EXHIBIT A

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PUBLIC VERSION 

Trials@uspto.gov Paper 71 

571-272-7822 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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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. 

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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 touchsensitive 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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C. CHALLENGED CLAIMS AND GROUNDS

Sole independent claim 1, which exemplifies the other challenged 

claims, is as follows: 

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. 

[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, 

[1.a] the user interface comprising at least two states, namely, 

[1.b] (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 

[1.c] (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 

[1.d] (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. 

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Petitioner argues eight grounds (1A–D and 2A–D) of unpatentability, 

as summarized in the following table: 

Pet. 1–2. 

 

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). 

Ground Claim(s) 

Challenged 35 U.S.C. § Reference(s)/Basis 

1A 1–3, 7, 8 103(a)3 Hisatomi,4 Ren5

1B 4 103(a) Hisatomi, Ren, Allard-6566

1C 5 103(a) Hisatomi, Ren, Tanaka7

1D 6 103(a) Hisatomi, Ren, Kodama8

2A 1–3, 7, 8 103(a) Hansen,9 Gillespie10

2B 4 103(a) Hansen, Gillespie, Allard-656 

2C 5 103(a) Hansen, Gillespie, Tanaka 

2D 6 103(a) Hansen, Gillespie, Kodama 

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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 predesignated 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 predesignated 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 penbased 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 

that adds characters to the image”). Figure 12, above, shows a series of 

screens D1–D9 showing various states in the process of pulling down a 

keyboard panel. Screen D1 depicts the device in its initial state showing only 

the full screen image (such as a photograph) without showing the trigger 

areas along the edges of the screen. See id. ¶ 40. Screen D3 illustrates that 

when pen 5 touches the screen in an area outside trigger areas 11A–D, the 

pull-out menus are not triggered. Trigger areas 11A–D also remain inactive 

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if the pen first touches the screen in an area outside the pull-out strip areas 

and thereafter slides into a trigger area while touching the screen (screen 

D4), or if the pen touches and lifts off the display while inside one of trigger 

areas 11A–D (screen D2). See id. ¶ 41. 

Screens D5–D9 show pen 5 pulling down the character-input menu by 

moving toward the center of the screen by a distance y without lifting off the 

display. Ex. 1005 ¶ 44. If the user releases pen 5 before moving a threshold 

distance (“definition amount”), then the pull-out process is cancelled (screen 

D5); otherwise, the panel remains open and can be used in its partially 

(screens D6 and D8) or fully (screens D7 and D9) open state. Id. ¶ 48. 

Hisatomi also discloses that, in addition to trigger areas 11A–D at the 

edges of the display, the display may also include trigger areas at the 

corners, as shown in Figure 28, reproduced below: 

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Figure 28, above, depicts screen D70 with trigger areas 11A–D as described 

above, but also with trigger areas a, b, c, and d at the corners, which also 

have pull-out menus as depicted in screens D72–75. Ex. 1005 ¶ 113. 

Because trigger areas a–d are smaller and less easily touched, the cornerpullout menus corresponding to trigger areas a–d are for “functions that are 

rarely used such as special settings, etc. (for example, detailed settings, user 

settings, etc.).” Id. ¶¶ 114–115. 

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2. Overview of Ren 

Ren is a journal article comparing different pen-based selection 

strategies for use on small, touch-sensitive screens. Ex. 1006, 384–85. Two 

of these strategies, called Direct On and Direct Off, are reproduced below in 

an extracted portion of Figure 3: 

Ex. 1006, 390. As shown above, the Direct On strategy, described as “a→c,” 

is where “the pen approaches from above,” and “[t]he target is selected only 

momentarily at the time the pen makes contact with the screen in the target 

area.” Id. at 389. An ellipse represents the target. See id. at 387 & Fig. 1. 

For the Direct Off strategy, “the target is highlighted only while the 

pen is touching it,” and “[t]he selection is made at the moment the pen is 

taken off the target.” Ex. 1006, 390. Figure 3 shows two variations of the 

Direct Off strategy, described as “a→c→a,” in which the pen touches a 

target (a→c) and then directly lifts off the target (c→a), and “a→b→c→a,” 

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in which the pen touches outside the target area (a→b), slides onto the target 

(b→c), and then lifts off the target (c→a). See id. at 390–91 & Fig. 3. 

3. Whether Hisatomi Is Prior Art 

Hisatomi published on February 20, 2002. Ex. 1005, code (43). This is 

several months before the ’993 patent’s earliest priority date of December 

10, 2002. Ex. 1001, code (63). But Neonode contends that the named 

inventor Magnus Goertz conceived and reduced to practice the claimed 

invention between late 2001 and March 2002; thus, Neonode contends that 

Hisatomi is not prior art. See PO Resp. 13–17. 

According to Neonode, Mr. Goertz “conceived of the idea of a mobile 

phone programmed to use swiping gestures for navigation in 2000,” and by 

2001 had invented a touchscreen-controlled system (called “zForce”) for 

which he filed a Swedish patent application on November 2, 2001. PO Resp. 

16; see Ex. 2017, code (30) (U.S. Patent No. 7,880,732, which claims 

priority to this Swedish application). Neonode argues that Mr. Goertz 

conceived of the claimed invention by that Swedish filing date, and then 

continued working on the technology so that by mid-March 2002, he and a 

business collaborator Thomas Eriksson had developed a working prototype 

referred to as “N1.” PO Resp. 16–17. 

Neonode asserts that Messrs. Goertz and Eriksson demonstrated this 

prototype at the 2002 CeBIT trade show, held in mid-March 2002. PO Resp. 

14 (citing Ex. 2014, 11 (a business plan dated May 2003 showing early 

“[i]mportant [m]ilestones” in the development of the prototype); Ex. 2015 

¶ 3 (declaration of Per Bystedt, who testifies that he met with Messrs. Goertz 

and Eriksson in 2004 to discuss investment in Neonode)). According to 

Mr. Eriksson’s testimony in an earlier litigation, this prototype “included 

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programming for unlocking the phone by swiping along the bottom of the 

display from one side to the other.” Id. at 15 (citing Ex. 2005, 12:22–13:1, 

14:6–15:9). Thus, according to Neonode, “the invention of the ’993 Patent 

was reduced to practice by no later than mid-March 2002, and was preceded 

by diligent efforts to accomplish that objective.” Id. 

In support of this timeline, Neonode presents “internal Neonode 

documents from 2003–04” including document indicating that “Goertz and 

Eriksson had begun working on the ‘Operating system Shell’—including the 

‘main user interface for N1’ and ‘User Input through zForce (Patented user 

input system)’—by December 1, 2001, and had begun working on ‘User 

interface components’ by February 10, 2002.” PO Resp. 15 (quoting Ex. 

2020, 4–5). Neonode also points to “an article in 2009 recounting [a 

reporter’s] impression of the N1 prototype at the March 2002 CeBIT trade 

show.” Id. at 15–16 (citing Ex. 2021). 

Petitioner argues that Neonode has not adequately connected the 

evidence to the limitations of the challenged claims, and has not provided 

contemporary corroboration. Pet. Reply 5–6. 

We agree. Although Petitioner has the ultimate burden of persuasion 

on the issue of unpatentability, Neonode has the initial burden of production 

to show that Hisatomi is “not prior art because the asserted claims in the 

[’993] patent are entitled to the benefit of a filing date (constructive or 

otherwise) prior to” Hisatomi’s publication date. See Dynamic Drinkware, 

800 F.3d, 1375, 1380 (Fed. Cir. 2015). Although Neonode may have had a 

prototype by mid-March, Neonode has not produced any evidence showing 

that this N1 prototype embodied each limitation of the challenged claims. 

Nor has Neonode produced evidence that Mr. Goertz “disclosed to others his 

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‘completed thought expressed in such clear terms as to enable those skilled 

in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. 

Cir. 1985) (quoting Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)). 

During the oral hearing, counsel for Neonode conceded “that under the 

Federal Circuit’s current guidance with what we currently have, we do not 

have sufficient corroboration.” Tr. 61:20–22. 

Because the evidence of record does not meet Neonode’s initial 

burden of production in antedating Hisatomi, we determine that the evidence 

of record supports Petitioner’s argument that Hisatomi is prior art to the 

challenged claims. 

4. Claim 1 

(a) Preamble 

The preamble of claim 1 recites “[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.” Ex. 1001, 6:50–53. 

Petitioner argues that Hisatomi discloses the preamble because it describes 

an electronic device with a touch-sensitive screen, a processor, and memory 

storing instructions for operating the device. See Pet. 27–30. 

Neonode does not contest Petitioner’s arguments that Hisatomi 

discloses the preamble. See PO Resp. 17–33. Assuming, without deciding, 

that the preamble is limiting, we agree that Hisatomi discloses the medium 

recited in the preamble of claim 1. See, e.g., Ex. 1005, Fig. 8 (showing a 

processor and memory for storing instructions), Figs. 3, 4 (showing that the 

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device has a touch-sensitive display screen), Fig. 9 (showing functions of a 

user interface). 

(b) Limitation 1.a: “the user interface comprising at 

least two states” 

Limitation 1.a recites “the user interface comprising at least two 

states.” Ex. 1001, 6:53–54. Petitioner’s arguments for this limitation, and 

Neonode’s response, hinge on whether Hisatomi discloses both a “tappresent” and “tap-absent” state. See Pet. 30–32; PO Resp. 17–30 (disputing 

Petitioner’s contention that Hisatomi discloses a “tap-present state”). As we 

discuss below in the context of limitations 1.b and 1.c, we find that Hisatomi 

discloses both states. Thus, Petitioner persuasively shows that Hisatomi 

discloses a user interface comprising at least two states. 

(c) Limitation 1.b: “a tap-present state . . .” 

Limitation 1.b recites “(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.” Ex. 1001, 6:54–58. The contested issues 

regarding limitation 1.b are (1) whether the combination of Hisatomi and 

Ren teaches “tap-activatable icons” and, therefore, a “tap-present state” and 

(2) whether the icons in Hisatomi’s system are for “pre-designated system 

functions.” See PO Resp. 17–33. We address these two issues below: 

(1) “tap-activatable icons” 

Petitioner makes alternative arguments for the “tap-activatable” aspect 

of limitation 1.b. See Pet. 36. First, according to Petitioner, Hisatomi teaches 

this limitation “in combination with a [person of ordinary skill in the art]’s 

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general knowledge of well-known selection techniques in the prior art.” See

Pet. 36. Petitioner contends that in Hisatomi, after the user has used the pen 

to expand one of pull-out menus 11A–D, the device is in a tap-present state, 

which makes icons tap-activatable. See Pet. 32–33 (citing Ex. 100515 ¶ 22, 

Fig. 9; Ex. 1002 ¶ 127). 

According to Petitioner, “[i]t would have at least been obvious to a 

[person of ordinary skill in the art] that each icon is capable of selection 

(activation) by a user touching or tapping the icon with the pen device.” 

Pet. 34 (citing Ex. 1002 ¶ 130). In support of this, Petitioner points to 

passages in Hisatomi stating that one of the icons in the pull-out menu is 

“selected” or “touched.” Pet. 34–36 (citing Ex. 1005 ¶¶ 3, 15, 55, 126, 131, 

189, Figs. 13, 15, 27–31, 49, 50; Ex. 1002 ¶ 131). 

In response, Neonode argues Hisatomi does not explicitly disclose 

tap-activatable icons or a tap-present state, and that the general background 

knowledge in the art would not have supplied these missing limitations. PO 

Resp. 17–22. According to Neonode, Hisatomi discloses “touch” activation, 

where activation occurs on the touch, rather than “tap” activation, where 

activation occurs on the release or lifting motion. See id. at 17–18. Neonode 

argues that Hisatomi only indicates that an icon in a pull-down menu is 

activated based on the coordinates of the touch, and that Hisatomi does not 

disclose that this determination waits for a lifting motion before activating 

the selected icon. See id. at 18–20 (citing Ex. 1005 ¶¶ 39, 41, 43, 47–48, 52, 

 

15 Here and elsewhere, some of Petitioner’s citations to Hisatomi mistakenly 

refer to Exhibit 1004 rather than Exhibit 1005. Some of Neonode’s citations 

to Hisatomi make the same error. See, e.g., PO Resp. 18–19. In our citations, 

we identify what we believe is the intended exhibit. 

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54–55, 63, 66, Figs. 10–13; Ex. 2013 ¶¶ 67–70, 74); PO Sur-reply 5 (citing 

Ex. 1005 ¶ 55, Fig. 13). Neonode also argues that Dr. Bederson’s testimony 

on this limitation is based on an erroneous construction of tap that fails to 

distinguish between touch and tap operations. See PO Resp. 20–21 (citing 

Pet. 34–35; Ex. 1002 ¶ 130; Ex. 1005 ¶ 15, Figs. 13, 15, 49, 50, 126, 189, 

Figs. 30, 49; Ex. 2013 ¶ 72). 

We agree with Neonode that Petitioner has not shown that Hisatomi 

discloses a “tap-present state” or “tap-activatable icons” consistent with our 

construction of the term tap-activatable as meaning “activatable by a gesture 

that involves touching a screen and then lifting off the screen from the same 

or nearly the same location.” Supra Section III.B.2. In particular, Petitioner 

has not shown that Hisatomi, without further specific teachings in the prior 

art, discloses or teaches a gesture in which the lifting or release motion is a 

factor in activating an icon. Petitioner’s arguments, at best, suggest that 

Hisatomi is ambiguous in distinguishing between a touch and a tap, which 

fails to meet Petitioner’s burden of persuasion in showing that Hisatomi 

itself affirmatively teaches a tap gesture. See, e.g., Pet. Reply 12 (citing 

Ex. 1005 ¶ 55, Fig. 13; Ex. 1051 ¶¶ 54–58). 

But we do find persuasive Petitioner’s alternative argument, which 

relies on Ren for teaching a tap operation. In its alternative argument, 

Petitioner contends that Hisatomi teaches limitation 1.b in view of Ren’s 

teaching of the “a→c→a” variant of a Direct Off operation. Pet. 36 (citing 

Ex. 1002 ¶ 133). Petitioner argues that “[i]t would have been obvious to a 

[person of ordinary skill in the art] to implement the Hisatomi device such 

that the icons are selected using the tap technique disclosed in the ’993 

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patent,” which was “well-known,” and “explicitly disclosed by Ren.” Pet. 37 

(citing Ex. 1006, 390, 403). 

Petitioner also argues that tapping “was one of a handful of wellknown selection techniques for selecting a target (such as an icon or menu) 

in a GUI at the priority date of the ’993 patent.” Pet. 37–38 (citing Ex. 1006, 

390, 403). And according to Petitioner, Ren teaches its desirability, “for 

example, in dense displays where targets are close together,” and 

implementing it in Hisatomi’s device “would have been within the level of 

ordinary skill” and would have achieved “predictable results.” Pet. 38 (citing 

Ex. 1006, 403; Ex. 1002 ¶ 136). 

In response, Neonode does not contest that Ren’s “a→c→a” variant 

of the Direct Off gesture constitutes tapping as recited in claim 1. See PO 

Resp. 24 (acknowledging that Direct Off is a “tap, in one variant”). Neonode 

also acknowledges that Ren teaches that Direct Off is “technically viable for 

dense displays” such as Hisatomi’s device. Id. 

But Neonode contends that Ren clearly teaches a preference for Direct 

On (“a→c”) for such displays. PO Resp. 24 (citing Ex. 2013 ¶¶ 87–89). 

According to Neonode, Ren teaches experimentally that the activation time 

for Direct On is significantly faster than the Direct Off “a→c→a” strategy 

(1027.5 ms compared to 1543.9 ms, respectively, in one experiment, and a 

greater difference in a second experiment). Id. (citing Ex. 1006, Figs. 5, 11; 

Ex. 2013 ¶ 89). 

Neonode also argues that, although Ren’s experiments seem to show 

lower error rates for Direct Off than for Direct On at the smallest target sizes 

(1–2 mm), these target sizes are smaller than any realistic touch-screen icon, 

and that Ren’s data shows a trend in favor of Direct On for Ren’s largestCase 6:20-cv-00507-ADA Document 66-1 Filed 02/03/23 Page 33 of 69
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tested target size (3 mm). See PO Resp. 25–26 (citing Ex. 1006, 399, 408, 

Fig. 10; Ex. 2013 ¶¶ 93–96). 

And according to Neonode, the error rates for Direct Off were 

artificially deflated because Direct Off data includes both “a→c→a” and 

“a→b→c→a” variants, thus providing “two routes that yielded a successful 

selection.” PO Resp. 24–25 (citing Ex. 1006, 390, Fig. 3; Ex. 2013 ¶¶ 90–

92). Thus, Neonode argues that a person of ordinary skill in the art would 

have understood Ren as teaching away from Direct Off in terms of both 

speed and accuracy on devices such as Hisatomi’s. Id. at 26–27 (citing Ex. 

2013 ¶ 96; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. 

Cir. 2018); Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020); 

Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 

2017)). 

In its Reply, Petitioner points to a concession by Dr. Rosenberg that 

Ren does not “explicitly” state a preference for Direct On over Direct Off. 

Pet. Reply 7 (citing Ex. 2013 ¶ 87). Although Petitioner disputes that Ren 

teaches a preference for Direct On (see id. at 7–10), we need not address 

those arguments because we agree with Petitioner that, even if Ren 

expresses a preference for Direct On, that preference does not rise to the 

level of a teaching away. Id. at 10–11. “A reference does not teach away . . . 

if it merely expresses a general preference for an alternative invention but 

does not ‘criticize, discredit, or otherwise discourage’ investigation into the 

invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 

567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 

1201 (Fed. Cir. 2004)). Also, “just because ‘better alternatives’ may exist in 

the prior art ‘does not mean that an inferior combination is inapt for 

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obviousness purposes.’” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1381 (Fed. 

Cir. 2015) (citing In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)). At 

most, Ren shows that touch activation has certain benefits over tap 

activation in certain circumstances, the evidence does not suggest that these 

tradeoffs would have dissuaded a person of ordinary skill in the art from 

investigating the use of tap activation in Hisatomi’s device. Thus, we 

disagree with Neonode that Ren teaches away from the use of tap activation. 

For the above reasons, Petitioner persuasively shows that Hisatomi in 

view of Ren discloses a tap-present state and tap-activatable icons. 

(2) “system functions” 

Next, Petitioner contends that in Hisatomi, after the user has used the 

pen to expand one of the pull-out menus corresponding to trigger areas 11A–

D, a “classification menu” appears comprising icons of a particular category, 

“such as a search function, character input, image processing and editing 

functions, and save functions, respectively.” Pet. 32–33 (citing Ex. 1005 

¶ 22, Fig. 9; Ex. 1002 ¶ 127). Petitioner argues that these functions are 

“system functions” analogous to functions described in the ’993 patent, 

which include “services such as ‘save to disk,’ ‘send as SMS,’ or ‘delete’ and 

. . . settings such as ‘resolution,’ ‘colour,’ or ‘brightness.’” Pet. 33 (quoting 

Ex. 1001, 4:31–35; Ex. 1002 ¶ 128), 60–61 (citing Ex. 1002 ¶ 178). 

Petitioner also argues that the icons in the corner pull-out menus 

(corresponding to trigger areas a–d) correspond to system functions, such as 

the “detailed settings” menu depicted in screen D84 of Figure 30. See Pet. 

35, 47 (citing Ex. 1005 ¶¶ 126, 154, Fig. 30). And Petitioner argues that 

“Hisatomi does not limit how the menus are categorized or the types of 

functions that may be accessed via these menus.” Pet. 58. 

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In response, Neonode argues that none of the functions disclosed in 

Hisatomi are “system functions,” as that term is properly construed, but are 

application functions, presented as icons within a digital camera application, 

analogous to the application-dependent functions described in ’993 that 

appear when there is a currently active application running. See PO Resp. 

31–33 (citing Ex. 1001, 4:31–35; Ex. 1002 ¶ 178; Ex. 1005 ¶¶ 34–36; 

Ex. 2013 ¶¶ 107–109). 

In its Reply, Petitioner argues that the icons of Hisatomi’s edge and 

corner pullout menus are system functions even under Neonode’s proposed 

construction. Pet. Reply 15–16 (citing Ex. 1005 ¶¶ 125–126, Fig. 30 (screen 

DE84)). Petitioner also contends that Dr. Rosenberg agreed on crossexamination that a “search” function can be a system function, at least in the 

context of the 2002 Windows CE operating system. Id. at 16 (citing 

Ex. 1052, 59:18–60:5; Ex. 1028, 31 (HP Jornada 520 Series Pocket PC 

User’s Guide, describing a function for finding files); Ex. 1051 ¶ 68). 

Petitioner further contends that the functions related to Hisatomi’s 

camera—such as the “Search,” “Character input,” “Process and regenerate,” 

and “Save and organize” functions S19–S22 shown in Figure 9—are system 

functions, not application functions. See Pet. Reply 17. According to 

Petitioner, “Hisatomi’s camera functionality is not an ‘application.’ The first 

step when the power is turned on is ‘the images taken in the past are 

regenerated and it will become a display state possible to be viewed like an 

album.’” Id. (quoting Ex. 1005 ¶ 34, Fig. 9). Petitioner argues that “[n]o user 

interaction is required to launch an ‘application,’ nor can the user ‘close’ the 

alleged ‘application.’ The functionality of Hisatomi’s Figure 9 is therefore 

that of a camera ‘system’ having pull-out menus including icons for 

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applications, services, or settings of that ‘system.’” Id. (citing Ex. 1051 

¶ 75). 

In its Sur-reply, Neonode argues that there is a distinction between 

“‘icons for’ system functions” and “icons for application functions that may 

make a call to an operating system function.” Id. at 11. According to 

Neonode, the latter would include “save” and “delete” functions available in 

the ’993 patent when there is a current application running. PO Sur-reply 

11–12 (citing Ex. 1001, 4:31–35, 4:20–40). Neonode also argues that the 

“search” function in Hisatomi’s classification menu would correspond not to 

one icon, but to “a montage of ‘images that have been taken and saved in the 

past . . . .’” Id. at 12–13 (alteration in original) (quoting Ex. 1005 ¶ 22) 

(citing Ex. 1005 ¶ 66, Fig. 17). 

As to Dr. Rosenberg’s admission on cross-examination about the 

“search” function in the 2002 Windows CE operating system, Neonode 

argues that “what Dr. Rosenberg said was that if one were to ‘pull up a 

search functionality from the home screen’ of a device running Windows 

CE, then the search functionality would be a system function.” PO Sur-reply 

13 (quoting Ex. 1052, 59:18–60:5). But “[t]he critical limitation is the one 

included in the question—the search functionality from the home screen, not 

the search functionality from an application.” Id. 

As to Petitioner’s assertions about functions corresponding to icons in 

Hisatomi’s corner pullout menus, Neonode counters that “Hisatomi is 

largely opaque as to what these settings include, describing them (in a 

section concerning a different embodiment) as ‘functions that are rarely used 

such as special settings, etc. (for example, detailed settings, user settings, 

etc.) . . . .’” PO Sur-reply 13 (alteration in original). But according to 

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Neonode, “[t]here is no indication that the icons for these settings are icons 

for system functions—to the contrary, [the disclosure] suggests that they are 

merely settings for Hisatomi’s camera application.” Id.; see also id. at 14–16 

(citing Ex. 1005 ¶¶ 4, 6, 12–15, 34–35, 243, Figs. 1–3, 5–6, 9) (arguing that 

the problems and solutions presented in Hisatomi are directed to a camera 

application, and this is true even if the system’s only application is a camera 

application). 

Having considered the arguments on both sides, we find Petitioner’s 

argument persuasive that a person of ordinary skill in the art would have 

understood that the icons in Hisatomi’s pullout menus would comprise a 

plurality of system functions. In particular, we agree with Petitioner that 

Hisatomi’s “search” function is a system function. We disagree with 

Neonode’s argument that in Hisatomi, functions such as “search” do not 

correspond to icons. According to Hisatomi, “to display a menu of the names 

of many processing functions of the portable information processing device 

01 on the image display screen 09, these various processing functions are 

classified into four categories in advance and assigned to A to D 

classification menus.” Ex. 1005 ¶ 20 (emphasis added). This indicates that 

there are individual menu items corresponding to each of the available 

processing functions. As Petitioner points out, Hisatomi discloses that these 

“menu items” can be either “icons or characters corresponding to each 

function.” Pet. 33 (quoting Ex. 1005 ¶ 25) (citing Ex. 1005 ¶¶ 3, 21; Ex. 

1002 ¶ 129). 

As we discuss above, we do not agree with Neonode that the term 

system function only includes functions that are selected from a home 

screen. See supra Section III.B.3. Rather, we agree with Petitioner that an 

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icon for a system function does not cease to be an icon for a system function 

if it is selected in the context of an application running on top of an 

operating system. See Pet. Reply 16–17. Thus, for example, a “search,” 

“character input,” or “save” function is a system function if it corresponds to 

a service or setting of the operating system, regardless of whether it is 

accessible within an application or from an operating system’s home screen. 

We also credit and find persuasive Dr. Bederson’s testimony that 

Hisatomi’s camera functionality is integrated into the operating system and 

is not a distinct application, because it begins processing images as the first 

step when the system is powered on and cannot be “closed.” See Ex. 1051 

¶ 75 (citing Ex. 1005 ¶ 34). This is consistent with Hisatomi’s disclosure 

that based on the coordinate of icons on the display screen, the device’s CPU 

“will execute various functions based on the operating system stored in the 

ROM[].” Ex. 1005 ¶ 30. 

When asked about this at the oral hearing, counsel for Neonode 

argued that, at a base level, every function in an electronic device will make 

calls to operating system functions. See Tr. 64:20–66:6. We do not find this 

explanation consistent with Hisatomi’s disclosure, which states that these 

operating system functions are executed “according to the detected 

coordinate information” of a selected “soft button on the screen.” Ex. 1005 

¶ 30. As Dr. Rosenberg conceded on cross-examination, whether or not a 

camera application is a system function “depends on what the designers of 

the operating system chose to include.” Ex. 1052, 59:15–16. The evidence 

shows that in Hisatomi’s device, the operating system designers chose to 

include camera functions. Thus, we agree with Petitioner that the camerarelated functions in Hisatomi’s pull-out menus are system functions. 

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For the above reasons, we determine that Hisatomi teaches limitation 

1.b in view of Ren’s teachings about a Direct Off (a→c→a) selection 

strategy. 

(d) Limitations 1.c and 1.d: “a tap-absent state . . .” 

and the recited gesture “away from and out of the 

strip” 

Limitation 1.c recites “(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.” Ex. 1001, 6:58–63. Limitation 1.d specifies that this 

gesture comprises “(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.” Id. at 6:63–65. 

Petitioner argues that Hisatomi’s “tap-absent state” “begins with ‘a 

photo image or the like . . . displayed using the full screen of the image 

display screen,” where “no icons or function lists are displayed.” Pet. 38 

(quoting Ex. 1005 ¶¶ 40, 124; Ex. 1002 ¶ 138). Petitioner relies on testimony 

of Dr. Bederson that this state does not include tap-activatable icons, but 

discloses graphics, in the form of trigger areas 11A–D, that are “otherwiseactivatable” by gliding the pen from the trigger area away from the strip and 

toward the center of the screen. See Pet. 39–48 (citing Ex. 1005 ¶¶ 5, 18–27, 

39–42, 45, 48, 52, 112–115, 124–126, 244, Figs. 4–6, 10–12, 16, 17, 19, 26–

30; Ex. 1002 ¶¶ 137–155). 

Neonode does not contest Petitioner’s arguments with regard to 

limitations 1.c and 1.d. See PO Resp. 22–33. We find the arguments 

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persuasive and we credit Dr. Bederson’s supporting testimony because 

Hisatomi clearly discloses a state, as shown in Figure 5, in which there are 

no tap-activatable icons, but there are strips along the edges or corners 

activatable by a touch-and-glide gesture, as depicted in Figures 12 and 28. 

In summary, Petitioner establishes that Hisatomi discloses all of claim 

1’s limitations, except for “a tap-present state” with “a plurality of tapactivatable icons.” Petitioner further establishes that Hisatomi teaches that 

limitation in view of Ren’s Direct Off (a→c→a) selection strategy. 

Petitioner also shows that one of ordinary skill in the art would have had a 

reason to use Ren’s Direct Off (a→c→a) selection strategy in Hisatomi’s 

device. 

(e) Alleged Objective Indicia of Non-obviousness 

Neonode contends that there is evidence of commercial success, 

industry praise, skepticism, and industry respect for the claimed invention, 

which we should consider as objective indicia of non-obviousness. PO Resp. 

62–67. 

For us to give substantial weight to objective indicia of nonobviousness, a proponent must establish a nexus between the evidence and 

the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 

1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence 

presented is ‘reasonably commensurate with the scope of the claims.’” Id.

(quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). For the 

reasons below, we determine that Neonode has not presented evidence 

sufficient to show a nexus between its devices and the claimed invention. We 

address these issues below. 

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(1) Neonode Is Not Entitled to a Presumption of 

Nexus 

A patentee is entitled to a presumption of nexus “when the patentee 

shows that the asserted objective evidence is tied to a specific product and 

that product ‘embodies the claimed features, and is coextensive with them.’” 

Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) 

(quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. 

Cir. 2018)). 

In its Response, Neonode asserts that “[t]he N1 and N2 user interfaces 

embody the elements of the ’993 Patent’s claims,” and cites a page of 

material in Mr. Shain’s declaration. PO Resp. 63 (citing Ex. 2019 ¶¶ 5–11 

(comparing the N1 and N2 devices with claims 1 and at least some of the 

dependent claims)). Thus, Neonode cites Mr. Shain’s testimony without 

analysis, and without comparing the N1 and N2 devices on a limitation-bylimitation basis with the challenged claims. See PO Resp. 62–67. 

Petitioner points this out in its Reply. See Pet. Reply 26 (citing PO 

Resp. 63; Ex. 1053, 12:12–15 (testimony of Mr. Shain, agreeing that in 

preparing his declaration, he had not performed any technical analysis 

relating to the patent at issue)). According to Petitioner, Neonode’s statement 

in its Response is conclusory and “amounts to an improper incorporation by 

reference” of Mr. Shain’s declaration testimony. Id. (citing Cisco Systems, 

Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9–10 (PTAB Aug. 

29, 2014) (informative); 37 C.F.R. § 42.6(a)(3)). 

In its Sur-reply, Neonode responds that it “cited [Mr.] Shain’s 

testimony as evidence of the structure and functionality of the Neonode 

devices, supporting the argument made in the [Patent Owner Response] that 

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the N1/N2 interfaces embody the elements of the challenged claims.” PO 

Sur-reply 23 n.2. Be that as it may, Neonode did not discuss Mr. Shain’s 

testimony in its Response, and it is thus an improper incorporation by 

reference. 37 C.F.R. § 42.6(a)(3). 

On the other hand, Petitoner did not move to strike the improperly 

incorporated material in Mr. Shain’s declaration, and proceeded to take his 

deposition regarding the material and discussed that testimony in its Reply, 

to which Neonode responded. See Ex. 1053 (Shain deposition transcript); 

Pet. Reply 26–27; PO Sur-reply 23–24. Thus, under the circumstances, we 

will consider and weigh the evidence of nexus provided in Mr. Shain’s 

declaration and the discussion in Petitioner’s Reply and Neonode’s Surreply. 

Petitioner contends that Neonode’s N1 and N2 devices “did not

embody the challenged claims” because although there were three graphics 

and a strip at the bottom of the display, they “are not part of the display 

screen” as limitation 1.c requires, and the devices did not allow a touch-andglide gesture corresponding to limitation 1.d. Pet. Reply 26 (citing Ex. 1053, 

17:19–18:5, 18:10–19:1, 22:16–20). Petitioner also argues that Neonode 

“fails to establish the Neonode devices included a ‘tap-absent state’” 

according to limitation 1.c because “Mr. Shain could not confirm whether 

notifications on the status screen were not tap-activatable.” Id. (citing Ex. 

1053, 15:18–20:12). 

Neonode responds that Mr. Shain testified that the three icons in the 

strip at the bottom of the display were “within the touch sensitive area” and 

“that a ‘swipe up’ gesture would display tap activatable icons.” PO Sur-reply 

23 (citing Ex. 1053, 18:4–5, 18:25–19:1, 22:16–20). Neonode also argues 

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that, in other testimony, Mr. Shain stated that the display of the N1 and N2 

devices “includes both an area with electronic pixels that can generate 

images and the strip with the three icons at one edge of that area.” Id. (citing 

Ex. 1053, 23:24–24:6). Neonode also argues that in claim 1, the “tap-absent 

state” only requires that icons are not tap-activatable, not that notifications 

are not tap-activatable. Id. at 24 (citing Ex. 1053, 19:15–20:8). 

Considering Mr. Shain’s testimony in context, we agree with Neonode 

that his testimony describes the N1 and N2 devices as meeting limitations 

1.c and 1.d. Although the three icons were not in the area with pixels that 

can generate images, they were “present in a strip along at least one edge of 

the display screen” as recited in claim 1. Ex. 1001, 6:60–61. The claim 

language only requires that the recited strip is “along” an edge of the display, 

not necessarily that it is considered part of the display itself. 

As to whether a notification in the N1 or N2 would have been an icon 

and would have been tap-activatable, we do not find this as relevant to the 

issue of objective considerations of non-obviousness. Even if such 

notifications were considered tap-activatable icons, the user interface would 

still be in a tap-absent state whenever there were no such notifications. Thus, 

the N1 and N2 devices would still meet limitation 1.c. 

But even if each limitation of the challenged claims can be found 

within the N1 and N2 devices, this is only one part of establishing a 

presumption of nexus. Neonode must show that the “product both embodies 

the claimed features and is coextensive with the claims at issue.” Fox 

Factory, 944 F.3d at 1373 (emphasis added) (quoting SightSound Techs., 

LLC v. Apple Inc., 809 F.3d 1307, 1319 (Fed. Cir. 2015)). Coextensiveness is 

not established, for example, “if the patented invention is only a component 

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of a commercially successful machine or process.” Id. (quoting Demaco 

Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 

1999)). 

The evidence of record suggests that the N1 and N2 devices included 

other, unclaimed features that people in the industry would have considered 

to be commercially significant. As Petitioner points out in its Reply, 

Neonode’s products “allegedly include ‘zForce optical sensing technology,’ 

which Neonode admits was the subject of a different patent application.” 

Pet. Reply 27 (emphasis omitted) (quoting PO Resp. 14); see also id. at 28 

(arguing that the evidence of industry praise was directed to the unclaimed 

zForce technology). According to Neonode, this patented zForce technology 

includes swiping gestures to activate functions on the device. See PO Resp. 

14 (citing Ex. 2017, 14:45–47, 15:6–12). Neonode also states that its 

prototype N1 device, displayed at CeBIT in March 2002, “included 

programming for unlocking the phone by swiping along the bottom of the 

display from one side to the other.” Id. at 15 (citing Ex. 2005, 12:22–13:1, 

14:6–15:9). This is not a claimed feature. 

Neonode relies primarily on this zForce technology, rather than the 

features of the challenged claims, as its evidence for industry praise. See PO 

Resp. 65 (noting that a magazine author “referenced the phone’s zForce 

optical sensing technology” in praising the N1 device, and that “it was that

feature of the phone that gave ‘the NeoNode its totally unique personality 

and mode of operation.’” (quoting Ex. 2027, 2)). In its Sur-reply, Neonode 

also concedes that its witness Marcus Bäcklund “testified that Neonode’s 

‘zForce’ technology ‘made the N1 revolutionary.’” PO Sur-reply 26 (quoting 

Ex. 1056, 36:4–9). Neonode also relies on the device’s “swiping-gesture 

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user interface” for its evidence of skepticism. PO Resp. 66. And for its 

evidence of industry respect, Neonode argues that “[t]he excitement 

surrounding the phone was focused on its novel gesture-based user 

interface.” Id. at 66–67. 

That Neonode has obtained a separate patent for its zForce 

technology, which is also a feature of the N1 and N2 devices, also leads us to 

conclude that zForce is a significant feature not claimed in the ’993 patent. 

See Fox Factory, 944 F.3d at 1375 (citing Therasense, Inc. v. Becton, 

Dickinson & Co., 593 F.3d 1289, 1299 (Fed. Cir. 2010) (“finding that the 

patentee was not entitled to a presumption of nexus because the product 

embodied at least two patented inventions, and the burden thus remained on 

the patentee to show that the product’s success was due to the invention 

claimed in the patent asserted in the case”)). 

Thus, based on the evidence of record, we find that Neonode has not 

shown that its N1 and N2 products are coextensive or nearly coextensive 

with the claimed inventions. And consequently, a presumption of nexus is 

inappropriate in this case. 

But even without the presumption, Neonode “is still afforded an 

opportunity to prove nexus by showing that the evidence of secondary 

considerations is the ‘direct result of the unique characteristics of the 

claimed invention.’” Fox Factory, 944 F.3d at 1373–74 (quoting In re 

Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Also, the nexus must be “to 

some aspect of the claim not already in the prior art.” In re Kao, 639 F.3d 

1057, 1069 (Fed. Cir. 2011) (emphasis added). “Ultimately, the fact finder 

must weigh the [objective indicia] evidence presented in the context of 

whether the claimed invention as a whole would have been obvious to a 

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skilled artisan.” Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 

at 33 (PTAB Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 

829 F.3d 1317, 1331–32 (Fed. Cir. 2016)), aff’d sub nom. 2022 WL 499848 

(Fed. Cir. Feb. 18, 2022). On this basis, we evaluate the evidence of 

commercial success, industry praise, skepticism, and industry respect below. 

(2) Commercial Success 

As evidence of commercial success, Neonode contends that after 

Messrs. Goertz and Eriksson demonstrated the N1 prototype at the CeBIT 

trade show in March 2002, “Neonode received over 20,000 pre-orders for 

the phone, and subsequently received over 100,000 Internet pre-orders” 

requiring a substantial down payment. PO Resp. 63 (citing Ex. 2016 ¶ 9). 

Neonode also asserts that it sold approximately 40,000 N1 and N2 devices 

between 2004 and 2008, received inquiries from more than 100 companies 

expressing interest in purchasing the N1, received orders from Telcel in 

Mexico for 15,000 units, Proximus in Belgium for 3,000 units, TIM in Italy 

for 20–30,000 units, an Egyptian operator for 500 units, and an English 

distributor for 100,000 units. Id. (Ex. 2015 ¶ 11; Ex. 2016 ¶ 10; citing 

Ex. 2022 ¶ 6; Ex. 2024, 2–4; Ex. 2026, 6); see also PO Sur-reply 24–25 

(reiterating evidence relating to the number of unit orders). 

Petitioner disputes the accuracy of this evidence, and argues that it 

lacks support. See Pet. Reply 27–28 (citing Ex. 1054, 18:22–19:25, 22:16–

24, 23:1–22, 25:1–22, 29:7–30:16; Ex. 1056, 29:12–14). But even if we 

accept the figures as accurate, Neonode’s evidence only tells us the number 

of units sold. And “evidence related solely to the number of units sold 

provides a very weak showing of commercial success, if any.” In re Huang, 

100 F.3d 135, 140 (Fed. Cir. 1996). Instead, “[t]he more probative evidence 

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of commercial success relates to whether the sales represent ‘a substantial 

quantity in th[e] market.’” In re Applied Materials, Inc., 692 F.3d 1289, 

1300 (Fed. Cir. 2012). But Neonode has not produced evidence establishing 

the size of the market and whether Neonode’s products represent a 

substantial quantity of that market. 

Nor has Neonode produced evidence showing a nexus between its 

sales figures and the features of the challenged claims as opposed to, for 

example, the unclaimed features of its zForce technology. 

Thus, based on the evidence of record, we give little weight to 

Neonode’s evidence of commercial success. 

(3) Industry Praise 

Neonode argues that after its demonstration of the N1 prototype at 

2002 CeBit, “the N1 became famous in Stockholm and internationally.” PO 

Resp. 64 (citing Ex. 2015 ¶ 3). According to Neonode, there were 

“[n]umerous articles about the N1 phone, its novel almost button-less 

design, and particularly its gesture-based touch screen user interface,” and 

the device gained interest in the Stockholm tech and startup business 

community. Id. (citing Ex. 2015 ¶¶ 3, 8). According to Neonode, “[t]he 

excitement surrounding the phone was focused on its novel gesture-based 

user interface.” Id. (citing Ex. 2015 ¶ 3; Ex. 2016 ¶ 11). Neonode also cites a 

magazine article “referencing the phone’s zForce optical sensing 

technology” and ascribing the N1’s uniqueness to that technology. Id. at 65 

(citing Ex. 2027). 

Petitioner argues that this evidence of praise focuses on the unclaimed 

zForce technology, and in general on the gesture-based interface and the 

ability to operate the device with one hand. Pet. Reply 28 (citing Ex. 1055, 

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15:4–18, 15:20–16:3 (deposition testimony of Per Bystedt); Ex. 1056, 36:4–

9 (deposition testimony of Märcus Backlund); Ex. 2027, 2). Thus, Petitioner 

argues that there is no nexus between the evidence and the claimed 

invention. Id. 

We agree with Petitioner that the evidence does not show a nexus 

between the industry praise and the features of the claimed invention. 

Rather, the praise was focused on unclaimed features such as Neonode’s 

separately patented zForce technology. Neonode has not produced any 

evidence, for example, of praise directed to the tap-absent state recited in 

limitation 1.c or the multi-step gesture recited in limitation 1.d. Therefore, 

we give Neonode’s evidence of industry praise little weight in our 

obviousness analysis. 

(4) Skepticism 

Neonode argues that when Märcus Backlund (the company’s CEO at 

the time) met with representatives of Nokia and Ericsson, “they were 

impressed with the swiping-gesture user interface [but] they were skeptical 

that consumers would want a keyboard-less mobile handset” because “the 

touch screen might get greasy from users’ fingers performing gestures, 

thereby obscuring the user interface” and “they thought that users were used 

to buttons to navigate mobile phones and would be hesitant to accept one 

without them.” PO Resp. 66 (citing Ex. 2016 ¶ 12). 

Petitioner contends that “Neonode does not allege there was 

skepticism about the technology, only consumer desires.” Pet. Reply 29. For 

example, according to Petitioner, Neonode “makes no connection between 

such a handset and the ‘tap-present state’ with icons for ‘system functions’ 

and ‘tap-absent’ state of the challenged claims.” Id. at 28. 

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In its Sur-reply, Neonode responds that “[i]t was the N1 interface 

about which the industry was skeptical, and that interface included the 

claimed features.” PO Sur-reply 26 (citing Ex. 1056, 36:15–23; Ex. 2016 

¶ 12; Ex. 2019 ¶¶ 5–11; Ex. 2027, 2–3). 

We agree with Petitioner that Neonode’s evidence of skepticism is not 

directed at the features of the challenged claims, because that skepticism was 

focused on the general idea of a mobile handset operated through gestures 

rather than a keyboard. Whether the N1 interface included the claimed 

features is not the pertinent question—the question is whether that 

skepticism was directed to the claimed features. But the evidence does not 

suggest that the specific features of the challenged claims played any part in 

that skepticism. Thus, we give Neonode’s evidence of skepticism little 

weight. 

(5) Industry Respect 

Neonode contends that Samsung Mobile signed a license agreement in 

July 2005 that includes the application to which the ’993 patent claims 

priority. PO Resp. 67. According to Neonode, Samsung expressed 

excitement about “Neonode’s N1 gesture-based user interface.” Id. at 66–67 

(citing Ex. 2015 ¶¶ 3, 8, 9; Ex. 2016 ¶ 11); see also PO Sur-reply 27 

(arguing that the fact that Samsung took a license and expressed interest in 

the N1 and its gesture-based user interface is evidence that the technology of 

the ’993 patent was relevant to that interest). 

But according to Petitioner, “[t]he agreement . . . has no relationship 

with the claimed functionality. In addition, neither the ’993 patent (nor its 

corresponding application) was in existence at the time of the agreement 

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(2005). Therefore, there is no nexus to the purported ‘industry respect.’” Pet. 

Reply 29. 

We agree with Petitioner that Neonode has not produced evidence that 

Samsung’s interest in the license focused on the features claimed in the ’993 

patent, as opposed to unclaimed features such as the zForce technology. In 

particular, as Petitioner notes, at the time of the agreement in 2005, the 

challenged claims were not yet in existence, so Samsung could not have 

foretold the features of those claims. See, e.g., Ex. 1003, 566 (preliminary 

amendment dated December 28, 2011, introducing claim 21 which 

ultimately issued as claim 1 after significant amendments). 

Because Neonode has not produced evidence showing a nexus 

between the evidence of industry respect or licensing and the features of the 

challenged claims, we give the evidence little weight. 

(f) Conclusion for Claim 1 

Having considered the Graham factors, including Neonode’s evidence 

submitted to show objective indicia of non-obviousness, we determine that 

Petitioner has shown, by a preponderance of the evidence, that a person of 

ordinary skill in the art would have had reason to combine Hisatomi with 

Ren, and that the resulting combination teaches all the limitations of claim 1. 

We also find no nexus between claim 1 and the submitted evidence of 

commercial success, industry praise, skepticism, or industry respect. That 

evidence is entitled to little weight and is substantially outweighed by 

Petitioner’s evidence that claim 1 would have been obvious over the 

combination of Hisatomi and Ren. 

Thus, we conclude that claim 1 is unpatentable under § 103 as 

obvious over the combination of Hisatomi and Ren. 

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5. Dependent Claims 2, 7, and 8 

Claims 2, 7, and 8 depend from claim 1 and recite further limitations. 

Ex. 1001, 6:66–7:2, 7:15–21. For the grounds based on Hisatomi and Ren, 

Neonode does not contest Petitioner’s specific arguments regarding claims 

2, 3, 7, or 8 (see PO Resp. 33), and we find those arguments persuasive. 

In particular, claim 2 recites “wherein any state transition elicited by a 

user gesture that begins at a location at which the otherwise-activatable 

graphic is provided, transitions to the tap-present state.” Ex. 1001, 6:66–7:2. 

Petitioner argues, and we agree, that Hisatomi discloses this limitation 

because “[t]ouching within a trigger area and then ‘dragging the input device 

. . . toward the center of the image display screen . . .’ causes the related 

function list in the pull-out menu to be displayed.” Pet. 49 (citing Ex. 1005 

¶¶ 18, 21, 39, 126). In addition, we find persuasive Petitioner’s argument 

that “each trigger area and its corresponding graphic is used for one purpose: 

to display the function list associated with the trigger area.” Id. (citing 

Ex. 1005 ¶¶ 18, 20, Figs. 10–12, 17, 28, 30). 

Claim 7 recites “wherein the strip is less than a thumb’s width wide 

within the display screen.” Ex. 1001, 7:15–17. Petitioner argues, and we 

agree, that Hisatomi discloses that display trigger areas 11A–D are 

“determined by the shape of the pen tip.” Pet. 52 (quoting Ex. 1005 ¶ 18, 

Fig. 12). We also find persuasive Petitioner’s argument that a person of 

ordinary skill in the art would have recognized that the “shape of the pen 

tip” for Hisatomi’s handheld device would have been less than a thumb’s 

width wide. Pet. 53 (citing Ex. 1002 ¶ 159). 

Claim 8 recites “wherein the multi-step user gesture comprises (i) the 

object touching the otherwise-activatable graphic, and (ii) the object gliding 

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on the display screen away from and out of the strip.” Ex. 1001, 7:18–21. 

Petitioner argues, and we agree, that Hisatomi discloses this limitation 

because it discloses that “the coordinates of the trigger area are identified to 

a user using graphics displayed using different colors or patterns.” Pet. 53 

(citing Ex. 1005 ¶ 27, Fig. 5). Thus, we agree that “[a] touch within the 

coordinates of a trigger area strip will also be a touch on its related 

‘otherwise-activatable graphic.’” Pet. 54 (citing Ex. 1002 ¶ 161). 

Thus, by a preponderance of the evidence, Petitioner has shown that 

claims 2, 7, and 8 are unpatentable as obvious over the combination of 

Hisatomi and Ren. Thus, we conclude that claims 2, 7, and 8 are 

unpatentable under § 103 on this basis. 

6. Dependent claim 3 

Claim 3 recites “wherein the tap-present state does not display the tapactivatable icons within a window frame.” Ex. 1001, 7:3–5. Petitioner argues 

that Hisatomi discloses this limitation in at least its embodiment of Figure 28 

where the icons in a function list appear after “peeling back” the corner of 

the image display, and are thus not surrounded by anything that could be 

construed as a window frame. Pet. 50–51 (citing Ex. 1005 ¶¶ 99, 101–103, 

108, 246, Figs. 7, 28; Ex. 1002 ¶ 160). 

In response, Neonode argues that “all of Hisatomi’s (touch)-

activatable icons are depicted within a window frame.” PO Resp. 33. 

Neonode points to the border, shown in Figure 28 image D73 (reproduced 

above in Section III.C.1) “between the windowed content and the remainder 

of the GUI.” Id. at 34–35 (citing Ex. 2013 ¶¶ 113–114). Neonode does not 

consider relevant the fact that the exposed function list “may be expanded to 

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53 

cover the entire screen” because “the area enclosing the pull-out menus may 

be contracted at will by the user.” Id. at 34 (citing Ex. 2013 ¶ 113). 

In its Reply, Petitioner points to Dr. Rosenberg’s description of a 

typical window frame. Pet. Reply 21–22 (citing Ex. 2013 ¶ 158). According 

to Dr. Rosenberg, “windows typically include a title bar containing at least 

tap-activatable icons to minimize, maximize and close the window.” Ex. 

2013 ¶ 158. But according to Petitioner, there are “[n]o frame or ‘standard 

components’” in Hisatomi’s Figure 28. Pet. Reply 23. 

Neonode responds that “Petitioners make no effort to show that 

‘frame’ requires a visually distinct on-screen border along all four edges of a 

window.” PO Sur-reply 21. According to Neonode, “what is relevant is 

whether there is a border between the windowed content and the remainder 

of the GUI enabling a user to execute inputs and interact with outputs 

different from those that would be provided outside the windowed space.” 

Id. (citing Ex. 2013 ¶¶ 113–114). 

We do not see any use of the phrase window frame within the ’993 

patent other than in claim 3, and during prosecution, the applicant pointed 

only to Figure 3 as support for what is now claim 3. See Ex. 1003, 417. 

Thus, in the absence of any special meaning of the term window frame

defined in the specification, we apply its ordinary and customary meaning. 

On this basis, we disagree with Neonode’s argument that a window frame 

could simply mean a graphical border between two parts of a screen as in 

Hisatomi’s Figure 28. Moreover, in Hisasomi’s screen D73, the border does 

not actually enclose the selectable icons that are revealed upon swiping away 

from the corner. If anything would be “within” a window in this figure, it 

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would be the home-screen image that this continuous border encloses on all 

sides, not the selectable icons that are outside this border. 

Neonode also contends that its “showing of nexus as to claim 3 . . . is 

not contested.” PO Sur-reply 22 (citing Ex. 2019 ¶ 8). But this evidence 

from Mr. Shain’s declaration only states his testimony that “[w]hen the N1 

and N2 phones displayed tap-activatable icons, they were presented fullscreen, not within a window.” Ex. 2019 ¶ 8. Neonode has not otherwise 

presented evidence showing a nexus between this particular feature and the 

alleged commercial success, industry praise, skepticism, or industry respect, 

or even mentioning this feature in the context of its evidence. See supra

Section III.C.4(e). 

Thus, we find Petitioner’s arguments persuasive, by a preponderance 

of the evidence, that claim 3 would have been obvious over the combination 

of Hisatomi and Ren. Thus, we conclude that claim 3 is unpatentable under 

§ 103 on this basis. 

7. Claim 4 (Ground 1B: Obviousness over Hisatomi, Ren, 

and Allard-656) 

Claim 4 recites “wherein the plurality of pre-designated system 

functions comprises a help function.” Ex. 1001, 7:6–8. 

Petitioner alleges that claim 4 is obvious over the combination of 

Hisatomi, Ren, and Allard-656. See Pet. 54–57. Allard-656 is a U.S. Patent 

disclosing “[a] personal communicator that combines a cellular phone, a data 

and fax modem, and a data processing system, into a mobile, compact, 

lightweight, battery operated, handheld device having a variety of data 

processing and communication functions” such as a calendar, an address 

book, a note pad, and a communication device.” Ex. 1007, 1:41–52. Part of 

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its user interface includes a help icon that activates a help screen. See id. at 

6:17, 6:30–37, Figs. 4A–B. 

Relying on Dr. Bederson’s testimony, Petitioner alleges that Allard656 discloses the use of a help function in a handheld device, and that “[i]t 

would have been obvious to a [person of ordinary skill in the art] to 

configure the Hisatomi device such that one or more of the icons in the 

function lists corresponded to a help function, as disclosed in Allard-656,” 

motivated by “[t]he obvious need for user assistance and its well-known 

prevalence in user interfaces” at the time of the claimed invention. Pet. 55–

57 (citing Ex. 1005 ¶ 223; Ex. 1009, 5:51–55, 6:12–38, Figs. 4A, 4B; 

Ex. 1002 ¶¶ 167–171). 

Neonode argues that Allard-656 is not analogous art and that there 

would have been no motivation to combine it with Hisatomi. See PO Resp. 

35–41. First, Neonode argues that Allard-656 is not within the same field of 

endeavor as the ’993 patent because “[t]he field of endeavor of the ’993 

Patent is that of user interfaces for handheld mobile computer units,” 

whereas the field of endeavor of Allard-656 “is that of mechanical 

engineering solutions.” Id. at 36–38 (citing Ex. 1001, code (57), 1:14–18, 

1:33–36, 1:55–2:4, 2:8–10, 3:19–24, 3:57–58, 6:50–53; Figs. 1–14; Ex. 2013 

¶ 123). 

Neonode also argues that Allard-656 is not reasonably pertinent to the 

problem addressed by the ’993 patent because “[t]he problem the ’993 

Patent sought to solve was providing an easily navigable user interface for a 

small handheld computer unit,” whereas Allard-656 sought to solve the 

problem of “how to adjust an LCD display’s contrast level when the user 

interface is either opaque or transparent and therefore not usable by the 

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user.” PO Resp. 38–39 (citing Ex. 1001, 1:38–39, 1:44–53, 1:59–65; 

Ex. 2013 ¶¶ 124–128). 

We disagree with Neonode’s characterization of Allard-656’s field of 

endeavor and the relevant problem it sought to solve. As Petitioner correctly 

notes, Allard-656 describes one of the objects of its invention as “to provide 

a personal communicator, including a cellular phone and a touchscreen 

display, with . . . a simulated HELP screen control button.” Ex. 1007, 2:46–

51; Pet. Reply 24. Allard-656 also discusses several user interface features as 

part of its disclosure. See Ex. 1007, 5:41–6:21, Figs. 4A–B. 

Petitioner cites Allard-656 for the limited purpose of teaching that one 

of the pre-designated system functions can be a help function. See Pet. 54–

57. We agree with Petitioner that Allard-656 provides an analogous teaching 

in that regard, both because the reference is within the field of user 

interfaces for handheld mobile computer units and because it teaches a 

solution to the problem of providing an icon corresponding to a system help 

function. 

Next, Neonode argues that there would have been no motivation to 

combine Allard-656 with Hisatomi because Hisatomi already discloses a 

“partial cut-out help” function “to make it easy to check the contents of the 

pull-out menu,” which does not involve an associated help icon. PO Resp. 

40 (citing Ex. 1005 ¶¶ 222–240, Figs. 55, 57). According to Neonode, a 

person of ordinary skill in the art “would have seen no deficiency in 

Hisatomi to be remedied by the addition of a ‘Help’ icon, and adding such an 

icon to each pull-out menu as Petitioners suggest would have done nothing 

but layer another step onto the process for executing the help function.” Id.

at 41 (citing Ex. 2013 ¶¶ 131–133). 

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Petitioner responds that the “partial cut-out help” function simply 

“provides a small preview of the functions in the corresponding menu to 

assist the user in recalling which of the pull-out menus contain which 

function.” Pet. Reply 24 (citing Ex. 1005 ¶¶ 222–240). Thus, according to 

Petitioner, “[t]his is not the typical ‘help’ functionality a [person of ordinary 

skill in the art] would expect to be included with function buttons within the 

menus explaining the various functions within the menu.” Id. at 25 (citing 

Ex. 1007, 6:30–37). Petitioner also contends that an ordinarily skilled artisan 

“would not have been discouraged from implementing an Allard-type HELP 

icon” because “the two features provided different functionality.” Id. (citing 

Ex. 1051 ¶ 82). 

We find Petitioner’s arguments persuasive because we agree that 

Hisatomi’s “help” function solves a different problem than the help icon that 

Allard-656 teaches, and a person of ordinary skill in the art would have had 

reason to use both types of help functions in Hisatomi’s mobile device. 

Compare Ex. 1005 ¶¶ 222–240, with Ex. 1007, 6:30–37. 

Based on the evidence as a whole, we determine that Petitioner has 

shown, by a preponderance of the evidence, that claim 4 would have been 

obvious over the combination of Hisatomi, Ren, and Allard-656. Thus, we 

conclude that claim 4 is unpatentable under § 103 on this basis. 

8. Claim 5 (Ground 1C: Obviousness Over Hisatomi, Ren, 

and Tanaka) 

Claim 5 recites “wherein the plurality of pre-designated system 

functions comprises a clock function.” Ex. 1001, 7:9–11. 

Petitioner alleges that claim 5 is obvious over the combination of 

Hisatomi, Ren, and Tanaka. See Pet. 58–60. Tanaka is a U.S. patent 

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describing “an information processing apparatus [for] allowing the user to 

employ any one of the two icon-selecting methods, ‘check’ and ‘drag[]’ to 

control window positions as desired on the screen.” Ex. 1008, 2:34–38. Its 

user interface includes a selectable icon for a “world clock” function. See id.

at Fig. 5. 

Petitioner argues that it would have been obvious to a person of 

ordinary skill in the art “to configure the Hisatomi device to include an icon 

representing a clock function as disclosed in Tanaka” because “the ability to 

identify the current time as well as the passage of time without viewing a 

separate device was desirable across the variety of devices in which 

Hisatomi teaches its device could be implemented.” Pet. 58–59 (citing 

Ex. 1005 ¶ 243; Ex. 1008,16 4:13–21, Fig. 5; Ex. 1002 ¶¶ 174–175). 

Petitioner also argues that “Hisatomi describes the desire to not obscure the 

image on the editing screen, as would have been required to always display a 

clock.” Pet. 58 (citing Ex. 1005 ¶ 5). 

Neonode argues that “requiring a user to activate an icon in order to 

see the time would have been an inferior solution to simply including a 

persistent clock display, which is why that was the typical solution in 2002 

(and today) for notebook-sized devices such as Hisatomi.” PO Resp. 42 

(citing Ex. 2013 ¶ 136); see also id. at 42–43 (citing Ex. 1002 ¶ 173; 

Ex. 1005 ¶ 243; Ex. 2013 ¶ 137) (arguing that a persistent clock display 

would not necessarily require obscuring the displayed image, and that other 

devices, including camera devices, typically use a persistent time display). 

 

16 Petitioner appears to have incorrectly identified Tanaka as Exhibit 1010 

rather than its actual exhibit number Exhibit 1008. 

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Even if the use of a persistent clock was the most common choice at 

the time of the claimed invention, Petitioner has persuasively shown that 

Tanaka teaches an alternative to a persistent clock in the form of a clock 

function that is selectable with an icon. Neonode has not pointed to anything 

in the prior art criticizing, discrediting, or otherwise discouraging 

investigation into the use of an icon-activated clock function as Tanaka 

teaches. See DePuy Spine, 567 F.3d at 1327 (Fed. Cir. 2009). Therefore, we 

find that a person of ordinary skill in the art would have had reason to add a 

clock function corresponding to one of Hisatomi’s icons. 

Based on the evidence as a whole, we determine that Petitioner has 

shown, by a preponderance of the evidence, that claim 5 would have been 

obvious over the combination of Hisatomi, Ren, and Tanaka. Thus, we 

conclude that claim 5 is unpatentable under § 103 on this basis. 

9. Claim 6 (Ground 1D: Obviousness over Hisatomi, Ren, 

and Kodama) 

Claim 6 recites “wherein the plurality of pre-designated system 

functions comprises an alarm function.” Ex. 1001, 7:12–14. 

Petitioner alleges that claim 6 is obvious over the combination of 

Hisatomi, Ren, and Kodama. See Pet. 60–63. Kodama is a U.S. patent 

application describing “a portable information gather apparatus which can 

function to manage captured information on a page basis, and an information 

management method by the apparatus.” Ex. 1016, 1:11–14. Kodama 

displays “stamps” (icons) associated with various selectable functions, and 

one of these is an “alarm stamp,” which allows the user to set an alarm. See

Id. at 5:35–43, 8:21–9:4, Fig. 4. 

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Petitioner argues that Kodama discloses a portable, touchscreen 

device with an alarm function, and that it would have been obvious “to 

include an alarm function, such as disclosed by Kodama, as one of the icons 

disclosed by Hisatomi” because it would have been “desirable to have an 

alarm that a user could set to manage the amount of time the user spends on 

editing function. Alarm functions were basic functions well-known to a 

[person of ordinary skill in the art] and could have been implemented with 

predictable results.” Pet. 61–63 (citing Ex. 1016, 1:8–28, 8:54–56, 9:1–4, 

Fig. 4; Ex. 1002 ¶¶ 179–182). 

Neonode characterizes Petitioner’s argument as “an argument that it 

would have been obvious to try.” PO Resp. 44. We disagree with this 

characterization because Kodama specifically discloses an icon for an alarm 

function. See Ex. 1016, Fig. 4 (“alarm stamp” 101). And Petitioner’s 

obviousness argument is not simply that it would have been obvious to try to 

modify Hisatomi, but that it would have been obvious to modify Hisatomi 

by designating one of Hisatomi’s icons as an alarm icon as Kodama teaches. 

See Pet. 61–63. 

Neonode also contends that Petitioner’s alleged motivation to 

combine “is pure hindsight bias, driven by our modern experience with 

smartphones.” PO Resp. 45 (citing Ex. 2013 ¶ 145). Neonode asserts that, 

“[i]n 2002, prior to the advent of smartphones that incorporated ‘lifestyle’ 

functionalities such as photo editing into a mobile communications device, 

neither a [person of ordinary skill in the art] nor the average consumer would 

have considered it beneficial to package an alarm with an image editing 

device.” Id. (citing Ex. 2013 ¶ 145). Thus, according to Neonode, “the lack 

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61 

of an alarm on such a device would not have been considered a ‘deficiency’ 

to be remedied.” Id. (citing Ex. 2013 ¶ 145) 

We disagree that Petitioner’s argument is an improper hindsight 

reconstruction because the asserted motivation “takes into account only 

knowledge which was within the level of ordinary skill at the time the 

claimed invention was made and does not include knowledge gleaned only 

from applicant's disclosure.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 

1971). That Kodama teaches an alarm icon on a portable device prior to 

2002 undermines Dr. Rosenberg’s testimony that a person of ordinary skill 

in the art would not have considered such an icon to be beneficial in the 

relevant time frame. See Ex. 2013 ¶ 145. Thus, we find Dr. Bederson’s 

contrary testimony to be more credible on this point. See Ex. 1002 ¶¶ 181–

182. 

Based on the evidence as a whole, we determine that Petitioner has 

shown, by a preponderance of the evidence, that claim 6 would have been 

obvious over the combination of Hisatomi, Ren, and Kodama. Thus, we 

conclude that claim 6 is unpatentable under § 103 on this basis. 

D. OBVIOUSNESS GROUNDS BASED ON HANSEN AND GILLESPIE 

(GROUNDS 2A–D) 

In addition to the above grounds, Petitioner asserts that claims 1–3, 7, 

and 8 are unpatentable under § 103(a) as obvious over the combination of 

Hansen and Gillespie, and for claims 4, 5, and 6, in further combination with 

Allard-656, Tanaka, or Kodama, respectively (Grounds 2A–D). Pet. 1–2, 

63–82. 

Our conclusion above as to Grounds 1A–D is fully dispositive as to all 

challenged claims. Thus, we do not consider Grounds 2A–D in our decision. 

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See Boston Scientific Scimed, Inc. v. Cook Group Inc., 809 F. App’x 984, 

990 (Fed. Cir. 2020) (holding that once a petitioner has prevailed on all its 

challenged claims, “the Board need not address issues that are not necessary 

to the resolution of the proceeding”); Beloit Corp. v. Valmet Oy, 742 F.2d 

1421, 1423 (Fed. Cir. 1984) (once a dispositive issue is decided, there is no 

need to decide other potentially dispositive issues). 

PETITIONER’S MOTION TO EXCLUDE EVIDENCE (PAPER 60) 

Petitioner moves to exclude paragraphs 3, 5, 9, and 11 of Mr. Bysedt’s 

declaration (Ex. 2015) and paragraphs 4 and 12 of Mr. Bäcklund’s 

declaration (Ex. 2016). Paper 60. For the reasons below, this motion is 

denied. 

As to Mr. Bystedt’s declaration, Petitioner contends that paragraphs 3 

and 5 of the declaration offer improper opinions on the ultimate issues of 

novelty and conception by describing Neonode’s N1 device as “innovative” 

and “novel” without providing any associated analysis, and stating that 

Neonode “conceived of the gesture-based user interface.” Paper 60, 3–4 

(quoting Ex. 2015 ¶¶ 3, 5). Petitioner also contends that Mr. Bystedt offered 

an improper argument that the device “enjoyed substantial commercial 

success” without performing any analysis, submitting corroborating 

evidence, or being qualified as an expert. Id. at 4–5 (citing Ex. 2015 ¶ 11; 

Ex. 1055, 10:20–11:1, 11:7–14, 18:2–7, 18:20–19:3). Petitioner also argues 

that statements in paragraphs 5 and 9, in which Mr. Bystedt recounts 

statements made by third parties relevant to conception of the invention and 

industry praise, are impermissible hearsay. See id. at 5–7. 

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As to Mr. Bäcklund’s declaration, Petitioner argues that we should 

exclude paragraphs 4 and 12 of the declaration as inadmissible hearsay 

because he conveys statements by third parties relating to the issues of 

conception and industry skepticism. Paper 60, 7–8 (citing Ex. 1056, 19:15–

23, 22:14–23; Ex. 2016 ¶¶ 4, 12). 

Neonode responds that the statements by Messrs. Bystedt and 

Bäcklund are not proffered as expert testimony and are not offered for the 

truth of the matters asserted. See generally Paper 61. 

We have considered the above testimony as part of this decision. But 

like the other evidence we discuss above, this evidence does not, even if 

admissible and true, establish a nexus between the challenged claims and 

Neonode’s asserted objected indicia and obviousness, or provide the 

evidence necessary to show commercial success. See supra Section 

III.C.4(e). Nor does this testimony establish or corroborate that Mr. Goertz 

conceived of the invention before Hisatomi’s publication date, since the 

referenced communications were not contemporary with the alleged date of 

conception and do not address the specific limitations of the challenged 

claims. See supra Section III.C.3. 

Thus, in light of our findings in this decision, we deny Petitioner’s 

Motion to Exclude Evidence. 

NEONODE’S UNOPPOSED MOTION TO SUBMIT SUPPLEMENTAL 

INFORMATION (PAPER 63) 

Neonode moves (Paper 63) to submit supplemental information under 

37 C.F.R. § 42.123(b) consisting of four pages from a deposition of 

Petitioner’s expert Dr. Bederson taken in co-pending IPR2021-00144 on 

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64 

February 28, 2022 (Ex. 2029). Although Petitioner states that it takes no 

position on the motion, it has submitted a response arguing that the evidence 

is not relevant to the issues of the case. Paper 66. 

For the reasons below, this motion is granted. 

During cross-examination, Neonode’s counsel 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; Paper 63, 1–3. Neonode argues that 

this admission contradicts Petitioner’s apparent position that Ren’s 

“a→b→c→a” gesture would constitute a “tap.” Paper 63, 3. Because of the 

timing of the deposition, Neonode contends that this testimony could not 

have been submitted earlier, and that Neonode acted diligently to notify the 

Board of the matter within a few days of the deposition. 

Although Petitioner does not oppose admission of the testimony, it 

argues that the testimony is irrelevant because (1) neither Petitioner nor 

Dr. Bederson rely on Ren’s “a→b→c→a” strategy as a “tap,” and (2) it is 

undisputed that Ren’s “a→c→a” strategy is a “tap,” and so the Board does 

not need to determine whether “a→b→c→a” is also a “tap.” Paper 66, 1. 

Because the motion is unopposed, the evidence could not have 

previously been submitted in this case, and submission of the evidence 

would be interest of justice, we grant Neonode’s motion to submit Exhibit 

2029 as supplemental information under 37 C.F.R. § 42.123(b). We discuss 

the import of this evidence above, in the context of our construction of the 

term tap-activatable. See supra Section III.B.2. 

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65 

NEONODE’S UNOPPOSED MOTION TO SEAL (PAPER 65) 

Neonode moves to seal a portion of its demonstrative exhibits 

(Ex. 2030) on the ground that this portion refers to a license agreement 

(Ex. 2025) that is protected under seal by a previous order (Paper 53) under 

the Protective Order in force in this proceeding (Papers 52, 50 App’x A). 

Neonode has submitted a redacted version of its demonstrative exhibits as 

Exhibit 2031, which omits pages 67 and 68. 

For a motion to seal confidential information, the moving party has 

the burden to show that there is good cause for the request to seal. See

37 C.F.R. §§ 42.20(c), 42.54(a). A party can show good cause by 

(1) providing a sufficient explanation as to why the information sought to be 

sealed is confidential and (2) showing that, on balance, the harm to a party 

by disclosure of the information, as well as the need of either party to rely 

specifically on the information at issue, outweighs the public interest in 

maintaining a complete and understandable record. See Argentum Pharms. 

LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3–4 (PTAB Jan. 

19, 2018) (informative) (citing Corning Optical Commc’ns RF, LLC, v. PPC 

Broadband, Inc., IPR2014- 00440, Paper 46, 2; Paper 47, 3 (PTAB April 6 

and 14, 2015)). 

Because the redacted portion of Neonode’s demonstratives relate to 

material that we have previously placed under seal, we find that Neonode 

has shown good cause for the Motion to Seal, and it is granted for the 

reasons given in our previous Order (Paper 53). 

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CONCLUSION17

For the reasons above, Petitioner has shown by a preponderance of the 

evidence that claims 1–8 of the ’993 patent are unpatentable under § 103(a) 

as obvious over Hisatomi and Ren (claims 1–3, 7, 8), and for claims 4–6, 

Allard-656, Tanaka, and Kodama, respectively. We do not reach the question 

of whether any claims are unpatentable on the remaining grounds. 

ORDER 

In consideration of the foregoing, it is 

ORDERED that claims 1–8 of the ’993 patent are unpatentable; 

FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence 

(Paper 60) is denied; 

FURTHER ORDERED that Patent Owner’s Motion to Submit 

Supplemental Information (Paper 63) is granted; 

FURTHER ORDERED that Patent Owner’s Motion to Seal (Paper 

65) is granted; 

FURTHER ORDERED that Exhibit 2030 is sealed in its entirety; 

FURTHER ORDERED that the parties may, within 10 days of the 

entry of this decision, file a joint motion to seal this decision, which must 

 

17 Should Neonode wish to pursue amendment of claims in a reissue or 

reexamination proceeding after this decision, we draw Neonode’s attention 

to the April 2019 Notice Regarding Options for Amendments by Patent 

Owner Through Reissue or Reexamination During a Pending AIA Trial 

Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Neonode chooses to 

file a reissue application or a request for reexamination of the challenged 

patent, we remind Neonode of its continuing obligation to notify the Board 

of any such related matters in updated mandatory notices. See 37 C.F.R. 

§ 42.8(a)(3), (b)(2). 

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include, as an exhibit, a proposed redacted public version of this decision 

that will be open to the public, and in the absence of such motion, this 

decision will be made open to the public; and 

FURTHER ORDERED that parties to this proceeding seeking judicial 

review of our decision must comply with the notice and service requirements 

of 37 C.F.R. § 90.2. 

In summary: 

 

18 As explained above, we do not reach Grounds 2A–D based on Hansen and 

Gillespie because we conclude that all challenged claims are unpatentable 

under Grounds 1A–D. See supra Section III.D. 

Claim(s) 35 

U.S.C. § Reference(s)/Basis 

Claims 

Shown 

Unpatentable 

Claims 

Not Shown 

Unpatentable 

1–3, 7, 8 103(a)   Hisatomi, Ren 1–3, 7, 8 

4 103(a)   Hisatomi, Ren, 

Allard-656 

4 

5 103(a)   Hisatomi, Ren, 

Tanaka 

5 

6 103(a)   Hisatomi, Ren, 

Kodama 

6 

1–3, 7, 8 103(a)18 Hansen, Gillespie 

4 103(a)   Hansen, Gillespie, 

Allard-656 

 

5 103(a)   Hansen, Gillespie, 

Tanaka 

 

6 103(a)   Hansen, Gillespie, 

Kodama 

 

Overall 

Outcome

 1–8 

Case 6:20-cv-00507-ADA Document 66-1 Filed 02/03/23 Page 68 of 69
IPR2021-00145 

Patent 8,812,993 B2 

68 

For PETITIONER: 

Walter Renner 

David Holt 

FISH & RICHARDSON P.C. 

axf-ptab@fr.com 

holt2@fr.com 

Tiffany Miller 

James Heintz 

DLA PIPER LLP 

tiffany.miller@dlapiper.com 

jim.heintz@dlapiper.com 

 

For PATENT OWNER: 

Robert Asher 

Bruce Sunstein 

Timothy M. Murphy 

SUNSTEIN LLP 

rasher@sunsteinlaw.com 

bsunstein@sunsteinlaw.com 

tmurphy@sunsteinlaw.com 

Philip J. Graves 

HAGENS BERMAN SOBOL SHAPIRO LLP 

philipg@hbsslaw.com 

Case 6:20-cv-00507-ADA Document 66-1 Filed 02/03/23 Page 69 of 69