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., 

Defendant.

CIVIL NO. 6:20-CV-00507-ADA

JURY TRIAL DEMANDED

DECLARATION OF CRAIG ROSENBERG IN SUPPORT OF

PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF

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I, Craig Rosenberg hereby declare as follows:

1. I have been retained as an expert witness on behalf of Neonode Smartphone LLC 

(“Neonode” or “Plaintiff”) in the above-referenced litigation. I understand that this declaration is 

submitted in support of Plaintiff’s Opening Claim Construction Brief. 

2. This declaration sets forth the basis and reasons for my opinions as to whether and 

how a person of ordinary skill in the art would understand certain claim terms of the No. 8,095,879 

(the “’879 Patent”).

3. This declaration is based on the information available and known to me as of the 

date of this declaration, including the ‘879 Patent and its file history and any other documents 

referenced in this Declaration. It may be necessary for me to supplement this declaration based on 

material that subsequently comes to light in this case, and I reserve the right to do so.

4. I have no financial interest in the outcome of this case, in any of the parties of this 

case, or in any party that is related to the parties in this case. I am being compensated at the rate of 

$450 per hour. My compensation is unrelated to the outcome of this litigation.

I. BACKGROUND AND QUALIFICATIONS

5. All of my opinions stated in this declaration are based on my own personal 

knowledge and professional judgment. In forming my opinions I have relied on my knowledge 

and experience in human factors, user interface design, user interaction design, human-computer 

interaction, and software engineering.

6. My qualifications to testify about the ‘879 Patent and the relevant technology are 

set forth in my curriculum vitae (“CV”), which I have included as Appendix A. In addition, a brief 

summary of my qualifications is included below:

7. I hold a Bachelor of Science in Industrial Engineering, a Master of Science in 

Human Factors, and a Ph.D. in Human Factors from the University of Washington School of 

Engineering. For 30 years, I have worked in the areas of human factors, user interface design, 

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software development, software architecture, systems engineering, and modeling and simulation 

across a wide variety of application areas, including aerospace, communications, entertainment, 

and healthcare.

8. I graduated from the University of Washington in 1988 with a B.S. in Industrial 

Engineering. After graduation, I continued my studies at the University of Washington. In 1990, I 

obtained an M.S. in Human Factors. In 1994, I graduated with a Ph.D. in Human Factors. In the 

course of my doctoral studies, I worked as an Associate Assistant Human Factors Professor at the 

University of Washington Industrial Engineering Department. My duties included teaching, 

writing research proposals, designing and conducting funded human factors experiments for the 

National Science Foundation, as well as hiring and supervising students. While studying Industrial 

Engineering at the University of Washington, I took classes in software engineering and developed 

software as well as user interfaces for the software. I also was a consultant to a company, building 

custom software that calculated stresses and strains on concert lighting support cables. I also 

worked as a human factors researcher at the University of Washington and designed and performed 

advanced human factors experiments relating to virtual environments and interface design, 

stereoscopic displays, and advanced visualization research, which was funded by the National 

Science Foundation. My duties included user interface design, systems design, software

development, graphics programming, experimental design, as well as hardware and software 

interfacing.

9. I have published twenty-one research papers in professional journals and 

proceedings in the areas of user interface design, computer graphics, and the design of spatial, 

stereographic, and auditory displays. I also authored a book chapter on augmented reality displays 

in the book “Virtual Environments and Advanced Interface Design” (Oxford University Press, 

1995). In addition, I created one of the first virtual spatial musical instruments called the 

MIDIBIRD that utilized the MIDI protocol, two six-dimensional spatial trackers, a music 

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synthesizer, and a computer graphics workstation to create an advanced and novel musical

instrument.

10. For the past 21 years, I have served as a consultant for Global Technica, Sunny Day 

Software, Stanley Associates, Techrizon, CDI Corporation, and the Barr Group. As a consultant 

for these organizations, I have provided advanced engineering services for many companies.

11. I consulted for the Boeing Company for over 15 years as a senior human factors 

engineer, user interface designer, and software architect for a wide range of advanced commercial 

and military programs. Many of the projects that I have been involved with include advanced 

software development, user interface design, agent-based software, and modeling and simulations 

in the areas of missile defense, homeland security, battle command management, computer aided 

design, networking and communications, air traffic control, location-based services, and 

Unmanned Aerial Vehicle (“UAV”) command and control. Additionally, I was the lead system 

architect developing advanced air traffic controller workstations and air traffic control analysis 

applications, toolsets, and trade study simulations for Boeing Air Traffic Management.

12. I was also the architect of the Boeing Human Agent Model. The Boeing Human 

Agent Model is an advanced model for the simulation of human sensory, cognitive, and motor 

performance as applied to the roles of air traffic controllers, pilots, and UAV operators. In another 

project, I was the lead human factors engineer and user interface designer for Boeing’s main vector 

and raster computer aided drafting and editing system that produces the maintenance manuals, 

shop floor illustrations, and service bulletins for aircraft produced by the Boeing Commercial 

Aircraft Company. Additional responsibilities in my time as a consultant include system 

engineering, requirements analysis, functional specification, use case development, user stories, 

application prototyping, modeling and simulation, object-oriented software architecture, graphical 

user interface analysis and design, as well as UML, C++, C#, and Java software development.

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13. In 1995 and 1996, I was hired as the lead human factors engineer and user interface 

designer for the first two-way pager produced by AT&T. Prior to this technology, people could 

receive pages but had no way to respond utilizing their pager. This new technology allowed users 

to use a small handheld device to receive and send canned or custom text messages, access and 

update an address book, and access and update a personal calendar. This high-profile project 

involved designing the entire feature set, user interface/user interaction design and specification, 

as well as all graphical design and graphical design standards.

14. From 1999-2001, I was the lead human factors engineer and user interface designer 

for a company called Eyematic Interfaces, and was responsible for all user interface design and 

development activities associated with real-time mobile handheld 3D facial tracking, animation, 

avatar creation and editing software for a product for Mattel. My work involved user interface 

design, human factors analysis, requirements gathering and analysis, and functional specifications.

15. In 2001, I was the lead user interface designer for a company called Ahaza that was 

building IPv6 routers. I designed the user interfaces for the configuration and control of these 

advanced network hardware devices. My responsibilities included requirements analysis, 

functional specification, user interface design, user experience design, and human factors analysis.

16. In 2006-07, I was the lead user interface designer for a company called ObjectSpeed 

that developed a portable handheld telephone for use in homes and businesses that had many of 

the same capabilities that we take for granted in mobile cellular phones. This portable 

multifunction device supported voice, email, chat, video conferencing, internet radio, streaming 

media, Microsoft Outlook integration, photo taking and sharing, etc. The ObjectSpeed device was 

specifically designed and developed as a portable handheld device.

17. I am the founder, inventor, user interface designer, and software architect of 

WhereWuz. WhereWuz is a company that produces advanced mobile software running on GPSenabled smartphones and handheld devices. WhereWuz allows users to record exactly where they 

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have been and query this data in unique ways for subsequent retrieval based on time or location. 

WhereWuz was specifically designed and developed to run on small handheld devices.

18. I am the co-founder of a medical technology company called Healium. Healium 

developed advanced wearable and handheld user interface technology to allow physicians to more 

effectively interact with electronic medical records.

19. I am the co-founder of a medical technology company called StratoScientific. 

StratoScientific is developing an innovative case for a smartphone that turns a standard handheld 

smartphone into a full featured digital stethoscope that incorporates visualization and machine 

learning that can be utilized for telemedicine and automated diagnosis.

20. In 2012-13, I designed and developed a large software project for Disney World 

called x VR that allowed the operational employees of Disney World to utilize a handheld device 

to view the current and historical status of all of the guests of Disney World within multiple 

attractions as well as within one of their restaurants. The application could run in a real-time/live 

mode where it would display data collected from sensors that showed the location and status of all 

guests within the attraction; the application could also be run in a fast-time/simulated mode. The 

application was developed on a laptop computer and was specifically designed to run on a variety 

of devices, including laptops, PCs, smartphones, and tablets.

21. I have received several awards for my engineering work relating to interface design, 

computer graphics, and the design of spatial, stereographic, and auditory displays, including a 

$10,000 scholarship from the I/ITSEC for advancing the field of interactive computer graphics for 

flight simulation and a Link Foundation award for furthering the field of flight simulation and 

virtual interface design. I have also created graphics for several popular book covers as well as 

animations for a movie produced by MIRAMAR.

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II. LEGAL STANDARDS

22. I am not a lawyer and offer no opinions on the law. However, I have been informed 

and am aware of legal standards that are relevant to my analysis.

23. I have been informed that to determine the meaning of the claims, courts consider 

the intrinsic evidence, which includes the patent’s claims, written description, prosecution history, 

materials incorporated by reference in the patent, and prior art cited in the patent or its prosecution 

history. Courts give claim terms their ordinary and accustomed meaning as understood by one of 

ordinary skill in the art at the time of the invention in the context of the entire patent. A patentee 

may also define his or her own terms or disclaim claim scope. The intrinsic record may also resolve 

ambiguous claim terms where the ordinary and accustomed meaning of the words used in the 

claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words 

alone. However, I understand that particular embodiments and examples appearing in the 

specification will not generally be read into the claims. A term’s context in the asserted claims can 

also be helpful. Differences among the claim terms can also assist in understanding a term’s 

meaning. For example, when a dependent claim adds a limitation to an independent claim, it is 

presumed that the independent claim does not include the limitation. 

24. I further understand that extrinsic evidence can be useful in determining the 

meaning of claim terms. For example, technical dictionaries may be useful to show the manner in 

which one skilled in the art might use claim terms, but technical dictionaries may provide 

definitions that are too broad or may not be indicative of how the term is used in context in the 

patent.

25. I have been informed that a patent specification shall conclude with one or more 

claims particularly pointing out and distinctly claiming the subject matter which the applicant 

regards as his or her invention. I understand that a claim which fails to meet this standard is invalid 

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as indefinite. I understand that patent claims are presumed valid, and clear and convincing evidence 

is required to establish that a patent is invalid because it is indefinite.

26. I understand that indefiniteness is to be evaluated from the perspective of a person 

of ordinary skill in the art (a “POSITA”) at the time of the patent’s filing. I understand that a patent 

is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, 

and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about 

the scope of the invention. I further understand that absolute or mathematical precision in claim 

language is not required, and that claim language employing a term lacking a precise boundary 

will not be found indefinite where it provides sufficient certainty to a POSITA when read in the 

context of the invention. 

III. The ‘879 Patent

A. Summary of the ‘879 Patent

27. The ‘879 Patent “relates to a user interface for a mobile handheld computer unit, 

which computer unit comprises a touch sensitive area, and which touch sensitive area is divided 

into a menu area and a display area.” Ex. 1 (‘879 Patent) at 1:6-9. The patent describes a computer 

unit that is adapted to run several applications simultaneously and to present any active 

applications on top of any other application on the display area (‘879 Patent at 1:10-13). The patent 

is directed “to provid[ing] 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.” (‘879 Patent at 49-52.)

28. In one embodiment, the ‘879 Patent describes a touch sensitive area, in which the 

touch sensitive area is divided into a menu area and a display area. The menu area is adapted to 

present a representation of a first, a second, and a third predefined function. The first function 

(element 21) is a general application dependent function, the second function (element 22) is a 

keyboard function, and the third function (element 23) is a task and file manager:

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Ex. 1, Fig. 1. As depicted in Figure 2, the functions are activated “when the touch sensitive area 

1 detects a movement of an object 4 with its starting point A within the representation of a 

function on the menu area 2 and with a direction B from the menu area 2 to the display area 3.”

Ex. 1, Fig. 2.

B. Level of Ordinary Skill in the Art

29. I have been informed that a POSITA is a hypothetical person who has full 

knowledge of all the pertinent prior art. I understand that courts may consider the following factors 

in determining the level of skill in the art:

1. Type of problems encountered in art; 

2. Prior art solutions to those problems; 

3. Rapidity with which innovations are made; 

4. Sophistication of the technology; and

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5. Educational level of active workers in the field. 

30. In determining the characteristics of a POSITA at the time of the claimed invention, 

I considered each of these factors. Additionally, I understand that the level of ordinary skill in the 

art must be assessed at the time of the invention and that I should place myself back at the priority 

date of the ‘879 Patent (December 10, 2002) to determine the level of ordinary skill in the art.

31. For the purposes of this declaration, I have applied the same definition as I applied 

before the United States Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) 

during inter partes review proceedings concerning the ‘879 Patent, which is that a POSITA as of 

December 10, 2002, would have 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. In my opinion, relevant work 

experience can substitute for formal education, and advanced degree studies could substitute for 

work experience.

32. I further understand that Dr. Cockburn has applied a different understanding

regarding the level of ordinary skill of a POSITA in his Declaration. Ex. 2 (Cockburn Decl.) at ¶ 

35. If the court decides to adopt Dr. Cockburn’s definition of a POSITA, I would qualify as a 

POSITA under his definition as well, and my opinions as stated in this declaration would remain 

valid. To the extent that the Defendants or Dr. Cockburn modifies their view of the level of 

ordinary skill in the art, I reserve the right to respond to the extent that that modified opinion differs 

from mine.

33. I consider myself a person with at least ordinary skill in the art with respect to the 

’879 Patent at the time of its priority date. I also had (and have) greater knowledge and experience 

than a POSITA. I worked with POSITAs in 2002, and I am able to render opinions from the 

perspective of a POSITA based on my knowledge and experience. 

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IV. CLAIM CONSTRUCTIONS

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

(claim 1) 

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain meaning; no construction necessary. Indefinite.

34. It is my opinion that, in view of the intrinsic record, the term “the representation 

consists of only one option for activating the function” has a plain and ordinary meaning to a 

POSITA and that no construction is necessary. 

1. The Claim

35. I have been informed that a phrase, like the present one, must be construed within 

the context of the claim as a whole. Claim 1 reads as follows:

Ex. 1 at 6:45-59 (annotations added). The highlighting shows certain limitations of the body of 

the claim, which I have labeled for convenience. In the relevant part, limitation 1[a] recites a 

representation of a function, limitation 1[b] states a characteristic of the recited representation (“the 

representation consists of ...”), and limitation 1[c] recites how the function is activated.

36. I also understand that the language “consists of,” when used in a patent claim, 

typically limits the clause (for which it acts as a transition) to only what it is expressly set forth. I 

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further understand that “a”—which appears in the preceding clause “a touch sensitive area in which 

a representation of a function is provided”—is presumed to cover “one or more” of whatever the 

“a” is referring to in the claim.

37. As I read the claim, the phrase “consists of” in the term “the representation consists 

of only one option for activating the function” places a limit upon the term “the representation” 

only as used in limitation 1[b]. The “consists of” phrase does not place a limit upon “a 

representation” as used in limitation 1[a], and does not place a limit upon the subsequent claim 

language of limitation 1[c]. A POSITA would not read the “consists of” language of limitation 

1[b] to limit the number of functions that may be represented; a POSITA would look to limitation 

1[a] (“a touch sensitive area in which a representation of a function is provided”) for that aspect 

of the claim. Ex. 1 at 6:50-54. Likewise, a POSITA would look to the language of limitation 1[c]—

“and 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”—to understand how the 

represented function is activated. Id. at 6:54-59. 

38. Further, a POSITA would understand the term “the function” in limitation 1[b] to 

be the same function recited as “a function” in limitation 1[a]. A POSITA would not have reason 

to believe that the difference of “a” versus “the” with regards to the term “function” would indicate 

a different function without the claim otherwise providing such a distinction, which it does not. As 

I understand it, “a” is presumed to cover “one or more.” A POSITA would therefore understand 

claim 1’s reference to “a function” to mean one or more function(s). Limitations 1[a] and 1[b], 

read together, inform a POSITA that while a “representation” may represent more than one 

“function,” it presents to the user only one option for activating one of those multiple functions at 

any given time.

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2. The Specification

39. I understand that the specification is always highly relevant to the claim 

construction analysis. In the specification, Fig. 1 depicts a user interface that is “adapted to present 

a representation of a first 21, a second 22 and a third 23 predefined function”:

Ex. 1 at 4:1-4; Fig. 1. The “first function 21 is a general application dependent function, the second 

function 22 is a keyboard function, and the third function 23 is a task and file manager.” Id. A

POSITA would understand that the specification provides examples of the representations, which 

are depicted as graphical elements on the touch sensitive display. Id., 4:1-7; Fig. 1. 

40. Figure 2 depicts how the user interacts with the touch sensitive area such that the 

“three functions 21, 22, 23” can be activated: 

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Id. at 4:7-11; Fig. 2. As noted above, the functions are activated “when the touch sensitive area 1 

detects a movement of an object 4 with its starting point A within the representation of a function 

on the menu area 2 and with a direction B from the menu area 2 to the display area 3.” Ex. 1, 4:8-

12.

41. If the first function 21 is activated, then the display area 3 is adapted to display 

icons 211, 212, 213, 214, 215, 216 representing services or functions depending on the current 

active application. Id. at 4:13-16. However, “If no application is currently active on the computer 

unit, then the icons 211, 212, 213, 214, 215, 216 are adapted to represent services or settings of 

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

213, help 211, etc.” Ex. 1 at 4:29-33. Thus, representation 21 may represent more than one 

function, such as that of displaying application-specific icons (i.e., a different set of icons 

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depending on the active application) or displaying system services or settings icons. Figure 3 

illustrates one example of the icons that may be displayed upon activation of function 21:

3. The Prosecution File

42. I understand that the prosecution file is also part of the intrinsic record. I have 

reviewed the original prosecution history of the application that issued as the ’879 Patent. From 

that review, it is my opinion that the prosecution history provides additional useful guidance with 

respect to limitation 1[b].

43. The applicant amended the claims during prosecution to add the language of 

limitation 1[b] in order to overcome the Hirshberg reference. Ex 2 (File History) at 207. As 

depicted in Hirshberg’s Fig. 1, Hirshberg disclosed a multifunction keypad on a touchscreen that 

included “thirteen 4-way soft keys (e.g. keys 100, 102 and 104), one 3-way soft key 106 and one 

regular one function soft key 108”:

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Ex. 4 (Hirshberg), ¶ 54 & Fig. 1. 

44. Hirshberg taught two ways of interacting with the keys:

The keys in the keypad can be a mix of regular one-function keys 

like key 108 with other multi function keys. In the case of one 

function a regular touch operation activate [sic] the function. In 

multi-function key [sic] the first touch on the key activate the key 

and the relative trace created by the movement or the tilt on the touch 

with respect to the initial touch point is selecting the appropriate 

function among the functions that associated with the selected key.

Ex. 4, ¶ 55 (emphasis added). 

45. In response to the examiner’s rejection based on Hirshberg, the applicant explained 

that Hirshberg disclosed: (1) multifunction keys presenting multiple options for activatable 

functions, in which a function to activate was selected by a directional touch and glide operation; 

and (2) keys for which a single function is selected on contact with the key, which were activated 

by a touch operation. Ex. 5 at 199-209. To overcome the rejection, the applicant added the “only 

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one option” language, which narrowed claim 1 to a combination that was not disclosed by 

Hirshberg: a representation that presents only one option for an activatable function at a given time 

(“representation [that] consists of only one option for activating a function”), which function is 

activatable by a touch and glide operation.

46. The applicant’s description of the support for the “only one option” limitation 

confirms this. The applicant explained that the specification discloses that each of representations 

21-23 “consists of the one option of” activating a corresponding function. The explanation did not 

look to how the functions were activated, but rather to how many functions could be activated at 

a given time. Ex. 5 at 208. The applicant’s reliance on function 21—a “general application 

dependent function” that can cause the display to present different sets of icons to the user 

depending on context, such as whether a currently active application is running—makes it clear 

that the representation presents one option for activating a function at any given time (e.g., 

“displaying icons as appropriate for a currently active application.”). Id.; see also id. at 427 (“At 

any given time, may be used for activating whichever function is touched, from among a plurality 

of functions.”). The final sentence of the explanation, in which the applicant characterized 

representations 21-23 as “these one-option elements” before stating that they were activated by a 

touch-and-glide operation, reinforces that “only one option” addresses how many functions could 

be activated rather than how a function is activated. 

47. I understand that Samsung contends these statements made during prosecution 

“assert there is only one option (gesture) to activate a representation’s corresponding function.” 

Dkt. 71, p. 9. A POSITA would not understand the applicant’s statements during prosecution to 

have such a meaning. As shown above, the applicant never made that argument and never 

distinguished Hirshberg on that basis. 

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4. The IPRs

48. I understand that there were two inter partes review (IPR) proceedings filed 

concerning the ‘879 Patent, one filed by Samsung and Apple Inc. (IPR2021-00144) and the other 

filed by Google LLC (IPR2021-01041). I provided expert opinion testimony on behalf of Neonode 

in both of these IPRs. 

49. I understand that Samsung and Prof. Cockburn claim that Neonode took 

inconsistent positions concerning limitation 1[b] in IPR2021-01041 (“the Google IPR”). It is my 

opinion that Neonode’s statements in the Google IPR (IPR2021-01041) are not contradictory or 

inconsistent either within the Google IPR or with respect to any of the intrinsic evidence, and are 

fully consistent with the positions that Neonode is taking in this litigation in district court.

50. As one purported example, Samsung and Prof. Cockburn note that Neonode’s 

counsel informed the PTAB that the “representation presents the user with one option of what to 

activate,” and argues this is inconsistent with Neonode’s statement that “we are not arguing that 

the representation must only have one function.” Dkt. 71, p. 10. However, a POSITA would see 

no inconsistency here. As a POSITA would understand, these statements merely reflect the claim 

as a whole: a representation may represent multiple functions (as expressed in limitation 1[a]), but 

the user is presented with only one option among those multiple functions to activate at any given 

time. Ex. 6 at pp. 10-12.

51. In this regard, Prof. Cockburn takes one of my statements out of context and 

ascribes to it an incorrect meaning. He paraphrases ¶105 of my IPR declaration as follows: “there 

[need] be only a single option with respect to the representation of the function regardless of the 

direction of ‘gliding . . . away.’” Ex. 2, ¶52. He then states that “[a] POSITA would interpret 

these affirmative statements to mean that for the disputed term, the representation represents only 

a single function, and allows for multiple options for how to activate the function.” Id. (emphasis 

in original). This is not an accurate interpretation of my statement. I did not address whether “the 

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representation represents only a single function.” Rather, as is clear from the very next paragraph 

of my declaration, my focus was on the understanding of Google’s expert, who incorrectly 

interpreted “the one-option limitation to require that each function associated with the 

representation of the function can be activated only by one gesture.” Ex. 7 (App’x C to Cockburn 

Decl.), ¶106. 

52. Prof. Cockburn also claims that Neonode first argued that limitation 1[b] does not 

require that each function be activated by only one gesture, but then “inconsistently” argued that 

each function must only be activated by a single gesture. Here, Samsung does not appear to be 

accurately stating the contents of the record in the Google IPR. In the portion of the Google IPR 

transcript to which Samsung points, Neonode argued that, while “a representation can at different 

times have multiple functions,” at any given time “the user is given only one option in terms of 

what to activate and what option to take.” Ex. 7 at 73:1-21. Slide 65 of Neonode’s demonstrative 

exhibits, to which Neonode’s counsel directed the PTAB judges during this portion of the hearing, 

made the same point. 

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Ex. 8 at slide 65. Notably, there is nothing in slide 65 indicating that the “option” is tied to a 

particular gesture. Rather, Neonode directed the PTAB to element 21, representing the first 

function 21—a “general application dependent function” that can cause the display to present 

different sets of icons to the user depending on context. As the caption explains, a representation 

may represent multiple functions at different times (depending on, e.g., whether an application is 

currently active), but always provides only one option to the user any given time. The focus is not 

on how the user activates a function, but on how many functions could be activated at any given 

time (only one). 

53. Neonode reiterated this point in several other slides that it presented to the PTAB

during the Google IPR. These include slide 61, in which Neonode characterized as “incorrect” the 

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assertion that limitation 1[b] requires that “each function is activated by only a single gesture”:

Ex. 8 at slide 61. 

54. Similarly, in slide 66, Neonode criticized as incorrect Google’s position that 

“Hirshberg was distinguished because it activated the same function by multiple gestures”: 

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Ex. 8 at slide 66. This, again, makes it clear that limitation 1[b] is not directed to whether a function 

may be activated by one gesture or multiple gestures. 

55. A POSITA would understand these statements, when read in light of the complete 

record and in context, to reflect a clear and consistent position on Neonode’s part that limitation 

1[b] does not require that each function be activated by only one gesture. I see no reason to believe 

that a POSITA would have been in any way confused as to Neonode’s position on that issue. 

56. Accordingly, Neonode’s arguments during the Google IPR were consistent with 

one another and with the arguments made during prosecution. The claim language, specification, 

prosecution file and IPR record provide clear guidance as to the meaning of the limitation: the 

representation consists of only one option for activating one of the one or more functions at any 

given time. That is how a POSITA, reviewing all of the intrinsic evidence, would understand 

limitation 1[b]. 

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4. A POSITA Would Not Read Limitation 1[b] as Subject to Multiple Meanings 

57. Prof. Cockburn (at Ex. 2, ¶44) asserts that limitation 1[b] could have any of three 

different meanings:

(1) The representation represents a single function and there is only a single option to

activate that function (e.g., only one specific input gesture will activate that function);

(2) The representation may represent multiple functions but there is only a single option to 

activate one particular function (e.g., only one specific input gesture will activate one 

function, but a different input gesture activates a second function); and

(3) The representation represents a single function and the claim allows multiple options 

to activate that function (e.g., any input gesture will activate that function).

58. A POSITA would not understand limitation 1[b] to have any of Samsung’s 

proposed meanings. First, as discussed above, a POSITA would understand what limitation 1[b] 

means—the representation consists of only one option for activating one of the one or more 

functions at any given time—and none of Samsung’s three proposed meanings is fully consistent 

with that construction, 

59. In addition, as is clear from the discussion above, neither the applicant nor Neonode 

ever advanced any of these interpretations during prosecution of the original application or during 

the IPRs. 

60. Moreover, a POSITA would understand, after reviewing the intrinsic record, that 

none of Samsung’s three proposed meanings is consistent with the record. Each of these proposed 

meanings focuses on what the representation “represents” (either a single function or multiple 

functions) and how the represented function is activated. Yet limitation 1[b] does not address 

whether the representation “represents” either a single function or multiple functions; that concept 

is addressed in limitation 1[a], which encompasses one or more functions. And the intrinsic record 

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consistently indicates that limitation 1[b] does not address how a represented function is 

activated—that element is addressed by limitation 1[c].

61. Furthermore, each of them fails for additional reasons. Samsung’s “first meaning” 

(single function/only one specific gesture) fails because limitation 1[b] does not require that the 

representation represent a single function (that is addressed in limitation 1[a], which permits 

representation of multiple functions). Nor does it require that there be only “one specific input 

gesture” that will activate the function. Samsung’s “second meaning” (multiple functions/one 

specific gesture per function) fails because limitation 1[b] does not recite that “only one specific 

input gesture will activate one function, but a different input gesture activates a second function.” 

Nothing in the claim or specification supports this reading, which limitation 1[b] was added 

expressly to overcome. This interpretation also does not meaningfully address the actual language 

of limitation 1[b], which restricts the options that are presented to the user. And Samsung’s “third 

meaning” (single function/multiple gestures) fails because (again) limitation 1[b] does not require 

that the representation represent a single function. A POSITA would not have read “only one 

option” to refer to the activation gesture (as shown above), and, in any event, would not have read 

“only one” to include “multiple.” In summary, a POSITA would not understand limitation 1[b] to 

have any of the “meanings” that Samsung assigns to it. 

62. Prof. Cockburn also asks whether limitation 1[b] “limit[s] the representation to a 

single visual aspect?” Ex. 2, ¶41. The answer is no. As Prof. Cockburn acknowledges, the claim 

does not explicitly require a specific visual component, and I am aware of nothing in the intrinsic 

record that would suggest that the claim is limited to a single specific graphical depiction of a 

representation of a function. A POSITA would not be confused as to whether the representation 

must be affixed to the handheld device (it need not be), or as to whether the claim encompasses 

software generated representations (it does), or as to whether it limits the range of functions 

displayed within the representations (it does not).

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63. Prof. Cockburn also states that “the claim is unclear whether the ‘only one option’

requires that the user interface be programmed to recognize only a single type of user gesture (such 

as a tap, a drag-left, a drag-right, or a long press) to activate a given function, or that the claim 

instead requires that only a single gesture (of any kind) is used to activate the function.” Ex. 2, 

¶42. For the reasons set forth above, including that the intrinsic record is clear that limitation 1[b] 

does not address how a function is activated, a POSITA would not understand limitation 1[b] to 

have either of these meanings. The claim would therefore not be “unclear” to a POSITA.

64. Prof. Cockburn also opines that a POSITA would not know whether limitation 1[b]

“is intended to: (a) limit the number of functions associated with the representation (i.e., only a 

single function is associated with the representation (no other function is associated with the 

representation)), but the function may be activated by multiple types of gestures, (b) allow for 

multiple functions associated with the representation, but the disputed term limits the way in which 

each function is activated to one gesture (i.e., no other gesture can activate the function, but, if the 

representation also corresponds to a second function, a second, different gesture (and only that 

gesture) in connection with the representation would activate that second function), or (c) limit 

both the number of functions and number of ways in which the function is activated (i.e., the phrase 

limits the representation to only one function and only one way of activating (one gesture) that one 

function).” Ex. 2, ¶43 (emphasis in original). For the reasons set forth above, including that the 

intrinsic record makes it clear that limitation 1[b] does not address the number of functions with 

which a representation may be associated (that is addressed in limitation 1[a]), and that limitation 

1[b] does not address how a function is activated, a POSITA would not ascribe any of these 

meanings to limitation 1[b]. 

65. For all of these reasons, a POSITA would, in 2002 and today, understand with 

reasonable certainty what limitation 1[b] means, in line with its plain and ordinary meaning: the 

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representation consists of only one option for activating one of the one or more functions at any 

given time. 

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)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain meaning, not including a drag-anddrop operation.Indefinite.

66. It is my opinion that the terms “gliding” / “the object gliding along the touch 

sensitive area” / “gliding the object along the touch sensitive area” (the “gliding terms”) as used 

in the claims of the ‘879 Patent have their plain and ordinary meaning, not including a drag-anddrop operation. It is further my opinion that a POSITA, in 2002 as today, would understand the 

meaning of “gliding” as used in claims 1 and 12 with reasonable certainty. 

1. The Intrinsic Record

67. Here, the intrinsic record provides a POSITA with ample guidance as to what 

“gliding” means. First, the claims use “gliding” according to its ordinary meaning: a smooth, 

continuous movement across or along a surface. Ex. 9 (Concise Oxford Eng. Dict.) at 602; Ex. 10 

(Merriam-Websters Coll. Dict.) at 495; Ex. 11 (Oxford Eng. Dict.) at 306; Ex. 12 (Am. Heritage 

Coll. Dict.) at 579. This does not include a “flicking” gesture, which is a sharp, quick movement. 

Ex. 9 at 542; Ex. 10 at 445-46; Ex. 11 at 273; Ex. 12 at 520. 

68. As I noted in my declaration submitted in the Google IPR: 

Dictionary definitions, both at the time of Robertson in 1991 and at the time of filing of the 

'879 patent in 2002, define “flick” and “glide” differently: a “glide” is a “smooth,” and 

“effortless” motion while a “flick” is a “sudden,” “sharp” and “jerky” motion. Exemplary 

dictionary definitions are produced below: 

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Ex. 13, p. 34. I also provided pictorial examples of common usage of the terms “flick” and “glide” 

illustrating in a variety of contexts how different they were. Id., pp. 34-36. 

69. Prof. Cockburn criticizes these definitions on the ground that they are not from

technical dictionaries. Ex. 2, ¶84. However, these are not technical terms of art. A POSITA 

understands what these terms mean in ordinary English usage, and would have no difficulty 

understanding them within the context of claims 1 and 12 and in light of the complete intrinsic 

record. While Prof. Cockburn focuses substantial attention on particular questions that a 

programmer or product designer might have to answer in programming a product to recognize and 

respond to input corresponding to these gestures, those questions do not detract from the fact that 

a POSITA would understand what the terms mean. 

70. A POSITA would also understand that “gliding” does not include a “drag”/“dragand-drop” gesture, which connotes a logical and (typically) visual dragging of an element across 

a display in order to drop it into a specific area. 

71. Prof. Cockburn also cites to several references that, he claims, suggest that “the 

delineations Neonode is drawing between glide/swipe/drag and flick are arbitrary . . . .” Ex. 2, 

¶¶86-88. None of these references reflect a generally-understood usage in the technical art for the 

purposes for which Prof. Cockburn is citing them, and none of them appear to have been cited 

during prosecution of the application that issued as the ‘879 Patent. So, I understand that these 

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references are all extrinsic evidence. A POSITA would not find them to offer useful guidance 

with respect to the construction of “gliding.” 

72. The ‘879 Patent’s specification describes, in one embodiment, the gesture used to 

activate the predefined functions 21, 22, and 23: “FIG. 2 shows that any one of these three 

functions 21, 22, 23 can be activated when the touch sensitive area 1 detects a movement of an 

object 4 with its starting point A within the representation of a function on the menu area 2 

and with a direction B from the menu area 2 to the display area 3.” Ex. 1 at 4:7-13 (emphasis 

added). Figure 2 provides an accompanying illustration to this disclosure:

Figure 1: ‘879 Patent, fig. 2

73. As can be seen in Fig. 2, a user places her finger on the display of the mobile 

handheld computer unit and then moves her finger across the display, maintaining continuous 

contact across an appreciable portion of the display. A POSITA would distinguish this gliding 

gesture from a flicking gesture partly due to the distance that a user’s finger would travel in, e.g., 

Fig. 2. 

74. In addition, nothing in the specification suggests that the representations of 

functions 21-23 are “dragged” into the display area and then “dropped,” as in a conventional dragCase 6:20-cv-00507-ADA Document 81-1 Filed 05/19/23 Page 29 of 44
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and-drop operation.. First, the specification for the ‘879 Patent never suggests that, e.g., the 

predefined functions 21, 22, and 23 are dragged by the user into the display area of the unit. In 

fact, the specification’s disclosure of “printed” representations specifically teaches away from a 

reading of the patent that would suggest “dragging” or “dragging-and-dropping” applying to, e.g., 

representations of the predefined functions 21, 22, and 23 on the unit’s display. Ex. 1 at 6:17-22 

(“According to one preferred embodiment of the present invention the computer unit is covered 

with an enclosure 5, which is provided with an opening 51 for the display area 3, and where the 

representations of the menu area 2 is printed on top of the enclosure 5.”) (emphasis added). 

Since the specification teaches that the representations may be “printed on top of the enclosure,” 

a POSITA would understand that the printed representations of the embodiment could not be 

dragged or dragged-and-dropped onto the display as it would be impossible to drag or drag-anddrop physically-printed buttons into the software-rendered display area.

75. The prosecution file provides further guidance to a POSITA concerning the recited 

“gliding.” At one point, application claim 1 recited “moving in a direction from a starting point 

that is the representation [of a function] . . . to said display area . . . .” Ex. 5 (Prosecution History) 

at 507. To demonstrate the novelty of the invention, the applicant provided the Examiner with a 

link to Neonode’s promotional video for what I understand was a commercial embodiment covered 

by claim 1, the Neonode N2 phone. Id. at 520-21; Ex. 14 (N2-Advertisement-Video). I have 

reviewed this demonstration video, which demonstrates a user activating functions on the N2 

phone. In the video, several still images of which are shown below, the recorded user is shown 

activating functions on the device by pressing their finger to the display and then moving their 

thumb upwards along the display in one continuous gliding motion. Ex. 14 at 0:26-0:27.

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76. A POSITA would understand that this movement of the user’s thumb embodies the 

movement depicted in Figure 2 of the ‘879 Patent. No touched icon moves with the user’s thumb, 

as would typically be the case in a drag-and-drop operation. And, as shown by the video, the 

movement is a smooth glide. A POSITA would not have viewed the gesture in the video as 

comprising a “flicking” gesture at least because the user’s thumb moves in a continuous, smooth 

motion. It is my opinion that a POSITA would understand the demonstrated gesture of the video, 

in view of the patent’s disclosures, to represent a “gliding” motion and to be easily distinguishable 

from either a “flick” or a “drag-and-drop.”

77. After reviewing the video, the examiner stated that he could “now see the difference 

between the prior art of record and the present application,” but that the claims were “still too 

broad to suggest without research what was shown in the video demonstration.” Ex. 5 at 498. In 

response, the applicant narrowed the claim from “moving” to a specific type of movement: 

“gliding along the touch sensitive area away from the location [of the representation of a 

function].” Id., 405. The applicant explained that “[t]he subject claimed invention teaches 

‘rubbing’, ‘touch-and-glide’ movements to operate a user interface, whereby the thumb touches a 

touch-sensitive screen and rubs, or glides, along the screen without lifting the thumb,” as illustrated 

in Figure 2. Id., 425-26. Subsequently, the applicant again equated the “gliding” motion with 

swiping or rubbing, stating that the gesture is conducted “without lifting the finger” from the 

display. Id., 348. The applicant also noted the original specification support for this amendment 

which provided, among other disclosures, references to the “menu area 2 is adapted to present a 

representation of a first 21, a second 22 and a third 23 predefined function” and “[t]he first function 

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21 is a general application dependent function, the second function 22 is a keyboard function, and 

the third function 23 is a task and file manager.” Id., 729. 

78. During prosecution, the applicant also specifically distinguished the “gliding” 

gesture from the “drag-and-drop” gesture of the Hoshino prior art reference. During prosecution, 

the applicant stated that the claimed “gliding” gesture is different from a “conventional” dragand-drop operation: 

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

drag-and-drop operation for moving an icon. 

Id., 250 (emphasis in original). In a table, the applicant summarized the distinction between 

Hoshino’s “conventional” “drag-and-drop” “operation” and the invention’s “novel” “touch-andglide” operation:

Id., 249 (annotations added). 

79. I understand that when an Applicant makes unequivocal statement about what is 

not included in the scope of the claim, courts have found such statements to be prosecution 

disclaimers, which means that the claim should be interpreted to exclude the disavowed aspect. I 

further understand that regardless of whether or not the applicant’s statements during prosecution 

raise to the level of prosecution disclaimer, they are relevant in informing the POSITA regarding 

the meaning and scope of the claims.

80. Prof. Cockburn states that “nothing in the intrinsic evidence provides any guidance 

as to the boundaries of the claimed ‘gliding’ that would allow a POSITA to make the distinctions 

Neonode asserted in the IPRs, namely how to distinguish when a gesture is a ‘glide,’ and when it 

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is instead a ‘flick’ or a ‘drag.’” Ex. 2, ¶56; see also ¶63. In light of the clear guidance provided in 

the claim language, the specification and the prosecution file, I disagree with Prof. Cockburn in 

this regard. In addition, as noted below, further guidance was provided by Neonode’s arguments 

and my declarations submitted during the IPRs. 

81. In a similar vein, Prof. Cockburn asserts that “[n]othing in the intrinsic evidence 

distinguishes a drag from a glide, for example, and nothing in the claims preclude a subsequent 

‘drop’ following the ‘glide’ of the claim.” Ex. 2, ¶ 75. But this ignores the specification, which 

teaches an embodiment in which the representations are printed onto the enclosure and therefore 

could not possibly be either “dragged” or “dropped.” It also ignores the fact that nothing in the 

claims or any embodiment described in the specification suggests that any representation is 

“dropped” following the touch-and-glide operation of claim 1. 

82. Prof. Cockburn also asserts that the “gliding operation” only describes the 

movement of an object along the display, and that “at least the ‘and-drop’ part of a ‘drag-and-drop 

operation’ typically refers to actions performed by the user interface, not just the user.” Id. Prof. 

Cockburn concludes from this that “the action of the user ‘gliding’ a finger or pen ‘along the touch 

sensitive area’ does not preclude a ‘drag-and-drop’ response from the user interface.” Id. This 

appears to be just another way of saying that a “gliding” operation and a “drag-and-drop” operation 

may share some overlapping movement. However, what is important, as both I and Neonode’s 

counsel explained during the Samsung IPR, is that there are fundamental differences between the 

two in terms of both the movement of an object on a display and the functions performed by a 

system programmed for the two operations.

83. Prof. Cockburn makes a number of statements in his declaration to the effect that 

the plain meaning of the pertinent terms, the specification and the prosecution file offer no 

guidance to a POSITA as to how to distinguish between a “glide”, a “flick” and a “drag-and-drop.” 

As should be apparent from the above, I disagree with Prof. Cockburn’s statements in that regard 

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and believe that a POSITA would find sufficient guidance in the intrinsic record as to the meaning 

of scope of the “gliding” terms. 

84. In light of the intrinsic record as outlined above, a POSITA would understand that 

the claimed “gliding” includes neither a “flick” nor a “drag-and-drop,” and would have no trouble 

distinguishing “gliding” from either of the other two operations. 

2. The IPRs

85. I have also considered the record in the two IPR proceedings in forming my 

opinions. Based upon my recollection and review of the record in each of those proceedings, I 

believe that the record provides additional useful guidance concerning the recited “gliding” of the 

claims. 

86. Prof. Cockburn contends that Neonode asserted that gliding and dragging are 

distinct, but failed to articulate what makes a glide distinct from a drag. Ex. 2, ¶58. I disagree. In

fact, in Neonode’s Patent Owner’s Response, in my accompanying declaration, and in Neonode’s

Sur-Reply filed in the Samsung IPR, Neonode repeatedly explained what distinguished the claimed 

“gliding” from the “drag-and-drop” operation of Samsung’s Hirayama307 reference, U.S. Patent 

No. 5,406,307. For example Neonode explained that:

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.

Ex. 15 (Samsung IPR POR), p. 26 (emphasis in original). As both I and Neonode further explained, 

visual feedback is typical but is not a necessary element of a drag-and-drop operation. What is 

important is that, “[f]rom 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.” Ex. 15, p. 27; Ex. 

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16, ¶61. This was “the very thing [the applicant] made clear did not constitute ‘gliding . . . away.’” 

Ex. 15, p. 26. Similarly, in its Sur-Reply, Neonode explained that Hirayama307 entails “a 

‘dragging operation’ in which an icon is dropped at a specific, user-chosen, location,” and that this 

gesture “has nothing to do with swiping or gliding.” Ex. 17, pp. 16, 18. A POSITA would not be 

confused by this; Neonode explained what distinguished a drag-and-drop operation from the 

claimed “gliding.”

87. Similarly, in my declaration filed by Neonode in the Samsung IPR, I provided 

approximately eight pages of analysis concerning why the drag-and-drop operation of the 

Hirayama307 reference asserted by Samsung in the IPR did not disclose the “gliding” of claim 1. 

After surveying the relevant portions of the intrinsic record, I concluded:

Based on my overall review of the claim language, the specification and the prosecution 

history, it is my opinion that a POSITA would have understood that “gliding ... away” 

does not encompass a drag-and-drop operation.

Ex. 16, ¶57. That is still my opinion today.

88. In explaining why Hirayama307 disclosed a drag-and-drop operation rather than a 

gliding operation, I provided additional explanation as to what identifies an operation as a drag 

and drop:

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;

5:39-53. 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.

Ex. 16, ¶59. I then provided a graphical illustration of the drag-and-drop operation of 

Hirayama307:

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Id.

89. I then explained:

That Hirayama-307 changes the size of icon 41 into an enlarged window 43 does not 

change the nature of its operation as a drag-and-drop operation. Many drag-and-drop 

operations may result in a change in the graphical user display of the item being dragged 

as a result of drag-and-drop. For example, a file may be dragged across the screen into an 

open application window, which results in the file opening. As another example, when a 

file is dragged from the desktop into the trash bin of an operating system, the icon may 

change its appearance inside the trash bin. As another example, the prosecution Hoshino 

(see infra) also opened a new window as a result of the drag-and-drop gesture.

Ex. 16, ¶60. And in the next paragraph, I further explained:

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 Hirayama307’s dialing application is logically dragged (and behaves as if it is being logically 

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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 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.

Id., ¶61. 

90. In that same declaration, I also noted that “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.” Id., ¶62. As I explained, in Hoshino the “user activates a 

music icon by dragging the icon to a designated area, resulting in a larger window opening.” Id., 

¶63. I included an illustration of Hoshino’s drag-and-drop operation: 

Ex. 16, ¶62. 

91. In light of the above, as well as the knowledge of a POSITA concerning the 

characteristics of a drag-and-drop operation, a POSITA would have understood that the claimed 

“gliding” did not include a drag-and-drop and would have understood what distinguishes the two 

with reasonable certainty. 

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92. Prof. Cockburn also attempts to suggest a lack of clarity by quoting certain portions 

of the hearing transcript in the Samsung IPR in which Neonode’s counsel addressed the differences 

in the movement across the screen between a “glide” and a “drag.” For example, he points to a 

portion of the hearing transcript in which Neonode’s counsel stated that “dragging is much more 

intensive, harder and laborious, whereas a glide is much more seamless and effortless.” Ex. 2, ¶58. 

Prof. Cockburn then states that these are not “terms of art that a POSITA would be able to use to 

identify the boundary between a “glide” and a “drag” with reasonable certainty.” Id. However, this 

misses the point—a POSITA would not need a precise definition of the level of intensity that 

would distinguish a “glide” from a “drag” in order to understand the difference between the type 

of movement used for the two operations. Notably, Judge Howard, the judge questioning 

Neonode’s counsel on this point, stated that he understood the distinction that Neonode’s counsel 

was drawing:

JUDGE HOWARD: So I think I've now got an answer that I've been trying to get to. So 

the difference is in the type of the effort that's being applied, so it's something that would 

be visible, for example. You could -- . . . look at something and determine if it's, sort of, 

sweeping along that's a glide and if it's a more harder, slower movement that would be -- . 

. . not a glide. So is that what you're trying to get to?

MR. HENDIFAR: That’s one aspect, absolutely. Also other aspects maybe there. As Judge 

Ogden said there may be an aspect about the specific location in a drag that you have to 

choose whereas a swipe or a glide is a much more generic movement. But again, it comes 

out to Petitioners have to point out what is a glide on whether drag discloses it, but that 

aside, Your Honor is correct that the nature of the movement is distinct between the two.

Ex. 18 (Samsung IPR Hearing Tr.) at 53:5-20. 

93. Moreover, Prof. Cockburn omits any mention of other portions of the same hearing 

transcript in which Neonode’s counsel articulated additional distinctions between a glide and a 

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drag-and-drop. For example, Neonode’s counsel stated in the same portion of the hearing that one 

aspect of the distinction is that, “in a drag-and-drop operation you’re saying that the beginning and 

ending point is significant, whereas in a glide operation the endpoint is not significant,” and in a 

drag-and-drop operation “you’re selecting an icon then you’re moving it to a precise location.” Ex. 

18 at 44:6-17; 46:1-8.

94. In addition, during the hearing Neonode ‘s counsel repeatedly referred the PTAB 

judges to the demonstration video in order to understand the differences between “gliding” and 

“dragging-and-dropping.” Id. at 44:10-45:25. Neonode’s demonstrative exhibits provided further 

guidance as to the distinctions:

Ex. 19, slide 48; see also slides 38, 43, 49. So contrary to Prof. Cockburn’s assertion, a POSITA 

reviewing the IPR record would not conclude that Neonode’s IPR arguments created confusion as 

to the fact that the claimed “gliding” excludes a drag-and-drop operation and as to how to 

understand what a drag-and-drop operation is. 

95. Prof. Cockburn also asserts that I “agree[d]” that the action of a finger is the same 

for a glide, flick, and drag. Ex. 2, ¶62. This is grossly untrue—in fact, I said the opposite. With 

respect to a “flick,” I said that while a flick may require “at least one pixel worth of movement,” 

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“gliding is a relatively slower, smoother, and longer motion, while flick is a sharper, faster and 

shorter movement.” Ex. 20, 21:21-22:21. And with respect to a drag-and-drop, while Samsung and 

Prof. Cockburn quote me as “stating a ‘glide’ and a ‘drag’ ‘may have overlapping movements,’” 

the full paragraph from which they pulled this statement makes it clear that I was emphasizing the 

distinction between those operations:

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 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. 16, ¶65. Moreover, as noted above, this explanation follows several pages of explanation as 

to why Hirayama307’s drag-and-drop operation is distinct from the claimed “gliding.” Id., ¶¶57-

65. So, a POSITA could not reasonably read my statements in the IPR and conclude that I “agree” 

with Samsung’s and Prof. Cockburn’s stated positions. 

96. Prof. Cockburn also states that none of the “parameters” for distinguishing a flick 

from a glide “find support in” the intrinsic record. Ex. 2, ¶¶59-60. As shown above, this is 

incorrect; among other things, Figure 2 of the specification clearly delineates the claimed 

movement from a flick, and the demonstration video submitted during prosecution provides further 

guidance. However, Prof. Cockburn’s attempt to define a set of precise boundaries differentiating 

a flick from a glide is misguided, because a POSITA would have no difficulty differentiating 

between the two within the context of the ‘879 Patent claims. 

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97. Prof. Cockburn also contends that the patent’s teaching concerning a different 

aspect of the invention—involving scrolling through a list of files or applications—would cause a 

POSITA to conclude that “speed is not relevant” to “gliding.” Ex. 2, ¶67. Prof. Cockburn does not 

explain why a POSITA would arrive at such a conclusion; more likely, a POSITA would conclude 

that a discussion of speed of movement in one aspect of the invention says nothing about whether 

it is material to a different aspect of the invention. In any event, as shown above, the complete 

intrinsic record, including the video submitted to the examiner, provides guidance (to the extent it 

were necessary) concerning the “speed” parameter of “gliding.” 

98. Prof. Cockburn also contends that Neonode “has not cited any evidence that a 

POSITA in December 2002 ... understood whether or how” gliding, flicking, or dragging could 

be distinguished. Ex. 2, ¶71. However, this ignores the specification of the ‘879 Patent, which 

illustrates the user’s thumb moving across the display in a manner inconsistent with a “flick,” and 

also ignores that an embodiment of the invention disclosed representations that were printed onto 

the enclosure of the device, which is inconsistent with “dragging” the representations into the 

display area. Moreover, it ignores the fact that a POSITA in 2002 would have known how to 

distinguish between a “glide,” a “flick” and a “drag-and-drop.” In addition, since it is my 

understanding that the prosecution file is also relevant, a POSITA would have understood that 

Hoshino’s drag-and-drop operation was not within the scope of the claimed “gliding.” 

Furthermore, as discussed above, in both the Samsung and Google IPRs, Neonode submitted 

additional evidence concerning how a POSITA would have distinguished “gliding” from 

“flicking” or “dragging.” 

99. In addition, a POSITA would note that when Google made essentially the same 

argument Samsung makes here—that Neonode could not “delineate the boundary between” a glide 

and a flick—the PTAB rejected it. Ex. 23 (Samsung IPR Pet. Reply) at p. 8; Ex. 21 (Google IPR

Final Written Decision) at pp. 26-27 & n.8. The PTAB noted that, “[t]o the extent there is any 

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ambiguity in the term, it does not rise to the level that “‘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.’” Ex. 21, pp. 26-27. The PTAB further recognized that a flick 

and a glide are distinct: 

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 a ‘glide’ or that the distinction is arbitrary.

Id. at 26 n.8. 

100. Consistent with my understanding, the PTAB also expressly rejected Samsung’s 

argument that that there is no evidence of how “a POSITA in December 2002 ... understood 

whether or how” gliding, flicking, or dragging could be distinguished:

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.”

Id. at 28. Further, the PTAB noted that the definitions of “glide” referred to “a movement that is 

‘smooth,’ ‘continuous,’ and possibly ‘quiet’ or ‘effortless’” which also comports with my opinion 

as a POSITA. Id.

101. The PTAB in the Google IPR also supported this understanding of a glide gesture. 

When Google argued that Neonode could not delineate between a “glide” and a “flick,” the PTAB 

responded that simply because there may be a “number of considerations” in distinguishing, as the 

evidence suggested, a flick gesture from a glide gesture, that a POSITA applying those 

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considerations would not have been unable “to distinguish between a ‘flick’ and a ‘glide’” or that 

“the distinction is arbitrary.” Ex. 21 at 26 n.8.

102. Similarly, the PTAB in the Google IPR “agree[d]” with Neonode about the 

applicant’s intent to distinguish between “drag-and-drop” and a glide/swipe gesture. Ex. 21 at 26. 

The Panel noted that the applicant “clearly intended the claims ... to cover what is known today 

as a ‘swipe’ gesture ... as distinguished from a prior-art drag-and-drop operation.” Id. The PTAB, 

upon reviewing the prosecution record including the Neonode N2 phone video, noted that it 

“agree[d] 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.” Id. In my opinion, the PTAB’s remarks in the Google 

IPR comport with and are supportive of my opinion concerning what a POSITA would understand 

as to the distinction between “drag-and-drop” gestures and the patent’s “glide” gesture.

103. In view of the foregoing, it is my opinion that a gliding gesture is materially distinct 

from both a drag-and-drop and flick gestures and that a POSITA would have found the IPR 

proceedings informative, at least for their multiple disclosures comparing and contrasting the three 

varieties of user interaction. 

104. For the reasons set forth above, it is my opinion that the terms “gliding” / “the object 

gliding along the touch sensitive area” / “gliding the object along the touch sensitive area” (the 

“gliding terms”) as used in the claims of the ‘879 Patent have their plain and ordinary meaning, 

not including a drag-and-drop operation.

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I declare under penalty of perjury under the laws of the United States of America that the 

foregoing is true and correct. 

Date: May 19, 2023 

Craig Rosenberg

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