1303. I have
`
`reviewed the specification and file history of the ’879 Patent from the point of
`
`view of a POSA, which informs my understanding of the scope of the claims.
`
`16
`
`EX2001
`
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`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 19
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`

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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
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`
`VII. EXPLANATION OF PATENTABILITY
`In this declaration, I principally address the assertions and opinions
`38.
`
`expressed by Dr. Wobbrock in his declaration, EX1003 submitted by Petitioner in
`
`support of the Petition. In doing so, it should be understood that I also address the
`
`arguments and statements made by Petitioner in the Petition that are based on or
`
`associated with the relevant portions of Dr. Wobbrock’s declaration.
`
`A. Ground 1
`1.
`
`A POSA Would Not have been Motivated to Incorporate
`Robertson’s Interface into Maddalozzo or Some Undefined
`Mobile Handheld Computer Unit (Limitation 1[Preamble])
`[1Preamble] “A non-transitory computer readable medium
`storing a computer program with computer program code,
`which, when read by a mobile handheld computer unit,
`allows the computer to present a user interface for the
`mobile handheld computer unit, the user interface
`comprising:”
`
`
`
`A Laptop is Not a Mobile Handheld Computer Unit
`
`39.
`
` Dr. Robertson refers several times to, e.g., “handheld computing
`
`devices, like laptop computers and PDAs.” This is an inaccurate characterization
`
`of laptop computers, because a typical laptop computer in 2002 (as today) is not a
`
`handheld computer unit.
`
`40. As a POSA would understand, one characteristic of a mobile handheld
`
`device is that it is typically designed to be held in in one hand while being operated
`
`17
`
`EX2001
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`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 20
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`by the same or the other hand. A POSA would understand that the term is used in
`
`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
`
`exactly this way in the ‘879 Patent. This is reflected in the description of the
`
`invention in the specification, which states that “[t]he user interface is also adapted
`
`to be operated by one hand, where the object can be a finger, such as the thumb, of
`
`a user of the computer unit, EX1001, 3:3-6, and that “the present invention relates
`
`to a user interface for a hand held mobile unit that preferably can be manageable
`
`with one hand.” EX1001, 6:4-6. This is also consistent with every illustration of
`
`the mobile handheld computer unit. EX1001, Figs. 8, 11-13. It is also consistent
`
`with the description of the invention as “adapted to run several applications
`
`simultaneously and to present an active application on top of any other application
`
`on the display area,” EX1001, 2:2-5, 3:59-61; this indicates that the invention
`
`eschews a tiled or cascaded window interface as is common with laptops and
`
`desktop systems, and that the user interface of the invention is intended to function
`
`on a display much smaller than that of a typical laptop computer. A POSA would
`
`understand, in 2002 as today, that a typical laptop computer is not designed to be
`
`held in and operated by one hand, and is therefore not a handheld computer unit.
`
`41. Dr. Wobbrock refers to a portion of the Description of Background
`
`Art, which he characterizes as stating that “’[m]obile handheld computers are
`
`known in various embodiments,’ including ‘the personal digital assistant (PDA)’
`
`and ‘the laptop computer, which is getting smaller and smaller, even competing in
`
`18
`
`EX2001
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`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 21
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`size with the PDA’s.’” EX1003, ¶93 & n.2. Dr. Wobbrock cites to this language
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-01041
`
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`in support of a statement he makes concerning “mobile computing devices,” but
`
`later in the same sentence he appears to switch his focus to “such handheld
`
`computer devices,” appearing to lump laptop computers into this category.
`
`42.
`
`I agree with Dr. Wobbrock here that a laptop computer is a type of
`
`mobile computer in that it can be easily taken with the user as they travel, but I do
`
`not agree with his assertion that a laptop is a mobile handheld computer for the
`
`reasons set forth above. I also do not believe that a POSA would have read the
`
`language to which Dr. Wobbrock cites in the same manner in which he appears to
`
`be reading it. The full sentence reads:
`
`A third kind of handheld computer is the laptop computer, which is getting
`
`smaller and smaller, even competing in size with the PDAs.
`
`A POSA would understand this sentence to be referring to laptop computers of a
`
`size similar to that of a PDA, enabling one-handed operation. This would be
`
`consistent with the common understanding of what a handheld computer unit is,
`
`i.e., a computing unit that you can operate with one hand. A POSA would not read
`
`this to mean that laptop computers generally are definitionally a type of “handheld
`
`computer,” particularly in light of the repeated statements in the patent that the
`
`invention is adapted for a device that may be operated with one hand.
`
`19
`
`EX2001
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2001 - Page 22
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`Robertson Does Not D