Exhibit 15 

Case 6:20-cv-00507-ADA Document 81-17 Filed 05/19/23 Page 1 of 81
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.

____________

Case IPR2021-00144

Patent 8,095,879

____________

CORRECTED PATENT OWNER RESPONSE

EXHIBIT 1048 

Samsung et al. v. Neonode 

IPR2021-00144

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TABLE OF CONTENTS

I. INTRODUCTION...........................................................................................1

II. SECONDARY INDICIA OVERWHELMINGLY SUPPORTS A FINDING 

OF VALIDITY................................................................................................3

A. Neonode’s Innovative Swiping User Interface, Years Ahead Of 

Apple’s And Samsung’s Offerings, Received Substantial Industry 

Praise And Is The Subject Of The ’879’s Claims.................................5

B. The Commercial Success And Licensing Of The Neonode 

Technology Further Demonstrates The Novelty Of The Claims........17

III. THE PETITION FAILS FOR TWO INDEPENDENTLY SUFFICIENT 

REASONS.....................................................................................................19

A. The Claimed “Gliding ... Away From The Touched Location” Is A 

Different Gesture From Hirayama-307’s Drag-And-Drop.................19

1. The Prosecution History, Consistent With Plain Meaning And 

The Specification, Makes Clear That “Gliding ... Away” Does 

Not Encompass “Drag-And-Drop” Operations. ...................... 20

2. Hirayama-307’s “Drag-And-Drop” Operation Does Not 

Disclose The “Gliding ... Away” Limitation. ......................... 26

3. Petitioner’s Expert Testimony That Hirayama-307’s Drag-AndDrop Gesture Discloses The Claimed “Gliding ... Away” Is 

Conclusory And Entitled To Little Or No Weight. ................. 31

B. Petitioners’ Ground Fails To Disclose Or Render Obvious 

“Wherein The Representation Of The Function Is Not Relocated Or 

Duplicated.” ........................................................................................34

1. Petitioner’s Single-Reference Obviousness Argument Fails... 35

a. Petitioner’s Single-Reference Obviousness Argument Is 

Based On The False Premise That Hirayama-307 Does 

Not “Relocate[] Or Duplicate[]” The Representation Of 

Function..........................................................................35

b. The Petition Provides No Reason Why A POSITA 

Would Modify Hirayama-307........................................46

2. A POSITA Would Not Have Been Motivated To Modify 

Hirayama-307 In View Of Ren So That The Representation Of 

The Function “Is Not Relocated Or Duplicated.”.................... 51

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IV. CLAIM 6 IS NOT SHOWN TO BE UNPATENTABLE. ...........................61

V. CLAIM 15 IS NOT SHOWN TO BE UNPATENTABLE. .........................64

VI. CONCLUSION.............................................................................................68

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TABLE OF AUTHORITIES

Page(s)

COURT DECISIONS

Ajinomoto Co. v. ITC, 

932 F.3d 1342 (Fed. Cir. 2019).....................................................................20

Apple Inc. v. Samsung Elecs. Co. Ltd., 

839 F.3d 1034 (Fed. Cir. 2016) (en banc).....................................................14

Cheese Sys. v. Tetra Pak Cheese & Powder Sys., 

725 F.3d 1341 (Fed. Cir. 2013).......................................................................4

Comcast Cable Communs., LLC v. Promptu Sys. Corp., 

838 F. App’x 551 (Fed. Cir. 2021)................................................................50

D’Agostino v. Mastercard Int’l, Inc., 

844 F.3d 945 (Fed. Cir. 2016).......................................................................65

Fenner Invs., Ltd. v. Cellco P’ship, 

778 F.3d 1320 (Fed. Cir. 2015).....................................................................65

In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 

676 F.3d 1063 (Fed. Cir. 2012).....................................................................52

In re Magnum Oil Tools Int’l, Ltd., 

829 F.3d 1364 (Fed. Cir. 2016)...............................................................68, 70

In re Oelrich, 

666 F.2d 578 (C.C.P.A. 1981) ......................................................................70

Institut Pasteur v. Focarino, 

738 F.3d 1337 (Fed. Cir. 2013).................................................................4, 14

Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 

821 F.3d 1359 (Fed. Cir. 2016).....................................................................68

Iridescent Networks, Inc. v. AT&T Mobility, LLC, 

933 F.3d 1345 (Fed. Cir. 2019).....................................................................20

4

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Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 

688 F.3d 1342 (Fed. Cir. 2012).....................................................................52

Microsoft Corp. v. Enfish, LLC, 

662 Fed. App’x 981 (Fed. Cir. 2016)............................................................50

PAR Pharm. v. TWi Pharms., Inc., 

773 F.3d 1186 (Fed. Cir. 2014).....................................................................70

Phillips v. AWH Corp., 

415 F.3d 1303, (Fed. Cir. 2005)....................................................................30

Saffran v. Johnson & Johnson, 

712 F.3d 549 (Fed. Cir. 2013).......................................................................19

Spectrum Int’l, Inc. v. Sterilite Corp., 

164 F.3d 1372 (Fed. Cir. 1998).....................................................................19

AGENCY DECISIONS

Ford Motor Co. v. TMC Fuel Injection Sys., LLC, 

IPR2014-00272, Paper 36 (June 22, 2015)...................................................19

Ford Motor Co. v. TMC Fuel Injection Sys., LLC, 

IPR2014-00273, Paper 15 (June 22, 2015)...................................................19

Ford Motor Co. v. Vehicle Operation Techs., LLC, 

IPR2014-00594, Paper 26 (Oct. 15, 2014)....................................................19

Google Inc. v. Koninklijke Philips N.V., 

IPR2017-00409, Paper 10 (June 5, 2017).....................................................30

Hulu LLC v. DivX LLC, 

IPR2021-01418, Paper 15 (Mar. 15, 2022).............................................18, 19

Hulu LLC v. Sound View Innovations, 

IPR2018-00582, Paper 34 (Aug. 5, 2019).....................................................52

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InfoBionic, Inc. v. Braemer Mfg., LLC, 

IPR2015-01704, Paper 11 (Feb. 16, 2016) ...................................................52

William Wesley Carnes, Sr., Inc. v. Seabord Int’l Inc., 

IPR2019-00133, Paper 10 (May 8, 2019).....................................................51

OTHER AUTHORITIES

37 C.F.R. § 42.104(b)(3)..........................................................................................64

37 C.F.R. § 42.65.....................................................................................................30

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EXHIBIT LIST

2001 Declaration of Craig Rosenberg, Ph.D. [Rosenberg-Decl.]

2002 CV of Craig Rosenberg, Ph.D. [Rosenberg CV]

2003 Microsoft Press Computer Dictionary, p. 243 (3d ed. 1997)

[Microsoft-Dictionary]

2004 Declaration of Nathan Lowenstein in Support of Motion for Pro 

Hac Vice Admission [Lowenstein-Decl.]

2005 Deposition Transcript of Petitioner’s Expert, Benjamin B 

Bederson, Feb. 28, 2022 [Bederson-Depo.]

2006 Amy K. Karlson, Benjamin B. Bederson, and John SanGiovanni, 

Applens And Launchtile: Two Designs For One-Handed Thumb 

Use On Small Devices, CHI 2005 ׀ PAPERS: Small Devices 1

[Bederson-Paper]

2007 Second Declaration of Craig Rosenberg, Ph.D. [Rosenberg-2ndDecl.]

2008 N2 Advertisement Video (uploaded Oct. 18, 2007) (available at 

https://www.youtube.com/watch?v=Hq3S8Crxf2s) [N2-

Advertisement-Video]

2009 Non-Final Rejection of Application No. 10/315,250 (later issued 

as U.S. Patent 8,095,879), mailed Mar. 23, 2006. [2006-03-23 

Non-Final Rejection]

2010 U.S. Publication No. 2004/0021643 [Hoshino]

2011 Reserved

2012 Conrad H. Blickenstorfer, NeoNode N1, Can A Unique Interface 

Put This Compelling Smart Phone On The Map? Pen Computing 

Magazine [Pen-Computing-Magazine-N1-Phone-Review]

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2013 Conrad H. Blickenstorfer, Neonode N2, A New Version Of The 

Phone That Pioneered Touchscreens, Pen Computing Magazine, 

Nov. 4, 2007 [Pen-Computing-Magazine-N2-Phone-Review]

2014 Bill Hennessy, The Neonode N2, Trend Hunter, Aug. 18, 2008 

[Trend-Hunter-Article]

2015 Trend Hunter, About page [Trend-Hunter-About]

2016 Neonode N1m First Impression [tnkgrl-Media-post]

2017 Tnkgrl About Page [tnkgrl-Media-About]

2018 Jurek Breuninger PhD Dissertation, Nov. 13, 2019 [PhDDissertation]

2019 Timothy B. Lee, If Android Is A “Stolen Product,” Then So Was 

The Iphone, Ars Technica, Feb. 23, 2012 [Ars-Technica-Article]

2020 Andreas Hollatz Dissertation, Oct. 2015 [Hollatz-Dissertation]

2021 Hunting The iPhone Killer; Swedish Neonode Generates Buzz For 

Device, RCR Wireless, Apr. 7, 2007 [iPhone-Killer]

2022 Declaration of Ulf Martensson [Martensson-Decl.]

2023 Declaration of Joseph Shain [Shain-Decl.]

2024 Declaration of Marcus Backlund [Backlund-Decl.]

2025 Excel Spreadsheet documenting Neonode sales [Neonode-Sales]

2026 CONFIDENTIAL Declaration of Per Bystedt [Bystedt-Decl.]

2027 Neonode Confidential Investment Memorandum, Jan. 2004 

[Neonode-Investment-Memo]

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2028 CONFIDENTIAL Samsung License Agreement [SamsungLicense-Agreement]

2029 Neonode N1m review, Jun. 29, 2007 (available at 

https://www.youtube.com/watch?v=Tj-KS2kfIr0) [Neonode-N1mreview]

2030 User Online Comments of Neonode N2 instructions film

[Neonode-Comments-1]

2031 User Online Comments of Neonode N2 Overview [NeonodeComments-2]

2032 User Online Comments of Neonode N2 unbox and review video 

[Neonode-Comments-3]

2033 Wikipedia – Apple iPhone release dates [Wikipedia-iPhoneRelease-Dates]

2034 Wikipedia – Samsung Galaxy release dates [Wikipedia-Samsung 

Galaxy-Release-Dates]

2035 Response to Non-Final Office Action of Application No. 

10/315,250 (later issued as U.S. Patent 8,095,879), submitted Mar. 

14, 2008. [2008-03-14 Office-Action-Response]

2036 Neonode the only original, Sep. 13, 2007 (available at 

https://www.youtube.com/watch?v=D9N3H1rSxHk) [User-Video]

2037 Email by the Board, Feb. 25, 2022 [Board-Email]

2038 IEEE Dictionary Definition of “Shell” [IEEE Dictionary] 

2039 US Inflation Calculator (available at 

https://www.usinflationcalculator.com/) [Inflation-Calculator]

2040 Euro Dollar Exchange Rate (EUR USD) - Historical Chart 

(available at https://www.macrotrends.net/2548/euro-dollarexchange-rate-historical-chart) [Euro-Dollar-Exchange-Rate]

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2041 Smartphone Shipments Declined in the Fourth Quarter But 2021 

Was Still a Growth Year with a 5.7% Increase in Shipments, 

According to IDC, Jan. 27, 2021 (available at 

https://www.idc.com/getdoc.jsp?containerId=prUS48830822) 

[Smartphone-Shipments]

2042 Declaration of Parham Hendifar

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I. INTRODUCTION1

The ’879 patent, filed in 2002 with claims directed towards a gliding-based

user interface, is not just any patent, nor is Neonode just any patent owner. When 

Neonode introduced its N1 phone in 2002—five years before Apple’s iPhone and 

seven years before Samsung’s Galaxy—it was widely recognized as the first smart 

phone to use swipe gestures: 

Ex. 2020 [Hollatz-Dissertation] 8; see also Section II.A.1 (additional evidence). 

The N1, and its swiping user interface in particular, was widely praised in gushing 

terms. Industry observers called it “simply amazing,” “extremely intuitive,” and 

1 Based on agreement between the parties and approval from the Board (see

Board email dated February 25, 2022, Ex. 2037), the Petition is limited to Grounds 

2A-2D only.

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nothing like the “dreaded gestures” of prior pen-based systems, like the references 

Petitioners rely upon here. 

While Petitioner Samsung now contends that the ’879’s claims are invalid, it 

sang a far different tune in 2005 when the head of Samsung’s mobile telecom 

division visited Neonode and proclaimed that Neonode’s intuitive user interface 

was “the future of mobile phones.” Ex. 2026 [Bystedt-Decl.] ¶ 9. Shortly 

thereafter, Samsung licensed the application that later issued as the ’879 Patent, 

only to later infringe the patent once the license agreement expired.

Against this patent, Petitioners recycle an old, stylus-based reference 

(Hirayama-307)—a quintessential example of the aforementioned “dreaded” penbased systems—that was already carefully considered by the examiner during 

prosecution. While the examiner found Hirayama-307 to be “pertinent to [the] 

applicant’s disclosure,” it was too far afield to be a basis of any rejection. Ex. 

2009 [2006-03-23 Non-Final Rejection] 15. And for good reason—as Hirayama307 fails to disclose many limitations of the claimed invention.

First, the claims require a “gliding ... away” gesture to “activate” a function

but Petitioner relies upon Hirayama-307’s drag-and-drop operation, the likes of 

which the Applicant made perfectly clear in prosecution is distinct from the

“gliding ... away” limitation:

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Hoshino does not teach gliding a finger away from an icon. Instead,

Hoshino teaches a drag-and-drop operation for moving an icon.

Ex. 1003 [Prosecution-History] 171; see Section III.A, infra. 

Second, Petitioner also fails to demonstrate that the claimed requirement that 

the “representation of the function” not be “relocated or duplicated” during the 

“gliding ... away” of the “object” (e.g., finger) is obvious because Hirayama-307

makes clear that its icon’s “display coordinate position is moved in accordance 

with the movement of the position coordinate of the point of the pen.”—i.e., it is 

“relocated or duplicated.” Ex. 1006 [Hirayama-307] 2:5-13. And as the Board 

already found, a POSITA would not have been motivated to combine Hirayama307 with Ren to meet this limitation. Paper 24, 20. See Section III.B, infra.

The Petition also fails to disclose or render obvious dependent claims 6 and 

15 for yet additional reasons. See Sections IV and V, infra. 

For all of these reasons, the claims should be affirmed.

II. SECONDARY INDICIA OVERWHELMINGLY SUPPORTS A 

FINDING OF VALIDITY.

“Objective indicia of non-obviousness ‘can be the most probative evidence 

of non-obviousness in the record, and enables the court to avert the trap of 

hindsight.’” Institut Pasteur v. Focarino, 738 F.3d 1337, 1346 (Fed. Cir. 2013); 

Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)

(“secondary considerations may often be the most probative and cogent evidence 

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in the record. It may often establish that an invention appearing to have been 

obvious in light of the prior art was not.”). Such “objective evidence... ‘is not just 

a cumulative or confirmatory part of the obviousness calculus but constitutes

independent evidence of nonobviousness.’” Cheese Sys. v. Tetra Pak Cheese & 

Powder Sys., 725 F.3d 1341, 1353 (Fed. Cir. 2013). This is just such a case.

Neonode’s N1 phone, introduced in 2002—five years before Apple’s

iPhone—has been widely recognized by industry observers and the public alike as 

the first commercial phone to implement a user interface based primarily on 

swiping. Neonode’s swipe-based user interface was widely praised too, described 

by technology observers as, inter alia, “quite obviously unique,” “compelling and 

... a user experience simpler than pretty much anything else that comes to mind,” 

“simple and brilliant,” “advanced simplicity,” and “extremely intuitive.” Such 

praise heaped upon the N1’s swiping-based user interface, moreover, is directly 

tied to the “gliding ... away” user interface that is the subject of the ’879’s claims. 

See Section II.A, infra. 

In fact, while Petitioners now assert that the claims were simply obvious, 

representatives of Petitioner Samsung were visibly impressed with the 

demonstration of Neonode’s technology and licensed the application that issued as 

the ’879 patent in 2005—only to later infringe the claims once the license expired. 

See Section II.B, infra. With respect to Petitioner Apple, as one analyst observed

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upon introduction of the first iPhone, “it must be vexing to see Apple essentially 

claim ownership of concepts the Neonode phone has been using for at least five 

years.” Ex. 2013 [Pen-Computing-Magazine-N2-Phone-Review] 9. 

A. Neonode’s Innovative Swiping User Interface, Years Ahead Of 

Apple’s And Samsung’s Offerings, Received Substantial Industry 

Praise And Is The Subject Of The ’879’s Claims.

Neonode’s N1 mobile phone was introduced in spring 2002 (Ex. 2026 

[Bystedt-Decl.] ¶ 3) and its N2 was sold starting in 2007. Ex. 2022 [MartenssonDecl.] ¶ 6. From its inception, the core distinguishing feature of Neonode’s phones 

was their swipe-based user interface. Neonode specifically touted its “specially 

designed interface” that allows “you to easily access the different applications by 

using simple sweeping gestures ... on the screen.” Ex. 2008 [N2-AdvertisementVideo] (00:27-00:35); see also id., (00:45-00:51) (“And you can easily access all 

of the Neonode N2’s content by using the seven available sweeps.”). As Neonode 

explained, “there is nothing else you need other than your intuition.” Id., (01:20-

01:27). 

The swipe gestures touted in Neonode phones are the “gliding ... away” 

gesture upon which the ’879 patent and its claims are centered. Ex. 2023 [ShainDecl.] ¶¶ 4-6; Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 40-41; Section III.A, infra. In 

the ’879’s Summary of the Present Invention, the patent identifies the problems the 

inventors sought to address, including: 

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It is a problem to provide a user-friendly interface that is adapted to 

handle a large amount of information and different kinds of traditional 

computer-related applications on a small handheld computer unit. 

It is a problem to provide a user interface that is simple to use, even 

for inexperienced users of computers or handheld devices.” 

...

It is also a problem to provide a simple way to make the most 

commonly used functions for navigation and management available

in the environment of a small handheld computer unit. 

Ex. 1001 [’879] 1:49-61. The ’879, thus, is centered upon the problems of making 

a “user-friendly interface” for a handheld device that is “simple to use even for 

inexperienced users” and provides “a simple way to make the most commonly 

used functions for navigation and management available.” 

The claimed inventions address these problems by claiming a user interface 

for a mobile handheld computer unit that includes a touch sensitive area that 

includes a representation of a function, wherein the representation consists of only 

one option for activating the function and wherein an object (e.g., a finger) touches 

the touch sensitive area where the representation is provided after which the 

“object,” the finger in our example, “glid[es] along the touch sensitive area away 

from the touched location, wherein the representation of the function is not 

relocated or duplicated during the gliding.” 

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In other words, functions are activated by simply using an object such as a 

finger to glide away from the representation of a function (i.e., swiping), without 

relocating or duplicating the representation. And, as explained in detail in Section 

III.A.1, infra, the Applicant made abundantly clear that the “gliding” limitation of 

the claim is distinct from traditional “drag-and-drop” operations. See also, e.g., 

Ex. 1003 [Prosecution-History] 171 (“Hoshino does not teach gliding a finger 

away from an icon. Instead, Hoshino teaches a drag-and-drop operation for 

moving an icon.”). 

The Applicant also equated the “gliding ... away” motion with “swiping.” 

Ex. 1003 [Prosecution-History] 269 (“a finger touches a touch-sensitive screen at a 

location where an icon for a function is displayed, and then rubs/swipes/glides 

along the touch screen away from the location without lifting the finger.”); Ex. 

2007 [Rosenberg-2nd-Decl.] ¶ 41. The Applicant also specifically referenced and 

provided a link to its promotional video for a commercial embodiment, the 

Neonode N2 phone, and asked the Examiner to “view the demonstration video ... 

prior to reviewing Applicant’s arguments ....” Ex. 2035 [2008-03-14 OfficeAction-Response] 15-16; Ex. 2008 [N2-Advertisement-Video]. As the screen 

shots below from the video show, the “gliding ... away” gesture is similar to what 

many today’s systems refer to as a “swipe” gesture and is distinct from a drag-and17

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drop operation. Specifically, the thumb is placed on a representation of a function 

(an arrow) and through a swiping motion, the menu screen opens:

See Ex. 2008 [N2-Advertisement-Video ] (screenshots from 00:26-00:27). Patent 

Owner respectfully requests that the Board review the brief video for a 

demonstration of the seamless “gliding ... away” motion. Such gliding 

corresponds to what is shown, for instance, in Figure 2 which shows a thumb 

gliding along the touchscreen:

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Addressing the problems of providing a “user-friendly interface” for a 

handheld device that is “simple to use even for inexperienced users” by activating 

functions via a simple glide (swipe) as claimed and as implemented in Neonode’s 

N1 and N2 phones was widely praised. Pen Computing Magazine described 

Neonode N1 phone’s swipe as “simple and brilliant” and “not” like the “dreaded 

gestures” of the pen computing devices (like Petitioner’s Hirayama-307):

Swipe, swipe, swipe 

You see, instead of the usual menus and pulldowns, most operations are 

performed by sweeps of your finger—usually your thumb—across the 

surface of the Neonode’s display. [...] If this sounds like the dreaded 

“gestures” that never really caught on in pen computing, it’s not. The 

swipes are much simpler, there are only a few, and they are consistently 

used throughout all applications. The idea here is to let you hold a 

phone in the palm of your hand and operate it entirely with your thumb.

No need to push buttons, view tiny menus, pull out a tiny stylus, or use 

scrollwheels, rockers or other such vexing miniature controls. [...]

Neonode’s swiping interface is [] simple and brilliant. 

Ex. 2012 [Pen-Computing-Magazine-N1-Phone-Review] 2-3. As the article 

concludes: 

What’s the bottomline? The Neonode phone is quite obviously 

unique, ... The user interface is compelling and it’s easy to see how 

just a bit more development could provide almost total consistency and 

thus a user experience simpler than pretty much anything else that 

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comes to mind. The speed is simply amazing. That’s the way a phone 

should operate.” 

Id., 5. 

Other technology reviewers in the field were similarly impressed with the 

“extremely intuitive” swipe-based gesture (Ex. 2014 [Trend-Hunter-Article]), 

calling it “advanced simplicity” (id., 1). See also Exs. 2016 [tnkgrl-Media-post] 1 

(“I’ve been playing with my N1m on and off, and I’m very impressed! It’s 

definitely a best kept secret device – Neonode’s touch-based user interface with 

gesture recognition ... is extremely intuitive ...”); 2014 [Trend-Hunter-Article] 1 

(“[The N2] has the most advanced touchscreen available, and has no buttons ... 

‘Neonode N2 is designed for advanced simplicity. You do everything on-screen, 

simply and conveniently, with just one finger,’ Infibeam says. ‘The combination 

of an optical touch screen and specifically designed user interface makes access to 

all features and content of your Neonode N2 both quick and easy.’”); 2015 [TrendHunter-About], 2017 [tnkgrl-Media-About]; Ex. 2021 [iPhone-Killer ] 2 (“the N2 

from Neonode Inc. – is the strongest contender for the title of ‘iPhone killer,’ ... 

‘They’ve come out with a kick-ass device’... the [N1’s] screen reacts to the 

intuitive passage of a finger over the screen to initiate basic phone, Web browser 

and multimedia functions.”). Mr. Bystedt, who was at Neonode and involved in 

marketing, likewise confirms that there were numerous articles about the N1 

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phone, particularly its gesture-based touch screen user interface. Ex. 2026

[Bystedt-Decl.] ¶ 3.

This well-deserved praise did not only come from observers. Following 

Neonode’s demonstration of its N1 mobile handset in spring 2002 at the CeBIT 

trade show in Germany, Neonode and the N1 became famous in Stockholm and 

internationally. Ex., 2026 [Bystedt-Decl.] ¶ 3. In the Stockholm tech and startup 

business community at that time, Neonode’s N1 was the talk of the town. Id.	

Furthermore, both Sir Christopher Gent, the CEO of Vodaphone, and senior 

executives from Samsung Mobile, came to Stockholm to meet with Neonode. Id., 

¶ 8. The excitement surrounding the phone was focused on its novel gesture-based 

user interface. Ex. 2024 [Backlund-Decl.] ¶¶ 11-12; Ex. 2026 [Bystedt-Decl.] ¶ 3.

Tellingly, Petitioner Samsung, in sharp distinction to its contention now that 

the ’879’s claims are obvious, recognized the novelty of Neonode’s swipe-based 

user interface. Senior management at Samsung’s mobile telecom division were 

extremely impressed by Neonode’s N1, and in early 2005 began discussions with 

Neonode about licensing the N1’s gesture-based user interface and touch screen 

technology. Ex. 2026 [Bystedt-Decl.] ¶ 9. Ki-Tai Lee (K. T. Lee), head of 

Samsung’s mobile telecom division, presciently told Neonode that he believed 

Neonode’s intuitive user interface was “the future of mobile phones.” Id. 

Neonode had many hours of meetings with Samsung, including one in London, 

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attended by Marcus Bäcklund, Thomas Ericsson, and Per Bystedt. Id. Mr. Lee 

told Samsung’s negotiators—in Neonode’s presence—that “we need this,” 

referring to the Neonode’s N1 gesture-based user interface and the license for the 

user interface. Id. And, as described below, Petitioner Samsung put its money 

where its mouth is, paying significantly to license Neonode’s technology. See 

Section II.B, infra. 

Later, when Petitioner Apple introduced the first iPhone in 2007 (Ex. 2033

[Wikipedia-iPhone-Release-Dates]),

2 observers and others quickly recognized its 

use of the brilliant and simple swipe interface that Neonode had developed and 

introduced five years earlier:

Listening to Apple’s claims of all the patents covering the iPhone’s user 

interface one might assume the iPhone broke completely new ground 

and went where no phone had ever gone before.

That is not entirely so. Neonode, a small Swedish company ... 

announced the Neonode N1 back in 2002. ... It did not use a stylus 

either. Instead, it used a swipe and tap system on a novel touch screen 

that used a grid of infrared beams to sense finger movement. 

2 Samsung did not introduce a gesture-based mobile phone until years after 

Apple. Ex. 2034 [Wikipedia-Samsung Galaxy-Release-Dates].

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... And if the iPhone’s swipes and taps seem futuristic, they are not. 

Neonode has been using them since the first N1 came out. In fact, the 

company’s Neno user interface is based entirely on swipes and taps. 

Ex. 2013 [Pen-Computing-Magazine-N2-Phone-Review] 1. The author followed, 

[I]t must be vexing to see Apple essentially claim ownership of 

concepts the Neonode phone has been using for at least five years. 

Id., 9. 

In fact, some users have gone so far as to make videos about how Neonode’s 

“sweeping touch screen” was the “original,” to the iPhone “copycat”:

Ex. 2036 [User-Video ] (at 0:04, 0:06, 0:12, and 0:17).

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In accord, numerous academic papers and industry analysts recognized that 

Neonode’s swipe-based user interface was the pioneer in the field, and the “first 

smartphone to support touch gestures”: 

Ex. 2018 [PhD-Dissertation ] 9, see also, id., (“The Neonode N1 (Figure 11), 

available in 2004, was the first smartphone to use a touchscreen as primary input 

and to support touch gestures for several functions.”). 

Another paper similarly recognized that “The Neonode N1was the first 

mobile to use swipe gestures”:

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Ex. 2020 [Hollatz-Dissertation ] 8, see also, id., (“The Neonode N1 was the first 

commercially available mobile device to make extensive use of swipe gestures 

appropriate for one-handed use, including a browser that scrolled content vertically 

with swipes.”); Ex. 2029 [Neonode N1m video-review] 0:11-22 (“The reason I’m 

reviewing the Neonode N1m is because it’s an ancestor of the iPhone it is one of 

the first devices to use purely a finger-based interface ...”); Ex. 2019 [ArsTechnica-Article ] 8 (“[Neonode’s N1m] supported swiping gestures in addition to 

individual taps.”). 

Neonode’s N1 and N2’s user interfaces were also widely praised by users, 

particularly for their use of swiping. Just a small sampling of examples is below: 

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Ex. 2031 [Neonode-Comments-2];

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Ex. 2030 [Neonode-Comments-1]; see also Ex. 2032 [Neonode-Comments-3].

As courts have recognized, such significant evidence of praise centered upon 

the claimed “gliding ... away” user interface is compelling evidence of 

nonobviousness. Institut Pasteur, 1347 (“[I]ndustry praise ... provides probative 

and cogent evidence that one of ordinary skill in the art would not have reasonably 

expected [the claimed invention].”); Apple Inc. v. Samsung Elecs. Co. Ltd., 839 

F.3d 1034, 1053 (Fed. Cir. 2016) (en banc) (“[e]vidence that the industry 

praised...a product that embodies the patent claims weighs against an assertion that 

the same claimed invention would have been obvious.”). Such praise is especially 

probative where, as here, it comes from industry participants, including 

competitors like Samsung. Id. (“Industry participants, especially competitors, are 

not likely to praise an obvious advance over the known art.”). See Ex. 2007 

[Rosenberg-2nd-Decl.] ¶ 49.

B. The Commercial Success And Licensing Of The Neonode 

Technology Further Demonstrates The Novelty Of The Claims.

As discussed, Petitioner Samsung, after meeting with Neonode, expressed 

substantial interest in the swipe-based user interface and described it as “the future 

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of mobile phones” and Samsung recognized, “we need this.” Ex. 2026 [BystedtDecl.] ¶ 9. This was not just talk. Samsung signed a license agreement in July 

2005, licensing the application from which the ’879 issued, and providing for a 

. Ex. 2028 [Samsung-License-Agreement]; Ex. 2026

[Bystedt-Decl.] ¶ 10; Ex. 2024 [Backlund-Decl.] ¶¶ 13-14. Indeed, in 2020 and 

2021, Samsung is reported to have sold 256.6 and 272 million units, respectively 

(Ex. 2041 [Smartphone-Shipments]

4

), a total of 528.6 million units in just two 

years. 

The interest from giants like Samsung was supported by the successful sales 

of Neonode phones. Neonode sold tens of thousands of its N1 and N2 phones to 

operators around the world, from Mexico to Belgium to India—which is 

3 The agreement was executed in July 2005 when one euro was about $1.20 

(specifically $1.2060 on July 18, 2005). https://www.macrotrends.net/2548/eurodollar-exchange-rate-historical-chart (see also Ex. 2040 [Euro-Dollar-ExchangeRate]). 2€ was equal to about $2.40 in 2005, or about $3.49 in 2022. See Ex. 2039

[Inflation-Calculator] (https://www.usinflationcalculator.com/) 

4 Available at https://www.idc.com/getdoc.jsp?containerId=prUS48830822. 

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impressive for a small startup company especially considering the facts that 

Neonode did not have the backing of any cellular network carrier, did not have 

manufacturing resources and had to sell its phone at up to $1,000, which was three 

times the price of the most expensive phones of the time. Ex. 2022 [MartenssonDecl.] ¶ 6; Ex. 2025 [Neonode-Sales]; Ex. 2028 [Samsung-License-Agreement]; 

Ex. 2026 [Bystedt-Decl.] ¶ 11; Ex. 2024 [Backlund-Decl.] ¶¶ 8-10; Ex. 2007 

[Rosenberg-2nd-Decl.] ¶ 48.

Thus, secondary indicia strongly support the novelty of the claims.

III. THE PETITION FAILS FOR TWO INDEPENDENTLY SUFFICIENT 

REASONS.

As discussed in Section II, Neonode’s N1 and N2 phones were widely 

praised for their innovative swiping user interface, introduced years before 

Petitioners’ offerings. Indeed, Samsung itself licensed the ’879’s application. See 

Section II.B. Perhaps not surprisingly, Petitioners fail to demonstrate that the 

proffered combination renders any of the claims obvious. 

A. The Claimed “Gliding ... Away From The Touched Location” Is A 

Different Gesture From Hirayama-307’s Drag-And-Drop.

The claims require “activating [a] function” via a “multi-step operation 

comprising (i) an object touching the touch sensitive area at a location where the 

representation is provided and then (ii) the object gliding along the touch sensitive 

area away from the touched location ...” Ex. 1001 [’879] cl. 1. 

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During prosecution, the Applicant made clear that the claimed “gliding ... 

away” gesture is different from a “conventional” drag-and-drop operation, stating: 

Hoshino does not teach gliding a finger away from an icon. Instead, 

Hoshino teaches a drag-and-drop operation for moving an icon.

Ex. 1003 [Prosecution-History] 171; see Section III.A.1. Petitioner relies solely on 

Hirayama-307 as allegedly “disclos[ing]” the “gliding ... away” limitation, Pet., 

58-59, but Hirayama-307 discloses the very same drag-and-drop operation the 

Applicant distinguished. See Section III.A.2. Finally, Dr. Bederson’s testimony 

that Hirayama-307 discloses the “gliding ... away” limitation is entitled to little or 

no weight because Dr. Bederson admitted he had neither reviewed the relevant 

prosecution history nor formed an opinion on whether a drag-and-drop operation 

discloses “gliding ... away.” See Section III.A.3. 

1. The Prosecution History, Consistent With Plain Meaning And 

The Specification, Makes Clear That “Gliding ... Away” Does 

Not Encompass “Drag-And-Drop” Operations.

The “gliding ... away” limitation was added during prosecution and captures 

an important element of the claimed invention. The Applicant, moreover, made 

abundantly clear that “gliding ... away” is distinct from “drag-and-drop” 

operations:

Hoshino does not teach gliding a finger away from an icon. Instead, 

Hoshino teaches a drag-and-drop operation for moving an icon.

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Ex. 1003 [Prosecution-History] 171. In accord, the Applicant distinguished 

Hoshino’s “conventional” “drag-and-drop” “operation” from the “novel” “touchand-glide” operation of the “[c]laimed invention”:

Id., 170.

Thus, the Applicant twice made clear that the “gliding ... away” limitation 

did not encompass “drag-and-drop” operations. It is well-settled that these 

statements operate as a prosecution disclaimer. The Board, for instance, found 

essentially identical language—including the important word “instead” (see Ex. 

1003 [Prosecution-History] 171)—to operate as a prosecution disclaimer in a 

recent case: 

[W]e find no other way to interpret the applicants’ arguments. As noted 

above, the applicants specifically stated that Candelore-II fails to 

disclose “DRM information including ‘an offset value that points to the 

start of an encrypted block within an encoded frame’” and then stated 

that “[i]nstead,” Candelore-II “discloses pointers that point to the 

location of encrypted portions of the video data relative to the file.” 

The applicants’ argument specifically identifies the claim language 

at issue here and specifically says that it is not disclosed because 

Candelore-II discloses something else instead.

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Hulu LLC v. DivX LLC, IPR2021-01418, Paper 15, 24 (Mar. 15, 2022) (certain 

emphasis added); see also, id., 23 (“Critically, the very next sentence begins with 

the word instead, and states, ‘[i]nstead, the Candelore patent discloses pointers 

that point to the location of encrypted portions of the video data relative to the 

file.”). Notably, a disclaimer was found even though the plain meaning of the 

claim was not found to require such a limitation. Id., 19-20. DivX is fully in 

accord with a long line of Board and Federal Circuit cases. See, e.g., Ford Motor 

Co. v. TMC Fuel Injection Sys., LLC, IPR2014-00272, Paper 36, 19 (June 22, 

2015) (“In light of Applicant’s unequivocal statements during prosecution, we 

determine that there is an express disclaimer . . . for issued claims 38 and 40.”); 

Ford Motor Co. v. TMC Fuel Injection Sys., LLC, IPR2014-00273, Paper 15, 19

(June 22, 2015) (same); Ford Motor Co. v. Vehicle Operation Techs., LLC, 

IPR2014-00594, Paper 26, 15-17 (Oct. 15, 2014) (similar); Spectrum Int’l, Inc. v. 

Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) (“statements made by a 

patent applicant during prosecution to distinguish a claimed invention over prior 

art may serve to narrow the scope of a claim.”); see also Saffran v. Johnson & 

Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (“applicants rarely submit affirmative 

disclaimers along the lines of ‘I hereby disclaim the following . . .’ during 

prosecution and need not do so to meet the applicable standard.”).

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But even if, arguendo, the Applicant’s statements do not rise to the level of a 

disclaimer, the Applicant’s clear explanation of the claimed “gliding ... away” 

gesture as not encompassing a drag-and-drop operation informs the understanding 

of that term. Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 

1352 (Fed. Cir. 2019) (rejecting proposition that “prosecution history is irrelevant 

to ... claim construction ... because there is no clear and unmistakable disavowal of 

claim scope.”). Thus, even if there were no disclaimer, a POSITA reviewing the 

Applicant’s statements in prosecution would readily understand that the “gliding ... 

away” limitation does not encompass “drag-and-drop” operations. Ex. 2007 

[Rosenberg-2nd-Decl.] ¶¶ 54-57.

The rest of the intrinsic record further confirms that the “gliding ... away” 

limitation does not encompass drag and drop operations. The pending claims 

during prosecution originally recited “moving in a direction from a starting point 

that is the representation [of a function] ... to said display area.” Ex. 1003 

[Prosecution-History] 326. However, “in accordance with the conclusions of [an 

examiner] interview” and in order to “properly claim the present invention,” the 

claims were amended to require the specific gesture of “gliding ... away from the 

location [of the representation of a function].” Id., 343. Thus, the claim was 

altered from any “moving in a direction from a starting point” to a specific gesture, 

“gliding ... away” to “properly claim the present invention.” See Ajinomoto Co. v. 

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ITC, 932 F.3d 1342, 1351 (Fed. Cir. 2019) (“... when a word is changed during 

prosecution, the change tends to suggest that the new word differs in meaning in 

some way from the original word.”) (internal citation and quotation omitted); see 

also Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 51.

As discussed in Section II.A, the Applicant also equated the “gliding ... 

away” motion with “swiping.” Ex. 1003 [Prosecution-History] 269 (“a finger 

touches a touch-sensitive screen at a location where an icon for a function is 

displayed, and then rubs/swipes/glides along the touch screen away from the 

location without lifting the finger.”); Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 52. The

Applicant also specifically referenced and provided a link to its promotional video 

for a commercial embodiment, the Neonode N2 phone, and asked the Examiner to 

“view the demonstration video ... prior to reviewing Applicant’s arguments ....”

Ex. 2035 [2008-03-14 Office-Action-Response] 15-16; Ex. 2008 [N2-

Advertisement-Video]. As the screen shots below from the video show, the 

“gliding ... away” gesture is similar to what many today’s systems refer to as a 

“swipe” gesture and is distinct from a drag-and-drop operation. Specifically, the 

thumb is placed on a representation of a function (an arrow) and through a swiping

motion, the menu screen opens:

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See Ex. 2008 [N2-Advertisement-Video ] (screenshots from 00:26-00:27). 

Similarly, just as with the aforementioned video showing a commercial 

embodiment that practices the ’879, the specification itself illustrates a gliding 

motion as well: 

See Ex. 1001 [’879] Fig. 2, 4:7-11; Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 53.

Thus, the claimed “gliding ... away” does not encompass a drag-and-drop 

operation.

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2. Hirayama-307’s “Drag-And-Drop” Operation Does Not 

Disclose The “Gliding ... Away” Limitation.

Thus, the intrinsic record confirms that the claimed “gliding ... away” 

limitation does not include a “drag-and-drop” operation. The Petition relies on 

Hirayama-307 alone as allegedly “disclos[ing]” the “gliding ... away” limitation. 

Pet., 58-59. Hirayama-307 was already carefully analyzed by the Examiner, who 

explained that Hirayama-307 is “pertinent to applicant’s disclosure,” as it “teaches 

a method of activating functions.” Ex. 2009 [2006-03-23 Non-Final Rejection] 15. 

Yet, the Examiner never relied upon Hirayama-307 as a basis of rejection, for good 

reason because Hirayama-307 teaches (and Petitioner relies upon) a conventional 

“drag-and-drop” operation, the very thing the Applicant made clear did not 

constitute “gliding ... away.” 

As Dr. Rosenberg explains, Hirayama-307’s user drags an application icon 

43 from its location within the hatched area 45 into the non-hatched area, and then 

drops it into the non-hatched area at the specific location where the user wants the 

application icon 41, by then “enlarged” into window 43, to be placed:

Hirayama-307’s operation is a “conventional” drag-and-drop 

“operation” referenced by the Applicant during prosecution. 

Specifically, when the user wishes to use Hirayama-307’s dialing 

application, he/she moves the stylus to the application icon 41. Ex. 

1006 [Hirayama-307] 2:1-4; 5:30-32. The user then drags the icon 

outside of the hatched area, into the non-hatched area. Id., 2:5-8; 5:39-

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53. As the icon 41 is dragged outside of the hatched area, it is “enlarged 

as a window 43.” Id., 2:8-13; 5:59-66. The enlarged window 43 is then 

placed (i.e., dropped) at the location within the non-hatched area where 

the user lifts the stylus. Id., 2:8-13; 5:59-66. I have visually 

demonstrated Hirayama’307’s drag-and-drop process in the figure 

below that I have created based on Hirayama-307’s written description 

of its method:

It should also be noted that while Petitioner disputes whether 

Hirayama-307 provides feedback to the user by visually showing icon 

41 as being dragged during the entirety of the dragging process, Pet., 

60-62, this is irrelevant to the fact that Hirayama-307’s gesture is a 

drag-and-drop operation. From the perspective of the user, some form 

of Hirayama-307’s dialing application is logically dragged (and 

behaves as if it is being logically dragged) with the movement of the 

stylus, and is dropped at the location where the stylus leaves the screen. 

It is true that, as I will explain in paragraphs 81-82, it was (and is) 

preferable in most instances to have an icon be visually shown as 

moving or being duplicated during “drag-and-drop” as the user moves 

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the stylus/finger in order to provide feedback to the user. However, if 

a GUI, for any reason, does not provide interim feedback to the user by 

visually showing the icon actually moving with the stylus/finger, that 

does not change the nature of the operation as a drag-and-drop 

operation. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 59, 61. Nor does the fact that Hirayama-307’s 

icon 41 is enlarged into window 43 in the process of the drag-and-drop operation 

change the nature of Hirayama-307’s operation from drag-and-drop to something 

else. Id., ¶ 60.

And Hirayama-307’s “drag-and-drop” operation is functionally identical to 

the “drag-and-drop” operation disclosed in Hoshino that was distinguished from 

the “gliding ... away” limitation during prosecution. As. Dr. Rosenberg explains: 

Hirayama-307’s drag-and-drop operation is also functionally identical 

to the drag-and-drop operation disclosed by the prosecution Hoshino 

reference to activate an icon, which the Applicant during prosecution 

explained “does not teach gliding a finger away from an icon,” but 

“[i]nstead, Hoshino teaches a drag-and-drop operation for moving an 

icon.” Ex. 1003 [Prosecution History] 171. Specifically, as shown in 

the schematic annotation of Hoshino Fig. 19 below, item 23 in Hoshino 

is music content which the user may wish to, for example, play or 

purchase. Ex. 2010 [Hoshino] ¶ [0110]. The user activates the file for 

playback or purchase by dragging it into the corresponding box that 

states “purchase” or “listen for trial.” Ex. 2010 [Hoshino] ¶¶ [0111]-

[0114]. 

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As is apparent from the above, Hoshino’s user activates a music icon 

by dragging the icon to a designated area, resulting in a larger window 

opening. 

This is basically the same as Hirayama-307’s operation. Hirayama307’s user similarly opens an icon 41 window by dragging the icon into 

the non-hatched area at the location where the user wishes the enlarged 

window to be placed. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 62-64.

As Dr. Rosenberg further explains, even though two gestures may include 

overlapping movements, even small distinctions between various gestures are

significant in the context of human computer interaction:

The distinction between “gliding ... away” and a drag-and-drop gesture 

is material, even though they may have overlapping movements. In the 

field of human computer interaction, even small differences between 

gestures can have substantial consequences. Notably, and as discussed 

in greater detail in paragraphs 38-49 Neonode’s N1 and N2 phones 

were widely praised for their intuitive gliding feature. See also, e.g., 

Exs. 2012, 2013 (praising the swiping feature, calling it “simple and 

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brilliant”). It is most unlikely that Neonode’s phones would have 

received such praise if they replaced their seamless gliding 

functionality with a cumbersome drag-and-drop operation as shown in 

Hirayama-307. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 65. In fact, Hirayama-307 is the very type of 

“dreaded” gestures of pen-based devices that Pen Computing Magazine assured its 

readers is different from the Neonode swipes! Ex. 2012 [Pen-ComputingMagazine-N1-Phone-Review] 2.

As Dr. Rosenberg further explains, Petitioner’s own Ren reference further 

demonstrates how even small differences in movements can be material. For 

example, even though Ren’s “slide touch” and “slide off” options have very similar 

movements, Ren finds that, both objectively and subjectively, “slide touch” is 

superior. Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 66. 

Similarly, even though both the claimed “gliding ... away” gesture and 

a drag-and-drop operation may include movement of the stylus/finger 

on the screen, which may even happen to start and end at similar 

positions on the screen, they are fundamentally different with 

pronounced differences for the user. In a drag-and-drop operation, the 

user generally perceives some form of an object/function as behaving 

as if it is being dragged by the movement of the stylus/pen. Sometimes 

an operating system provides visual feedback by actually showing the 

object moving on the screen together with the stylus/pen. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 67. 

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Therefore, for the reasons explained above, Hirayama-307 discloses a 

“conventional” drag-and-drop gesture which is distinct from the claimed “gliding 

... away” gesture. 

3. Petitioner’s Expert Testimony That Hirayama-307’s Drag-AndDrop Gesture Discloses The Claimed “Gliding ... Away” Is 

Conclusory And Entitled To Little Or No Weight.

Petitioner relies solely on Dr. Bederson’s declaration to allege that 

Hirayama-307 discloses the claimed “gliding ... away” gesture. Pet., 58-59, citing

Ex. 1002 [Bederson-Decl.] ¶ 156. Dr. Bederson’s testimony is entitled to little or 

no weight as he admitted that he has not opined on whether a drag-and-drop 

operation discloses the claimed “gliding ... away” gesture and he had not analyzed 

the portions of the prosecution history that expressly state a drag-and-drop 

operation is distinct from the claimed gesture. The Petition, thus, fails to meet its 

burden of proof as a matter of law.

Dr. Bederson testified that he does not “recall” having even reviewed the 

portion of the prosecution history wherein the Applicant expressly refers to dragand-drop operations as “conventional” and distinct from the claimed “gliding ... 

away” and fail to disclose it:

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Q. Okay. Did you review Page [171]5 and the relevant pages around 

Page 171 of Exhibit 1003? 

A. I don’t recall.

Ex. 2005 [Bederson-Depo.] 147:3-5; compare Ex. 1003 [Prosecution-History] 171 

(distinguishing the claimed “gliding ... away” from Hoshino’s “conventional” 

“drag-and-drop” operation). 

Importantly, Dr. Bederson expressly and repeatedly admitted that he has no 

opinion on whether a drag-and-drop operation discloses the “gliding ... away” 

limitation:

Q. Is it your opinion that a drag and drop operation discloses limitations 

1B and 1C, which explain an object touching the touch sensitive area 

of the screen and gliding along the touch sensitive area away from 

the representation of a function?

A. I don’t think I formed any specific opinions about drag and drop 

operation. So I don’t know that I have an opinion about that.

Ex. 2005 [Bederson-Depo.] 142:15-23; see also id., 142:25-143:9 (“I don’t recall 

having any specific opinions about drag and drop operation”); 142:4-13 (“I don’t 

5 The questioner asked about page 171, as is clear from the remainder of the 

question and the surrounding context (see, e.g., 139:24-140:14). The transcript in 

one place errantly refers to page 117, however. 

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know that it does or does not teach gliding away”); 146:20-23; see also id., 150:8-

14 (“Q. What is the distinguishing feature that would distinguish a drag and drop 

gesture from a swiping gesture? A. It’s not something that I analyzed in my report. 

So I don’t have an opinion sitting here today.”); 145:2-6.

Thus, Petitioner’s expert testimony, which did not analyze the relevant 

portions of the prosecution history and did not perform any of the necessary 

underlying analysis to arrive at the conclusion of obviousness is entitled to little 

weight. 37 C.F.R. § 42.65; Google Inc. v. Koninklijke Philips N.V., IPR2017-

00409, Paper 10, 14-15 (June 5, 2017) (“Petitioner’s conclusory argument and 

equally conclusory expert declaration testimony are insufficient to show that a 

disclosure of substantially continuous scrolling necessarily constitutes a disclosure 

of non-continuous scrolling.”); Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. 

Cir. 2005) (“[A] court should discount any expert testimony that is clearly at odds 

with the claim construction mandated by ... the prosecution history”) (internal 

quotations and citations omitted).

For the foregoing reasons, the Petition fails to demonstrate that Hirayama307 discloses the claimed “gliding ... away” limitation.

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B. Petitioners’ Ground Fails To Disclose Or Render Obvious 

“Wherein The Representation Of The Function Is Not Relocated 

Or Duplicated.”

The claims require that “the representation of the function is not relocated or 

duplicated during the gliding” of the object (e.g., finger). Petitioner presents two 

alternative theories for why this limitation is obvious. First, the Petition relies on 

single-reference obviousness6 over Hirayama-307, arguing that “[i]t would have 

been obvious” to “implement the user interface” of Hirayama-307 such that the 

mapped representation of a function is not duplicated or relocated during the dragand-drop operation. Pet., 60. Hirayama-307, however, makes perfectly clear that

the representation of a function is in fact moved during the drag-and-drop 

operation. See Section II.B.1, infra. The Petition provides no reason why a 

POSITA would have been motivated to modify Hirayama-307, especially in view 

of its own disclosures to the contrary. See Section II.B.2, infra. 

Second, the Petition alternatively relies on importing Ren’s “slide off” 

selection technique into Hirayama-307 instead of Hirayama-307’s own drag-and6 The Institution Decision provisionally found that Hirayama-307 alone 

“discloses” this limitation, but the Petition’s first alternative ground was only 

based on a single-reference obviousness. Paper 26, 7; see also Ex. 2005 

[Bederson-Depo.] 99:19-100:7. 

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drop operation. Pet., 62, 30. The Board previously found that the Petition fails to 

show why a POSITA would have made the proposed substitution. Paper 24, 20. 

For these reasons and more, Petitioner fails to prove that a POSITA would be 

motivated to modify Hirayama-307 in view of Ren in a manner that would satisfy 

this limitation. See Section II.B.3, infra. 

1. Petitioner’s Single-Reference Obviousness Argument Fails.

a. Petitioner’s Single-Reference Obviousness Argument Is 

Based On The False Premise That Hirayama-307 Does 

Not “Relocate[] Or Duplicate[]” The Representation Of 

Function.

As noted, the Petition’s first theory alleges that “[i]t would have been 

obvious” to “implement the user interface” of Hirayama-307 such that “the 

representation of the function is not relocated or duplicated” during the drag-anddrop operation. Pet., 60; Ex. 2005 [Bederson-Depo.] 99:19-100:7. Significantly, 

however, the Petition’s single-reference obviousness analysis is based on the false 

premise that Hirayama-307 “does not describe or show icon 41 (“representation”) 

is dragged or otherwise relocated or duplicated during the movement of pen 3.” 

Pet., 60. Going still further astray, Petitioner argues that Hirayama-307 “suggest[s]

the icon is not relocated or duplicated.” Id., 62 (“A POSA would have understood 

this as at least a suggestion the icon is not relocated or duplicated ...”). 

This is incorrect. Hirayama-307 is crystal clear that its “representation of 

the function” is in fact “relocated or duplicated.” Hirayama-307 discloses a user 

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interface whereby a user can drag an application icon and drop it on the screen at 

the location where the user wishes the “enlarged window” of the application to be 

located. Ex. 1006 [Hirayama-307] 2:1-13; 5:30-66; Figs. 3A, 3B. As shown in the 

annotated figure blow, the Petition (at 53, 60) maps Hirayama-307’s icon 41 

(green) for a telephone application to the claimed “representation of a function,” 

and maps (Pet., 58-60) the user’s drag-and-drop operation (red arrow) to enlarge 

icon 41 into the window 43, and position the window 43 on the screen, to the 

claimed “gliding ... away” limitation: 

The Petition then argues that “[a] POSA would have recognized 

Hirayama307 does not describe or show icon 41 (‘representation’) is dragged or 

otherwise relocated or duplicated during the movement of pen 3.” Pet., 60. 

Petitioner is wrong. As Dr. Rosenberg explains below, Hirayama-307 expressly

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states that “the icon [e.g., icon 41] display coordinate position is moved in 

accordance with the movement of the position coordinate of the point of the pen” 

before icon 41 is enlarged into the window 43. Ex. 1006 [Hirayama-307] 2:5-13.

I will now explain the operation of Hirayama-307, and why the selected 

icon (e.g., icon 41) is “relocated or duplicated” at least for a portion of 

the drag-and-drop operation. For the convenience of the reader, my 

discussion is with reference to the schematics below, which I have 

prepared based on Hirayama-307’s written description of its system:

7

7 The movement of the stylus in the figures is initially shown to the left, 

before the stylus is brought down into the non-hatched area, in order to more easily 

show the duplication/relocation of icon 41 while the pen is in the hatched area.

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In order to utilize a particular application, the user has to drag the icon 

for that application from its location in the hatched area and drop it 

inside the non-hatched area at a location where the user wishes the 

enlarged window of the application to be located. For example, when 

the user wishes to use Hirayama-307’s dialing application (represented 

by icon 41), the user moves the stylus to the application icon 41. Ex. 

1006 [Hirayama-307] 2:1-4; 5:30-32. The user then must drag icon 41 

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into the non-hatched area of the screen. Id., 2:5-8; 5:39-53. As the icon 

41 is dragged outside of the hatched area, “a circuit converts the icon 

into a window.” Id., 2:8-13; 5:59-66 (“it is enlarged as a window 43”). 

The enlarged window 43 is then placed (i.e., dropped) at the location 

within the non-hatched area where the user lifts the stylus. Id., 2:8-13; 

5:59-66.

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 71-72. As Dr. Rosenberg further explains, 

Hirayama-307 discloses that while icon 41 is being dragged and before it is 

“enlarged” into a window, its “display coordinate position” is “moved” together 

with the “coordinate of the point of the pen”:

Hirayama-307 expressly discloses that as icon-41 is being dragged, and 

prior to its conversion into window 43, it moves with the movement of 

the pen 3. Specifically, as highlighted portion of Hirayama-307, 2:1-

13 shows, the pen first touches the “coordinate position in which a 

desired icon [e.g., icon 41] is displayed” (yellow), then as the pen 

moves, “the icon [41] display coordinate position” moves with the pen 

(green), and then icon 41 is “convert[ed]” “into a window” (e.g., 

window 43) in the non-hatched display area (blue). 

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This relocation or duplication is schematically shown in the modified 

version of Hirayama’s figure which depicts the green icon at the point 

of the red arrow is the “moving” location of the original icon 41 as it is 

being dragged:

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 73-74.

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As Dr. Rosenberg explains, that Hirayama-307’s icon is moved during its 

drag and drop operation is further confirmed by the balance of Hirayama-307’s 

disclosure, including Hirayama-307’s reverse operation:

Other disclosures in Hirayama-307 confirm the above. For example, 

Hirayama-307 also discusses a reverse operation, where an open 

window is dragged-and-dropped into its application icon position in 

order to close the window. Id., 6:22-7:6; Fig. 4B. In discussing the 

reverse drag-and-drop operation for closing an open window, 

Hirayama-307 explains that the open window is dragged and dropped 

“to the predetermined vacant position,” referring to the position of the 

application icon corresponding to the window. Id., 7:3-6; Fig. 4B (step 

S10). This disclosure confirms that application icon 41 was “relocated” 

when it was opened by the drag-and-drop operation as its location is 

now “vacant.” The location would not be “vacant” if the icon had not 

moved. 

Furthermore, in the same reverse drag-and-drop to close an open 

window, Hirayama-307 similarly explains that “the window display 

coordinate position is moved in accordance with the movement of the 

position coordinate of the point of the pen.” Ex. 1006 [Hirayama-307] 

2:24-27. This is precisely the reverse of the procedure to create a 

window 43, where the application icon 41 moves with the movement 

of the pen prior to its conversion into a window, id., 2:5-8, 

demonstrating that Hirayama-307 takes the same approach to both 

operations.

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Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 75-76. As Dr. Rosenberg explains, It 

would also be common sense for the POSITA that Hirayama-307 would 

“relocate” icon 41 and leave its location vacant while its window 43 is open. 

id., ¶¶ 77. Furthermore, 

As yet another supporting disclosure, Hirayama-307 routinely states 

that the application window 43 is created by “enlarging” the dragged 

application icon 41. See, e.g., id., 5:39-40 (“icon is enlarged in the form 

of window”); 5:64-66 (“the processing display form of the icon 41 

designated is enlarged as a window 43”); 7:14-15 (“the icon position to 

be enlarged”); 2:10-11 (“a circuit converts the icon into a window”). 

This disclosure further confirms that icon 41 is moved with the 

stylus/pen during the drag-and-drop process, and it is “enlarged” (or 

“converted”) into a window when the proper trigger happens. If the 

icon 41 did not move with the movement of the pen to then be 

“enlarged” or “converted” into window 43, Hirayama-307 would have 

referred to the process as “creating” or “opening” a window.

Furthermore, it is notable that there is no disclosure in the text of 

Hirayama-307 that contradicts its disclosures that the application icon 

is moved with the pen prior to being enlarged into the window. For 

example, Ex. 1006 [Hirayama-307] 5:16-67 explains the flow diagram 

of logical determinations of its drag-and-drop operation, but is silent on 

whether icon 41 is duplicated or moved during the dragging process 

within the hatched area. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 78-79. 

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Petitioner relies significantly upon Hirayama-307’s Fig. 3A, but, as Dr. 

Rosenberg explains, 3A concerns the state of the device before the drag and drop 

operation begins: 

Petitioners’ reliance on Hirayama-307’s Fig. 3A and its related text for 

the proposition that icon 41 is not relocated or duplicated during the 

drag-and-drop operation is misplaced. Pet., 60-61. A POSITA would 

understand that Fig. 3A represents the state of the device before icon 

41 is being dragged. In connection with Figs. 3A and 3B, Hirayama307 explains that “[i]f the pen coordinate is considerably shifted from 

the reference moving amount, or if the pen coordinate is outside of the 

predetermined designated area (e.g., the hatched area in this 

embodiment),” then icon 41 is “enlarged as a window 43 as shown in 

Fig. 3B.” Ex. 1006 [Hirayama-307] 5:59-66. In Fig. 3A, however, the 

tip of the pen is both outside of the hatched area, and has considerably 

shifted as it is well into the active screen area, but there is no enlarged 

window:

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Id., Fig. 3A. Thus, a POSITA would understand that if Fig. 3A was 

intended to show the state of the screen during a drag-and-drop 

operation, then it should have also shown an enlarged window 43. 

Instead, Fig. 3A only shows “a cross-shaped position designating 

cursor 42,” which is shown “as the point of the pen 3 approaches the 

panel surface of the display portion 1”—i.e., before the pen has selected 

the icon 41 to initiate the process of drag-and-drop. Id., 4:65-68. 

Furthermore, the written description corresponding to Fig. 3A is clear 

that the figure is intended to show the state of the device at power-on, 

explaining that “when the power switch 10 shown in Fig. 1 is 

depressed, icon groups 40 which make various processing possible are 

displayed on the display portion 1 as shown in FIG. 3A.” Ex. 1006 

[Hirayama-307] 4:58-61. Thus, even though Fig. 3A shows a pointed 

arrow from icon 41 to the location of the point of the pen, a POSITA 

would understand that the arrow is likely intended to show how the 

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device is going to be operated on power-on, and not a depiction of the 

screen during a drag-and-drop operation.

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 80-81.

8

 

In connection with their arguments for claim 3, Petitioners further argue that 

Hirayama-307 “present[s] a similar user interface” to another reference by “the 

same inventor,” named Hirayama-878, which “discloses, similar to ... 

Hirayama307, selecting an icon by a pen touching the icon and moving into an area 

of the display ....” Pet., 70-71. To the extent “a POSA would have looked to 

Hirayama878 for teachings on how to implement the window 43 and related 

functionality of Hirayama307,” as Petitioner alleges (see Pet., 72), then 

Hirayama878 also demonstrates that an activated icon is moved from its location, 

8 To the extent Petitioner seeks to belatedly rely on Hirayama-307’s Fig. 3B 

for the proposition that icon 43 is not relocated during the drag-and-drop operation, 

that reliance is still misplaced. The claims require that the representation of the 

function not be “relocated or duplicated.” Thus, even if Hirayama-307 maintains 

the original icon and moves a duplicate with the movement of the pen that would 

still fail to disclose the claim because in that case, the icon is “duplicated.” As 

Hirayama-307 makes perfectly clear, the icon “is moved.” Ex. 1006 [Hirayama307] 2:5-8,

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and that its location is “vacant” when the icon is “convert[ed]” into a window. 

This is demonstrated by a comparison Hirayama878 Figs. 5A and 5B, annotated 

below:

Ex. 1009 [Hirayama-878] Figs. 5A, 5B; compare Ex .1006 [Hirayama-307] 7:4-6; 

Fig. 4B (step ST10).

Thus, Hirayama-307 discloses that icon 41 is “relocated or duplicated” 

during the drag-and-drop operation. 

b. The Petition Provides No Reason Why A POSITA Would 

Modify Hirayama-307.

As just explained, Petitioner’s argument that the limitation is obvious over 

Hirayama-307 is based upon the assumption that Hirayama-307 “at least 

suggest[s]” that “the icon is not relocated or duplicated” during the drag-and-drop 

operation. From this premise, Petitioner concludes that “it would have been 

obvious, given Hirayama307’s disclosure[,] to implement the user interface such 

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that the icon is not relocated or duplicated” during the drag-and-drop operation. 

Pet., 60-62. But Petitioner’s premise is demonstrably incorrect. Hirayama-307 is 

perfectly clear that its icon is moved and, “garbage in, garbage out,” Petitioner’s 

conclusion does not follow. 

Moreover, a POSITA would not have been motivated to implement a dragand-drop operation (such as Hirayama-307’s) without relocating or duplicating the 

icon being dragged during the drag process. As Dr. Rosenberg explains:

In graphical user interfaces, it is important to provide visual feedback 

to the user during an operation. This helps, for example, inform the 

user that the operation is in fact being successfully performed. It also 

helps design the graphical user interface as close as possible to real life 

experiences outside of the virtual world, and give the user a real-life 

“feel.” This is an important concept in GUI design. In the context of a 

dragging operation, this feedback mechanism was, and continues to be, 

generally provided by visually showing the icon being moved or 

duplicated across the screen during the drag operation. This would help 

the user receive feedback that, as the user drags an icon with the 

mouse/stylus/finger, the icon is in fact being dragged and the drag-anddrop operation is successfully in progress. This would also help the 

user get a real life “feel” for the drag-and-drop operation by visually 

seeing an icon being dragged.

Further supporting the above, the visual presentation of a “dragging” 

icon was also common in both the Microsoft Windows and Macintosh 

MacOS environments. For example, the graphic below demonstrates a 

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file icon being dragged into a blank Microsoft Word active window in 

a MacOS Monterey operating system, so that the file can be opened. 

As can be seen, while the file icon is being dragged, and before it is 

dropped into the active MS Word window to be opened, the file icon is 

duplicated:

Thus, there simply is no reason for a POSITA to implement 

Hirayama-307’s drag-and-drop process, but avoid the industrystandard method of providing user feedback by “relocating or 

duplicating” the icon during the drag-and-drop operation.

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 83-85.

In arguing that Hirayama-307 renders obvious the limitation “the 

representation of the function is not relocated or duplicated,” Petitioner also relies 

on Hirayama-307’s disclosure that as the pen/stylus gets close to the touchscreen, a 

cross-shaped cursor 42 appears on the screen to designate the precise location of 

the pen. Pet., 60-61, citing Ex. 1006 [Hirayama-307] 4:66-5:3; 1:56-59; 7:10-24. 

Petitioner appears to rely on this disclosure for the proposition that Hirayama-307 

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relied on a cursor as feedback to show the user the current state of a drag-and-drop 

operation, and therefore did not need to “relocate or duplicate” the icon 41 during 

the operation. As Dr. Rosenberg explains, this reliance is misplaced:

In relying on Hirayama-307’s cursor, Dr. Bederson appears to suggest 

that the cursor itself is the only feedback provided to the user during the 

drag-and-drop operation in Hirayama-307, and, therefore, there is no 

need to relocate or duplicate the icon 41 as it is being dragged. Ex. 

1002 [Bederson-Decl.] ¶¶ 158-159. That is not correct. Hirayama307’s text only discloses that the cursor appears on the screen “as the 

point of the pen 3 approaches the panel surface of the display,” Ex. 1006 

[Hirayama-307] 4:65-68—i.e., before the pen has started the drag-anddrop operation. In other words, the cursor is used to assist the user in 

moving the pen to the location of the icon, just as a mouse cursor on a 

desktop display moves on the screen to assist the user in locating the 

mouse pointer. Hirayama-307 does not state that the cross-shaped 

pointer continues to appear on the screen during the drag-and-drop 

operation instead of the image of the icon 41 actually being dragged. 

Rather, as noted above, Hirayama-307 states that icon 41 itself moves 

with the pen during the dragging process. Id., 2:5-8. 

Furthermore, a POSITA would understand that Hirayama-307’s cursor 

is insufficient to provide feedback to the user during the drag-and-drop 

operation, and that there is no motivation to eliminate the typical 

“relocation or duplication” of the icon during a drag-and-drop operation 

in reliance on the existence of the cursor. This is because, even if Dr.

Bederson was correct that the cursor appears on the screen during the 

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drag-and-drop operation, the cross-shaped pointer also appears on the 

screen prior to the pen/stylus initiating the drag-and-drop operation. 

Ex. 1006 [Hirayama-307] 4:65-68. In other words, the appearance of 

the cross-shaped cursor does not denote to the user anything about the 

drag-and-drop operation, but simply that the pen is communicating with 

the screen, and the location of the tip of the pen. Thus, if all the user 

sees on the screen is a pen with a cross-shaped cursor after the user has 

initiated a drag-and-drop operation, the user would not know if the 

drag-and-drop operation is being successfully performed as the user 

drags the pen. All the user can learn from the position of the cursor is 

that the pen itself is moving across the screen. This is shown 

schematically below:

This is why, again, a cursor moving alone is typically insufficient to 

provide feedback for a drag-and-drop operation.

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 86-88. 

For the foregoing reasons, Hirayama-307 alone does not disclose or render 

obvious “wherein the representation of the function is not relocated or duplicated.” 

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2. A POSITA Would Not Have Been Motivated To Modify

Hirayama-307 In View Of Ren So That The Representation Of 

The Function “Is Not Relocated Or Duplicated.”

Petition also argues that “it would have been obvious to combine the 

teaching of Ren with Hirayama307” by “implement[ing] Ren’s selection 

techniques” in Hirayama-307’s device. Pet., 62. Petitioner proposes that a 

POSITA would have been motivated to utilize a specific variant of one of six 

categories of gestures disclosed by Ren instead of Hirayama-307’s drag-and-drop

operation. Pet., 30-31, 62. The Board, however, has already rejected the Petition’s 

proposed combination:

Petitioner’s assertion that an ordinarily skilled artisan would have had 

reason to combine Hirayama307’s and Ren’s teachings because the 

references both are directed to solutions to the same problem 

establishes that the references are analogous art, but falls short of 

articulating reasoning with a rational underpinning to support the 

conclusion of obviousness. See KSR, 550 U.S. at 418. And Petitioner 

does not direct us to any “design need or market pressure to solve a 

problem,” or any reason that an ordinarily skilled artisan would have 

selected a particular strategy from Ren to produce the claimed 

invention. Id.; In re Cyclobenzaprine Hydrochloride Extended–

Release Capsule Patent Litig., 676 F.3d at 1072. Rather, Petitioner 

simply concludes that it would have been obvious to try. Although 

Petitioner cites to Dr. Bederson’s testimony for support, Dr. Bederson 

does not elaborate on Petitioner’s argument, as his testimony mirrors 

the Petition’s conclusion. Ex. 1002 ¶ 162. 

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Paper 24, 20.9 As will be explained below, the Board’s holding is correct. 

The specific gesture relied upon by Petitioner from Ren is the “a à c à b 

à a” variant of a category of gestures called “slide off,” which itself is one of six 

categories of gestures disclosed by Ren:

Ren discloses six categories of selection strategies: Direct On, Slide 

Touch, Direct Off, Slide Off, Space On, and Space Touch. Ex. 1004 

[Ren] 389-391. Under each of these general selection strategies, Ren 

discloses one or more variants. Id. The Petition relies on a specific 

variant of the “Slide Off” category, referred to as “a à c à b à a.” 

Ex. 1002 [Bederson-Decl.] ¶¶ 160-161. Ren’s six selection categories 

(blue), and the specific gesture relied upon by Petitioner (red), are 

shown below in the annotated Fig. 3 from Ren:

9 While the Board subsequently granted Petitioner’s request for rehearing 

and instituted trial, it did so only by provisionally finding that Hirayama-307 alone 

discloses the claim, and did not revisit its earlier holding about a lack of motivation 

to combine Hirayama-307 and Ren. Paper 26, 7.

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Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 90.

The Petition’s purported motivation to substitute Hirayama-307’s drag-anddrop operation with a variant of Ren’s slide-off strategy is the following:

For example, Ren and Hirayama307 both are directed to solutions to 

the same problem, namely target selection techniques in pen-based 

tablet systems. As another example, a POSA would have recognized 

Ren as disclosing a small number of selection techniques that would 

have been obvious to try and implement with pen-based GUI 

interaction systems.

Pet., 62. Both of Petition’s purported motivations fail.

First, as the Board has already found, that Hirayama-307 and Ren are 

allegedly directed to solutions to the same problem may “establish[] that the 

references are analogous art, but falls short of articulating reasoning with a rational 

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underpinning to support the conclusion of obviousness.” Paper 24, 20; accord

Comcast Cable Communs., LLC v. Promptu Sys. Corp., 838 F. App’x 551, 557 

(Fed. Cir. 2021) (Petitioner “had not proven a motivation to combine because it 

merely (1) alleged the references came from the same field of study and address 

the same problem; and (2) recited boilerplate legal conclusions untethered to any 

claim language.”); see also Microsoft Corp. v. Enfish, LLC, 662 Fed. App’x 981, 

990 (Fed. Cir. 2016); William Wesley Carnes, Sr., Inc. v. Seabord Int’l Inc., 

IPR2019-00133, Paper 10, 17 (May 8, 2019) (merely alleging similarities between 

references does not provide rationale to combine).

Hirayama-307 is already a complete system that has achieved the problem it 

set out to solve without any apparent remaining shortcoming that Ren would 

remedy. As Dr. Rosenberg explains:

There is no apparent deficiency in Hirayama-307 that a combination 

with Ren would remedy and Petition cites none. In fact, as explained 

below, the Petition’s proposed combination only deteriorates 

Hirayama-307. Specifically, Petitioner proposes that a POSITA would 

have combined Hirayama-307 with Ren so that Hirayama-307’s dragand-drop would not “relocate or duplicate” icon-41 during the dragging 

process. Pet., 62. However, as explained, the user feedback of 

relocating or duplicating an icon during the drag of a drag-and-drop 

operation was, and continues to be, significant as also implemented by 

main-stream systems such as MS Windows and MacOS and 

eliminating user feedback would worsen the user’s experience.

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Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 93; see also id., ¶ 92.

In fact, Petitioner does not even allege that there is any deficiency in 

Hirayama-307, or that the combination of Hirayama-307 with Ren would cause 

any improvement in Hirayama-307. Pet., 62. When two references independently 

operate effectively to accomplish similar functions, even if one were to assume that 

Hirayama-307 and Ren seek to accomplish similar functions, a POSITA would not 

have any motivation to combine them. Kinetic Concepts, Inc. v. Smith & Nephew, 

Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012); Hulu LLC v. Sound View Innovations, 

IPR2018-00582, Paper 34, 20-21 (Aug. 5, 2019) (informative) (rejecting 

combination where petitioner had not “adequately supported” why it would have 

been a “good idea”).

Petitioner next asserts an obvious-to-try rationale, arguing that Ren discloses 

“a small number of selection techniques” and that a POSITA would have been 

motivated to specifically try the less favored “slide off” selection technique. Pet., 

62. As the Board found, the Petition’s conclusory assertions are insufficient to 

meet Petitioner’s burden for an obvious-to-try rationale, and Petitioner’s expert, 

“Dr. Bederson does not elaborate on Petitioner’s argument, as his testimony 

mirrors the Petition’s conclusion.” Paper 24, 20, citing In re Cyclobenzaprine 

Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1072 (Fed. 

Cir. 2012) (“Evidence of obviousness, especially when that evidence is proffered 

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in support of an ‘obvious-to-try’ theory, is insufficient unless it indicates that the 

possible options skilled artisans would have encountered were ‘finite,’ ‘small,’ or 

‘easily traversed,’ and that skilled artisans would have had a reason to select the 

route that produced the claimed invention.”); InfoBionic, Inc. v. Braemer Mfg., 

LLC, IPR2015-01704, Paper 11, 6 (Feb. 16, 2016) (“We do not find the testimony

of Petitioner’s expert to be persuasive or helpful as it repeats the Petitioner’s 

arguments and offers little or no elaboration as to how one of ordinary skill in the 

art would understand the term “‘subset.”). As explained below, the Board is 

correct that the Petition is facially insufficient to meet Petitioner’s burden.

First, if Petitioner is suggesting that the six categories of selection 

techniques considered in Ren suggests that there are only six or a similarly small

number of such gestures, that is incorrect. As Ren explains, “[t]heoretically, an 

infinite range of selection strategies exists.” Ex. 1004 [Ren] 389. In fact, Dr. 

Bederson reluctantly identified two additional techniques during his deposition. 

Ex. 2005 [Bederson-Depo.] 50:19-51:8 (“... there may be others. ... in the last 

couple of hours, we’ve identified two others ....”). Thus, the assumption that the 

universe of selection gestures was limited to merely six or so gestures such that a 

POSITA would simply try all selection gestures is incorrect. Ex. 2007 

[Rosenberg-2nd-Decl.] ¶ 94.

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But even in the universe of the techniques considered by Ren, the notion that 

a POSITA would have a reason to specifically select the “a à c à b à a” variant 

of the “slide-off” strategy is refuted by both Ren and by Dr. Bederson’s 

admissions. First, Ren itself expressly states that its “slide touch” selection 

category, not the “slide off” category relied upon by Petitioner, is the “best” 

strategy, thus directing a POSITA away from Petitioner’s combination:

Ren performed two sets of experiments “to determine the best 

individual strategy and the best strategy group.” Ex. 1004 [Ren] 392-

93. At the conclusion of the two experiments, Ren unambiguously 

determined that the “Slide Touch” strategy—not the “Slide Off” 

strategy relied upon by Petitioner—is the “single best strategy”:

[4.4.2 The Best Individual Strategy and Best Strategy Group. 

The Slide Touch strategy is the best of the individual strategies. 

... [W]e concluded that the Slide Touch strategy is the single 

best strategy.]

Ex. 1004 [Ren] 412.

[These results, when combined with Experiment Two data, 

showed that the best strategy was the Slide Touch strategy when 

the strategies were evaluated individually.]

Id. Ren’s overall conclusions are also supported by the underlying 

results from its experiments. For example, as shown in the reproduction 

of Ren’s Figs. 5 and 11, with respect to “Mean Selection Time,” 

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Petitioner’s relied upon “Slide Off” strategy (red) came in third in the 

first (left) experiment and fifth in the second (right) experiment:

Similarly, as shown in the reproduction of Ren’s Figs. 6 and 12, with 

respect to “Mean Error Rate,” Petitioner’s relied upon “Slide Off” 

strategy (red) came in third in both the first (left) and second (right) 

experiments:

Finally, in addition to Ren finding objective superiority of the “Slide 

Touch” strategy to the exclusion of Petitioner’s relied upon “Slide Off,” 

Ren also found similar subjective preference by the users. In 

experiment 1, the users had a clear preference for “Slide Touch” when 

object sizes were relatively small. Id., 401-402; Fig. 9. When the 

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object sizes were relatively larger, “Slide Touch” and “Slide Off” were 

statistically tied. Id. “Slide Touch” was the overall preferred method 

under the first experiment. Id., 402-403 (“... the Slide Touch strategy 

was the most preferred ....”). Similarly in the second experiment, “the 

Slide Touch strategy was the most preferred.” Id., 409. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶¶ 96-99. 

Notably, as Dr. Rosenberg explains, another one of Petitioner’s references, 

Allard, further praises and utilizes the “slide touch” strategy, not Petitioner’s relied 

on “slide off,” explaining that “slide touch” is preferred because “a user can easily 

recover from touching an unintended button by leaving a finger on the screen and 

sliding to another button or a non-button area.” Ex. 2007 [Rosenberg-2nd-Decl.] 

¶ 100 (discussing Ex. 1010 [Allard] 5:39-54).

Allard also uses the strategy referred by Ren as “slide touch.” 

Specifically, in Allard, the button that is last touched by the user is the 

button that is selected when the user lifts the stylus off the screen, 

whether the stylus originally landed outside of the button on the screen 

or on the button itself. Ex. 1010 [Allard] 5:39-44. In fact, Allard 

explains that using the slide-touch strategy is preferred because “a user 

can easily recover from touching an unintended button by leaving a 

finger on the screen and sliding to another button or a non-button area.” 

Id., 5:45-54. 

Ex. 2007 [Rosenberg-2nd-Decl.] ¶ 100; Ex. 1010 [Allard] 5:39-54.

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Ren’s express teaching away from the slide-off strategy is also supported by 

the deposition admission of Petitioner’s expert, as well as his prior publications. 

For example, Petitioner’s expert opined at deposition that if a “mobile interface 

could be designed with tap or simpler interactions,” then that is what the POSITA 

would have chosen:

[G]enerally, I think the goal was to design interfaces, so that they would 

be fast and accurate. And tapping is easier to perform than dragging 

as a physical, mechanical element. And so if it could be designed to 

be performed -- the mobile interface could be designed to be used with 

tap or simpler interactions, then that would have been something that 

would have been common to start with.

Ex. 2005 [Bederson-Depo.] 56:2-10. Similarly, in a paper published in 2005—

years after the invention—Petitioner’s expert stated that “tapping” was the “most 

common” gesture in “handheld applications,” and that “stylus drag commands” 

were “rarely used”:

Ex. 2006 [Bederson-Paper] 203; see also Ex. 2005 [Bederson-Depo.] 47:5-48:16 

(authenticating). 

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Thus, Dr. Bederson’s deposition testimony, as well as his earlier publication, 

undermine Petitioner’s argument and Dr. Bederson’s own litigation opinion that a 

POSITA would have specifically chosen Ren’s slide-off strategy to the exclusion 

of other strategies. When asked about the inconsistency between his current 

litigation opinion and his earlier publications, he stated:

Counsel, I don’t know exactly what I was thinking in this paper that I 

wrote almost 18 years ago.

Ex. 2005 [Bederson-Depo.] 52:1-7.

For all of the foregoing reasons, Petitioner fails to show that a POSITA 

would have substituted Hirayama-307’s drag-and-drop operation with Ren’s “a à

c à b à a” variant of the “slide-off” strategy.

IV. CLAIM 6 IS NOT SHOWN TO BE UNPATENTABLE.

Claim 6 depends from claim 1, and further requires that “the function, when 

activated, causes the user interface to display a list with a library of available 

applications and files on the mobile handheld computer unit.” Ex. 1001 [’879] cl. 

1. The Petition relies on Allard for the disclosure of the additional limitation of 

claim 6, arguing that:

It would have been obvious to implement the tools icon functionality 

that displays a list with a library of available applications and files on 

the mobile handheld computer unit as disclosed in Allard, in the 

interface disclosed by Hirayama307 so as to provide a user information 

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about the tools and applications available on the device, as taught by 

Allard, and also suggested, for example, by Hirayama307. 

Pet., 73. As explained below, the Petition fails to meet its burden.

First, claim 6 requires that the function causes display of a library of 

available both “applications and files.” Ex. 1001 [’879] cl. 6. The Petition’s 

ground assumes that Allard’s tool function discloses a list of both applications and 

files, and then relies on that assumption for the disclosure of this limitation. Pet., 

73 (“displays a list with a library of available applications and files on the mobile 

handheld computer unit as disclosed in Allard”). However, Allard does not 

disclose that its tool button provides a list of available files. Rather, Allard’s tool 

button only provides a list of applications. Ex. 1010 [Allard] 6:8-17. Thus, even 

if the Petition’s combination is made by importing Allard’s tool button into 

Hirayama-307, the combined system fails to disclose claim 6. The Petition does 

not even acknowledge, let alone provide a motivation to remedy, this deficiency. 

Second, the Petition does not provide any reason (much less a compelling 

reason) why a POSITA would be motivated to modify Hirayama-307’s system to 

add a list of applications to be beneficial. Specifically, Allard utilizes a “Tool” 

button that displays a list of applications because Allard relates to a small phone 

with a very small screen which cannot provide icons for the available applications. 

Ex. 1010 [Allard] 1:58-59; Fig. 4. In contrast, Hirayama-307 is a much larger 

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device which already provides, on the home screen, icons for all the available 

applications. Ex. 1006 [Hirayama-307] 4:57-61 (“In the above-described data 

processing apparatus of this embodiment, when the power switch 10 shown in FIG. 

1 is depressed, icon groups 40 which make various processing possible are 

displayed on the display portion 1 as shown in FIG. 3A.”). The difference between 

the two systems is shown by a comparison of Hirayama-307’s Fig. 3A (left) which 

has the available applications on the home page (green), and Allard’s Fig. 4 (right), 

which has no space on the home page for a list of available applications and thus 

uses the Tools button:

Nor is it clear why adding such a list would provide any benefit to 

Hirayama-307’s system. In fact, as explained above, see Section III.A, Hirayama307 activates an icon by dragging it into the non-hatched area, and then closes an 

open window by dragging it back to the vacant position on the hatched bar 

corresponding to the window. See also Ex. 1006 [Hirayama-307] 6:22-7:6; Fig. 

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4B. It is not clear how Hirayama-307’s operations would work if applications 

were opened and closed not from their location on the hatched bar, but from a list 

of all applications that is opened by a menu. For example, how would the window 

be closed if its corresponding icon location is not on the hatched bar, but is in some 

list to be opened by a menu?

It was Petitioner’s burden to prove a motivation to combine. Intelligent BioSys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016). 

Because Petitioner’s motivation is not supported by any evidence, it fails as a 

matter of law. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 

2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ 

mere conclusory statements. The petitioner must instead articulate specific 

reasoning, based on evidence of record, to support the legal conclusion of 

obviousness.”).

V. CLAIM 15 IS NOT SHOWN TO BE UNPATENTABLE.

Claim 15 depends from claim 1, and requires that the “computer program 

code” of claim 1 be “adapted to function as a shell upon an operating system.” Ex. 

1001 [’879] cl. 15. Petitioner relies on Hirayama-307 for the disclosure or 

obviousness of this limitation, Pet., 67, but it fails to meet its burden.

IEEE Dictionary defines a “shell”:

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A software interface between the user and the operating system in 

which the shell interprets commands and communicates them to the 

operating system of the computer.

Ex. 2038 [IEEE Dictionary] 1039. Thus, claim 15 requires that the computer 

program code of claim that provides a user interface with “gliding ... away” 

activation capabilities not be designed as a part of the operating system, but instead 

be provided as an add-on software to the operating system, i.e., a “shell.”

The Petition first argues that Hirayama-307’s user interface that includes its 

drag-and-drop gestures satisfies this limitation:

A POSA would have recognized the user interface with icons for 

opening windows for, for example, the dialer function, is implemented 

in computer program code adapted to function as a shell upon the 

operating system of the portable computer.

Pet., 67. Thus, Petitioner alleges that Hirayama-307 necessarily and inherently 

discloses that its gesture interface is implemented as a shell upon an operating 

system. Yet, despite having the burden of proof, the Petition does not provide any 

analysis of why a POSITA would simply “recognize[]” that Hirayama-307’s user 

interface necessarily operates as a shell. In fact, at deposition, Petitioner’s expert 

opined that “a POSITA would understand that there are multiple ways it can 

choose to implement” Hirayama-307’s drag-and-drop user interface to open a 

window, and that Hirayama-307 does not “specifically disclose[]” any particular 

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way. Ex. 2005 [Bederson-Depo.] 112:25-114:25. Thus, Petitioner’s inherency 

argument fails on its own terms. PAR Pharm. v. TWi Pharms., Inc., 773 F.3d 

1186, 1195-96 (Fed. Cir. 2014) (“A party must [] meet a high standard in order to 

rely on inherency ... the limitation at issue necessarily must be present, or the 

natural result of the combination ...”); see also id., (“Inherency, however, may not 

be established by probabilities or possibilities. The mere fact that a certain thing 

may result from a given set of circumstances is not sufficient.) (quoting In re 

Oelrich, 666 F.2d 578, 586 (C.C.P.A. 1981)).

In the alternative, Petitioners asserts that it “would have been obvious over 

Hirayama307 and POSA knowledge of well-known systems to implement similar 

user interfaces as a shell upon an operating system.” Pet., 67. But Petitioners 

expert provides no motivation, reason or analysis as to why it would have been 

obvious to implement a gesture-based user interface as a part of a shell, instead of 

implementing it within the operating system where, for example, a shell would 

consume more memory, and more CPU power, and would require additional 

coding. A single conclusory sentence is insufficient to meet Petitioner’s burden. 

Magnum Oil, 829 F.3d at 1380.

While not discussed in the Petition (at 67), Petitioner’s expert declaration 

appears to suggest that Hirayama-307’s dialer application window in and of itself 

discloses the limitation of claim 15 by virtue of being a window. Ex. 1002 

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[Bederson-Decl.] ¶ 171. Relying on Exhibit 1015, 1-2, Dr. Bederson states that 

“one example of a ‘shell’ under its plain meaning is a ‘drawing application.’” Id. 

To the extent that Dr. Bederson’s testimony is to be considered, it misses the mark. 

First, Exhibit 1015 does not even use the word “shell.” Dr. Bederson provides no 

explanation on why a POSITA would understanding a “drawing application” to be 

a “shell” and at deposition, Dr. Bederson was unable to identify why various 

application windows may or may not be “shells,” thus implicitly admitting that not 

all application windows are shells. Ex. 2005 [Bederson-Depo.] 169:22-170:8. 

Second, there is no logical explanation provided by Dr. Bederson that, even 

if a drawing window were a “shell” upon an operating system in some other 

system in an unrelated paper, that means that a dialer window in Hirayama-307 is 

also a shell upon the operating system. 

Third, claim 15 does not merely require the existence of a shell upon the 

operating system; rather, it requires that the specific computer program code that 

causes the user interface with the representations of function and the “gliding ... 

away” activation mechanism be implemented as a “shell upon the operating 

system.” In Hirayama-307, even if the dialer application were somehow a shell 

upon an operating system, that dialer application window is not the “program 

code” for implementing Hirayama’307’s general user interface with the drag-anddrop gesture. Rather, the drag-and-drop operation applies to all programs 40, and 

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is generally implemented in Hirayama-307’s operating system, not as something 

specific and within the telephone icon 41. 

Therefore, the Petition fails to show that claim 15 is disclosed or obvious in 

view of Hirayama-307.

VI. CONCLUSION

For the foregoing reasons, Petitioner has failed to demonstrate that any of the 

claims are unpatentable.

Respectfully submitted,

____/ Kenneth J. Weatherwax /_________

Kenneth J. Weatherwax, Reg. No. 54,528

Nathan Lowenstein (pro hac vice)

Parham Hendifar, Reg. No. 71,470

Lowenstein & Weatherwax LLP

Date: March 25, 2022

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1

CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITS

This Patent Owner Response (the “POR”) consists of 13,425 words, excluding

table of contents, table of authorities, certificate of service, this certificate, or table

of exhibits. The POR complies with the type-volume limitation of 14,000 words as 

mandated in 37 C.F.R. § 42.24. In preparing this certificate, counsel has relied on 

the word count of the word-processing system used to prepare the paper (Microsoft 

Word).

Respectfully submitted,

 / Parham Hendifar /

Date: March 25, 2022

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that the following documents were served 

by electronic service, by agreement between the parties, on the date signed below:

CORRECTED PATENT OWNER RESPONSE

The names and address of the parties being served are as follows: 

W. Karl Renner IPR50095-0015IP1@fr.com

David Holt holt@fr.com

Tiffany C. Miller tiffany.miller@dlapiper.com

James M. Heintz jim.heintz@dlapiper.com

axf-ptab@fr.com

PTABInbound@fr.com

Respectfully submitted,

 / Keith Moore /

Date: March 29, 2022

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