EXHIBIT C

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Trials@uspto.gov Paper 52

571-272-7822 Entered: January 11, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,

Petitioner,

v.

NEONODE SMARTPHONE LLC,

Patent Owner.

IPR2021-01041

Patent 8,095,879 B2

Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and

SCOTT B. HOWARD, Administrative Patent Judges.

OGDEN, Administrative Patent Judge.

JUDGMENT

Final Written Decision

Determining No Challenged Claims Unpatentable

35 U.S.C. § 318(a)

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I. INTRODUCTION

Petitioner Google LLC (“Google”) filed a Petition (Paper 6, “Pet.”) 

for inter partesreview of claims 1–7, 9, 12, 13, and 15–17 of U.S. Patent 

No. 8,095,879B2 (Ex. 1001, “the ’879 patent”). Based on the Petition and 

preliminary filings, the Board instituted trial. (Paper 19). Patent Owner 

Neonode Smartphone LLC (“Neonode”) then filed a Patent Owner Response

under seal (Paper 29, “PO Resp.”; public redacted version as Ex. 2060), 

Google filed a Reply to the Patent Owner Response (Paper 35, “Pet. 

Reply”), and Neonode filed a Sur-reply (Paper 44, “PO Sur-reply”).

We held an oral hearing on October 17, 2022, and the transcript is 

entered on the record. Paper 50 (“Tr.”).

This is a final written decision under 35 U.S.C. § 318(a) as to whether 

the claims challenged in the inter partesreview are unpatentable. For the 

reasons below, we conclude that Google has not shown that any claims of 

the ’879 patent are unpatentable.

II. BACKGROUND

A. RELATED PROCEEDINGS

The parties identify the following as related matters: Neonode

Smartphone LLC v. Apple Inc., No. 6:20-cv-00505 (W.D. Tex. filed June 8, 

2020); and Neonode Smartphone LLC v. Samsung Electronics Co., No. 6:20-

cv-00507 (W.D. Tex. filed June 8, 2020). Pet. 106; Paper 3, 2.

The Board has issued a previous final written decision addressing the 

’879 patent. See Samsung Electronics Co. v. Neonode Smartphone LLC, 

IPR2021-00144, Paper 59 (PTAB Dec. 15, 2022); Pet. 106, Paper 3, 2.

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B. THE ’879 PATENT (EX. 1001)

The ’879 patent relates to a user interface on a mobile handheld 

computer device that has a touch-sensitive display screen divided into a 

menu area and a display area. See Ex. 1001, 1:6–9, code (57). The user 

interface is “specifically adapted to be used with a small computer unit 

where the size of the touch sensitive area is in the order of 2–3 inches” and 

the interface can “be operated by one hand.” Id. at 3:1–6.

Figure 1 of the ’879 patent, reproduced below, illustrates such a user 

interface:

Figure 1 depicts touch-sensitive area 1 on a mobile handheld device. 

Ex. 1001, 3:22–23, 3:51–53. It is divided into menu area 2 and display area 

3. Id. at 3:53–54. Menu area 2 is a narrow strip along the lower part of 

touch-sensitive area 1 that contains predefined functions 21 (a general 

application-dependent function), 22 (a keyboard), and 23 (a task and file 

manager). Id. at 4:1–6; see also id. at 2:7–10.

Functions 21, 22, and 23 in menu area 2 “can be activated when the 

touch sensitive area detects a movement of an object with its starting point 

within the representation of the function on the menu area and with a 

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direction from the menu area to the display area.” Ex. 1001, 1:65–2:5, 2:11–

14. This method of activation is shown in Figure 2, reproduced below:

Figure 2, above, illustrates a touch gesture by which a user may activate 

functions 21, 22, or 23 in area 2. See Ex. 1001, 3:24–25. This gesture begins 

when object 4 (a thumb as shown in Figure 2, but it could be any finger, a 

pen, or another pointing device, id. at 6:11–15) touches the display at point A 

within representation 21, 22, or 23, and moves in direction B away from 

menu area 2 into display area 3. Id. at 4:7–11. 

When a user activatesthe first function, display area 3 displays icons 

representing services or settings, depending on the current active application. 

Ex. 1001, 2:18–20. Figure 3, reproduced below, illustrates the touch screen 

after function 21 has been activated:

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Ex. 1001, 3:26. Figure 3, above, shows that after a user activates function 21 

with the gesture as illustrated in Figure 2, display area 3 displays icons 211–

216, which each represent services or functions depending on the currently 

active application. Id. at 4:12–15. If, for example, the active application 

handles a picture, then the icons showing on display area 3 after a user 

activates the first function can include services such as “save to disk,” “send 

as SMS,” or “delete,” or settings such as “resolution,” “colour,” or 

“brightness.” Id. at 4:24–28. 

Analogously, selecting function 22 activates a keyboard, and selecting 

function 23 activates a library of available applications and files on the 

device. Ex. 1001, 4:36–38, 4:63–65, Figs. 5–6. If there is no currently active 

application, the icons may “represent services or settings of the operations 

system of the computer unit, such as background picture, clock alarm 215, 

users 213, help 211, etc.” Id. at 4:29–33. 

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C. CHALLENGED CLAIMS AND GROUNDS

Claim 1, the only independent claim, is as follows:

1. A non-transitory computer readable medium storing a 

computer program with computer program code, which, when read 

by a mobile handheld computer unit, allows the computer to 

present a user interface for the mobile handheld computer unit, the 

user interface comprising:

[a] a touch sensitive area in which a representation of a function 

is provided,

[b] wherein the representation consists of only one option for 

activating the function and

[c] wherein the function is activated by 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,

[d] wherein the representation of the function is not relocated 

or duplicated during the gliding.

Ex. 1001, 6:45–59 (Google’s reference letters added).

Google argues six grounds for inter partesreview, as shown in the 

following table:

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

1–5, 13, 15–17 103(a)1 Robertson, 2 Maddalozzo3

6, 7, 9 103(a) Robertson, Maddalozzo, Vayda4

12 103(a) Robertson, Maddalozzo, BedfordRoberts5

1, 4–6, 13, 15–17 103(a) Tarpenning6

2, 3, 7, 9 103(a) Tarpenning, Vayda

12 103(a) Tarpenning, Bedford-Roberts

Pet. 1–2. 

D. DECLARATORY TESTIMONY

Google submits two declarations of Dr. Jacob O. Wobbrock as expert 

testimony. Exs. 1003, 1032; see also Ex. 1004 (curriculum vitae). Google 

also relies on a declarations of Rachel J. Watters(Ex. 1018) and Kelley M. 

Hayes Greenhill (Ex. 1019) as to Robertson’s public availability.

Neonode submits a declaration of Dr. Craig Rosenberg. Ex. 2019; see 

also Ex. 2002 (curriculum vitae). Neonode also submits declarations of 

 

1 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act, 

Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011) 

(effective Mar. 16, 2013). The ’879 patent issued from an application filed 

on December 10, 2002, which is before the effective date of this amendment 

to section 103. See Ex. 1001, code (22).

2 George G. Robertson et al., Buttons as First Class Objects on an 

X Desktop, UIST: Proceedings of the ACM Symposium on User Interface 

Software and Technology: Hilton Head, South Carolina, USA, 35–44 (Nov. 

11–13, 1991) (Ex. 1005).

3 Maddalozzo et al., US 7,768,501 B1, issued Aug. 3, 2010 (Ex. 1006).

4 Vayda et al., US 5,745,717, issued Apr. 28, 1998 (Ex. 1007).

5

 Bedford-Roberts, US 5,870,092, issued Feb. 9, 1999 (Ex. 1008).

6 Tarpenning et al., US 6,181,344 B1, issued Jan. 30, 2001 (Ex. 1009).

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Joseph Shain (Ex. 2008), Ulf Mårtensson (Ex. 2054), Per Bystedt (Ex. 2055

under seal; public redacted copy as Ex. 2061), and Marcus Bäcklund 

(Ex. 2056) relating to alleged objective indicia of non-obviousness and the 

early development of touch-screen phonesthat, according to Neonode, 

embody the challenged claims.

III. GROUNDS OF THE PETITION

For the reasons below, we determine that Google has not shown, by a 

preponderance of the evidence, that claims 1–7, 9, 12, 13, and 15–17 of the 

’879 patent are unpatentable under the grounds of the Petition. Before 

analyzing these grounds in detail, we address two matters that will underlie 

our analysis: the level of ordinary skill in the art and the construction we will 

apply to the claim terms.

A. LEVEL OF ORDINARY SKILL IN THE ART

The level of ordinary skill in the pertinent art at the time of the 

invention is a factor in how we construe patent claims. See Phillips v. AWH 

Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). It is also one of 

the factors we consider when determining whether a patent claim would 

have been obvious over the prior art. See Graham v. John Deere Co., 383 

U.S. 1, 17–18 (1966).

To assess the level of ordinary skill, we construct a hypothetical 

“person of ordinary skill in the art,” from whose vantage point we assess 

obviousness and claim interpretation. See In re Rouffet, 149 F.3d 1350, 1357 

(Fed. Cir. 1998). This legal construct “presumes that all prior art references 

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in the field of the invention are available to this hypothetical skilled artisan.” 

Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1993)).

For Google, Dr. Wobbrock testifies that a person of ordinary skill in 

the art at the time of the invention, would have had “at least a bachelor’s 

degree in Computer Science, Human-Computer Interaction, Symbolic 

Systems, or related engineering disciplines, and at least two years of 

experience designing and programming graphical user interfaces,” but that 

“[r]elevant work experience can substitute for formal education and 

advanced degree studies could substitute for work experience.” Ex. 1003 

¶ 49.

Testifying for Neonode, Dr. Rosenberg states that for his declaration, 

he “will apply the same definition of the level of skill of a [person of 

ordinary skill in the art]” as Dr. Wobbrock. Ex. 2019 ¶ 27.

We find Dr. Wobbrock’s uncontested articulation to be reasonable in 

light of the subject matter involved in the ’879 patent and the asserted prior 

art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses 

technical problems including “to provide a user-friendly interface . . . on a 

small handheld computer unit”). Thus, we adopt it for our decision.

B. CLAIM CONSTRUCTION

In an inter partesreview, we construe a patent claim “using the same 

claim construction standard that would be used to construe the claim in a 

civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). This 

generally includes “construing the claim in accordance with the ordinary and 

customary meaning of such claim as understood by one of ordinary skill in 

the art and the prosecution history pertaining to the patent.” Id. The ordinary 

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and customary meaning of a claim term “is its meaning to the ordinary 

artisan after reading the entire patent,” and “as of the effective filing date of 

the patent application.” Phillips, 415 F.3d at 1313, 1321. There are only two 

circumstances in which a construction departs from the ordinary and 

customary meaning: “1) when a patentee sets out a definition and acts as 

[their] own lexicographer, or 2) when the patentee disavows the full scope of 

a claim term either in the specification or during prosecution.” Thorner v. 

Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Any 

such special meaning of a term “must be sufficiently clear in the 

specification that any departure from common usage would be so understood 

by a person of experience in the field of the invention.” Multiform 

Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).

To construe the claim terms, “we look principally to the intrinsic 

evidence of record, examining the claim language itself, the written 

description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. 

Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006).

Google does not propose any explicit claim constructions in its

Petition. See Pet. 4. Neonode does not propose any explicit constructions 

either, but in its Response, Neonode raises a number of claim construction 

arguments regarding the term gliding . . . away as it appears in limitation 1c, 

to which Google responds in its Reply. See PO Resp. 31–50, 66–69; Pet. 

Reply 7–12, 19–21; see also PO Sur-reply 1–10, 19–21. We do not need to 

construe this term explicitly for our decision, and to the extent we need to 

interpret this or any other terms, we address the terms below in the context 

of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 

Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms 

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‘that are in controversy, and only to the extent necessary to resolve the 

controversy’. . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 

F.3d 795, 803 (Fed. Cir. 1999))).

C. GROUNDS BASED ON ROBERTSON

In the first ground of the Petition, Google argues that claims 1–5, 13, 

and 15–17 are unpatentable under 35 U.S.C. § 103(a) as obvious over 

Robertson in view of Maddalozzo. Pet. 5–64. For this ground, we focus on 

Google’s challenge to sole independent claim 1 and particularly limitation 

1c (Pet. 25–29), after which we address the remaining claims and the 

remaining grounds.

A claim is unpatentable under § 103(a) for obviousness if the 

differences between the claimed subject matter and the prior art are “such 

that the subject matter as a whole would have been obvious at the time the 

invention was made to a person having ordinary skill in the art to which said 

subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 

(2007). When a ground in a petition is based on a combination of references, 

we consider “whether there was an apparent reason to combine the known 

elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In 

re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

We base our obviousness inquiry on factual considerations including 

(1) the scope and content of the prior art, (2) any differences between the 

claimed subject matter and the prior art, (3) the level of skill in the art, and 

(4) any objective indicia of obviousness or non-obviousnessthat may be in 

evidence. See Graham, 383 U.S. at 17–18.

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Considering these factors, we determine for the reasons below that

Google has not shown, by a preponderance of the evidence, that claim 1 is

unpatentable under 35 U.S.C. § 103(a) as obvious over Robertson in view of 

Maddalozzo.

1. Overview of Robertson (Ex. 1005)

Robertson describes a high-level user interface toolkit, called 

“XButtons,” which supports on-screen buttons as first-class objects on an 

X Window system desktop. Ex. 1005, 35. According to Robertson, XButtons 

typically appear as small rectangular screen objects, usually have some text 

that indicates what their action is, and may include a field for editable text.

Id. at 38. A group of XButtons is shown in Figure 1, which we reproduce 

below.

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Figure 1, above, illustrates a sample set of XButtonsincluding one for a 

“Phone” function. Ex. 1005, 38–39. XButtons can have multiple associated 

actions, each selected by simple mouse or pen gestures such as “flick left,” 

“flick right,” “flick up,” “flick down,” “click,” “rubout,” “check,” or 

“insert.” Id. at 39. For example, “[t]he ‘Phone’ button will let you type the 

name of someone, then pop up a window with their phone number (by 

clicking) or dial the number (with the flick right gesture).” Id.

“If the user is unfamiliar with the action of a particular button, a menu 

can be popped up to reveal which gestures are supported (and what they 

do),” using a particular gesture. Ex. 1005, 39. The menu associated with the

“Phone” XButton is shown in Figure 2, which we reproduce below.

Figure 2, above, illustrates a sample menu for an XButton. Ex. 1005, 39–40.

The menu shows all potential user manipulations of the XButton; for 

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example, it shows that the “Click” gesture is associated with “Get phone #” 

and the “Flick Right” gesture is associated with “Dial phone #.” Id.

XButtons may also have associated with them a button editor, as 

shown in Figure 3, which we reproduce below.

Figure 3 shows a button editor for the “Phone” XButton whose menu is 

shown in Figure 2. Ex. 1005, 40–41. The button editor is a structured 

property-sheet editor designed specifically for editing an XButton. Id. at 40. 

The editor fields at the top specify the appearance of the button. Id. The 

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middle of the editor specifies the action language, the various actions, and 

the text to appear in the menu for each action. Id. Toward the bottom of the 

editor are fields (“Attribute” and “Value”) that allow the user to view and 

replace user-defined properties. Id.

2. Limitation 1c

Because we find that Google has not shown that the combination of 

Robertson and Maddalozzo teaches or suggests limitation 1c, we need only 

address that limitation in our decision. Moreover, because Google relies only 

on Robertson for limitation 1c, we need not address Google’s arguments 

concerning Maddalozzo. See Pet. 25–29 (not referring to Maddalozzo in the 

context of limitation 1c). 7

Limitation 1c recites “wherein the function is activated by 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, 

6:52–57. An example of this operation is the gesture illustrated in Figure 2 

of the ’879 patent, which we discuss above. See supra Section II.B. 

Google contends that Robertson discloses this recited multi-step 

operation by disclosing that a user can activate a “dialphone” function to call 

a phone number by “placing a pen on the phone button, then sliding the pen 

to the right along the touch-sensitive interface to perform a ‘flick right’ 

gesture.” Pet. 25 (citing Ex. 1005, 38–39; Ex. 1003 ¶ 107). Google contends 

 

7 For claim 1, Google relies on Maddalozzo solely for teaching the 

preamble. See Pet. 12–19.

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that, according to Robertson, “‘gesture[s] must start in an XButton,’ but ‘can 

move outside the XButton’ while performed.” Id. (alteration in original) 

(quoting Ex. 1005, 43) (citing Ex. 1005, 39; Ex. 1003 ¶ 106). Thus, Google

depicts this operation with an annotated version of Robertson’s Figure 1,

which we reproduce below:

Pet. 26. In the above figure, Google annotates Robertson’s Figure 1 by 

highlighting the “Phone” XButton (in which has been entered a particular 

phone number) in blue and showing an orange pen and a path it would 

allegedly make starting on the phone number and ending outside the 

XButton. See Pet. 25–26.

Alternatively, Google contends that Robertson discloses activating an 

“xbedit” function to open the “Phone” button’s button editor by “touching a 

pen (or finger) to the phone button, then sliding the pen away from the initial 

touched location in the shape of a caret to perform an ‘Insert gesture.’” 

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Pet. 26–27 (citing Ex. 1005, 39–40; Ex. 1003 ¶ 108). Google depicts this 

operation with another annotated version of Robertson’s Figure 1, which we 

reproduce below:

Pet. 27. Shown above is Robertson’s Figure 1 that Google has annotated to 

highlight the “Phone” XButton (in which has been entered a particular phone 

number) in blue and showing an orange pen and a path it would allegedly 

make starting on the phone number, moving diagonally upward and to the 

right outside the XButton, and then moving diagonally downward and to the 

right. See id.

In its Response, Neonode contends that Google has failed to support 

its contention that Robertson’s “flick-right” and “insert” gestures reflect the 

stylus performing an operation that comprises “gliding . . . away.” See PO 

Resp. 31. First, Neonode contends that based on the prosecution history and 

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extrinsic evidence, the term glidingmeans more than simply any movement 

along the touch sensitive area. See id. 32–35. 

In particular, Neonode notes that during prosecution of the ’879 

patent, the original language describing the gesture in limitation 1c was 

“moving in a direction from a starting point that is the representation [of a 

function] . . . to said display area.” PO Resp. 33 (alterations in original) 

(quoting Ex. 1002, 201). Neonode arguesthat, after the Examiner rejected 

claims with the above language, “[i]n further prosecution and in explaining 

the gesture the Applicant sought to claim,” the applicant encouraged the 

Examiner to watch a video (Ex. 2020) demonstrating the gesture on 

Neonode’s N2 mobile device. Id. (citing Ex. 1002, 214–15). Neonode 

contends that this video depicts a gesture that is “similar to what today’s 

systems refer to as a ‘swipe’ gesture, where, e.g., the thumb is placed on a 

representation of a function (menu item with an arrow) and through a 

swiping motion, the menu screen opens.” Id. at 32–34 (citing Ex. 2020, time 

codes 00:26–00:27).

Then, according to Neonode, “[i]n the subsequent office action, the 

Examiner acknowledged the ‘swiping’ gesture of the claims, but recognized 

that the then drafted claims[] simply required ‘moving’ the object, and were 

thus too broad to limit the claims to a swipe/glide gesture.” PO Resp. 34

(citing Ex. 1002, 258 (“[T]he Examiner feels that the limitations, as claimed, 

. . . are still too broad to suggest without research what was shown in the 

video demonstration.”)). Then, Neonode argues that after an examiner 

interview “to properly claim the present invention,” the applicant amended 

the claim to its current form, “gliding along the touch sensitive area away

from the location.” Id. (quoting Ex. 1002, 334; then quoting id. at 317–18).

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Thus, Neonode contends that a person of ordinary skill in the art 

would have understood from the prosecution history that the word gliding as 

recited in limitation 1c carries a more specific meaning than mere 

movement. PO Resp. 35 (citing Ajinomoto Co. v. ITC, 932 F.3d 1342, 1351 

(Fed. Cir. 2019)).

Next, Neonode argues that Google has failed to show that a person of 

ordinary skill in the art would have understood Robertson’s “flick” gesture 

to comprise “gliding.” PO Resp. 35. Neonode first points to dictionary 

definitions in which the word flick denotes a sharp or jerky motion, whereas 

the word glide denotes a smooth, continuous motion. Id. at 35–38 (citing 

Exs. 2049, 2052, 2050, 2057; Ex. 2019 ¶¶ 78–79). Neonode also points to 

more recent developer guidelines to show that leading smart phone 

developers Apple and Google have distinguished between “flick” and 

“swipe” gestures. Id. at 39–40 (citing Ex. 2022, 4; Ex. 2023, 6; Ex. 2029, 2; 

Ex. 2019 ¶¶ 80–81). According to Dr. Rosenberg, in Google’s Android 

operating system, a “flick” gesture simulates a fast spinning motion, and in 

later Android releases, the gesture “creates a momentum effect where the 

scroller initially moves at a given velocity, and gradually slows down,”

whereas “a ‘swipe’ gesture is used to close an application.” Ex. 2019 ¶¶ 82–

83 (citing Ex. 2025, 21; Ex. 2026, 5; Ex. 2027, 8 (calling the gesture 

“fling”); Ex. 2028, 1).

Neonode argues that the difference between “glide” (“swipe”) and 

“flick” gestures is analogous to the difference between “walking and 

running,” which are distinct movements. PO Resp. 41 (citing Ex. 2019 ¶ 84). 

In the context of operating a touchscreen with a pen on a 1991 desktop 

(allegedly consistent with how the term is used today), Dr. Rosenberg 

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testifies that “[i]n a flick gesture, the pen would touch the screen, but only 

moves on the screen for a very short distance and is quickly lifted from the 

screen in a ‘jerky’ motion.” Ex. 2019 ¶¶ 85–86.

Thus, Neonode disagrees with how Google depicts a “flick right” 

gesture in its annotated version of Robertson’s Figure 1, reproduced above. 

PO Resp. 42. According to Neonode, neither Google nor Dr. Wobbrock have 

explained why the gesture would have been a several-inches-long 

continuous movement, as depicted, which does not reflect the plain meaning 

of flick as a “short, jerky motion.” Id. at 42–43. Although Neonode 

acknowledges that Robertson’s system is capable, in general, of recognizing 

gestures that begin within an XButton and extend outside of it, Neonode 

disagrees that this would necessarily be the case for the “flick right” gesture, 

unless the gesture began close to the edge of the XButton. Id. at 43–44 

(citing Ex. 2019 ¶ 89).

Dr. Rosenberg also states that Robertson “discloses that a drag-anddrop operation can be performed on its XButtons,” so “[i]f Robertson’s 

‘flick’ was really a glide,” then if the user performed a gesture as depicted in 

Google’s annotated version of Figure 1, “Robertson’s system would not 

know whether the movement of a mouse/pen was a drag-and-drop operation 

or a glide gesture.” Ex. 2019 ¶ 90 (citing Ex. 1005, 39, 40, 42). On the other 

hand, “a ‘flick’ gesture is readily recognizable due to its higher speed and 

shorter distance—which, as Robertson indicates, is not intended to (even if it 

‘can’) go outside of the XButton itself.” Id.

Neonode also disputes that a person of ordinary skill in the art would 

have interpreted Robertson’s “insert” gesture—which Robertson describes 

as “like an editor’s caret”—to comprise a “gliding . . . away” movement. 

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PO Resp. 45 (quoting Ex. 1005, 40). According to Neonode, “[a]n editor’s 

caret—‘^’—has a sharp angle and is usually smaller than the text.” Id. at 47–

48 (citing Ex. 2019 ¶ 99). According to Dr. Rosenberg, forming this gesture 

would involve “two jerky movements connected together,” or “drawing a 

first sharp, short line, and then sharply changing direction and drawing a 

second sharp, short line.” Ex. 2019 ¶ 100. Thus, Neonode disagrees with 

Google’s depiction of two large lines that extend outside the XButton and 

even over neighboring XButtons. PO Resp. 49–50 (citing Ex. 2019 ¶¶ 101–

102). Rather, according to Dr. Rosenberg, Robertson’s “insert” gesture 

would more closely resemble the depiction shown in Neonode’s own 

annotated version of Figure 1, which we reproduce below:

Ex. 2019 ¶ 102. Neonode’s annotated version of Robertson’s Figure 1 

depicts an orange caret roughly on the same scale as the text that would 

appear in the “Phone” XButton, and a pen “with the correct approximate 

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scale of the size of the pen compared to a typical desktop of 1991.” PO 

Resp. 49 (citing Ex. 2019 ¶¶ 101–102).

In its Reply, Google contends that we should decline to construe 

gliding . . . away as Neonode contends because doing so would render claim 

1 unpatentable for lack of written description, because the original disclosure 

of the ’879 patent only described general movements, not specifically a 

gliding gesture. Pet. Reply 7–8 (citing Ruckus Wireless, Inc. v. Innovative 

Wireless Sols., LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016); Novozymes A/S v. 

DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1346 (Fed. Cir. 2013); D 

Three Enters., LLC v. SunModo Corp., 890 F.3d 1042, 1050–51 (Fed. Cir. 

2018)).

Neonode counters in its Sur-reply that the “gliding . . . away” 

language in limitation 1c finds support in Figure 2 of the original disclosure 

leading to the ’879 patent, which depicts a gliding motion and not a flick.

PO Sur-reply 7–8 (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 

1331, 1346 (Fed. Cir. 2016)). But in any event, Neonode argues that

construing terms to preserve validity is only “a last resort if the claim is ‘still 

ambiguous’ after ‘applying all the available tools of claim construction.’” Id.

at 7 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. 

Cir. 2004)). Neonode contends that this is not the case here, because “the 

prosecution history clearly and unambiguously informs a [person of ordinary 

skill in the art] that the claimed ‘gliding . . . away’ is distinct from ‘movingfrom-to.’” Id.

Next, Google contends that on cross-examination, Dr. Rosenberg 

could not delineate the boundary between a “flick” and a “glide,” and 

admitted that “both flick and glide gestures start at a touched location and 

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move away from the touched location while continuing to touch the screen” 

and “that the distinction is arbitrary.” Pet. Reply 8, 9–10, 11 (citing 

Ex. 1031, 27:15–29:6, 31:15–32:12, 34:24–35:17; Ex. 1001, 2:61–67, 5:33–

35). Google also argues that “Neonode’s citations to general-purpose 

dictionaries [or development guides] are unavailing because they are either 

after-arising or improperly contradict the intrinsic record, which describes 

only ‘movement’ without regard to speed or distance.” Id. at 10 (footnote 

omitted) (citing Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 

F.3d 1314, 1320–21 (Fed. Cir. 2016); Profectus Tech. LLC v. Huawei Techs. 

Co., 823 F.3d 1375, 1380 (Fed. Cir. 2016); Seabed Geosolutions (US) Inc. v. 

Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021)).

Neonode disagrees that Dr. Rosenberg admitted that the distinction 

between “flick” and “glide” is arbitrary; according to Neonode, he merely 

testified “that ‘one number’ would not suffice to distinguish between a ‘flick’ 

and a ‘glide’ since it would depend on various factors such as screen size, 

resolution of the screen, [and] whether a stylus or finger is used.” PO Surreply 3 (citing Ex. 1031, 28:16–29:6). Neonode contends that this does not 

make the distinction arbitrary, and that Google has been able to distinguish 

between “flick” and “swipe” gestures in its own documentation for the 

Android operating system. Id. (citing PO Resp. 40–41).

Neonode also contends that Google’s argumentsin its Reply that 

Robertson’s “flick” falls within the scope of the recited “gliding . . . away” 

gesture are conclusory and untethered to any further testimony, including by 

Dr. Wobbrock. PO Sur-reply 1–2. And according to Neonode, while Google 

criticizes Neonode’s dictionary definitions, Google provides none of its own. 

Id. at 2. Neonode disagrees that its dictionary evidence is irrelevant because 

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it is “after-arising,” because Neonode provides dictionary definitions from 

the early 1990s as well as later definitions to show consistency over time. Id.

(citing Exs. 2049, 2052, 2050, 2057). As to the Apple and Google 

development guides, Neonode acknowledges that they are from after 2002, 

the earliest priority date of the ’879 patent, but contends that Google 

“presents no evidence for the insinuation that these terms were used 

differently in 2002.” Id. at 3.

Next, Google contends that (1) during prosecution, the applicant 

“never distinguished ‘gliding’ from other gestures or movement generally, 

and in fact equated other gestures with a glide,” and “[t]he examiner also 

continued to search ‘flick as relevant after the amendment,”Pet. Reply 8

(citing Ex. 1002, 381, 482, 496–497, 585); and (2) “Neonode’s citation 

[during prosecution] to its after-arising N2 advertisement . . . is not relevant 

because it was used to distinguish ‘the representation of the function is not 

relocated or duplicated during the gliding’ limitation [1d], not between 

‘gliding’ and another movement type,” id. at 8–9 (citing Ex. 1002, 258, 611–

612).

Neonode disagrees that the applicant never distinguished “gliding” 

from other gestures, because that is what was happening when the applicant 

amended the claims from the original language describing the gesture as 

“moving” from one point to another. PO Sur-reply 4. Neonode also disagrees

that the applicant equated a “glide” with a distinct “drag” operation (or that 

this is relevant to the distinction between “glide” and “flick”), because in the 

cited passages of the prosecution history, the applicant was clearly 

distinguishing between what it described as its “[n]ovel touch-and-glide user 

interface operation” and a “conventional . . . drag-and-drop” operation in a 

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prior art reference. Id. at 4–5 (quoting Ex. 1002, 297) (citing Ex. 1002, 496–

498). Neonode also contends that the applicant compared “gliding” to 

“swiping,” “rubbing,” or “sliding,” but never to a “flick” or a “drag.” Id. at 5 

(citing Ex. 1002, 273 (“I would like to discuss the touch-and-glide thumb 

movement, variously referred to as ‘swiping,’ ‘rubbing,’ gliding’ and 

‘sliding.’”), 390 (“One such movement is a ‘rubbing’/‘swiping’/‘touch-andglide’ movement, whereby 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.”)).

Neonode also disagrees that the applicant referred the Examiner to the 

N2 video to distinguish limitation 1d rather than 1c. PO Sur-reply 5–6. 

According to Neonode, “[t]he Applicant did not make any arguments 

regarding ‘duplication or relocation’ of the representation of the function in 

connection with the video demonstration, and this language was not added to 

the claim until later.” Id. at 6.

Finally, Google contends that “Robertson discloses that the ‘flick’ 

gesture starts by touching inside a button and moving away from the touched 

location, as described in the ’879 patent,” and “does not place any boundary 

on the speed or duration of its gestures.” Pet. Reply 10–11 (citing Ex. 1003 

¶¶ 105–110; Ex. 1005, 43 (teaching that Robertson’s system can recognize 

gestures that extend outside an XButton)); see also id. at 11 (arguing that the 

size of a gesture is irrelevant “because neither Robertson nor the ’879 patent 

is size-constrained”).

Having considered the arguments and evidence of record, we 

determine that Petitioner has not met its burden to show that Robertson’s 

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“flick” gestures comprise “gliding along the touch sensitive area away from 

the touched location” as recited in limitation 1c. 

Because Google has the burden of persuasion, Neonode has no 

obligation to precisely define the term gliding . . . away or explain how the 

term differs from the term flick in Robertson. See 37 C.F.R. § 42.104(b)(3)

(2020); 35 U.S.C. §316(e). Nevertheless, we agree with Neonode that 

during prosecution of the ’879 patent, the applicant clearly intended the 

claims as a whole, and particularly limitation 1c, to cover what is known 

today as a “swipe” gesture, particularly but not exclusively as distinguished 

from a prior-art drag-and-drop operation. See Ex. 1002, 201, 214–15, 258, 

273, 297, 317–18, 334, 390, 496–97; Ex. 2020. In particular, it appears from 

the record that when the Examiner was considering the submitted video of 

Neonode’s N2 phone, the main issue was how to capture the swiping 

gestures shown in the video while distinguishing from drag-and-drop 

operations known in the prior art. See Ex. 1002, 258. Thus, we agree with 

Neonode that a person of ordinary skill in the art would have interpreted the 

phrase gliding . . . away to reflect a swiping gesture that is more specific 

than merely an on-screen movement from one location to another.

We disagree with Google that we should factor any potential lack of 

written-description support into our interpretation of gliding . . . away. To 

the extent there is any ambiguity in the term, 8 it does not rise to the level that 

 

8 The evidence suggests that the distinction between a “flick” and a “glide” 

may involve a number of considerations such as the size of the screen and 

whether the pointing object is a finger or stylus. Ex. 1031, 27:15–29:6. This 

does not mean that a person of ordinary skill in the art, applying those 

considerations, would have been unable to distinguish between a “flick” and 

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“the term or terms chosen by the patentee so deprive the claim of clarity that 

there is no means by which the scope of the claim may be ascertained from 

the language used.” Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 

F.3d 985, 990 (Fed. Cir. 1999); see also Liebel-Flarsheim, 358 F.3d at 911 

(“[U]nless the court concludes, after applying all the available tools of claim 

construction, that the claim is still ambiguous, the axiom regarding the 

construction to preserve the validity of the claim does not apply.”).

The next question is whether a person of ordinary skill in the art 

would have understood Robertson’s “flick” gesture to comprise “gliding . . . 

away” as we interpret that term. Robertson says very little about the “flick” 

gestures themselves, other than using the word flick. See, e.g., Ex. 1005, 39. 

Robertson teaches that its gestures should be “easily differentiated,” and in 

addition to “flick” gestures, Robertson also teaches “drag and drop” 

operations. Id. at 36 (“[Y]ou can drag a document icon and drop it into a 

printer icon to print the document . . . .”). We credit Dr. Rosenberg’s 

testimony that, for the XButton system to immediately distinguish between 

dragging and flicking, there must be some distinction between a “flick” and 

a “drag,” and that the most plausible difference is in terms of their speed, 

distance, or both. See Ex. 2019 ¶ 90.

Although Robertson discloses that its system is capable of recognizing 

gestures that start on an XButton and extend outside it (see Ex. 1005, 43), 

 

a “glide” or that the distinction is arbitrary. Cf. Braintree Labs., Inc. v. Novel 

Labs., Inc., 749 F.3d 1349, 1360 (Fed. Cir. 2014) (“Descriptive words . . . 

are commonly used in patent claims, to ‘avoid[] a strict numerical boundary 

to the specified parameter.’” (alteration in original) (quoting Pall Corp. v. 

Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995)))

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the only gesture for which Robertson specifically indicates this would be 

necessary is a “circling gesture[] for grouping, moving, and copying 

graphical objects” (id. at 39). Thus, we disagree with Google that 

Robertson’s teaching in this regard is relevant to what Robertson means by a 

“flick” gesture.

We also find persuasive Neonode’s dictionary definitions, spanning 

from 1993 to 2012, which consistently indicate that the word flick describes 

a movement that is “light,” “sharp” or “quick,” and “jerky” or “sudden,” as 

opposed to definitions of “glide” referring to a movement that is “smooth,” 

“continuous,” and possibly “quiet” or “effortless.” Exs. 2049, 2050, 2052, 

2057. 9 And although the evidence postdates Robertson, we find relevant the 

supporting evidence that modern Apple and Google developers maintain a 

meaningful distinction between “flick” and “swipe” gestures. See Ex. 2022, 

4; Ex. 2023, 6; Ex. 2025, 21; Ex. 2026, 5; Ex. 2029, 2; Ex. 2019 ¶¶ 80–81.

We further credit Dr. Rosenberg’s opinion that in the relevant time frame, a 

person of ordinary skill in the art would have interpreted a “flick” gesture as 

one in which “the pen would touch the screen, but only moves on the screen 

for a very short distance and is quickly lifted from the screen in a ‘jerky’ 

motion.” Ex. 2019 ¶¶ 85–86.

 

9 The earliest dictionary definitions (Ex. 2052) are from 1993, which is 

roughly contemporary with Robertson (1991), and are sufficiently close in 

time to be relevant. Google does not present any evidence suggesting that 

the meaning of flick had changed between 1991 and 1993. See PO Sur-reply 

2.

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Thus, we agree with Neonode that Google has not shown that 

Robertson’s “flick” gesture comprises “gliding . . . away,” and thus falls 

within the scope of claim 1.

Finally, we also agree with Neonode that Google has not established 

that Robertson’s “insert” (caret) gesture comprises “gliding . . . away.”

Although Robertson does not provide much information about this gesture, 

we find Dr. Rosenberg’s interpretation and annotated version of Figure 1 

(Ex. 2019 ¶¶ 99–102) more credible than those of Dr. Wobbrock (Ex. 1003 

¶ 108). We credit Dr. Rosenberg’s testimony that a person of ordinary skill 

in the art would have understood the “insert” gesture to be similar to the way 

a person would draw a caret to indicate an insertion within existing text. See

Ex. 2019 ¶ 99. Thus, we agree it would involve two brief, connected 

movements with a sharp peak, neither of which would be a continuous 

gliding or swiping motion. Id. ¶¶ 100–102.

3. Conclusion as to Claim 1

For the above reasons, we determine that Google has not established 

that Robertson teaches or suggests limitation 1c, either alone or in 

combination with Maddalozzo. Thus, Google has not shown that claim 1 is 

unpatentable under § 103(a) as obvious over Robertson in view of 

Maddalozzo.

4. Dependent Claims 2–7, 9, 12, 13, and 15–17

As part of its first ground, Google argues that dependent claims 2–5, 

13, and 15–17 are unpatentable under 35 U.S.C. §103(a) as obvious over 

Robertson in view of Maddalozzo. Pet. 30–47. In its second ground, Google 

challenges dependent claims 6–7 and 9 as obvious over Robertson in view of 

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Vayda. Pet. 47–61. In its third ground, Google challenges claim 12 as 

obvious over Robertson in view of Bedford-Roberts. Pet. 61–64.

These claims depend from claim 1, and Google’s arguments regarding 

those claims address the specific limitations added to claim 1 without 

specifically revisiting the issues we discuss above as to limitation 1c. See

Pet. 30–64. Google does not further address the dependent claims in its 

Reply. See Pet. Reply 23.

Thus, the above considerations as to claim 1 are also applicable to the 

challenged dependent claims, and we determine that Google has not shown, 

by a preponderance of the evidence, that any of claims 2–7, 9, 12, 13, and 

15–17 are unpatentable under § 103(a) as obvious over the respective prior 

art combinations.

D. GROUNDS BASED ON TARPENNING

In the fourth ground of the Petition, Google argues that claims 1, 4–6, 

13, and 15–17 are unpatentable under 35 U.S.C. §103(a) as obvious over 

Tarpenning. Pet. 65–97. For this ground, we focus on Google’s challenge to 

sole independent claim 1 and particularly limitation 1c (Pet. 25–29), after 

which we address the remaining claims and the remaining grounds.

Considering the Graham factors, we determine for the reasons below 

that Google has not shown, by a preponderance of the evidence, that claim 1 

is unpatentable under 35 U.S.C. § 103(a) as obvious over Tarpenning. 

1. Overview of Tarpenning (Ex. 1009)

Tarpenning describes a hand-held reader device that includes a touchsensitive display and graphical user interface, where the user accesses

various software-implemented features associated with the display and 

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management of the content. Ex. 1009, code (57). A perspective view of the 

hand-held reader device is shown in Figure 2, which we reproduce below.

Figure 2, above, illustrates a hand-held computing device adapted to be used 

as a portable reading device allowing a user to read literary titles and other 

types of content via a touch sensitive display 34. Ex. 1009, 3:42–48. The 

housing 33 has an increased width and depth and a rounded configuration 

along its base to form an extended gripping area 50 for holding the device.

Id. at 4:10–13.

As illustrated in Figure 2, the portion of the touch screen 74 that

extends beyond the perimeter 76A of the LCD display 76 has four fixed 

icons displayed thereon to form four respective function keys: an orientation 

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key 80, a user-definable “hotkey” 82, a book menu key 85, and a library 

menu key 86. Ex. 1009, 6:9–14. The hand-held computing device includes a 

user interface feature which allow a user to designate a hotkey function, as 

shown in Figures 6 and 7, which we reproduce below.

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Figures 6 and 7, above, illustrate an example of a hotkey assignment feature 

of a hand-held computing device’s user interface. Ex. 1009, 3:3–4, 7:39–42.

With reference to Figure 6, a user initially brings up a menu or sub-menu 

that contains the target hotkey function. Id. at 7:42–44. The menu or submenu item that is currently defined as the hotkey function is denoted as such 

by a hotkey icon 90. Id. at 7:30–32. In this example, the hotkey icon 90 

appears next to the “Goto Bookmarks” item of the book menu. Id. at 7:32–

34.

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As depicted in Figure 7, the user then touches the hotkey 82 with the 

stylus 92 (or the user’s finger), drags the stylus to the target item, and then 

removes the stylus from the touch screen 74. Ex. 1009, 7:44–48. During the 

dragging process, the hotkey icon 90 is displayed next to the menu item (if 

any) that is currently touched. Id. at 7:49–51. In Figure 7, the hotkey icon 90 

is displayed next to the “Highlight” item since the stylus 92 is currently over 

that item. Id. at 7:51–53.

2. Limitation 1c

Limitation 1c recites, in part, “wherein the function is activated by a 

multi-step operation.” Ex. 1001, 6:52–53. Because we find that Google has 

not shown that Tarpenning teachesthis aspect of limitation 1c, we need only 

address that part of limitation 1c in our decision.

Google contends that a user may activate Tarpenning’s book menu 

key 84 or library menu key 86 using a touch gesture. Pet. 76–77 (citing 

Ex. 1009, 6:9–14, 6:41–43, Figs. 2, 6; Ex. 1003 ¶¶ 214–220). Google also 

argues that Tarpenning separately discloses a “multi-step touch-then-glide 

gesture operation to active hotkey 82’s ‘assignment’ function,” in which, 

according to Google, the user “[i] touches the hotkey 82 with the stylus 92 

(or the user’s finger),’ and then [ii] ‘drags [glides] the stylus to the target 

item.’” Pet. 78 (alterations in original) (quoting Ex. 1009, 7:44–48) (citing 

Ex. 1009, 6:35–40, Fig. 7; Ex. 1003 ¶ 216). According to Google, “[t]he 

assignment is completed when the user lifts the stylus at the desired 

operation to be assigned.” Pet. 78–79 (citing Ex. 1009, 7:44–48, Fig. 7; Ex. 

1003 ¶ 216).

Google contends that a person of ordinary skill in the art “would have 

found it obvious to replace Tarpenning’s touch operation to activate the 

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menu display functions of book menu key 84 and library menu 86 with the 

disclosed multi-step touch-then-glide activation gesture.” Pet. 80 (citing 

Ex. 1003 ¶ 217). This is because, according to Google, a person of ordinary 

skill in the art would have wanted “to prevent accidental activation of the 

menu functions resulting from accidentally touching the icon” and to more 

accurately open sub-menus without lifting the stylus or the finger off the 

screen. Id. at 82 (citing Ex. 1003 ¶¶ 219–221; Ex. 1017, 10:14–16). Google 

contends that the ordinarily skilled artisan would have expected success 

because Tarpenning’s mobile handheld computer already uses both touch 

and touch-then-glide operations to activate key functions and those 

operations were well known. Id. at 83–84.

In its Response, Neonode argues that Tarpenning’s hotkey-assignment 

operation on hotkey 82 does not actually activate any function as recited in 

limitation 1c. PO Resp. 67. As Dr. Rosenberg puts it, “this assignment 

procedure does not ‘activate’ anything—it merely assigns the desired 

function to hotkey 82, which is then activated by the user by pressing the 

key, not by ‘gliding . . . away.’” Ex. 2019 ¶ 139 (alteration in original). 

According to Dr. Rosenberg, “Tarpenning never refers to its drag-and-drop 

operation as ‘activating’ anything, but as, for example, ‘defining a function’ 

for the hotkey.” Id. (citing Ex. 1009, 7:39–41, 8:1–3).

Google counters that the hotkey-assignment gesture “activates the 

assignment function (the system starts determining whether a new function 

has been assigned) because of the touch-then-glide gesture.” Pet. Reply 19–

20 (citing Ex. 1031, 45:24–47:4 (Dr. Rosenberg stating on crossexamination that the word function in claim 1 is broader than simply 

bringing up a user interface associated with an icon)). In other words, as 

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Google’s counsel explained in oral argument, when the user touches hotkey 

82 and begins moving the pointing device toward a potential function, the 

function “determining whether a new function has been assigned” has 

already been activated, and continues until the user lifts up from the device. 

See Tr. 37:17–39:16.

We find Google’s argument unpersuasive. 10 Tarpenning’s assignment 

operation for hotkey 82 is in the nature of a drag-and-drop operation, where 

the user drags the pen from hotkey 82 to the intended menu item to which 

hotkey 82 will be assigned. But Google identifies the “function [to be] 

activated”—not as the actual assignment of hotkey 82 to the menu item 

when the user lifts from the intended menu item—but as the underlying 

software process that looks to see whether the user has lifted yet from the 

selected menu item. See Pet. Reply 19–20; Tr. 37:17–39:16. Essentially, 

Google asserts that the recited function is part of processing the gesture 

itself, which we do not find persuasive. As counsel for Neonode argued at 

the hearing, unless the user lifts off from a menu item, no assignment to 

hotkey 82 has been made and nothing has actually been done. See Tr. 80:4–

13.

 

10 We also consider this argument untimely, as it appears to contradict 

Google’s original theory of obviousness in the Petition, which states that the 

“‘assignment’ function” is “completed when the user reaches the target item 

to be assigned.” Pet. 79; see also Tr. 80:2–3 (counsel for Neonode arguing, 

“I submit that’s not only a new point they’re making, it’s unsupported and 

. . . incorrect.”); 37 CFR § 42.23(b) (“A reply may only respond to 

arguments raised in the corresponding . . . patent owner response[] or 

decision on institution.”).

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We also find unpersuasive Google’s original argument in the Petition 

that the recited “function” is activated when the user reaches the target menu 

item being assigned to hotkey 82. See Pet. 79. This is essentially a traditional 

drag-and-drop operation. But we credit Dr. Rosenberg’s testimony that when 

the user lifts from the intended menu item, no function has actually been 

activated. See Ex. 2019 ¶ 139. Rather, at this point a function has merely 

been assigned to the hotkey for future activation by touching the hotkey. See

id.

Thus, we determine that Google has not identified any disclosure in 

Tarpenningin which any “function is activated by a multi-step operation” as 

recited in limitation 1c. Absent that teaching or suggestion, Google’s 

argument (Pet. 80–82) does not adequately articulate why a person of 

ordinary skill in the art would have modified Tarpenning’s book menu key 

84 or library menu key 86 to achieve limitation 1c, and we find Google’s 

obviousness argument unpersuasive as to claim 1.

3. Dependent Claims 2–7, 9, 12, 13, and 15–17

As part of its fourth ground, Google argues that dependent claims 4–6, 

13, and 15–17 are unpatentable under 35 U.S.C. §103(a) as obvious over 

Tarpenning. Pet. 84–97. In its fifth ground, Google challenges dependent 

claims 2–3, 7, and 9 as obvious over Tarpenning in view of Vayda. Pet. 98–

102. In its sixth ground, Google challenges claim 12 as obvious over 

Tarpenning in view of Bedford-Roberts. Pet. 102–103.

These claims depend from claim 1, and Google’s arguments regarding 

those claims address the specific limitations added to claim 1 without 

specifically revisiting the issues we discuss above as to limitation 1c. See

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Pet. 84–103. Google does not further address the dependent claims in its 

Reply. See Pet. Reply 23. 

Thus, the above considerations as to claim 1 are also applicable to the 

challenged dependent claims, and we determine that Google has not shown, 

by a preponderance of the evidence, that any of claims 2–7, 9, 12, 13, and 

15–17 are unpatentable under § 103(a) as obvious over the respective prior 

art combinations.

IV. CONCLUSION

For the reasons above, Google has not shown by a preponderance of 

the evidence that any challenged claim of the ’879 patent is unpatentable 

under any ground of the Petition.

V. ORDER

In consideration of the foregoing, it is

ORDERED that claims 1–7, 9, 12, 13, and 15–17 of the ’879 patent

have not been shown to be unpatentable; and

FURTHER ORDERED that parties to this proceeding seeking judicial 

review of our decision must comply with the notice and service requirements 

of 37 C.F.R. § 90.2.

Case 6:20-cv-00507-ADA Document 66-3 Filed 02/03/23 Page 39 of 41
IPR2021-01041 

Patent 8,095,879 B2 

39

In summary:

Claim(s) 35 

U.S.C. § Reference(s)/Basis 

Claims

Shown 

Unpatentable

Claims

Not Shown 

Unpatentable

1–5, 13, 

15–17 103(a) Robertson, Maddalozzo

1–5, 13, 15–

17

6, 7, 9 103(a) Robertson, 

Maddalozzo, Vayda 6, 7, 9

12 103(a) 

Robertson, 

Maddalozzo, 

Bedford-Roberts

12 

1, 4–6, 

13, 15–17 103(a) Tarpenning 1, 4–6, 13, 15–17

2, 3, 7, 9 103(a) Tarpenning, Vayda 2, 3, 7, 9

12 103(a) Tarpenning, BedfordRoberts 12 

Overall 

Outcome

1–7, 9, 12, 13, 

15–17

Case 6:20-cv-00507-ADA Document 66-3 Filed 02/03/23 Page 40 of 41
IPR2021-01041

Patent 8,095,879 B2

40

For PETITIONER:

Erika Arner 

Kevin Rodkey 

Yi Yu 

Wei Yuan 

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 

erika.arner@finnegan.com

kevin.rodkey@finnegan.com

yi.yu@finnegan.com

wei.yuan@finnegan.com

For PATENT OWNER:

Parham Hendifar

Kenneth Weatherwax

Nathan Lowenstein

LOWENSTEIN & WEATHERWAX LLP

hendifar@lowensteinweatherwax.com

weatherwax@lowensteinweatherwax.com

lowenstein@lowensteinweatherwax.com

Philip Graves

GRAVES & SHAW LLP

pgraves@gravesshaw.com

Case 6:20-cv-00507-ADA Document 66-3 Filed 02/03/23 Page 41 of 41