Trials@uspto.gov
`571-272-7822
`
`PUBLIC VERSION
`
`
`
`
`
`Paper 71
`Date: July 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`PUBLIC VERSION
`
`
`
`
`
`Paper 71
`Date: July 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
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`IPR2021-00145
`Patent 8,812,993 B2
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`
` INTRODUCTION
`
`In response to a Petition (Paper 6, “Pet.”) filed by Petitioners
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and
`Apple Inc. (collectively, “Petitioner”),1 the Board instituted an inter partes
`review of claims 1–8 of U.S. Patent No. 8,812,993 B2 (Ex. 1001, “the
`’993 patent”). Paper 24. Patent Owner Neonode Smartphone LLC
`(“Neonode”)2 filed a Patent Owner Response under seal (Paper 29, “PO
`Resp.”; redacted version as Ex. 1047), Petitioner filed a Reply to the Patent
`Owner Response (Paper 49, “Pet. Reply”), and Neonode filed a Sur-reply
`(Ex. 2028, “PO Sur-reply”; public redacted version as Paper 55).
`We held an oral hearing on March 17, 2022, and the transcript is
`entered on the record. Paper 67 (“Tr.”).
`This is a final written decision under 35 U.S.C. § 318(a) as to whether
`the claims challenged in the inter partes review are unpatentable. For the
`reasons below, we conclude that Petitioner has shown that all the challenged
`claims are unpatentable on at least one ground of the Petition.
`We also deny Petitioner’s Motion to Exclude Evidence (Paper 60;
`Neonode’s Opposition filed as Paper 61; Petitioner’s Reply filed as Paper
`62), we grant Neonode’s unopposed Motion to Submit Supplemental
`Information (Paper 63; Petitioner’s Opposition filed as Paper 66), and we
`grant Neonode’s unopposed Motion to Seal (Paper 65).
`
`
`1 The Petition identifies the named Petitioners as the real parties in interest.
`Pet. 93.
`2 Neonode identifies itself as the real party in interest. Paper 7, 2.
`
`2
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` BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`The parties identify the following as related matters: Neonode
`Smartphone LLC v. Apple Inc., No. 6:20-cv-00505 (W.D. Tex. filed June 8,
`2020); and Neonode Smartphone LLC v. Samsung Electronics Co. Ltd., No.
`6:20-cv-00507 (W.D. Tex. filed June 8, 2020). Pet. 93–94; Paper 7, 2.
`
`B.
`
`THE ’993 PATENT (EX. 1001)
`
`The ’993 patent relates to a user interface on a device that has a touch-
`sensitive display screen. See Ex. 1001, 1:14–17, code (57). Figure 1 of the
`’993 patent, reproduced below, illustrates such a user interface:
`
`
`Figure 1 depicts a touch-sensitive area (1) on a mobile handheld device.
`Ex. 1001, 3:30–31, 3:57–60. It is divided into a menu area (2) and a display
`area (3). Id. at 3:60–61. Menu area 2 is a narrow strip along the lower part of
`touch-sensitive area 1 that contains predefined functions 21 (a general
`application-dependent function), 22 (a keyboard), and 23 (a task and file
`manager). Id. at 4:9–14.
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`Figure 2, reproduced below, shows how to activate the functions in
`menu area 2:
`
`
`Figure 2 of the ’993 patent, above, illustrates a touch gesture by which a user
`may activate functions 21, 22, or 23 in area 2. See Ex. 1001, 4:15–19. This
`gesture begins when object 4 (in this case a finger) touches the display at
`point A within representation 21, 22, or 23, and moves in direction B away
`from menu area 2 into display area 3. Id.
`Figure 3, reproduced below, illustrates the touch screen after function
`21 has been activated:
`
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`Ex. 1001, 3:33. Figure 3, above, shows that after a user activates function 21
`with the gesture as illustrated in Figure 2, display area 3 displays icons 211–
`216, which each represent services or functions depending on the currently
`active application. Id. at 4:20–23. If there is no currently active application,
`the icons may “represent services or settings of the operations system of the
`computer unit, such as background picture, clock alarm 215, users 213, help
`211, etc.” Id. at 4:36–40. Analogously, selecting function 22 activates a
`keyboard, and selecting function 23 activates a library of available
`applications and files on the device. Id. at 4:43–45, 5:3–5, Figs. 5–6.
`Figure 4, reproduced below, illustrates how a user selects one of icons
`211–216 in Figure 3:
`
`
`Figure 4, above, is a schematic illustration showing object 4 (a finger)
`selecting function 213 by “tapping C, D on corresponding icon 213.”
`Ex. 1001, 4:41–42.
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`5
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`C.
`
`CHALLENGED CLAIMS AND GROUNDS
`
`[1.a]
`[1.b]
`
`[1.c]
`
`Sole independent claim 1, which exemplifies the other challenged
`claims, is as follows:
`[1.pre]
`1. A non-transitory computer readable medium storing
`instructions, which, when executed by a processor of an
`electronic device having a touch-sensitive display screen,
`cause the processor to enable a user interface of the device,
`the user interface comprising at least two states, namely,
`(a) a tap-present state, wherein a plurality of tap-activatable
`icons for a respective plurality of pre-designated system
`functions are present, each system function being activated
`in response to a tap on its respective icon, and
`(b) a tap-absent state, wherein tap-activatable icons are
`absent but an otherwise-activatable graphic is present in a
`strip along at least one edge of the display screen for
`transitioning the user interface from the tap-absent state to
`the tap-present state in response to a multi-step user gesture
`comprising
`(i) an object touching the display screen within the strip, and
`(ii) the object gliding on the display screen away from and
`out of the strip.
`
`[1.d]
`
`Ex. 1001, 6:50–65 (formatting and reference letters added). Claims 2–8,
`which Petitioner also challenges, depend directly from claim 1. See id. at
`6:66–7:21.
`
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`Petitioner argues eight grounds (1A–D and 2A–D) of unpatentability,
`as summarized in the following table:
`Ground Claim(s)
`Challenged
`1A
`1–3, 7, 8
`1B
`4
`1C
`5
`1D
`6
`2A
`1–3, 7, 8
`2B
`4
`2C
`5
`2D
`6
`Pet. 1–2.
`
`35 U.S.C. § Reference(s)/Basis
`103(a)3
`Hisatomi,4 Ren5
`103(a)
`Hisatomi, Ren, Allard-6566
`103(a)
`Hisatomi, Ren, Tanaka7
`103(a)
`Hisatomi, Ren, Kodama8
`103(a)
`Hansen,9 Gillespie10
`103(a)
`Hansen, Gillespie, Allard-656
`103(a)
`Hansen, Gillespie, Tanaka
`103(a)
`Hansen, Gillespie, Kodama
`
`
`3 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act,
`Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
`(effective Mar. 16, 2013). The ’993 patent issued from an application filed
`on December 4, 2011, which is before the effective date of this amendment
`to section 103. See Ex. 1001, code (22).
`4 Hisatomi et al., JP 2002-55750A, published Feb. 20, 2002 (Ex. 1005,
`including certified translation).
`5 Xiangshi Ren & Shinji Moriya, Rodkin, Improving Selection Performance
`on Pen-Based Systems: A Study of Pen-Based Interaction for Selection
`Tasks, 7 ACM Transactions on Computer-Human Interaction, Sept. 2000, at
`384 (Ex. 1006).
`6 Allard et al., US 5,422,656, issued June 6, 1995 (Ex. 1007).
`7 Tanaka, US 5,249,296, issued Sept. 28, 1993 (Ex. 1008).
`8 Kodama et al., US 6,710,791 B1, issued Mar. 23, 2004 (Ex. 1016).
`9 Hansen, US 5,821,930, issued Oct. 13, 1998 (Ex. 1029).
`10 Gillespie et al., US 2005/0024341 A1, filed Apr. 17, 2002, based on a
`provisional application filed May 16, 2001, published Feb. 3, 2005
`(Ex. 1030).
`
`
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`D. DECLARATORY TESTIMONY
`
`Petitioner presents two declarations of Dr. Benjamin B. Bederson as
`expert testimony. Exs. 1002, 1051; see also Ex. 1004 (curriculum vitae).
`Petitioner also relies on a declaration of Jacob Robert Munford as to Ren’s
`public availability. See Ex. 1031.
`Neonode presents a declaration of Dr. Craig Rosenberg as expert
`testimony. Ex. 2013; see also Ex. 2002 (curriculum vitae). Neonode also
`submits declarations of Per Bystedt (Ex. 2015), Marcus Bäcklund
`(Ex. 2016),11 Joseph Shain (Ex. 2019), and Ulf Mårtensson (Ex. 2022)
`relating to alleged objective indicia of non-obviousness and the early
`development of products that, according to Neonode, embody the challenged
`claims. See PO Resp. 1, 13–17, 63–67.
`
` GROUNDS OF THE PETITION
`
`For the reasons below, we determine that Petitioner has shown, by a
`preponderance of the evidence, that claims 1–8 of the ’993 patent are
`unpatentable under the grounds based on the combination of Hisatomi and
`Ren (for claims 1–3, 7, and 8), as well as Allard-656 (for claim 4), Tanaka
`(for claim 5) and Kodama (for claim 6). We do not reach Petitioner’s
`grounds relying on Hansen and Gillespie. Before analyzing these grounds in
`detail, we address two matters that will underlie our analysis: the level of
`ordinary skill in the art and the construction we will apply to the claim
`terms.
`
`
`11 Petitioner moves to exclude certain portions of Exhibits 2015 and 2016
`(Paper 60), but we deny this motion as we discuss below in Section IV.
`
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`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the pertinent art at the time of the
`invention is a factor in how we construe patent claims. See Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). It is also one of
`the factors we consider when determining whether a patent claim is obvious
`over the prior art. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`To assess the level of ordinary skill, we construct a hypothetical
`“person of ordinary skill in the art,” from whose vantage point we assess
`obviousness and claim interpretation. See In re Rouffet, 149 F.3d 1350, 1357
`(Fed. Cir. 1998). This legal construct “presumes that all prior art references
`in the field of the invention are available to this hypothetical skilled artisan.”
`Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1993)).
`For Petitioner, Dr. Bederson testifies that a person of ordinary skill
`“would have had at least a bachelor’s degree in computer science, computer
`engineering, or the equivalent education and at least two years of experience
`in user-interface design and development. Additional years of experience
`could substitute for formal education, and vice versa.” Ex. 1002 ¶ 51; Pet. 17
`n.3 (citing this definition).
`Testifying for Neonode, Dr. Rosenberg states that for his declaration,
`he “will apply the same definition of the level of skill of a [person of
`ordinary skill in the art]” as Dr. Bederson. Ex. 2013 ¶ 34.
`We find Dr. Bederson’s uncontested articulation to be reasonable in
`light of the subject matter involved in the ’993 patent. Thus, we adopt it for
`our decision.
`
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`B.
`
`CLAIM CONSTRUCTION
`
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2021). This
`generally includes “construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. The ordinary
`and customary meaning of a claim term “is its meaning to the ordinary
`artisan after reading the entire patent,” and “as of the effective filing date of
`the patent application.” Phillips, 415 F.3d at 1313, 1321. There are only two
`circumstances in which a construction departs from the ordinary and
`customary meaning: “1) when a patentee sets out a definition and acts as
`[their] own lexicographer, or 2) when the patentee disavows the full scope of
`a claim term either in the specification or during prosecution.” Thorner v.
`Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Any
`such special meaning of a term “must be sufficiently clear in the
`specification that any departure from common usage would be so understood
`by a person of experience in the field of the invention.” Multiform
`Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
`To construe the claim terms, “we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v.
`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006).
`Petitioner does not propose any explicit claim constructions in the
`Petition. See Pet. 8. Neonode, however, urges us to construe the following
`terms: (1) an electronic device, (2) tap-activatable, and (3) system function.
`
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`See PO Resp. 5–13. We address the parties’ arguments as to these terms
`below.
`
`1.
`
`“an electronic device”
`
`Neonode contends that we should construe the preamble term an
`electronic device to mean “a mobile handheld computer,” and that the
`preamble is limiting because it provides antecedent bases for “the device,”
`“the user interface,” and “the display screen” referenced in the body of the
`claim. PO Resp. 5 (emphasis omitted) (citing Pacing Techs., LLC v. Garmin
`Int’l., Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015)).
`Petitioner does not contest Neonode’s argument that the preamble of
`claim 1 is limiting. See Pet. Reply 1–2. But according to Petitioner, a person
`of ordinary skill in the art would not have understood the term an electronic
`device to mean “a mobile handheld computer” because “claim 1 was
`amended during prosecution to remove the reference to ‘mobile handheld
`device’ in favor of ‘electronic device.’” Id. at 1 (citing Ex. 1003, 403).
`The parties’ arguments as to the meaning of an electronic device relate
`solely to Grounds 2A–D of the Petition, and we do not reach these grounds
`in our decision. See infra Section III.D; see also PO Resp. 45–52; Pet. Reply
`18–19; PO Sur-reply 17–18. Thus, we need not construe this term to resolve
`the contested issues in this case. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
`construe terms ‘. . . to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999))).
`
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`2.
`
`“tap-activatable”
`
`Neonode argues that we should construe the term tap-activatable to
`mean “activatable upon completion of a gesture that involves the input
`device touching a screen followed directly and immediately by lifting off the
`screen.” PO Resp. 8 (emphasis omitted). In support of this construction,
`Neonode points to Figure 4 of the ’993 patent reproduced above (supra part
`II.B) and an associated statement in the patent that this figure “shows that
`selection of a preferred service or setting is done by tapping C, D on a
`corresponding icon 213.” Id. at 8 (quoting Ex. 1001, 4:41–42).
`Citing testimony of Dr. Rosenberg, Neonode argues that a person of
`ordinary skill in the art would have understood that a “tap,” in this context,
`“means a gesture in which the input device (1) touches the screen, and then
`(2) lifts directly and immediately off the screen,” which is different from a
`“touch activation, in which processing is activated upon detecting the
`coordinates of the initial touch.” PO Resp. 8–9 (citing Ex. 2013 ¶¶ 44–48).
`Neonode distinguishes tap activation from “touch” activation, which also
`includes both a touch and a release, but “processing of the desired function
`is triggered by the coordinates of the initial touch in the touch-activation—
`the eventual lifting off or releasing is immaterial to the processing.” See id.
`at 17–18 (emphasis omitted) (citing Ex. 2013 ¶¶ 64–71).
`In its Reply, Petitioner contends that the term “tap-activatable” has its
`ordinary and customary meaning, and that nothing in the ’993 patent defines
`when, during the gesture shown in Figure 4, the selection occurs. Pet. Reply
`2 (citing Ex. 1051 ¶ 23). Petitioner also argues that “the ordinary meaning of
`‘tap’ does not require the ‘directly and immediately’ temporal aspect of
`Neonode’s construction, nor does the specification disclose it.” Id. at 3
`
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`(citing Ex. 1051 ¶¶ 24–25). Finally, Petitioner argues that we should
`disregard Dr. Rosenberg’s testimony on this issue because it is not properly
`supported. Id. (citing Ex. 2013 ¶¶ 44–48).
`We agree with Neonode that in the context of the ’993 patent, a “tap”
`is a single gesture that involves both touching a screen and lifting off the
`screen from approximately the same location, as shown in Figure 4, and that
`the activation does not occur until the user lifts off the screen. The
`specification supports this interpretation because in describing the tapping
`gesture, the ’993 patent refers both to steps C (the touch) and D (the release
`from the same location) in Figure 4 and a similar touch and release
`illustrated in Figure 7.12 See Ex. 1001, 4:41–42, 5:14–15. As to whether a
`tap involves lifting from approximately the same location as the touch, we
`note that claim 1 distinguishes a “tap” gesture from another gesture relating
`to an “otherwise-activatable graphic” (i.e., a graphic activatable otherwise
`than by a tap) that comprises “touching the display” at one location and
`“gliding on the display screen away from” the touch location. Id. at 6:59,
`6:63–65; see also id. at Fig. 2 (showing such a gliding gesture). Thus, the
`plain language of claim 1 distinguishes a tap from a gesture that involves
`sliding to a different location after the initial touch.
`We find no evidence of record to support Dr. Rosenberg’s opinion that
`the user must lift off the screen “immediately” after the touch. See Ex. 2013
`¶¶ 44–48. But we do find persuasive his testimony that the tap activation
`occurs only after the lifting part of the gesture. See id. ¶ 45. Otherwise, the
`
`
`12 In the context of Figure 7, the “tap” gesture takes place after (E) moving a
`finger or other object 4 to highlight a menu item within a task and file
`manager and then (F) releasing. See Ex. 1001, 5:3–35, Figs. 6, 7.
`
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`lifting part of the gesture would be irrelevant to the activation. Dr.
`Bederson’s testimony for Petitioner also supports this view. Ex. 2018,
`61:12–14 (“[A tap] corresponds to a ‘mouse up’ event following a ‘mouse
`down’ event.”)
`The evidence also supports Dr. Rosenberg’s opinion that the lifting
`part of the gesture takes place directly or almost directly from the location of
`the touch, as shown in Figures 4 and 7. See id. Dr. Bederson’s testimony for
`Petitioner supports this view. See Ex. 1002 ¶ 133 (testifying that at the
`relevant time, “the tap meant pressing the screen (with an object such as a
`finger of stylus) and releasing it in the same or almost the same position.”);
`Ex. 2018, 61:6–8 (“‘[T]ap’ in [the relevant] context meant pressing the
`screen and releasing it in the same or about the same position.”).
`We note that, on cross-examination, counsel for Petitioner asked Dr.
`Rosenberg about particular gesture described in Ren called “a→b→c→a.”
`See Ex. 1052, 83:19–20. As we discuss below (supra Section III.C.2), this
`gesture involves a pen touching a screen outside of a target (a→b), sliding
`onto the target (b→c), and then lifting off the target (c→a). See Ex. 1006, 7–
`8 & Fig. 3. In response to the question, Dr. Rosenberg testified that he would
`consider the “a→b→c→a” gesture to be a “tap” because “what’s important
`is was the stylus or finger or mouse cursor on the target at the moment that
`the finger or stylus or mouse button was released. That’s the salient part
`here.” See Ex. 1052, 83:11–84:2. But Neonode contends that
`Dr. Rosenberg’s cross-examination testimony was incorrect, and we agree.
`See PO Sur-reply 4 (citing Ex. 2013 ¶¶ 44–48). We find Dr. Rosenberg’s
`previous declaratory testimony more credible than his deposition testimony
`because only the former is consistent with the evidence in the ’993 patent,
`
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`discussed above, describing a tap as a touch and release from the same or
`nearly the same location, and clearly distinguishing from a separate gesture
`that comprises gliding to a different location.
`In its Reply, Petitioner notes Dr. Rosenberg’s contradictory testimony
`and argues that at least under Neonode’s proposed construction, a “tap”
`would include Ren’s “a→b→c→a” gesture. Pet. Reply 3, 9–10; see infra
`Section III.C.2. According to Petitioner, this gesture “allows the user to
`recover from an incorrect landing by sliding on to the target.” Pet. Reply 10.
`But Petitioner later clarifies that “[n]either Petitioner[] nor
`Dr. Bederson rely on Ren’s a→b→c→a route . . . as being within the scope
`of the term ‘tap’ or ‘tap-activatable.’” Paper 66, 2. Indeed, in a related IPR,
`counsel for Neonode asked Dr. Bederson whether a gesture equivalent to
`Ren’s “a→b→c→a” gesture would mean a “tap,” and he responded that he
`had not analyzed that question, but that “it probably doesn’t.” Ex. 2029,
`164:24.13
`Thus, for our decision, we interpret tap-activatable as being
`activatable by a gesture that involves touching a screen and then lifting off
`the screen from the same or nearly the same location.
`
`3.
`
`“system function”
`
`Neonode argues that we should construe the term system function to
`mean “services or settings of the operating system.” PO Resp. 9 (emphasis
`omitted). According to Neonode, the ’993 patent describes two
`
`
`13 This testimony is the subject Neonode’s unopposed motion to submit
`supplemental information under 37 C.F.R. § 42.123(b), which we grant as
`discussed below. See infra Section V.
`
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`embodiments: (1) a mode in which there is an active application and the
`display features a selection of icons depending on that application, and (2) a
`mode in which there is no active application and the icons represent pre-
`designated system functions. Id. at 9–10 (citing Ex. 1001, 2:25–29, 2:31–34,
`4:20–40, 7:6–13). Neonode contends that claim 1 is directed to this second
`mode rather than the first. Id. at 10 (citing Ex. 1001, 6:54–58).
`Petitioner disagrees that these two modes are distinct embodiments,
`because they both take place on a single user interface. Pet. Reply 5.
`According to Petitioner, the claim is satisfied while the device is operating in
`either mode, and “there is no support that the claims are limited only to a use
`case where no application is currently active.” See id.
`We agree with Petitioner. The evidence of record does not suggest that
`a person of ordinary skill in the art would have considered claim 1 to apply
`only where there is no active application. Rather, claim 1 is consistent with
`either operating mode, so long as in that mode, the display presents “a
`plurality of tap-activatable icons for a respective plurality of pre-designated
`system functions.” Ex. 1001, 6:55–57.
`Indeed, the ’993 patent discloses an icon for a “help” function in
`either mode, which Neonode concedes is a system function. See PO Resp. 10
`(citing Ex. 1001, 2:31–34, 4:36–40); see also Ex. 1001, 7:6–8 (claim 4,
`which depends from claim 1 and further recites that “the plurality of pre-
`designated system functions comprises a help function”). As Petitioner
`correctly points out, “a clock, alarm, or help function [does not] cease to be a
`service or setting of the operations system if an application is active.” Pet.
`Reply 17. Although a single help icon is not in itself a “plurality” of icons
`for system functions as recited in claim 1, the ’993 patent does not suggest
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`that, a “help” function is the only possible function that can be both a system
`function and one of the “services or functions depending on the current
`active application.” See Ex. 1001, 4:20–23.
`Neonode also distinguishes between an “application” and a “system
`function.” PO Resp. 11–13. According to Neonode, some of the applications
`described in the ’993 patent, such as those depicted in Figure 6, are in the
`context of a separate file and task manager comprising menu items that are
`not among the “tap-activatable” icons that would correspond to a system
`function. See id. at 11–12.14
`In its Reply, Petitioner argues that the ordinary and customary
`meaning of the term “function” includes an application or any other
`“program or routine,” and that a person of ordinary skill in the art would
`have recognized that icons correspond to applications. Pet. Reply 3 (citing
`Ex. 1057, 238, 31 (dictionary definitions for “function” and “application,”
`respectively); Ex. 1051 ¶¶ 28–29). Petitioner also argues that a former set of
`claims, which the applicant ultimately cancelled during prosecution, referred
`to “an alarm clock application,” “a help application,” “an application for
`setting the time for the clock,” and “an application for configuring a
`background picture for the touch sensitive display”—suggesting to a person
`
`
`14 We disagree that menu items in Figure 6 are not “tap-activatable,” because
`the ’993 patent states that each menu item is activated by highlighting it (E,
`F) and then “tapping G, H on the touch sensitive area 1.” Ex. 1001, 5:14–15.
`But we agree with Neonode that Figure 6 is not pertinent to the construction
`of system function for a different reason: only one menu item in figure 6—
`the highlighted one—is tap-activatable at any one time. See id. at 5:11–21.
`Thus, Figure 6 does not depict “a plurality of tap-activatable icons” as
`recited in claim 1, and would not correspond to the recited plurality of
`system functions. Id. at 6:55.
`
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`of ordinary skill in the art that alarm, help, clock, and background-setting
`system functions can be applications. Id. at 4 (emphasis omitted) (quoting
`Ex. 1003, 567) (citing Ex. 1001, 4:38–40, Fig. 3; Ex. 1003, 572–73;
`Ex. 1051 ¶ 32).
`Petitioner also argues that the ordinary meaning of system functions is
`not limited to functions of an operating system, but merely “includes
`functions that relate to the system of the particular device,” which may be
`“applications included with the operating system.” Pet. Reply 4 (citing
`Ex. 1051 ¶¶ 30–31).
`We agree with Petitioner that a “system function” can be an
`application in the context of the ’993 patent. But we agree with Neonode
`that a construction that includes any “functions that relate to the system of
`the particular device” (Pet. Reply 4) is too broad. First, we do not find
`credible Dr. Bederson’s testimony that a person of ordinary skill in the art
`“would have understood the ‘system functions’ to be any functions the
`mobile phone (i.e., the system) is capable of executing” (Ex. 1051 ¶ 30). As
`Neonode persuasively argues, this broad construction “reads ‘system’ out of
`the claim as a limiting element.” PO Sur-reply 9 (citing Wasica Fin. GmbH
`v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017)).
`Second, we agree with Neonode that Petitioner’s proposed broad
`construction is inconsistent with the prosecution history of the ’993 patent.
`During prosecution, the applicant deleted original claims reciting “an
`application” and replaced them with claims reciting “pre-designated system
`functions.” Ex. 1003, 403–04. The applicant also “distinguished several
`references on the ground that they did not disclose a home state presenting
`controls for a plurality of system functions.” PO Sur-reply 9 (Ex. 1003, 411–
`
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`415). This amendment evinces an intention to narrow the scope of the claims
`so that the recited “system functions” includes not just any functions or
`applications relating to the system, but functions of a type that could be
`accessible in a home screen where “no application is currently active on the
`computer unit.” Ex. 1001, 4:36–37. According to the ’993 patent, these
`functions would “represent services or settings of the operations system of
`the computer unit.” Id. at 4:38–39. As further support for this, the ’993
`patent refers to the services or settings associated with “applications”
`separately from the services or settings associated with “the operations
`system.” Id. at 2:25–34, 4:36–40, 4:63–65.
`Thus, although we agree with Petitioner that a “system function” can
`be a program or routine, we agree with Neonode that a person of ordinary
`skill in the art would have understood the term system function to be not just
`any program or routine operable on or relating to the system, but rather,
`services or settings of the operating system. We therefore construe the term
`system function to mean “services or settings of the operating system, which
`may include a program or routine.”
`
`C. OBVIOUSNESS OF CLAIMS 1–8 (GROUNDS 1A–D)
`
`We now consider Petitioner’s unpatentability grounds. First, Petitioner
`contends that claims 1–3, 7, and 8 are unpatentable under § 103(a) as
`obvious over Hisatomi in view of Ren, and that claims 4, 5, and 6 are
`unpatentable as obvious over Hisatomi and Ren, and further in combination
`with Allard-656 (claim 4), Tanaka (claim 5), or Kodama (claim 6). Pet. 1,
`27–63.
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`A claim is unpatentable under § 103(a) for obviousness if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). When a ground in a petition is based on a combination of references,
`we consider “whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`We base our obviousness inquiry on factual considerations including
`(1) the scope and content of the prior art, (2) any differences between the
`claimed subject matter and the prior art, (3) the level of skill in the art, and
`(4) any objective indicia of obviousness or non-obviousness that may be in
`evidence. See Graham, 383 U.S. at 17–18.
`Considering these factors, we determine that Petitioner has shown, by
`a preponderance of the evidence, that claims 1–8 are unpatentable under
`§ 103(a) as obvious based on Grounds 1A–D. We begin our analysis with a
`brief overview of Hisatomi and Ren, and then we address the parties’
`contentions with respect to the challenged claims.
`
`1.
`
`Overview of Hisatomi
`
`Hisatomi is a foreign application published on February 20, 2002. See
`Ex. 1005, code (43). It describes a notebook-size portable information
`device with a built-in camera and microphone, and with a display screen that
`receives coordinate information from a pen-type input device. Id. ¶¶ 12–13,
`Figs. 1–4. The inventors intended the device to solve the problem of
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`“simultaneously display[ing] a menu and a main image in a small image
`display [device] without hindering any editing work.” Id. at code (57).
`Figure 5, reproduced below, illustrates a touch panel display
`embodying the invention:
`
`
`
`See Ex. 1005 ¶ 17. As shown above, touch panel display 11 includes image
`display area 11E, as well as menu display trigger areas 11A–D, which are
`strips along the edges of the display. Id. ¶ 18. When a pen-type input device
`moves from one of strips 11A–D toward the center of the display, the device
`reveals a pull-out menu. See id.
`Figure 12 of Hisatomi, reproduced below, is an example of the pen-
`based gesture used to pull out a character-input panel:
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`Ex. 1005 ¶ 22 (noting that menu 11B performs a “character input function
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