Exhibit 3 

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Trials@uspto.gov Paper 59

571-272-7822 Date: December 15, 2022

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO. LTD, 

SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,

Petitioner,

v.

NEONODE SMARTPHONE LLC,

Patent Owner.

IPR2021-00144

Patent 8,095,879 B2

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

SCOTT B. HOWARD, Administrative Patent Judges.

OGDEN, Administrative Patent Judge.

JUDGMENT

Final Written Decision

Determining No Challenged Claims Unpatentable

35 U.S.C. § 318(a)

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I. INTRODUCTION

Petitioners Samsung Electronics Co. Ltd., Samsung Electronics 

America, Inc., and Apple Inc. (collectively, “Petitioner”) filed a Petition 

(Paper 6, “Pet.”) for inter partesreview of claims 1–6 and 12–17 of U.S. 

Patent No. 8,095,879B2 (Ex. 1001, “the ’879 patent”). The Board initially 

denied the Petition (Paper 24, “Dec.”). However, after Petitioner filed a 

Request for Rehearing (Paper 25, “Reh’g Req.”), the Board reconsidered its 

position and granted inter partesreview. (Paper 26, “Reh’g Dec.”). The 

parties later agreed, by stipulation, to limit the scope of the Petition to four

grounds challenging claims 1–6 and 12–17. Paper 50.

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

Owner Response under seal (Paper 37, “PO Resp.”; public redacted version 

as Ex. 1048), Petitioner filed a Reply to the Patent Owner Response (Paper 

41, “Pet. Reply”), and Neonode filed a Sur-reply under seal (Paper 49, “PO 

Sur-reply”; public redacted version as Ex. 1073).

We held an oral hearing on Sept. 6, 2022, and the transcript is entered 

on the record. Paper 55 (“Tr.”).

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

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

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

the ’879 patent are unpatentable.

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II. BACKGROUND

A. RELATED PROCEEDINGS

The parties identify the following as related matters: Neonode

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

2020); and Neonode Smartphone LLC v. Samsung Electronics Co. Ltd., No. 

6:20-cv-00507 (W.D. Tex. filed June 8, 2020). Pet. 92–93; Paper 7, 2.

B. THE ’879 PATENT (EX. 1001)

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

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

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

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

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

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

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

interface:

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

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

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

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

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

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

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

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

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

direction from the menu area to the display area.” Id. at 1:65–2:5, 2:11–14. 

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

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

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

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

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

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

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

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

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

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Id. at 2:18–20. Figure 3, reproduced below, illustrates the touch screen after 

function 21 has been activated:

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

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

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

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

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

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

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

“brightness.” Id. at 4:24–28. 

Analogously, selecting function 22 activates a keyboard, and selecting 

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

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

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

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

users 213, help 211, etc.” Id. at 4:29–32. 

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C. CHALLENGED CLAIMS AND GROUNDS

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

1. A non-transitory computer readable medium storing a 

computer program with computer program code, which, when read 

by a mobile handheld computer unit, allows the computer to 

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

user interface comprising:

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

is provided,

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

activating the function 

[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,

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

or duplicated during the gliding.

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

Petitioner initially argued ten grounds for inter partesreview, as 

shown in the following table:

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

1, 14–17 103(a)1 Ren, 2 Tanaka3

2–5 103(a) Ren, Tanaka, Hirayama3074

3 103(a) Ren, Tanaka, Hirayama307 

Hirayama8785

6, 13 103(a) Ren, Tanaka, Allard6

12 103(a) Ren, Tanaka, Henckel7

1, 2, 4, 5, 14–17 103(a) Hirayama307, Ren

3 103(a) Hirayama307, Ren, Hirayama878

6, 13 103(a) Hirayama307, Ren, Allard

12 103(a) Hirayama307, Henckel

1, 14, 15 103(a) Jermyn8

Pet. 1–2. 

 

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

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

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

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

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

2 Xiangshi Ren & Shinji Moriya, Improving Selection Performance on PenBased Systems: A Study of Pen-Based Interaction for Selection Tasks, 7 

ACM Transactions on Computer-Human Interaction, Sept. 2000, at 384 (Ex. 

1004). 

3 Tanaka, US 5,249,296, issued Sept. 28, 1993 (Ex. 1005). 

4 Hirayama et al., US 5,406,307, issued Apr. 11, 1995 (Ex. 1006) 

(Hirayama307”). 

5 Hirayama, US 6,100,878, issued Aug. 8, 2000 (Ex. 1009) 

(“Hirayama878”). 

6 Allard et al., US 5,615,384, issued Mar. 25, 1997 (Ex. 1010). 

7 Henckel et al., US 5,463,725, issued Oct. 31, 1995 (Ex. 1013).

8 Ian Jermyn et al., The Design & Analysis of Graphical Passwords, in 

Proceedings of the 8th USENIX Security Symposium (1999) (Ex. 1014). 

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With our authorization (Ex. 2037), the parties later stipulated to limit 

the scope of the Petition to the sixth through ninth grounds based on 

Hirayama307. Paper 50; see also Reh’g Req. 1 n.1; PO Resp. 1 n.1. 

D. DECLARATORY TESTIMONY

Petitionersubmits two declarations of Dr. Benjamin B. Bederson as 

expert testimony. Exs. 1002, 1051; see also Ex. 1002, App’x A (curriculum 

vitae). Petitioner also relies on a declaration of Jacob Robert Munford as to 

Ren’s public availability. Ex. 1031.

Neonode submits a declaration of Dr. Craig Rosenberg. Ex. 2007; see 

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

Mårtensson (Ex. 2022), Joseph Shain (Ex. 2023), Marcus Bäcklund 

(Ex. 2024), and Per Bystedt (Ex. 2026 under seal; redacted public version as 

Ex. 1049) relating to alleged objective indicia of non-obviousness and the 

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

embody the challenged claims.

III. GROUNDS OF THE PETITION

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

a preponderance of the evidence, that claims 1–6 and 12–17 of the ’879

patent are unpatentable under the extant grounds of the Petition. Before 

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

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

apply to the claim terms.

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A. LEVEL OF ORDINARY SKILL IN THE ART

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

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

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

the factors we consider when determining whether a patent claim would 

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

U.S. 1, 17–18 (1966).

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

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

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

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

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

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

For Petitioner, Dr. Bederson testifies that a person of ordinary skill 

“would have had at least a bachelor’s degree in computer science, computer 

engineering, or the equivalent education and at least two years of experience 

in user-interface design and development,” but “[a]dditional years of 

experience could substitute for formal education, and vice versa.” Ex. 1002 

¶ 49. 

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

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

ordinary skill in the art]” as Dr. Bederson. Ex. 2007 ¶ 28.

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

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

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

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

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

B. CLAIM CONSTRUCTION

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

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

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

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

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

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

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

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

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

circumstances in which a construction departs from the ordinary and 

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

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

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

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

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

specification that any departure from common usage would be so understood 

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

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

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

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

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

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

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Petitioner does not propose any explicit claim constructions in its

Petition. See Pet. 5–6. Neonode does not propose any explicit constructions 

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

arguments to distinguish the term gliding as it appears in limitation 1c from 

a “drag-and-drop” operation as known in the prior art, to which Petitioner 

responds in its Reply. See PO Resp. 19–33; Pet. Reply 1–9; see also PO Surreply 7–15. We do not need to construe this term explicitly for our decision, 

and to the extent any terms need construction, we address the terms below in 

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

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

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

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

Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).

C. CHALLENGE TO CLAIM 1

In the first extant ground of the Petition, Petitioner argues that claims 

1, 2, 4, 5, and 14–17 are unpatentable under 35 U.S.C. § 103(a) as obvious 

over Hirayama307 in view of Ren. Pet. 49–70. For this ground, we focus on 

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

1d (Pet. 60–62), after which we address the remaining claims and the 

remaining grounds.

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

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

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

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

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

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

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

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

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

We base our obviousness inquiry on factual considerations including 

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

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

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

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

Considering these factors, we determine that Petitioner has not shown, 

by a preponderance of the evidence, that claim 1 is unpatentable under 35 

U.S.C. § 103(a) as obvious over Hirayama307 in view of Ren. We begin 

with an overview of Hirayama307 and Ren. 

1. Hirayama307

Hirayama307 relates to a small data electronic device comprising a 

pen, a display panel, and a transparent touch sensor mounted on the device.

Ex. 1006, 1:7–10, 2:64–3:6. A user interface shown on the display panel of 

this device is shown in Figure 3A, reproduced below:

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Ex. 1006, 2:48–51. Figure 3A, shown above, illustrates how a user selects

and activates, via touch-sensor (input tablet) 2, a telephone dialer operation 

on the display portion 1 of the device. See Ex. 1006, 4:61–63. The user first 

touches telephone icon 41 (having a picture of a telephone to represent a 

dialer operation) with the point of pen 3. Id. at 4:63–65. As the point of pen 

3 approaches the surface of input sensor 2 on the way towards touching icon 

41, x-shaped cursor 42 appears on the screen of display portion 1 so the user 

“can visually confirm the exact position of the point of pen 3 on the input 

tablet 2 very clearly.” Id. at 4:65–5:3.

After the user touches dialer icon 41 with the point of pen 3, “the user 

moves (i.e. drags) the point of the pen 3 to the display position on the 

surface of the input tablet 2 without being separated therefrom.” Ex. 1006, 

5:3–6. At some point during this pen movement, “an icon [43] (hereinafter 

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. . . referred to as a window) enlarged in the form of the processing display 

mode of the desired icon 41 is automatically displayed on the display portion 

1 as shown in FIG. 3B.” Id. at 5:9–12. 

Figure 4A, reproduced below, is a flowchart of what happens during 

this process:

The flowchart in Figure 4A, above, begins when a processor loops until the 

point of pen 3 is touching the surface of input tablet 2 within a 

predetermined area of icon group 40 and until the point of pen 3 has, before 

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the user lifts the pen from the surface, either (a) shifted by a “large” 

reference amount or (b) moved outside a designated area such as hatched 

area 45 (steps S1–S5). Ex. 1006, 5:16–63. If one of these things occurs, then 

in step S6, “icon 41 . . . is enlarged as a window 43 shown in FIG. 3B.” Id.

at 5:59–66. 9 Then, the processor continues to move enlarged icon/window 

43 along with the tip of pen 3 until the user lifts pen 3 from the surface, at 

which time “the icon is activated so that various processing menus within 

the window 43 can be executed” (steps S7–S9). Id. at 6:3–21.

Figure 3B, reproduced below, depicts among other things the 

continued dragging of enlarged icon/window 43 along with pen 3 prior to 

the dialer application being activated:

 

9 Elsewhere, Hirayama also suggests an embodiment in which this 

enlargement of icon 41 to window 43 does not occur until the user “takes the 

point of the pen 3 off from the surface of the input tablet 2.” Ex. 1006, 5:3–

9; see also id. at 2:10–13 (“[A] circuit converts the icon into a window when 

it is detected that the point of the pen is apart from the display device . . . .”).

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Figure 3B, above, illustrates later stages of the same user interface as Figure 

3A. See Ex. 1006, 2:48–51, 5:3–12. In the above illustration, arrow B 

depicts the movement of window 43 as “the user moves the point of the pen 

3 in the arrow B direction and drags the pen 3 to the position shown by the 

broken line,” thus causing “the large display icon, i.e. the window 43 [to be] 

moved to the position shown by the broken line in FIG. 3B.” Id. at 6:10–14. 

Hirayama307 also describes a reverse operation in which the user can 

“bring the large icon, i.e. the window 43 displayed on the display portion 1 

as shown in FIG. 3B back to the original position.” Ex. 1006, 6:22–24. To do 

this, the user touches hatched portion 44 of window 43 and “drags the point 

of the pen 3 back to the telephone icon 41 of the original icon group 40 

without being apart from the tablet,” or alternatively, the user may return 

icon/window 43 to a different “predetermined icon in the icon group 40” and 

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then “the window can automatically be stored in the vacant icon position.” 

Id. at 6:24–35. 

In what appears to be another embodiment for returning the dialer 

icon to icon group 40, icon/window 43 is “reduced in size” to icon 41 if the 

user drags the pen either (a) by a “large” amount or (b) outside a designated 

area, after which “the icon displayed as the reduced icon [41] is moved” 

until “the user holds the pen 3 up from the panel surface of the input tablet 

2,” after which “the icon is deactivated” and “moved to the predetermined 

vacant position.” Id. at 6:66–7:6, Fig. 4B.

2. Ren

Ren is a journal article comparing different pen-based selection 

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

of these strategies, called Slide Off, has a variation reproduced below in an 

extracted portion of Figure 3:

Ex. 1006, 390. In Figure 3 above, “[t]he arrows show the direction of pen-tip 

movement,” “the dashed lines indicate that the pen-tip is not in contact with 

the screen surface (either before or after contact), and the solid lines . . . 

show that the pen-tip is in contact with the screen surface.” Id. at 389. An 

ellipse represents the target. See id. at 387 & Fig. 1. 

This variation of the Slide Offstrategy, described as “a→c→b→a,” is 

where the pen touches a target (a→c), slides off the target (c→a), and then 

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lifts off the screen outside the target (b→a). See id. at 390, Fig. 3. “The 

target is highlighted only while the pen is in contact with it” and “the 

selection is made when the pen is removed from any point on the screen . . . 

outside the target area.” Id. at 391.

3. Preamble and Limitations 1a–1c

Petitioner argues that Hirayama307 alone discloses the preamble of 

claim 1 and limitations 1a–1c. Pet. 49–60. The preamble recites “[a] nontransitory computer readable medium storing a computer program with 

computer program code, which, when read by a mobile handheld computer 

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

computer unit, the user interface.” Ex. 1001, 6:45–49. To the extent that the 

preamble is limiting, which Petitioner does not take a position on, Petitioner 

contends that Hirayama307 discloses such a medium. Pet. 49–51.

Limitations 1a and 1b recite “a touch sensitive area in which a 

representation of a function is provided, wherein the representation consists 

of only one option for activating the function.” Ex. 1001, 6:50–52. Petitioner 

contends that this “representation of a function” corresponds to 

Hirayama307’s icon 41 as shown in Hirayama307’s Figures 3A and 3B, 

which represents a single option for activating a phone dialer function. Pet. 

51–58; see supra Section III.C.1.

Limitation 1c recites “wherein the function is activated by a multi-step 

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

location where the representation [of a function] is provided and then (ii) the 

object gliding along the touch sensitive area away from the touched 

location.” Id. at 6:54–57. An example of this operation is the gesture 

illustrated in Figure 2 of the ’879 patent, which we discuss above. See supra

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Section II.B. Petitioner contends that in Hirayama307, this recited gesture 

corresponds to the user touching icon 41 on display portion 1 and moving 

the pen downward, away from the touched location, until the function is 

activated by opening up dialer window 43 (as shown in Hirayama307’s 

Figure 3B). See Pet. 58–60. 

Neonode does not contest Petitioner’s arguments about the preamble 

or limitations 1a or 1b, but contests Petitioner’s arguments as to limitation 

1c. PO Resp. 19–33. However, because we find that Petitioner has failed to 

meet its burden of persuasion as to limitation 1d, particularly in light of our 

determination that the objective indicia of non-obviousness weigh in favor 

of nonobviousness (see infra Section III.C.5), we need not address 

Petitioner’s contentions as to the preamble or limitations 1a–1c in detail, or 

Neonode’s responsive arguments about limitation 1c. We discuss the 

contested issues relating to limitation 1d below.

4. Limitation 1d 

Limitation 1d recites “wherein the representation of the function is not 

relocated or duplicated during the gliding.” Ex. 1001, 6:57–59. Petitioner 

argues, alternatively, (1) that Hirayama307 would have suggested limitation

1d to a person of ordinary skill in the art, and (2) that Hirayama307 teaches 

the limitation in view of the teachings of Ren. Pet. 60–62. We address each 

of these arguments in turn. 

(a) Whether Hirayama307 Teaches Limitation 1d

Limitation 1d is a negative limitation because it requires the absence

of any “relocat[ion] or duplicat[ion] during the gliding” gesture. Ex. 1001, 

6:57–59. As with any claim limitation, the burden of persuasion rests on 

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Petitioner to show that the negative limitation is present in Hirayama307 or 

that this negative limitation would have been an obvious variation based on 

Hirayama307’s disclosure, a burden that never shifts to Neonode. Dynamic 

Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–81 (Fed. 

Cir. 2015). 

As discussed above, Petitioner contends that Hirayama307’s icon 41 

is the “representation of the function” recited in claim 1, and that the recited 

gliding gesture occurs when “the user ‘moves (i.e. drags) the point of the pen 

3.’” Pet. 60 (quoting Ex. 1006, 5:3–4) (citing Ex. 1006, 1:52–55); see supra

Section III.C.3. According to Petitioner, “[i]t would have been obvious, 

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

the icon is not relocated or duplicated during the gliding of the pen.” Pet. 60 

(citing Ex. 1002 ¶ 157). In support for its arguments, Petitioner relies on the 

testimony of Dr. Bederson and focuses primarily on Figures 3A and 3B, and 

text associated with these figures. See Pet. 60–62; Pet. Reply 10–18, 21–26. 

Below, we address the disputed issues regarding Petitioner’s 

argument. For the reasons below, we find that the evidence is insufficient to 

establish by a preponderance of the evidence that Hirayama307 teaches the 

lack of any relocation or duplication of icon 41 during the pen movement as 

limitation 1d requires.

(1) Hirayama307’s Summary of the Invention

In response to Petitioner’s general arguments in the Petition, Neonode 

argues that Hirayama307’s “Objects and Summary of the Invention” section 

discloses that after a user selects an icon such as icon 41 in Figure 3A, the 

input device 2 has a circuit that “controls the icon display coordinate 

position such that the icon display coordinate position is moved in 

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

pen” and then after some distance “converts the icon into a window.” PO 

Resp. 39–40 (quoting Ex. 1006, 2:5–11) (citing Ex. 2007 ¶ 73). This, 

according to Neonode, suggests that icon 41 is dragged along with the tip of 

pen 3 during the dragging operation that Petitioner relies on as disclosing 

limitation 1d. See id. at 29.

In its Reply, Petitioner acknowledges that “it would have been at least 

obvious” to implement Hirayama307’s user interface in “a way in which 

icon 41 is dragged during gliding of the pen,” but Hiryama307 also teaches 

implementing the user interface in “a way that does not drag icon 41.” Pet. 

Reply 18 (citing Ex. 1051 ¶ 82). Petitioner also contends that 

Hirayama307’s summary section describes a different embodiment than the 

rest of the disclosure. See id. at 10–12 (citing Ex. 1006, 2:5–13, 4:61–65, 

5:3–12, 5:26–44, 5:63–66, Figs. 3A, 3B, 4A; Ex. 2007 ¶ 59; Ex. 1051 ¶¶ 61–

64); id. at 17–18 (citing Ex. 1006, 1:64, 7:49–56, Fig. 3A; Ex. 1051 ¶¶ 80–

81).

In its Sur-reply, Neonode disagrees that the summary section of 

Hirayama307 reflects a different embodiment from the rest of the disclosure, 

as its intent was to provide a summary “of the invention.” PO Sur-reply 24 

(emphasis omitted). Neonode argues that the summary refers to different 

“aspects” of that invention only because it summarizes both icon-opening 

and icon-closing operations. Id.

We agree with the parties that a person of ordinary skill in the art, 

reading Hirayama307 and in particular its summary section, would have 

understood that icon 41 can move along with the tip of pen 3 during the 

dragging operation. However, the language in the summary section adds 

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ambiguity by referring to movement of “the icon display coordinate 

position” rather than simply the “icon.” Ex. 1006, 2:6; see Ex. 1051 ¶ 81 

(implying that there is a distinction between moving an icon and moving the 

icon’s “display coordinate position”). 

So, while the summary passage teaches dragging an icon’s “display 

coordinate position,” this passage does not necessarily teach that the icon is

visually dragged with the pen. And we acknowledge Petitioner’s point that 

this disclosure would not rule out other embodiments in Hirayama307 (to the 

extent they exist) in which the icon is not moved during the dragging 

gesture. Pet. Reply 17–18. Nevertheless, the passage provides at least some 

evidence that a person of ordinary skill in the art would have understood that 

the icon is visually dragged with the pen in Hirayama307’s disclosure, and 

Dr. Rosenberg’s testimony on this point is entitled to at least some weight in 

our § 103 analysis. Ex. 2007 ¶¶ 72–73.

(2) Figure 4A

In its Reply, Petitioner argues that we can interpret Figure 4A and its 

associated text as disclosing, or at least rendering obvious, that icon 41 is not 

dragged along with pen 3. Pet. Reply 10–15. In particular, Petitioner argues 

that “[d]uring the shifting/gliding of the pen in step S4 [of Figure 4A] there 

is no movement or dragging of icon 41.” Pet. Reply 12 (citing Ex. 1006, 

6:3–6, 6:16–21, Figs. 4A, 3B; Ex. 1051 ¶¶ 63–64). Petitioner relies on Dr. 

Bederson’s testimony that “[n]either the flowchart of FIG. 4A nor the 

corresponding description tell a [person of ordinary skill in the art] to 

relocate, duplicate, or otherwise drag icon 41 during the movement of the 

pen,” yet Figure 4A expressly “teaches when to move/drag the window 43 

. . . , which is not a relocation or duplication of icon 41.” Id. (citing 

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Ex. 1006, 6:7–14, Fig. 4A; Ex. 1053, 94:10–95:12). According to Petitioner, 

a person of ordinary skill in the art would have been left “to assume that 

where no such movement is described, none should be implemented.” Id.

(citing Ex. 1051 ¶ 65).

Instead, Petitioner argues that in Hirayama307’s Figure 4A, although 

a user moves the pen from its original touch point at icon 41, the icon stays 

at its original location while the interface shows only cursor 42 at the 

location of the pen tip until the pen tip either leaves hatched area 45 or shifts 

some greater distance from that original position, at which time window 43 

will appear at the location of the pen tip. See Pet. Reply 13–15 (citing Ex. 

1006, 5:41–53, 5:61–63, Fig. 4A; Ex. 1051 ¶¶ 66–69).

We find Petitioner’s argument as to the flowchart in Figure 4A and the 

accompanying textual description unpersuasive. First, Petitioner has not 

pointed to any explicit disclosure of limitation 1d in Hirayama307’s Figure 

4A or elsewhere within Hirayama307. At best, Petitioner shows that in 

Figure 4A there is “[n]o discussion of movement of icon 41.” Pet. Reply 11

(emphasis omitted); see also id. at 15 (arguing that “nothing about [step S4 

in Figure 4A] instructs a [person of ordinary skill in the art] that icon 41 is 

dragged during movement of the pen”).

And we find that Petitioner has not shown, by a preponderance of the 

evidence, that the absence in Figure 4A of any step of moving icon 41 would 

have suggested to a person of ordinary skill in the art that no such movement 

or duplication of icon 41 occurs. We acknowledge Dr. Bederson’s point that 

Figure 4A omits any explicit reference to moving icon 41 prior to its 

enlargement to icon/window 43, while at the same time explicitly 

mentioning the movement of enlarged icon/window 43. See Ex. 1051 ¶ 65. 

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But Dr. Bederson does not factually support his inference, from this, that a 

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

teaching not to drag icon 41. Ex. 1051 ¶ 65. 

(3) Curved Arrows in Figures 3A and 3B

Petitioner contends that Hirayama307’s Figure 3A is evidence that 

icon 41 is not dragged with pen 3 because the curved arrow from icon 41 to 

the location of pen 3 depicts a gliding gesture without showing a relocated or 

duplicated icon 41. See Pet. 60–61 (citing Ex. 1006, 4:66–5:3, Fig. 3A; 

Ex. 1002 ¶ 158).

In response, Neonode argues that Petitioner misinterprets Figure 3A as 

showing the state of a pen tip after the user has selected icon 41. PO Resp. 

43–45 (citing Ex. 2007 ¶¶ 80–81). According to Dr. Rosenberg, a person of 

ordinary skill in the art “would understand that Fig. 3A represents the state 

of the device before icon 41 is being dragged” because Hirayama307 

discloses that icon 41 is “enlarged as a window 43 as shown in Fig. 3B” as 

soon as the pen tip “is considerably shifted” from its original touch location 

or leaves hatched area 45. Id. (quoting Ex. 1006, 5:60, 5:65–66) (citing 

Ex. 1006, 5:59–66). He points out that “[i]n Fig. 3A, . . . the tip of the pen is 

both outside of the hatched area, and has considerably shifted as it is well 

into the active screen area, but there is no enlarged window.” Id. (citing 

Ex. 1006, 5:59–66). 

Thus, according to Dr. Rosenberg, a person of ordinary skill in the art 

would have understood “that if Fig. 3A was intended to show the state of the 

screen during a drag-and-drop operation, then it should have also shown an 

enlarged window 43. Instead, Fig. 3A only shows ‘a cross-shaped position 

designating cursor 42,’” which would be consistent with Hirayama307’s 

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disclosure that cursor 42 is shown “‘as the point of the pen 3 approaches the 

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

icon 41 to initiate the process of drag-and-drop.” PO Resp. 44 (quoting 

Ex. 1006, 4:65–68); see also Ex. 2007 ¶ 81 (opining that a person of 

ordinary skill in the art would have understood Figure 3A to refer to the state 

of the system after power-on and before selecting icon 41) (citing Ex. 1006, 

4:58–61); Pet. 43–45.

In its Reply, Petitioner argues that “[t]he only reason to show the 

curved arrow in FIG. 3A is to illustrate the movement of the pen described in 

the corresponding text.” Pet. Reply 15–16 (citing Ex. 1006, 4:61–5:7; 

Ex. 1051 ¶¶ 70–74); see also Pet. 60 (citing Ex. 1006, 1:52–55, 5:3–4, 7:10; 

Ex. 1002 ¶ 157).

Although we agree with Petitioner that the curved arrow in 

Hirayama307’s Figure 3A appears to depict a dragging operation that occurs 

after selecting icon 41 (Pet. Reply 15), we also credit Dr. Rosenberg’s 

testimony that Figure 3A depicts, in the same figure, the state of the user 

interface immediately after power-on and before selecting icon 41 (Ex. 2007 

¶ 81). This is clear from the text accompanying Figure 3A. Ex. 1006, 4:58–

61 (“when the power switch 10 shown in FIG. 1 is depressed, icon groups 40 

which make various processings possible are displayed on the display 

portion 1 as shown in FIG. 3A”). Because Figure 3A simultaneously depicts 

the state of the user interface at two distinct time periods (immediately after 

power-on and during a dragging operation), the fact that icon 41 appears at 

its original location rather than at the pen location does not necessarily mean 

that icon 41 is stationary while pen 3 is being dragged across the surface of 

the device, or that a duplication of icon 41 is not being dragged along with 

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the pen. An equally plausible interpretation is that the figure is simply 

depicting the dragging operation in less detail than the state of the user 

interface at power-on.

We also find persuasive Neonode’s argument, and credit Dr. 

Rosenberg’s testimony, that the arrow in Figure 3A reflects a large distance 

from the original location of icon 41 within icon group 40, and Hirayama307 

suggests that, at this stage in the dragging operation, enlarged icon/window 

43 should be visible but that’s not what is depicted in Figure 3A. See PO 

Resp. 43; PO Sur-reply 25; Ex. 2007 ¶ 80. This suggests that Hirayama307 

is merely omitting any representation of what is being dragged at the 

location of cursor 42.

Moreover, we note that Figure 3B likewise shows a curved arrow and 

a bare cursor for the reverse operation of reducing icon/window 43 and 

returning it to icon group 40, yet Hirayama307 explicitly discloses that 

during at least the latter part of this reverse operation, “the icon displayed as 

the reduced icon [41] is moved” with the tip of pen 3. Ex. 1006, 6:66–67, 

Fig. 4B step ST8. In other words, even though pen 3 has moved a significant 

distance toward icon group 40, Figure 3B does not depict the dragging of 

icon 41 at this point as Hirayama307’s disclosure would suggest, thus 

further evincing that Figures 3A and 3B do not depict the dragging 

operationsin full detail.

Thus, because of the unclarity of what is depicted in Figures 3A and 

3B, Petitioner has not made a persuasive showing that the presence of 

curved arrows in Figure 3A, without an explicit depiction of a dragged icon,

would have suggested limitation 1d to a person of ordinary skill in the art.

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(4) Presence of Icon 41 at Original Location in 

Figures 3A and 3B

Petitioner contends that in Figures 3A and 3B, icon 41 is in its original 

location within icon group 40, even though Figure 3B also shows window 

43, suggesting that icon 41 will remain “in the same location it started at the 

beginning of the dragging operation.” See Pet. 62 (citing Ex. 1002 ¶ 159); 

see also Pet. Reply 12. 

In response, Neonode contends, as we discuss above, that Figure 3A 

depicts icon 41 in its original location simply because that is where icon 41 

is when device is powered on. See PO Resp. 43–45. Neonode also argues 

that the presence of icon 41 in Figure 3B “at most shows that the icon was 

duplicated (not relocated), which still does not disclose the claims that 

require neither relocation nor duplication.” PO Sur-reply 25; see also PO 

Reply 45 n.8.

Relying on the testimony of Dr. Rosenberg, Neonode also provides an 

interpretation of Figures 3A and 3B that, Neonode contends, is clear from 

the textual disclosure. PO Resp. 35–40. According to Neonode, after the user 

touches the pen tip to icon 41, the icon moves some distance along with the 

tip of pen 3, at least until the pen tip leaves hatched area 45, after which icon 

41 becomes enlarged into icon/window 43, which also moves along with the 

tip of pen 3 until its final location where the user lifts the pen away from the 

screen surface. PO Resp. 36–40 (citing Ex. 1006, 2:1–13, 5:30–32, 5:39–53, 

5:59–66, Fig. 3A; Ex. 2007 ¶¶ 71–73).

Dr. Rosenberg also testifies that Hirayama307 “routinely states that 

the application window 43 is created by ‘enlarging’ the dragged application 

icon 41,” and “[i]f the icon 41 did not move with the movement of the pen to 

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then be ‘enlarged’ or ‘converted’ into window 43, Hirayama-307 would have 

referred to the process as ‘creating’ or ‘opening’ a window.” Ex. 2007 ¶ 78; 

PO Resp. 42.

Dr. Rosenberg provides a modified version of Hirayama307’s Figure 

3A, reproduced below, to illustrate the alleged initial state in which icon 41 

is dragged within hatched area 45:

Ex. 2007 ¶ 74; PO Resp. 40. Modified Figure 3A, above, is similar to 

original Figure 3A except that it depicts a duplicate version of icon 41 (in 

green) moving with the tip of pen 3 in the direction of a red arrow to an 

intermediate position within hatched area 45. Ex. 2007 ¶ 74; PO Resp. 40.

The modified figure also shows a greyed-out version of icon 41 at the 

original location.

In its Reply, Petitioner relies on Dr. Bederson to provide an alternative 

to Dr. Rosenberg’s interpretation of Figures 3A and 3B in which icon 41 

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remains at its original location during the dragging operation and instead, 

only cursor 42 accompanies the tip of pen 3 until the tip has moved a “large” 

amount, at which time window 43 immediately comes into existence under

cursor 42. Pet. Reply 23–25 (citing Ex. 1051 ¶ 105–111). This is depicted in 

two annotated versions of Figure 3A provided by Dr. Bederson, reproduced 

below.

Ex. 1051 ¶ 105 (textual on the right captions omitted). In both images, icon 

41 is highlighted in color and the tip of pen 3 has been dragged some 

distance from the original touch location over icon 41. In both images, 

cursor 42 (highlighted in green) has followed, and is under, the tip of pen 3. 

In the second image, pen 3 has been dragged slightly further than in the first 

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image, and window 43 (highlighted in pink) has appeared underneath cursor 

42.

Petitioner also argues that when window 43 is returned to icon group 

40, Hirayama307 states that the user “drags the point of the pen 3 back to the 

telephone icon 41,” suggesting that icon 41 remains at its original location. 

Pet. Reply 21–22 (quoting Ex. 1006, 6:22–31) (citing Ex. 1006, 8:34–45, 

6:24–35; Ex. 1051 ¶¶ 97–98).

As we discuss above, the evidence suggests that Hirayama307’s 

Figures 3A and 3B do not depict the dragging operations in full detail. See

supra Section III.C.4(a)(2). Given the lack of an explicit disclosure of 

whether icon 41 is visually dragged during these operations, we find Dr. 

Rosenberg’s interpretation of how a person of ordinary skill in the art would 

have interpreted the dragging process as shown in his proposed 

modifications to Figure 3A (shown above) to be at least as likely as that 

proposed by Dr. Bederson in his proposed modifications to Figure 3A (also 

shown above).

We also find persuasive Dr. Rosenberg’s observation that 

Hirayama307 uses the word “enlarging” to describe the transition from icon 

41 to enlarged icon/window 43, and that this choice of words suggests that 

window 43 is not just appearing at the cursor but that icon 41 is visually 

being enlarged at the cursor location. Ex. 2007 ¶ 78.

(5) Vacant Icon Position

As evidence that a person of ordinary skill in the art would have 

understood that icon 41 is dragged along with the tip of pen 3, Neonode 

argues that in the reverse operation in which window 43 is closed by 

reducing it and returning it as icon 41 to icon group 40, “the open window is 

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dragged and dropped ‘to the predetermined vacant position,’ referring to the 

position of the application icon corresponding to the window.” PO Resp. 41 

(quoting Ex. 2007 ¶ 75 (quoting Ex. 1006, 7:3–6, Fig. 4B step S10)); see 

also PO Sur-reply 24 (noting that the passage in Hirayama307 uses the 

definite article in referring to “the predetermined vacant position,” which 

according to Neonode “confirm[s] that the original icon was moved during 

the prior drag-and-drop operation to open the window”). 

According to Dr. Rosenberg, “[t]his disclosure confirms that 

application icon 41 was ‘relocated’ when it was opened by the drag-and-drop 

operation as its location is now ‘vacant.’ The location would not be ‘vacant’ 

if the icon had not moved.” Ex. 2007 ¶ 75. Dr. Rosenberg opines that, to a 

person of ordinary skill in the art, this would have been the common-sense 

interpretation of Hirayama307, since otherwise, “it may be challenging for 

the user to determine which specific one of the numerous application icons 

40 corresponds to the currently open window” so that the user knows where 

to drag window 43 to close it. Id. ¶ 77; PO Resp. 41.

As further evidence that the original location of icon 41 becomes 

vacant after it is expanded into icon/window 43, Neonode refers to 

Hirayama878 (Ex. 1009), which Petitioner relies on for its arguments for 

claim 3 and acknowledges that it “has the same inventor and assignee as 

Hirayama307, and the figures present a similar user interface” (Pet. 70 

(citing Ex. 1006, Figs. 3A–B; Ex. 1009, Figs. 5A, 5D)). According to 

Neonode, Hirayama878’s Figures 5A and 5B clearly show that after an icon 

is moved from icon group 40, the original location of the icon becomes 

vacant. PO Resp. 45–56 (citing Ex. 1006, 7:4–6, Fig. 4B step ST10; 

Ex. 1009, Figs. 5A–B).

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In its Reply, Petitioner acknowledges that Hirayama878 “presents a 

similar user interface” to Hirayama307, but argues that Hirayama878 “is a 

different disclosure supporting a different system,” and “there is no basis for 

assuming any of the teachings in Hirayama-878 about how to implement its 

icons rise to the high bar of a ‘teaching away’ (e.g., nowhere does Hirayama878 discourage alternative interface interpretations).” Pet. Reply 22.

We do not understand Neonode to be making a teaching-away 

argument. Rather, Neonode is arguing that we should consider 

Hirayama878’s teachings about a vacant icon position for guidance in how 

to interpret the similar disclosure in Hirayama307, which is consistent with 

Petitioner’s argument in the Petition that, “[g]iven the similarities of 

disclosure, a [person of ordinary skill in the art] would have looked to 

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

functionality of Hirayama307.” Pet. 72 (citing Ex. 1002 ¶ 172). We agree 

that Hirayama878 is relevant to how a person of ordinary skill in the art 

would have interpreted or implemented Hirayama307.

Petitioner also contends that Hirayama878 showsthat the original 

icon is not deleted to make a vacant space in icon group 40 until after the 

entire gesture is complete and the user has lifted the pen off the surface, 

which does not suggest that the icon is dragged along with the pen tip. Pet. 

Reply 22 (citing Ex. 1009, 4:46–54, Fig. 5A; Ex. 1051 ¶ 99).

We disagree. Rather than deleting icon 54 at the conclusion of the 

dragging operation, Hirayama878 indicates that icon 54 is converted to 

enlarged shredder image 74 when the tip of stylus 3 is moved from the 

original touch location into an active area, which occurs while the pen is still 

touching the surface, as shown in Figure 5A. Ex. 1009, 4:47–55. The 

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passage does not explicitly say whether icon 54 has, in the meantime, moved 

along with pen tip 3. See id.; but see id. at 7:8–14 (a similar but more 

explicit example in which an icon for a copying function “remains small in 

size in an area positioned [outside an active area]” and “[w]hen the tip of the 

stylus 3 is moved into an active area . . . as shown in FIG. 6B, the copying 

window is enlarged and displayed as a copy image 91 in an image frame 

90”).

In view of all the evidence, we regard Hirayama307’s reference to a 

“vacant” icon position as at least mild evidence that Hirayama307’s iconactivation process involves relocating or duplicating icon 41. The disclosure 

in Hirayama878 further supports this interpretation.

(6) Motivation to Modify Hirayama307

Petitioner argues that Hirayama307 teaches a need to clearly and 

naturally determine the starting and ending of the dragging operation for 

icon 41. Pet. 61 (citing Ex. 1006, 7:10–24). Thus, according to Petitioner, a 

person of ordinary skill in the art would have had reason to use cursor 42 for 

that purpose rather than using a relocated or duplicated icon 41. Pet. 61–62 

(citing Ex. 1002 ¶ 159).

In response, Neonode argues that Petitioner has failed to show any 

plausible motivation to modify Hirayama307 without relocating or 

duplicating icon 41 during the drag process. PO Resp. 46–50. Neonode 

points to Dr. Rosenberg’s testimony that a person of ordinary skill in the art 

would have understood that “in graphical user interfaces, it is important to 

provide feedback to the user during an operation,” which was “generally 

provided by visually showing the icon being moved or duplicated across the 

screen,” as was “common in both the Microsoft Windows and Macintosh 

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MacOS environments.” Id. at 47 (quoting Ex. 2007 ¶¶ 83–84). Thus, “there 

simply is no reason for a [person of ordinary skill in the art] to implement 

Hirayama-307’s drag-and-drop process, but avoid the industry-standard 

method of providing user feedback by ‘relocating or duplicating’ the icon 

during the drag-and-drop operation.” Id. at 48 (quoting Ex. 2007 ¶ 85). 

Relying further on Dr. Rosenberg’s testimony, Neonode disagrees 

with Petitioner and Dr. Bederson that cross-shaped cursor 42 would have 

been considered sufficient to provide this user feedback, because 

Hirayama307 only teaches that cursor 42 “is used to assist the user in 

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

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

pointer.” PO Resp. 49 (quoting Ex. 2007 ¶ 86). Moreover, according to Dr. 

Rosenberg, even if cursor 42 is also present during the dragging operation, 

“the appearance of the cross-shaped cursor does not denote to the user 

anything about the drag-and-drop operation, but simply that the pen is 

communicating with the screen, and the location of the tip of the pen.” Id.

(quoting Ex. 2007 ¶ 87). Thus, “the user would not know if the drag-anddrop operation is being successfully performed as the user drags the pen.” 

Id.

In its Reply, Petitioner respondsthat “a cursor was a well-known way 

to provide a user with feedback as to the location of their finger or pen 

during a drag/glide movement,” and that in Hirayama307, the cursor would 

have indicated where the user intends to open window 43 or return icon 41 

to icon group 40, or whether the pen was close to the panel surface. Pet. 

Reply 16–17 (citing Ex. 1006, 6:22–31, 7:16–24, 7:58–8:3, Fig. 3B; Ex. 

1012, 17, 19; Ex. 2007 ¶ 76; Ex. 1051 ¶¶ 75–78). And according to 

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Petitioner, “[i]f the icon is dragged during gliding of the pen as Neonode 

suggests, there would be no reason to also display cursor 42.” Id. at 17; see 

also id. at 21 (citing Ex. 1051 ¶ 96). Petitioner contends that a person of 

ordinary skill in the art would have understood that the use of a cursor, 

without dragging an icon, would provide sufficient feedback because it 

shows exactly where the point of pen 3 is during the movement. Id. at 22–25 

(citing Ex. 1006, 4:66–5:3; Ex. 1012, 19; Ex. 1051 ¶¶ 100–111).

Petitioner also argues in its Reply10 that, in comparison to showing a 

bare cursor, a person of ordinary skill in the art at the time of the claimed 

invention would have understood dragging an icon to be disadvantageous 

because such dragging “was computationally expensive at the time,” and 

“would have likely produced a flickering of the icon due to the processing 

needed for continuous display of the icon at the different pen positions, 

leading to a poor user experience.” Pet. Reply 25 (citing Ex. 1051 ¶¶ 107–

112). And according to Petitioner, to the extent that any dragging of icon 41 

must occur over hatched region 45 of Figure 3A, such dragging would occur 

over other icons and “would be confusing and visually undesirable,” and 

would be unnecessary to show icon 41 dragging for just a few millimeters 

“[i]f the window 43 is displayed when the pen leaves the hatched area.” Id.

at 21 (citing Ex. 1051 ¶ 96). Petitioner also relies on Sears (Ex. 1012) for the 

teachings that there were numerous ways to provide feedback to a user, such 

 

10 Neonode contends that these new motivation-to-combine arguments are 

untimely. PO Sur-reply 27. Because we find the arguments unpersuasive, we 

need not decide whether they are untimely under 37 C.F.R. §42.23(b).

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as the use of flashing colors, and that it would have been obvious to use a 

cursor for feedback during dragging. Pet. Reply 22–23 (citing Ex. 2012, 19).

We find unpersuasive Petitioner’s argument that a person of ordinary 

skill in the art would have considered Hirayama307’s cursor 42 to provide 

sufficient feedback to the user during the dragging operation. First, we note 

that even in Petitioner’s proposed modification to Figure 3A based on Dr. 

Bederson’s testimony, the modified drawing continues to include both cursor 

42 and window 43 after the expansion of icon 41 has taken place and 

window 43 is continuing to be dragged. See Pet. Reply 25; Ex. 1051 ¶ 103; 

supra Section III.C.4(a)(4). Thus, underlying this modification of Figure 3A 

is the recognition that a cursor and a representation of an item being dragged 

serve different purposes. The purpose of cursor 42, as Hirayama307 

explains, is so that “the user can visually confirm the exact position of the 

point of pen 3 on the input tablet 2 very clearly.” Ex. 1006, 5:1–3.

We also credit Dr. Rosenberg’s testimony that although a cursor 

conveys the precise location of pen 3, a cursor, alone, would have failed to 

convey to a user that the dragging operation is being performed successfully, 

particularly since this was the industry-standard way to convey the idea of 

dragging an icon from one location to another. Ex. 2007 ¶¶ 83–87. We find 

this more credible than Dr. Bederson’s testimony that an ordinarily skilled 

artisan would have considered a reproduction of icon 41 to be superfluous if 

cursor 42 was already present. Ex. 1051 ¶¶ 75–78, 104–106.

We do not find credible Dr. Bederson’s testimony that visually 

dragging an icon would have been too computationally expensive at the time 

of the claimed invention. Ex. 1051 ¶ 107. This testimony is inconsistent with 

the disclosure in Hirayama307 that, in the reverse operation in which 

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window 43 is reduced to window 41, a “reduce icon” 41 is visually dragged

along with the pen tip. Ex. 1006, 6:66–67, Fig. 4B step ST8.

We also do not credit Dr. Bederson’s testimony that a person of 

ordinary skill in the art would have been deterred from using a relocated or 

duplicated icon 41 as feedback during the dragging operation because it 

would be confusing, or because the distance the icon would move before 

being enlarged into icon/window 43 is relatively small. Ex. 1006 ¶ 96. Dr. 

Bederson’s testimony on this point is conclusory and does not disclose any 

underlying factual basis. See 37 C.F.R. § 42.65(a) (“Expert testimony that 

does not disclose the underlying facts or data on which the opinion is based 

is entitled to little or no weight.”); Apple Inc. v. MPH Technologies Oy, 28 

F.4th 254 (Fed. Cir. 2022) (The Board is free to reject expert testimony that 

lacks factual support).

Finally, we do not find persuasive Petitioner’s reliance on Sears 

(Ex. 2012) in its Reply to show additional ways to provide feedback or to 

establish that it would have been obvious to use a cursor for feedback during 

dragging. Pet. Reply 22–23 (citing Ex. 2012, 19; Ex. 1051 ¶¶ 100–104). 

Petitioner cited Sears for other purposes in its Petition, so this is a new 

argument in the Reply. See, e.g., Pet. 66, 68, 73 (citing Sears as evidence in 

the context of dependent claims 13, 14 and 16). Sears states that, when users 

can select a target area by “drag[ging] their fingers onto a target,”11 “it is 

 

11 Sears appears to be describing something similar to the “a→b→c→a”

variation of the Slide Offstrategy taught in Ren. Compare Ex. 1012, 17 

(“[T]he finger touch may produce a cursor that can be dragged across the 

screen, and activation occurs when the finger is lifted off the surface.”), with

Ex. 1004, 391 (“The target is highlighted only while the pen is in contact 

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often advantageous to provide a cursor near the user’s fingers showing 

exactly where a selection will be made if they lift their fingers” off the 

screen. Ex. 1012, 19. In other words, the “dragging” that Sears refers to 

occurs before selection of a fixed target when the user slides the finger onto 

the target and lifts the finger from the target. Id. However, Petitioner did not 

include Sears in its grounds of the Petition. Nor has Petitioner specifically 

explained, even in its Reply, how a person of ordinary skill in the art would 

have applied the teachings in Sears to the teachings in Hirayama307 and 

Ren. Thus, even if we were to accept Petitioner’s argument about Sears as 

timely, it is not persuasive. 

(7) Conclusion as to Whether Hirayama307 

Teaches Limitation 1d

Having considered all the evidence of record about Petitioner’s 

contention that Hirayama307 teaches limitation 1d, we do not find the 

evidence, as a whole, persuasive by a preponderance of the evidence.

(b) Whether Hirayama307 Teaches Limitation 1d in 

Light of Ren

Petitioner alternatively argues that Hirayama307 teaches limitation 1d 

in light of the teachings of Ren. Pet. 62. According to Petitioner, “Ren and 

Hirayama307 both are directed to solutions to the same problem, namely 

target selection techniques in pen-based tablet systems,” and an ordinarily 

skilled artisan would have recognized that there are only small number of 

selection techniques in a pen-based graphical user interface, and would have 

 

with it; however, the selection is made when the pen is removed from any 

point on the screen . . . inside . . . the target area.”). 

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tried to implement Ren’s selection strategies on Hirayama307’s device with 

predictable results. Id. (citing Ex. 1002 ¶¶ 160–162); see also Pet. Reply 27–

28 (clarifying that it is Ren’s Slide Off gesture that a person of ordinary skill 

in the art would have incorporated into Harayama307’s interface, and that it 

is the “sliding” part of Ren’s Slide Off gesture that would correspond to the 

gliding portion of the gesture recited in claim 1). 

We agree with Neonode that, while the argument in the Petition may 

establish that Hirayama307 and Ren are analogous references, Petitioner 

failed to specifically articulate how a person of ordinary skill in the art 

would have combined Ren’s Slide Off or any other selection strategies with 

Hirayama307’s user interface. See PO Resp. 53–54; In re Magnum Oil Tools 

Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of 

proving obviousness, a petitioner cannot employ mere conclusory 

statements. The petitioner must instead articulate specific reasoning, based 

on evidence of record, to support the legal conclusion of obviousness.” 

(citing KSR, 550 U.S. at 418)). Also, as Neonode points out, Ren describes 

selection strategies, but the Petition does not clearly explain how an 

ordinarily skilled artisan would have applied teachings about the selection of 

a target area, such as by Ren’s Slide Off gesture, to the dragging operation in 

Hirayama307. PO Sur-reply 29 (citing Ex. 1004, 1).

In its Reply, Petitioner argues for the first time that an ordinarily 

skilled artisan would have used Ren’s Slide Off gesture to “designat[e] the 

position where the window 43 would be opened.” Pet. Reply 27 (citing 

Ex. 1006, 5:1–12, 7:7–15). But Petitioner still does not explain how this 

belated argument relates to limitation 1d’s requirement that there is no 

relocation or duplication of icon 41 during a gliding movement.

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Also, in support of its obvious-to-try argument, Petitioner does not 

direct us to any “design need or market pressure to solve a problem,” or any 

particular reason that an ordinarily skilled artisan would have selected a 

particular strategy from Ren to produce the claimed invention. Pet. Reply 

27; see also In re Cyclobenzaprine Hydrochloride Extended–Release 

Capsule Patent Litig., 676 F.3d 1063, 1072 (Fed. Cir. 2012). 

Thus, we find Petitioner’s argument regarding the combination of 

Hirayama307 and Ren to be insufficiently specific to meet its burden of 

persuasion, and Petitioner did not remedy that deficiency in its Reply. See 35 

U.S.C. § 322(a)(3) (requiring a petition to identify, “with particularity, . . . 

the grounds on which the challenge to each claim is based, and the evidence 

that supports the grounds for the challenge to each claim”). 

(c) Conclusion Regarding Limitation 1d 

For the above reasons, we determine that Petitioner has not shown, by 

a preponderance of the evidence, that Hirayama307, either itself or in 

combination with Ren, teaches limitation 1d.

5. Objective Indicia of Non-obviousness 

Neonode argues that, as objective indicia of nonobviousness, we 

should consider evidence of industry praise, commercial success, and 

licensing of Neonode’s N1 device and its later N2 iteration, released in 

2007. PO Resp. 4–5. According to Neonode, the industry and at least one 

licensor recognized that the N1 and N2 phones had a unique user interface 

that allowed easy access to all the device’s content through a small number 

of simple sweeping gestures. Id. at 5 (citing Ex. 2008 (promotional video)). 

Neonode contends that these gestures embodied the swipe-based user 

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interface disclosed in the ’879 patent and recited in the challenged claims. 

Id. at 5–6 (citing Ex. 1001, 1:49–61; Ex. 2023 ¶¶ 4–6; Ex. 2007 ¶¶ 40–41). 

For us to give substantial weight to objective indicia of 

nonobviousness, a proponent must establish a nexus between the evidence 

and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 

F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence 

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

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

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

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

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

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

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

Cir. 2018)). As we discuss below, Neonode does not contend that it is 

entitled to a presumption of nexus. See infra Section III.C.5(a).

Even without the presumption, a proponent of objective indicia “is 

still afforded an opportunity to prove nexus by showing that the evidence of 

[objective indicia] is the ‘direct result of the unique characteristics of the 

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

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

aspect of the claim not already in the prior art.” In re Kao, 639 F.3d 1057, 

1069 (Fed. Cir. 2011). 

Once the patentee has presented a prima facie case of nexus, the 

burden shifts to the patent challenger “to adduce evidence to show that the 

[objective indicium] was due to extraneous factors other than the patented 

invention.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d

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1387, 1393 (Fed. Cir. 1988). “Ultimately, the fact finder must weigh the 

[objective indicia] evidence presented in the context of whether the claimed 

invention as a whole would have been obvious to a skilled artisan.” See

Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB 

Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d 

1317, 1331–32 (Fed. Cir. 2016)). 

For the reasons below, we find that evidence of industry praise and 

licensing12 have a nexus to challenged claim 1 and weigh significantly in 

favor of nonobviousness.

(a) The N1 and N2 phones

According to Joseph Shain, who testifies he is familiar with the N1 

and N2 phones, the devices “presented three icons in a strip along the lower 

edge of the display immediately following unlocking the phone.” Ex. 2023 

¶¶ 4, 6. He states that these three icons each “consisted of only one option 

for activating the [icon’s] associated function,” such as to activate a start 

menu, a keyboard, or a tools menu. Id. ¶ 6. He testifies that “[e]ach of the 

icons were activatable by a gesture in which a thumb or finger touches the 

icon, and swipes up toward the center of the screen before lifting off of the 

screen. None of the icons were relocated or duplicated during the swiping 

gesture.” Id. 

Mr. Shain also testifies that an advertising video, which Neonode has 

submitted as Exhibit 2008, reflects the operation of the N2 phone and “was 

 

12 In light of our other findings, we need not address Neonode’s evidence of 

commercial success.

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produced during the ordinary course of Neonode’s business.” Ex. 2023 ¶ 7. 

We have reviewed this video and it describes a phone device with a user 

interface consistent with Mr. Shain’s description.

Also, Dr. Rosenberg testifies, based on his review of Exhibit 2008, 

Mr. Shain’s testimony, and other materials, that “the ‘swipe’ gesture of 

Neonode’s user interfaces in the N1 and N2 phones is covered by claim 1.” 

Ex. 2007 ¶ 40.

In its Reply, Petitioner argues that Neonode does not “analyze the 

Neonode devices on a limitation-by-limitation basis.” Pet. Reply 29 (citing 

Ex. 1053, 119:17–120:1, 124:9–18, 134:9–17 (Dr. Rosenberg’s crossexamination testimony stating that he did not physically analyze an N1 or 

N2 phone in preparing his testimony, although he considered at least the 

video of Exhibit 2008)).

We disagree. Although Neonode did not provide a claim chart 

comparing claim 1 with the N1 or N2 phones, Neonode cited to Mr. Shain’s 

testimony on this point. PO Resp. 5; see also PO Sur-reply 1–2. Under the 

circumstances, Mr. Shain sufficiently compared the N1 and N2 devices to 

each of the limitations of claim 1 within two short paragraphs. Ex. 2023 

¶¶ 5–6. Also, Neonode does direct our attention to a portion of the video in 

Exhibit 2008 and explains how the video demonstrates a gliding gesture on

the N2 device’s user interface. PO Resp. 7–8.

Although Neonode should have provided a more complete

comparison between the N1 or N2 devices and claim 1 in its Response, the 

Response was well under the applicable word-count limitations. See PO 

Resp., Certificate of Compliance with Type-Volume Limits. Because Mr. 

Shain’s comparison is short, Neonode’s reliance on that comparison, under 

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the circumstances, does not circumvent Neonode’s length limitations and 

does not constitute such a violation of 37 C.F.R. § 42.6(a)(3) that it would be 

appropriate for us to disregard his testimony.

Petitioner also contends that during the glide gesture performed on the 

N2 device, a representation of the function (an arrow) is duplicated during 

the gliding as depicted in a photograph that we reproduce below:

Pet. Reply 30–31 (citing Ex. 2013, 2; Ex. 1057, 151:20–152:14, 153:2–13). 

The above photograph appears to be a screenshot that Petitioner obtained

from a Pen Computing Magazine review of the N2 phone (Ex. 2013, 2), 

which shows a thumb making a gliding gesture on a touch screen, and it also 

shows a series of arrows pointing in the direction of the gesture. According 

to Petitioner, limitation 1d “is not met because these arrows duplicate during 

the gliding motion.” Id. at 31. Petitioner also argues that “[t]he N1/N2 

devices also include icons printed on the device, i.e., not displayed on the 

screen,” which therefore could not be the “representation of the function” 

recited in claim 1. Id.

Neonode responds, and we agree, that the printed icons on the N2 

device correspond to the “representation of the function” recited in 

limitation 1d because the icons are located within the touch-sensitive area of 

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the screen. Claim 1 does not explicitly preclude the “representation of the 

function” from being printed on the touch-sensitive screen, and Petitioner 

has not pointed to any evidence to suggest otherwise. See PO Sur-reply 2–3. 

We also agree with Neonode that, based on the video of Exhibit 2008, these 

arrows appear during the initial touch (the first part of the recited multi-step 

gesture) rather than during the subsequent gliding part of the gesture, thus, to 

the extent that the arrows could be considered the “representation of the 

function,” they are “not . . . duplicated during the gliding” part of the gesture 

as recited in limitation 1d. See PO Sur-reply 3–4. 

Neonode does not argue that the N1 or N2 devices are coextensive 

with claim 1, and Neonode has not raised the question of whether its 

evidence of objective indicia of nonobviousness is entitled to presumption of 

nexus. See Pet. Reply 32 (arguing that the evidence is not entitled to a 

presumption of nexus). However, for the reasons below, we determine that 

there is a nexus between the evidence and the N1 or N2 phones, and that

evidence weighs in favor of nonobviousness. 

(b) Industry Praise

Neonode argues that its N1 and N2 devices received wide praise in 

industry publications. PO Resp. 9. According to Neonode, Pen Computing 

Magazine called the user interface of the N1 phone “simple and brilliant,” 

particularly because the swiping gestures “let you hold a phone in the palm 

of your hand and operate it entirely with your thumb,” and contrasted other 

solutions that involved pushing buttons or pulling out a tiny stylus. Id.

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(emphasis omitted) (quoting Ex. 2012, 2–313). It also described the N1 

phone as “unique,” and the user interface as “compelling” and “simpler than 

pretty much anything else that comes to mind, and praised the interface’s 

speed. Id. at 9–10 (emphasis omitted) (quoting Ex. 2012, 5). Neonode points 

to other articles praising the swipe-based user interface as being simple and 

intuitive. Ex. 2014, 1; Ex. 2016, 1; Ex. 2021.

Neonode also points to testimony of Per Bystedt, who says he was 

aware of industry buzz and read numerous articles praising the N1 device in 

Swedish and international magazines after the device was demonstrated at 

the CeBit trade show in Germany in the spring of 2002. PO Resp. 11; Ex. 

2026 ¶ 3 (redacted version at Ex. 1049). Mr. Bystedt (who became an

investor and later a director and CEO of Neonode, see Ex. 2026 ¶ 7) also 

testified that he had private interactions with senior leaders of Vodaphone 

and Samsung, who praised the N1 device’s user interface. PO Resp. 11–12

(citing Ex. 2026 ¶¶ 3, 8–9, 11–12).

In addition, Neonode points to later articles, around the introduction 

of Apple’s iPhone in 2007, making the case that swiping and tapping 

elements of Apple’s user interface were not original and had been introduced 

earlier in Neonode’s N1 phones. PO Resp. 12 (citing Ex. 2013, 1, 9; Ex. 

2036 (a user-produced video); Ex. 2029 (video review of the Neonode N1m 

(an iteration of the N1 released in 2005)); Ex. 2019 (an Ars Technical article 

 

13 Petitioner objected to Exhibit 2012 and other exhibits we discuss below on 

grounds including lack of authentication and hearsay. See Paper 38. 

However, Petitioner has not filed a motion to exclude any evidence of record 

in this proceeding. See 37 C.F.R. § 42.64(c) (objections to evidence may 

only be preserved by filing a motion to exclude).

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comparing the N1m’s swiping gestures to Apple’s later “slide to unlock”

gesture)). Neonode also points to a 2019 Ph.D. dissertation that identified 

the N1 as “the first smartphone to use a touchscreen as primary input and to 

support touch gestures for several functions,” id. at 14 (emphasis omitted) 

(citing Ex. 2018, 9), and a 2015 dissertation describing the N1 as “the first 

mobile to use swipe gestures” and “to make extensive use of swipe gestures 

appropriate for one-handed use” (id. at 14–15 (emphasis omitted) (citing Ex. 

2020, 8 & Fig. 3)). Neonode also points to user posts praising the swiping 

features of the interface. Id. at 16–17 (citing Exs. 2030–2032).

In its Reply, Petitioner argues that the “alleged praise stemming from 

the 2002 CeBit demonstration should be disregarded” because, based on 

testimony from Thomas Eriksson who had knowledge about Neonode’s 

demonstration of the device at the conference, “[t]he demonstrated device 

did not have a working touch interface and did not practice the ’879 patent.” 

Pet. Reply 31 (citing Ex. 1058, 66:10–15, 105:10–106:11 (testifying that the 

N1 prototype displayed at CeBit was not fully functional); Ex. 1051 ¶ 137). 

We disagree that this evidence should be entirely disregarded because, 

as Neonode points out in its Sur-reply, “Petitioner disregards the witness’s 

testimony that the prototype had ‘a display’ and ‘a moving video showing 

different things you could do with the device.’” PO Sur-reply 6 (citing 

Ex. 1058, 105:15–18, 107:3–6). Nevertheless, we give that evidence little 

weight because (1) Mr. Eriksson was unable to recall whether the N1 

prototype displayed at CeBit had swiping gestures, although development of 

such gestures had begun before the conference (Ex. 1058, 105:22–108:6); 

and (2) Mr. Bystedt’s testimony that there was praise specifically related to 

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the CeBit conference is not supported by citations to corroborating evidence 

on the record (see Ex. 2026 ¶ 3).

Petitioner also argues that Magnus Goertz, the inventor, “admitted the 

claimed gesture-based interface was not new.” Pet. Reply 32 (citing 

Ex. 1057, 37:2–13, 18:9–17; Ex. 1051 ¶ 138). We agree with Neonode that 

this misrepresents his testimony because he was simply stating that other 

devices had touch screens and that a prior device had a stylus-based sliding 

gesture for “reverse texting.” PO Sur-reply 6 (citing Ex. 1057, 18:7–17, 

37:2–13).

Next, Petitioner argues that Mr. Bystedt’s cross-examination 

testimony contradicts Mr. Eriksson’s declaratory testimony that Samsung’s 

upper management praised the N1 device, because Mr. Eriksson did not 

recall the same statements, and during the discussions in which Mr. Bystedt 

says he heard the statements, “[t]he Samsung contingent spoke amongst 

themselves in Korean.” Pet. Reply 32 (citing Ex. 1058, 74:12–14, 75:4–

14). 14 We agree with Neonode that the testimony is not contradictory. 

PO Sur-reply 4. Although Mr. Eriksson did not recall hearing the same 

things in English that Mr. Bystedt says he heard during these discussions 

with Samsung, Mr. Eriksson did testify that a senior Samsung representative 

patted him on the back and said, “good work.” Ex. 1058, 73:24–14, 75:15–

76:2. Thus, both Messrs. Bystedt and Eriksson testify that Samsung 

 

14 Petitioner also argues that Mr. Bystedt’s testimony is hearsay. Pet. Reply 

32. Neonode characterizes the evidence as a party admission offered to show 

the speaker’s state of mind. PO Sur-reply 4. Because Petitioner has not 

preserved its hearsay objection by a motion to exclude, we do not need to 

decide this issue. See supra note 13.

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representatives praised Neonode’s technology during the discussions, and 

Mr. Bystedt specifically tied the praise to the phone’s “intuitive user 

interface.” Ex. 2026 ¶ 9. Also, as Neonode points out, Samsung licensed 

Neonode’s technology soon after the discussions. PO Sur-reply 4.

Finally, Petitioner argues that Neonode’s evidence of industry praise 

has no nexus with limitation 1d. Pet. Reply 30. In particular, Petitioner 

argues that Neonode’s evidence “relies on praise for prior art and unclaimed 

features” such as the absence of a physical keypad or keyboard, and 

Neonode’s zForce optical sensing technology. Pet. Reply 32 (citing 

Ex. 2012, 2; Ex. 1051 ¶ 138); see also id. at 30 (citing Ex. 1001, 6:14–16, 

6:45–59 (claim 1); Ex. 1053, 23:19–21; Ex. 1051 ¶¶ 131–132). According to 

Petitioner, zForce technology “was the subject of a different patent 

application and not mentioned in the challenged claims.” Id. (citing Samsung 

Electronics Co. v. Neonode Smartphone LLC, IPR2021-00145, Paper 68 at 

45 (PTAB June 15, 2022)).

We find these arguments unpersuasive. Although some of the industry 

praise was directed to these other features such as zForce, the evidence we 

have outlined above also clearly includes substantial industry praise of the 

N1 or N2 phone’s swiping gestures that are the subject of claim 1. 

Although a nexus must be “to some aspect of the claim not already in 

the prior art.” Kao, 639 F.3d at 1069 (emphasis added), there is no 

requirement that “objective evidence must be tied exclusively to claim 

elements that are not disclosed in a particular prior art reference in order for 

that evidence to carry substantial weight.” WBIP, 829 F.3d at 1331. A patent 

owner may show, for example, “that it is the claimed combination as a whole 

that serves as a nexus for the objective evidence; proof of nexus is not 

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limited to only when objective evidence is tied to the supposedly ‘new’ 

feature(s).” Id. at 1330. Thus, although our § 103 analysis focuses primarily 

on limitation 1d, we need not limit the scope of our inquiry only to industry 

praise of limitation 1d alone, when the evidence suggests that limitation 1d 

is part of what would have made the recited swiping gesture, as a whole, 

nonobvious over the asserted prior art.

Neonode’s evidence of industry praise is directed largely to the user 

interface’sswiping gestures, which allowed a user to control the device in an 

intuitive way using just a thumb. See, e.g., Ex. 2008; Ex. 1012, 2–3; Ex. 

2021, 2; Ex. 2013, 1; Ex. 2020, 8. That the gestures do not relocate or 

duplicate representation of the function during the swiping operation, as per 

limitation 1d, is part of what distinguishes the swiping gestures as a whole 

from “drag-and-drop” gestures in the prior art, because with a swiping 

gesture that includes limitation 1d, the user can control the device without 

the complexity of dragging an item or dropping it to a particular destination 

on the screen. See PO Resp. 29–30 (quoting Ex. 2007 ¶ 65 (testifying that 

“[i]n the field of human computer interaction, even small differences 

between gestures can have substantial consequences,” and “[i]t is most 

unlikely that Neonode’s phones would have received such praise if they 

replaced their seamless gliding functionality with a cumbersome drag-anddrop operation as shown in Hirayama-307”)); Ex. 1003, 170–171 (applicant 

during prosecution distinguishing the swiping gesture from a “drag-and-drop 

operation for moving an icon” known in the prior art); Ex. 2007 ¶ 65.

Thus, we find that Neonode has shown evidence of industry praise, 

and that praise has a substantial nexus to the swiping gesture of claim 1 as a 

whole, of which limitation 1d is a significant part.

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(c) Licensing 

Neonode argues that the fact Samsung entered a license agreement on 

July 2005 for the technology associated with the N1 and N2 phones is 

objective evidence of nonobviousness. PO Resp. 17–18 (citing Ex. 2028 

(license agreement)).

In response, Petitioner argues that Neonode has failed to show a nexus 

between the Samsung license agreement and the challenged claims because 

the agreement “covers multiple patent applications and other technology” 

such as zForce. Pet. Reply 33. Also, Petitioner argues that the challenged 

claims did not exist when Samsung entered its agreement with Neonode. Id.

(citing Ex. 1052, 202, 257).

Neonode responds that this “was not a license to a bundled product or 

hundreds of applications. Rather, the license concerned two specifically 

identified applications, the zForce application (concerning the light beam 

controlled touch-screen) and the ’879’s application [No. 10/315,250] 

(concerning the software for interaction with the operating system.” PO Surreply 5 (citing Ex. 2028, 1–2; id. at 2 (referring to “Neno” as the technology 

disclosed in the ’879 patent)). According to Neonode, “Samsung was clearly 

interested in both zForce and Neno and, indeed, licensed Neonode’s 

technology exclusively” and without being “prompted by a threat of 

litigation, a prior business relationship or other economic reason that might 

discount Samsung’s undeniable interest in exclusively licensing the 

technology.” Id. at 5–6 (citing Ex. 2028, 4).

Although Samsung would not have known the precise scope of claim 

1 when it issued, Samsung would have been aware of the overall technology 

that the application encompassed, including the disclosed swiping gestures. 

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Moreover, as we discuss above in the context of industry praise, there is 

evidence that at least some of Samsung’s interest in taking a license related 

to the intuitive, swipe-based gestures. See supra Section III.C.5(b); Ex. 2026 

¶ 9. We find that the evidence of record suggests a nexus between the 

allegedly unique features of claim 1 and the Samsung–Neonode license 

agreement, and the evidence weighs in favor of nonobviousness.

6. Conclusion as to claim 1

As discussed above, the evidence of record supporting Petitioner’s 

argument that Hirayama307 teaches limitation 1d is mixed but does not, on 

balance, show that a person of ordinary skill in the art would have had 

reason to include limitation 1d, and the addition of Ren’s teachings does not 

alter that assessment. Also, the evidence of objective indicia weighs in favor 

of nonobviousness. Considering the Graham factors as a whole, which 

weigh in favor of nonobviousness, we determine that Petitioner has not 

shown, by a preponderance of the evidence, that claim 1 is unpatentable 

under § 103 as obvious over the combination of Hirayama307 and Ren.

D. CHALLENGE TO DEPENDENT CLAIMS 2–6 AND 12–17

As part of its first ground, Petitioner argues that dependent claims 2, 

4, 5, and 14–17 are unpatentable under § 103(a) as obvious over 

Hirayama307 in view of Ren. Pet. 63–70. Petitioner also challenges claims 

3, 6, 12, and 13 on other grounds based on the combination of Hirayama307 

with either (a) Ren and Hirayama878 (claim 3), (b) Ren and Allard (claims 6 

and 13), or (c) Henckel (claim 12). Pet. 70–74.

The remaining challenged claims depend from claim 1, and 

Petitioner’s arguments regarding those claims address the specific 

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53

limitations added to claim 1 without specifically revisiting the issues we 

discuss above as to limitation 1d. See Pet. 63–74. Although Petitioner

addresses specific issues about claims 6 and 15 in its Reply, Petitioner does 

not otherwise raise arguments that would alter our analysis of claim 1. See

Pet. Reply 28–29.

Thus, we determine that Petitioner has not shown, by a preponderance 

of the evidence, that any of claims 2–6 or 12–17 are unpatentable under 

§ 103(a) as obvious over the respective prior art combinations.

IV. CONCLUSION

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

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

under any ground of the Petition.

V. ORDER

In consideration of the foregoing, it is

ORDERED that claims 1–6 and 12–17 of the ’879 patent have not 

been shown to be unpatentable; 

FURTHER ORDERED that the parties may, within 10 business days 

of the entry of this decision, file a joint motion to seal this decision, which 

must include, as an exhibit, a proposed redacted public version of this 

decision that will be open to the public, and in the absence of such motion, 

this decision will be made open to the public; and

FURTHER ORDERED that parties to this proceeding seeking judicial 

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

of 37 C.F.R. § 90.2.

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In summary:

Claim(s) 

35 

U.S.C. 

§

Reference(s)/Basis 

Claims

Shown 

Unpatentable

Claims

Not Shown 

Unpatentable

1, 14–17 103(a) Ren, Tanaka15

2–5 103(a) Ren, Tanaka, 

Hirayama307

3 103(a) 

Ren, Tanaka, 

Hirayama307 

Hirayama878

6, 13 103(a) Ren, Tanaka, Allard

12 103(a) Ren, Tanaka, 

Henckel

1, 2, 4, 5, 

14–17 103(a) Hirayama307, Ren 1, 2, 4, 5, 14–17

3 103(a) Hirayama307, Ren, 

Hirayama878 3 

6, 13 103(a) Hirayama307, Ren, 

Allard 6, 13

12 103(a) Hirayama307, 

Henckel 12 

1, 14, 15 103(a) Jermyn

Overall 

Outcome 1–6, 12–17 

 

15 The grounds based primarily on Ren and Jermyn have been withdrawn 

and we do not reach these grounds. See Paper 50.

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55

For PETITIONER:

Walter Renner

David Holt

FISH & RICHARDSON P.C.

axf-ptab@fr.com

holt2@fr.com

Tiffany Miller

James Heintz

DLA PIPER LLP (US)

tiffany.miller@dlapiper.com

jim.heintz@dlapiper.com

For PATENT OWNER:

Kenneth Weatherwax

Parham Hendifar

Patrick Maloney

Vinson Lin

LOWENSTEIN & WEATHERWAX LLP

weatherwax@lowensteinweatherwax.com

hendifar@lowensteinweatherwax.com

maloney@lowensteinweatherwax.com

lin@lowensteinweatherwax.com

Philip Graves

GRAVES & SHAW LLP

philipg@hbsslaw.com

Case 6:20-cv-00507-ADA Document 81-5 Filed 05/19/23 Page 56 of 56