IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC, 

Plaintiff, 

v. 

SAMSUNG ELECTRONICS CO. LTD, and 

SAMSUNG ELECTRONICS AMERICA, 

INC., 

Defendants.

Civil Action No. 6:20-cv-00507-ADA 

JURY TRIAL DEMANDED 

DEFENDANTS’ REPLY CLAIM CONSTRUCTION BRIEF 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 1 of 17
i 

TABLE OF CONTENTS 

Page 

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

II. DISPUTED CLAIM TERMS ..............................................................................................1

A. “the representation consists of only one option for activating the function” ...........1

1. Neonode’s claim language analysis neither supports its 

construction nor cures the indefiniteness of the claim. ................................1

2. Neonode’s discussion of the specification supports nothing. ......................2

3. The prosecution history neither supports Neonode’s new 

construction nor cures the indefiniteness of the claim. ................................2

4. Neonode’s discussion of the IPRs also fails to cure the 

indefiniteness. ..............................................................................................3

5. Neonode’s response fails to cure the indefiniteness of the claim. ...............4

B. “gliding” (claims 1, 12) / “the object gliding along the touch sensitive 

area” (claim 1) / “gliding the object along the touch sensitive area” (claim 

12) ............................................................................................................................5

1. The N2 uses a “drag” and “drag and drop” under Neonode’s 

criteria. .........................................................................................................5

2. The claimed “glide” motion is indefinite. ....................................................7

III. CONCLUSION ..................................................................................................................10

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 2 of 17
i 

TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Hockerson-Halberstadt, Inc. v. Avia Group International, Inc., 

222 F.3d 951 (Fed. Cir. 2000)....................................................................................................8 

Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 

540 F.3d 1337 (Fed. Cir. 2008)................................................................................................10 

Infinity Computer Prod., Inc. v. Oki Data Americas, Inc., 

987 F.3d 1053 (Fed. Cir. 2021)..................................................................................................4 

Interval Licensing LLC v. AOL, Inc., 

766 F.3d 1364 (Fed. Cir. 2014)..................................................................................................7 

Nautilus, Inc. v. Biosig Instruments, Inc., 

134 S. Ct. 2120 (2014) ...............................................................................................................7 

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005)................................................................................................10 

Unwired Planet, LLC v. Apple Inc., 

829 F.3d 1353 (Fed. Cir. 2016)..................................................................................................9 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 3 of 17
ii 

TABLE OF EXHIBITS 

EXHIBIT DESCRIPTION BATES Range 

1 U.S. Patent No. 8,095,879 (“’879 patent”) NEONODE0002435-44

2 Decl. of Andy Cockburn in Support of 

Defendants’ Op. Cl. Constr. Brief

3 ’879 patent File History (“’879 FH”), 6/30/2010 

Amendment

NEONODE0000534-44 

4 U.S. Patent App. Pub. No. 2002/0027549 

(“Hirshberg”)

507SAM_00039805-24 

5 IPR2021-01041, Paper 29 (“POR”) 507SAM_00062040-126

6 IPR2021-01041, Paper 50 (“Record of Oral 

Hearing”) Excerpts

507SAM_00065058-130 

7 IPR2021-01041, Paper 44 (“PO Sur-Reply”) 507SAM_00063004-43

8 ’879 FH, 8/23/2007 Amendment NEONODE0000148-66

9 IPR2021-00144, Paper 49 (“PO Sur-Reply”) 507SAM_00054418-58

10 IPR2021-01041, EX1031 (“Rosenberg Tr.”) 

Excerpts 

507SAM_00063686-742 

11 IPR2021-00144, EX2007 (“Rosenberg Decl.”)

12 ’879 FH, 9/3/2008 Applicant Letter to Examiner NEONODE0000273-95

13 ’879 FH, 2/22/2010 Amendment NEONODE0000490-500

14 IPR2021-01041, EX1044 (“Goertz Tr.”) 

Excerpts

507SAM_00061641-806 

15 ’879 FH, 12/23/2008 Search Notes NEONODE0000375-83

16 ’879 FH, 7/8/2009 Search Notes NEONODE0000443-53

17 IPR2021-00144, EX1053 (“Rosenberg Tr.”) 

Excerpts

507SAM_00054249-394 

18 U.S. Patent No. 7,240,296 (“Matthews”) 507SAM_00087822-50

19 IPR2021-00144, Paper 55 (“Record of Oral 

Hearing”) Excerpts

507SAM_00052367-419 

20 Supplemental Decl. of Andy Cockburn in 

Support of Defendants’ Reply Cl. Constr. Brief

21 IPR2021-01041, EX2008 (“Shain”) 507SAM_0063756-58

22 IPR2021-00144, Paper 55 (“Hr’g. Tr.”) Excerpt 507SAM_00052367-401

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 4 of 17
1 

I. INTRODUCTION 

Neonode now proposes constructions for the two disputed claim terms, effectively 

conceding its “plain and ordinary meaning” constructions are incorrect. But Neonode’s multiple 

and contradictory intrinsic record positions regarding these terms confirm they are indefinite. 

II. DISPUTED CLAIM TERMS 

A. “the representation consists of only one option for activating the function” 

Neonode now proposes a construction, “the representation consists of only one option for 

activating one of the one or more functions at any given time,” effectively conceding its original 

“plain meaning” proposal is incorrect. Resp. Br. at 5. But this new construction is both at odds 

with the intrinsic evidence and confirms the indefiniteness of the claim term. 

1. Neonode’s claim language analysis neither supports its construction 

nor cures the indefiniteness of the claim. 

Neonode begins its brief by analyzing the claim language. Resp. Br. at 6-7. Neonode’s 

analysis is incorrect, internally inconsistent and incomplete. 

First, Neonode tacks “at any given time” onto the end of its construction, thus permitting 

more than one option for activating a function over time. However, Neonode never cites anything 

in the claim language to support that part of its construction (as none exists). 

Second, Neonode argues the “consists of” claim language does not limit “the number of 

ways to activate the represented function.” Resp. Br. at 6. But that ignores the claim language: 

“consists of only one option for activating the function” (emphasis added). A POSITA can read 

the “only one” requirement as limiting the number of ways to activate to one way, with that one 

option being the touch-and-glide operation recited in limitation 1[c]. Op. Br. at 6-7, Ex. 2 

(Cockburn Decl.) at ¶¶ 43-44. Indeed, Neonode later asserts the “representation” “presents to the 

user only one option for activating one of those multiple functions . . . .” Resp. Br. at 7. 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 5 of 17
2 

Third, Neonode simply asserts—without explanation—that “the representation consists of 

only one option” cannot be read to “limit[] the number of functions that may be represented.” 

Resp. Br. at 6. But it can. Op. Br. at 7, Ex. 2 at ¶ 43. Neonode states “‘consists of’ limits ‘the 

representation’” (Resp. Br. at 6), and the claim language itself recites “the representation” is “the 

representation of a function.” ’879 patent at 6:5-52. A POSITA can thus also read the “only one 

option” requirement as limiting the representation to one function. Op. Br. at 7, Ex. 2 at ¶ 43. 

In short, nothing in the claim language either dictates that Neonode’s construction is 

correct, or that any of the three possible interpretations identified by Samsung is incorrect. 

2. Neonode’s discussion of the specification supports nothing. 

Neonode’s discussion of the specification neither ties its construction to the specification, 

nor attempts to show how the specification could exclude the three other possible readings of the 

claim identified by Samsung. This is not surprising since the “only one option” aspect of the claim 

is never addressed in the specification, a fact Neonode does not deny.

3. The prosecution history neither supports Neonode’s new construction 

nor cures the indefiniteness of the claim. 

Neonode’s new construction is not supported by its arguments during original prosecution 

(see Resp. Br. at 7-9) because the applicant did not use that construction to distinguish Hirshberg, 

nor could it have done so because Hirshberg anticipates the claim under Neonode’s construction. 

Applying Neonode’s construction to Figures 1, 2a and 2b and the accompanying text of Hirshberg, 

Hirshberg’s “representation [the multifunction key] consists of only one option [the touch and 

glide up gesture] for activating one [typing an “H”] of the one or more functions [typing “H,” “I” 

or “G”] at any given time.” Op. Br. Ex. 4 at Figs. 1, 2a, 2b, ¶¶ [0056]-[0059]. Only one function 

can be activated at any given time (touch and glide up for “H,” touch and glide right for “I,” or 

touch and glide left for “G”). Id.; see also id. at claim 1 (“(iv) select in a manner conditional upon 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 6 of 17
3 

at least said direction of motion one of a plurality of function associated with said selected key”). 

Rather than distinguishing Hirshberg based on Neonode’s construction, the applicant 

instead argued the claims were distinguishable because the claimed “representation” corresponds 

to only one function (as exemplified by the one-function keys described in the specification) while 

the Hirshberg representation (multifunction key) corresponds to multiple functions (i.e., pressing 

“H,” “I” or “G”). Op. Br. at 9; Resp. Br. at 8 (applicant distinguished claims based on “how many 

functions could be activated”) (emphasis in original), 9 (“‘one option’ addresses how many

functions could be activated) (emphasis in original). Contrary to Neonode’s current argument 

(Resp. Br. at 8-9), the applicant never argued the “only one option” claim language further 

distinguished Hirshberg based upon the number of functions that were “activatable” “at a given 

time”—and Neonode quotes no such language from the file history. Moreover, Neonode entirely 

ignores the fact that the applicant’s arguments regarding Hirshberg inconsistently stated that the 

“only one option” claim language limits the number of functions corresponding to a representation, 

while at the same time also stating that this language limits the number of options (gestures) 

available to activate functions. Op. Br. at 9 (citing Ex. 3 at 10) (“each representation ... consists 

of only one option for activating its corresponding function”) (emphasis in original). A POSITA 

cannot reconcile these inconsistent statements. Op. Br. Ex. 2 at ¶ 50. 

The “at any given time” language Neonode cites from the file history is unrelated to 

Hirshberg and instead was used to distinguish the Carlson reference. Resp. Br. Ex. 5 (FH) at 427. 

It was used there to mean “at all times,” and should not be used in a contradictory manner now. 

4. Neonode’s discussion of the IPRs also fails to cure the indefiniteness. 

Neonode asserts “Samsung relies on incomplete transcript excerpts” (Resp. Br. at 9), yet 

Neonode quotes only one sentence from the transcript and that same quote (regarding hearing slide 

65) is included in Samsung’s opening brief (along with other quotes Neonode fails to address). 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 7 of 17
4 

Op. Br. at 11 (quoting Ex. 6 at 7:1-3); Resp. Br. at 10 (quoting same sentence). There is thus no 

dispute what Neonode actually argued to the PTAB.1 In this regard, Neonode fails to address 

(much less dispute) that Neonode’s IPR brief argued the claim is limited to one function and that 

the claim does not limit the number of options (gestures) used to activate a function. Op. Br. at 

10. This is plainly inconsistent with its argument at the IPR hearing, now quoted by both parties, 

that “the user is given only one option in terms of what to activate [the function] and what option 

to take [the gesture].” Id. at 11 (quoting Op. Br. Ex. 6 at 73:1-3) (emphasis added).2 Neonode’s 

response fails to reconcile these inconsistent assertions—where it argued in its IPR brief that the 

number of gestures is not limited, but argued at the hearing that they are—and such intrinsic 

evidence fails to provide a POSITA the required reasonable certainty. Op. Br. Ex. 2 at ¶¶ 51-55;

Infinity Computer Prod., Inc. v. Oki Data Americas, Inc., 987 F.3d 1053, 1059, 1062 (Fed. Cir. 

2021) (“Indefiniteness may result from inconsistent prosecution history statements”). Indeed, 

Neonode’s current argument—proposing a new “activatable” “at a given time” construction not 

argued in the IPR—only increases the number of different meanings offered by Neonode. 

5. Neonode’s response fails to cure the indefiniteness of the claim. 

The key question to a POSITA is whether limitation 1[b] limits to one (1) how many 

functions (Samsung meaning 3), (2) how many ways of activating (Samsung meaning 2), or (3) 

both (Samsung meaning 1), which are all possible ways to read the claim. Op. Br. at 6-7, Ex. 2 at 

¶¶ 42-44. Samsung demonstrated that the ambiguity of limitation 1[b], the lack of any relevant 

teaching in the specification, and Neonode’s inconsistent statements to the Patent Office, fail to 

provide the requisite clarity as to which reading is correct. Id. As shown above, Neonode’s current 

1

 Neonode also cites slides 61 and 66 that are never mentioned in the IPR hearing transcript. 

2

 Neonode also emphasized the “simplicity” provided by limiting the number of gestures so that 

when “[y]ou swipe, the device activates what it activates.” Op. Br. Ex. 6 at 73:4-16. 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 8 of 17
5 

brief does nothing to clarify—based upon evidence—what the claim means. 

Neonode’s citations to claim limitations 1[a] and 1[c] (Resp. Br. at 6, 11) miss the mark 

because neither limitation identifies what the “only one option” of limitation 1[b] limits: the 

number of functions that may be activated, the number of ways to activate the function(s), or both. 

And while limitation 1[c] describes a way of activating a function, it does not limit the claim to 

only that one way—it is only limitation 1[b] that can be read by a POSITA to do so. Neonode 

agrees the “only one option” of limitation 1[b] is limiting, and its construction on its face limits 

both the number of ways for activating a function (“only one option for activating”) and the number 

of functions that can be activated (“one of the one or more functions”), and then adds the spurious 

limitation “at any given time.” Neonode’s misplaced criticisms of Samsung’s position based on 

limitations 1[a] and 1[c] thus apply equally to Neonode’s own construction. 

The claim language as written, and as variously represented to the Patent Office by the 

applicant and Neonode, is subject to multiple interpretations without reasonable certainty as to 

which is correct. Claim 1 should therefore be found indefinite. 

B. “gliding” (claims 1, 12) / “the object gliding along the touch sensitive area” 

(claim 1) / “gliding the object along the touch sensitive area” (claim 12) 

Neonode’s response confirms that its contradictory and incorrect statements to the Patent 

Office render this claim term indefinite. 

1. The N2 uses a “drag” and “drag and drop” under Neonode’s criteria. 

Neonode’s construction excludes a drag-and-drop from a glide, and Neonode cites its N2 

phone as a device that performs a glide instead of a drag-and-drop. Resp. Br. at 14. However, the 

N2 instead illustrates how the two gestures cannot be meaningfully distinguished because the N2 

gesture satisfies Neonode’s criteria for a “drag and drop,” namely “a logical and (typically) visual 

dragging of a target across a display in order to drop it into a specific area.” Resp. Br. at 13. 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 9 of 17
6 

The N2 (picture to the right) has three “representations” below the display and each 

representation has its own specific drop area in the display. To 

activate a function, the user must (1) touch the area corresponding 

to a representation (the area annotated in yellow), (2) logically 

drag the representation into its specific drop area in the display 

(the annotated red arrow) and (3) logically drop the representation 

in that specific drop area (the area annotated in green). Ex. 21 

(Shain) at ¶ 6; Ex. 20 (Cockburn Supp. Decl.) at ¶¶ 6-23. The N2 

satisfies Neonode’s criteria for a “drag” because the 

representation is logically dragged and dropped into a “specific 

area” to activate the function. Conversely, the N2 fails Neonode’s criteria for a “glide” both 

because: (1) the user must lift their thumb to logically “drop” the representation to activate the 

function (Resp. Br. at 15 (requiring a “glide” be performed “without lifting the finger” and 

“without lifting the thumb”) (citing Ex. 5 at 348, 425-426)); and (2) the endpoint of the movement 

is significant. Resp. Br. at 17 (distinguishing a glide from a drag because the “endpoint is not 

significant” for a “glide”), Ex. 24, ¶ 93 (citing Ex. 18 at 44:6-17; 46:1-8); Ex. 20 (Cockburn Supp. 

Decl.) at ¶¶ 24-25. 

The fact that the representation in the N2 does not visually move during the drag is 

irrelevant, as Neonode and its expert expressly concede. Resp. Br. at 16 (“visual feedback is 

typical but is not a necessary element of a drag-and-drop operation.”), Ex. 24 at ¶ 86 (visual 

feedback “not a necessary element of a drag-and-drop”), ¶ 89 (lack of visual movement is 

irrelevant). Neonode also told the PTAB during the Samsung IPR hearing that “you could have a 

gliding motion where the icon moves with you.” Op. Br. Ex. 19 at 52:23-24 (emphasis added). 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 10 of 17
7 

Neonode cited the operation of the N2 to the Patent Office to distinguish Hirayama-307, in 

which the representation is “logically” (and not visually) dragged into the display and dropped to 

activate the function. Resp. Br. Ex. 24, ¶¶ 86-89. However, under Neonode’s criteria, the allegedly 

patent-practicing N2 is just like Hirayama-307 because the user logically drags the representation 

into the display to activate the function in the display.3 Ex. 20 (Cockburn Supp. Decl.) at ¶ 26. 

The fact that the N2 uses a “drag and drop” exposes the fallacy of the distinction Neonode 

seeks to impose between a “glide” and a “drag and drop.” 

2. The claimed “glide” motion is indefinite. 

Neonode’s response confirms there is insufficient objective guidance for a POSITA to 

distinguish among “glides,” “flicks” and “drags.” The parties agree “absolute precision” is not 

required, but a claim is indefinite if it “fail[s] to inform, with reasonable certainty” a POSITA of 

“the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 

(2014); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (claims “must 

provide objective boundaries for those of skill in the art.”). That is sorely lacking here. 

Neonode relies on extrinsic dictionary definitions to assert a “glide” is “a smooth, 

continuous movement across or along a surface,” while a “flick” is a “sharp, quick movement.” 

Resp. Br. at 12-13. However, a flick also is a “continuous movement across or along a surface.” 

Ex. 20 (Cockburn Supp. Decl.) at ¶¶ 27-30. Thus, the only alleged “distinction” between these 

two gestures based on the dictionary definitions is “smooth” versus “sharp” and “quick.” But this 

“distinction” fails to provide sufficient guidance to a POSITA. Op. Br. at 14-15, Ex. 2 at ¶¶ 84-

3

 Neonode told the PTAB the N2 representations are “icons [on] the touch sensitive portion of the 

touch screen.” Ex. 22 (Hr’g. Tr.) at 34:22-35:20; Ex. 21 (Shain) at ¶ 6. Whether this is correct, or 

whether the representations instead are printed on the housing, does not impact the analysis 

because the representation drag is a logical rather than a visual movement. Ex. 20 at ¶ 24. 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 11 of 17
8 

85, 57, 64. For example, a smooth gesture can be quick or slow, and there are no objective criteria 

in the intrinsic evidence from which one can divine whether a given gesture is “smooth” or “sharp.” 

Neonode cites Figure 2 of the patent and the specification’s discussion thereof. Resp. Br. 

at 13. However, the function there is activated by any type of “movement” from “a starting 

point A” in “direction B” and “to the display area 3.” ’879 patent at 4:8-12, Fig. 2. There is no 

discussion anywhere in the patent whether that movement is smooth, sharp, or quick. Neonode 

also is wrong that the specification uses the term gliding (Resp. Br. at 19) because it never does. 

Neonode’s assertion that the movement in Figure 2 constitutes an amorphous “appreciable 

portion of the display” (Resp. Br. at 13) mischaracterizes “B” as an “end point, when “B” instead 

only shows “direction.” ’879 patent at 4:9-10. Regardless, Figure 2 cannot be relied upon to show 

a “particular size[]” of movement. Hockerson-Halberstadt, Inc. v. Avia Group International, Inc., 

222 F.3d 951, 956 (Fed. Cir. 2000). Furthermore, touch sensitive area 1 only has a diagonal length 

of 2-3 inches (’879 patent at 6:8), and an “appreciable portion” of such a short distance could be 

traversed by anything labeled a glide, drag or flick. Accordingly, the specification does not 

distinguish among a flick, drag or glide, all of which are continuous movements across a surface.4

Finding no support in the specification as filed in 2002, Neonode resorts to relying on the 

new matter it introduced in a video of the N2 in 2008. Resp. Br. at 14-15. But because, as shown 

above, the gesture in the N2 is a short “drag” and not a “glide” under Neonode’s criteria, the N2 

offers no support for Neonode’s current construction. Ex. 20 (Cockburn Supp. Decl.) at ¶¶ 27-30. 

Neonode next cites the prosecution history regarding the Hoshino reference, claiming the 

applicant disavowed drag-and-drop operations by distinguishing Hoshino on that basis. Resp. Br. 

4

 Neonode argues the specification cannot teach dragging because the representations are printed 

on an enclosure. Resp. Br. at 13. However, that does not preclude dragging, which is a logical 

operation that does not require visual movement of the representation. See section II.B.1, supra. 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 12 of 17
9 

at 15. However, not only did the applicant’s argument not rise to the level of disclaimer (Unwired 

Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016)), the applicant merely 

distinguished Hoshino’s “touch-activate-glide” order of operations from the claimed order of 

“touch-glide-activate.” Op. Br. Ex. 13 at 8. This does not disclaim all “drag and drop” operations, 

most of which operate in the claimed order. More importantly, the applicant’s characterization of 

Hoshino’s movement as a “glide” underscores the lack of any meaningful distinction between a 

“glide” and a “drag.” Id. The applicant’s discussion of Hoshino therefore does not tell a POSITA 

what distinguishes a glide from a drag in any way material to the claims. 

Neonode also contends it meaningfully articulated the difference between gliding and 

dragging in the Samsung IPR regarding the Hirayama-307 reference. Resp. Br. at 16-17. 

However, the only “distinguishing” point identified by Neonode in its brief is that Hirayama 

includes a “drop” at the end of the drag. Id. But Neonode points to nothing that distinguishes a 

drag from a glide, and the claims do not either require or preclude a drop at the end of glide. 

Neonode states that its IPR expert distinguished a “glide” as “slower, smoother and longer” 

than a “flick,” but faster and less laborious than a “drag.” Resp. Br. at 17, Ex. 24 at ¶¶ 92-95. 

However, none of these purported parameters finds any support in the claims or the specification, 

nor are they mentioned in the original prosecution history, and they certainly do not provide the 

requisite “objective boundaries” that allow a POSITA to have “reasonable certainty” as to whether 

any given movement is a glide. Op. Br. 13-17, Ex. 2 at ¶¶ 56-63. The fact that mathematical 

precision is not required (Resp. Br. at 19) does not save the claims because the claims and 

specification provide no criteria whatsoever for where to draw these purported lines. Id. 

Neonode points to the PTAB’s statements in the Google IPR that the applicant “intended” 

to distinguish swiping gestures from a drag and drop (Resp. Br. at 18 (citing Ex. 21 at 26)), but, 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 13 of 17
10 

once again, Neonode cites to nothing that allows a POSITA to determine the boundaries (if any) 

between a glide and a drag. Indeed, the only “distinction” cited by Neonode is the PTAB’s 

statement, after referencing the N2 product, that gliding “reflect[s] a swiping gesture that is more 

specific than merely an on-screen movement from one location to another.” Id. Neonode does 

not explain how this informs a POSITA of the boundaries between a glide and a drag, and the 

PTAB’s reference to the N2 product undermines any alleged distinction because, as shown above, 

the N2 performed a drag and drop operation under Neonode’s criteria for that term. 

Neonode also cites the PTAB’s discussion of glide and flick in the Google IPR. Resp. Br. 

at 19-20. However, the only actual “criteria” listed in the passages cited by Neonode are the same 

extrinsic dictionary definitions addressed above that fail to provide sufficient guidance. Moreover, 

the PTAB was not asked to (and did not) determine whether the claim is indefinite, but rather 

discussed whether there was written description support for gliding. 

Finally, Neonode is incorrect that the named inventor’s testimony referring to the claimed 

movement as a “drag” did not pertain to the ’879 patent. Resp. Br. at 18. Mr. Goertz testified: “If 

you look at the patents, you have the file icon, where you put your finger and then drag it up, but 

that’s fixed on the printed on the phone.” Op. Br. Ex. 14 (IPR2021-01041, EX1044 (“Goertz Tr.”) 

at 41:8-11). While Neonode cites a pre-Philips case regarding inventor testimony (Resp. Br. at 

18), the Federal Circuit held in Philips that the court may consider and rely on inventor testimony. 

Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005); Howmedica Osteonics Corp. v. 

Wright Med. Tech., Inc., 540 F.3d 1337, 1347 n.5 (Fed. Cir. 2008) (“[t]he testimony of an inventor, 

of course, may be pertinent as a form of expert testimony, for example, as to understanding the 

established meaning of particular terms in the relevant art.”). 

III. CONCLUSION 

For the foregoing reasons the Court should find the disputed terms indefinite. 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 14 of 17
11 

Dated: June 9, 2023 Respectfully submitted, 

By:

DLA PIPER LLP (US) 

/s/ John M. Guaragna 

John M. Guaragna 

Texas Bar No 24043308 

Brian Erickson 

Texas Bar No 24012594 

DLA PIPER LLP (US) 

303 Colorado Street, Suite 3000 

Austin, TX 78701-4653 

Tel: 512.457.7125 

Fax: 512.457.7001 

john.guaragna@dlapiper.com 

Mark D. Fowler (Pro hac vice) 

Bar No. 124235 

mark.fowler@dlapiper.com 

Erik Fuehrer (Pro hac vice) 

Bar No. 252578 

Erik.fuehrer@dlapiper.com 

DLA PIPER LLP (US) 

2000 University Avenue 

East Palo Alto, CA 94303-2214 

Tel: 650.833.2000 

Fax: 650.833.2001 

Tiffany Miller (Pro hac vice) 

Tiffany.miller@dlapiper.com 

DLA PIPER LLP (US) 

4365 Executive Drive, Suite 1100 

San Diego, CA 92121-2133 

Tel: 858.677.1400 

Fax: 858.677.1401 

Zachary Loney (Pro hac vice) 

DLA Piper LLP (US) 

303 Colorado St., Suite 3000 

Austin, TX 78701 

Tel: 512.457.7000 

Zachary.loney@us.dlapiper.com 

Benjamin Mueller (Pro hac vice) 

Benjamin.mueller@dlapiper.com 

DLA PIPER LLP (US) 

444 West Lake Street, Suite 900

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 15 of 17
12 

Chicago, IL 60606-0089 

Tel: 312.368.4000 

Fax: 312.236.7516 

ATTORNEYS FOR SAMSUNG 

ELECTRONICS CO. LTD. and SAMSUNG 

ELECTRONICS AMERICA, INC.

 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 16 of 17
13 

CERTIFICATE OF SERVICE 

I hereby certify that all counsel of record who are deemed to have consented to electronic 

service are being served on June 9, 2023 with a copy of this document via the Court’s CM/ECF 

system per Local Rule CV-5(a)(3). Any other counsel of record will be served by electronic 

mail on this same date. 

/s/ John M. Guaragna 

John M. Guaragna 

Case 6:20-cv-00507-ADA Document 84 Filed 06/09/23 Page 17 of 17