EXHIBIT 2

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IN THE UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC, 

Plaintiff, 

§ 

§ 

§

v. § 

§

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

SAMSUNG ELECTRONICS CO. LTD, and 

SAMSUNG ELECTRONICS AMERICA, 

INC.,

§ 

§ 

§

JURY TRIAL DEMANDED 

Defendants. §

DECLARATION OF ANDY COCKBURN IN SUPPORT OF 

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF 

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I, Andy Cockburn, hereby declare as follows: 

1. I have been retained as an expert witness on behalf of Samsung Electronics Co., 

Ltd. and Samsung Electronics America, Inc. (collectively referred to as “Samsung” or 

“Defendants”) in the above-referenced litigation. I understand that this Declaration is being 

relied upon by Defendants’ Opening Claim Construction Brief. 

2. I am being compensated for my time in connection with this matter at an hourly 

rate of $500. My compensation is in no way dependent on the outcome of this matter. 

3. I have been asked to opine on matters related to claim construction for U.S. Patent 

No. 8,095,879 (“the ’879 patent”). 

4. In preparing this Declaration, I have reviewed the ’879 patent and its file history, 

the constructions proposed by the parties, and any other documents referenced in this 

Declaration. 

5. In forming the opinions expressed in this Declaration, I relied upon my education 

and experience in the relevant field of the art and have considered the viewpoint of a person 

having ordinary skill in the relevant art as of 2002 for the ’879 patent. 

I. BACKGROUND AND QUALIFICATIONS 

6. My background and expertise that qualify me as an expert in the technical issues 

in this case are as follows: 

7. I am a Professor at the Department of Computer Science and Software 

Engineering at the University of Canterbury, New Zealand. I also currently head the HCI (which 

stands for “Human-Computer Interaction”) and Multi-Media research group at the University of 

Canterbury. 

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8. In 1988, I was awarded a Bachelor of Science with Honors in Computer Science 

from the University of York, England. 

9. In 1993, I was awarded a Ph.D. from the University of Stirling, Scotland. My 

thesis was on “Computer Supported Cooperative Work” which relates to forms of group 

interaction supported on computer. 

10. In 1993, I joined the University of Canterbury as a Lecturer in the Department of 

Computer Science (now the Department of Computer Science and Software Engineering). I was 

subsequently promoted to a Senior Lecturer, and then an Associate Professor, before my 

appointment as a Professor in 2010. I currently hold this title of Professor. 

11. I have over 25 years’ experience in the area of human-computer interaction 

(“HCI”). The field of HCI generally is concerned with ways of understanding and improving the 

interaction between humans and computers, with a view to understanding, evaluating, designing 

and building new styles of interactions that improve on one or more of the end goals of making 

computers (including mobile devices) faster to learn, more intuitive, and more efficient and 

satisfying to use. Advances in the field of HCI are commonly associated with the development 

of new hardware and/or software, such as exploring the interaction possibilities enabled by a new 

input/output device or sensor, and examining new ways to process human input or create new 

interactive effects in software. 

12. Throughout my career, I have published the results of many research projects that 

have involved building new user interfaces or reviewing existing user interfaces for performing a 

particular task, and evaluating their effectiveness. This includes publications relating to: 

 designing, implementing, and evaluating touchscreen interface for pen-based 

input of music notation; 

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 reviewing and improving various interface schemes for traversing through 

documents in computer applications, including zooming, scrolling, and other 

techniques; 

 addressing the problems arising from the small form factor of mobile devices with 

touch-sensitive displays; 

 evaluating the importance of spatially stable displays in user interfaces; 

 analyzing new interfaces for text entry on mobile and touch-sensitive devices; 

 examining the influence of haptic feedback on user performance with mouse and 

touchscreen input devices; and 

 designing, implementing, and evaluating interfaces to better support transitions 

from novice to expert performance. 

13. I also have extensive experience in designing and building new user interfaces 

and reviewing existing user interfaces. This includes a number of projects regarding the design, 

development and evaluation of user interfaces that I have undertaken with companies in the 

computing and HCI industry, such as: 

 working with Airbus SAS since 2016 on methods to assist pilot interaction with 

touchscreens in turbulent environments, including pan, slide, and zoom 

operations; 

 working with Hewlett-Packard Research Labs from 2010-2012 on the design and 

evaluation of pointing techniques for remote displays, such as interactive TVs; 

 a number of projects from 2006-2010 working with Logitech on the design, 

development, evaluation and improvement of user interfaces for next generation 

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mice, including in relation to scrolling and window management tasks through 

overview displays, which relate to zooming; 

 working with IBM Almaden Research in 2006 on the design, development and 

evaluation of user interfaces for touch-sensitive text entry on mobile devices; 

 working with Digit Wireless in 2002 on the evaluation of user performance for 

user interfaces for digital text entry on mobile devices; and 

 working with Microsoft Research in 1999 on the development, evaluation and 

improvement of user interfaces for web browsing, in particular the mechanisms 

for revisiting pages (such as through the “back” button or bookmarks). 

14. At the University of Canterbury, I currently teach the following courses: 

 a course on introductory computer programming designed for first year students 

across disciplines; 

 a course on computer science research methodology for postgraduate students; 

 courses on HCI for computer science students at all university levels (including 

honors and masters level students). 

15. I also manage an active research lab with a number of graduate level students. I 

have previously supervised thirteen students to successful completion of their Ph.D.’s in the field 

of HCI. 

16. In 2015 I was elected to the Association of Computing Machinery (ACM) 

Computer Human Interaction (CHI) Academy, which honors the principal leaders of the field of 

HCI. I have been a continuous member of the ACM for over three decades. 

17. Since the early 1990s, I have routinely attended annual conferences relating to the 

field of HCI and have regularly read journals that cover research in the field of HCI. 

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18. I have served on the editorial boards of leading journals in the HCI field 

(including ACM Transactions on Computer-Human Interaction, Human-Computer Interaction 

Journal, and International Journal of Human-Computer Studies, Interacting with Computers, and 

Foundations and Trends In Human Computer Interaction), and have participated in the review 

process for numerous articles, including articles related to sliding interactions on touch-sensitive 

input devices. 

19. I have served in senior leadership roles for the leading conference in the field of 

HCI—the ACM CHI Annual Conference on Human Factors in Computing Systems. I was 

technical program co-chair for CHI 2020, I served as paper and notes chair for CHI 2014 and 

2015, and as subcommittee chair for CHI 2011. I served on the inaugural steering committee for 

the ACM CHI conference (2016-2020). 

20. I have authored over one hundred and fifty publications related to HCI in 

international journals and conferences 

21. Details of my professional qualifications and background are more fully set forth 

in my curriculum vitae, a copy of which is attached as Appx. A. 

22. I have previously offered testimony as an expert witness in the field of HCI. A 

list of my prior engagements in which I testified as an expert at trial or by deposition is also 

included in my CV. 

23. Based on my background and experience, as set forth more fully in my CV, I am 

familiar with the state of the art in the field of user-interface design and development as of 

December 10, 2002, which I understand is the filing date of the application that issued as the 

’879 patent, as well as 2000-2002, where I understand that Neonode has alleged a conception 

date of “no later than 5/25/2000 for the ’879 patent.” I was at those times and still am a technical 

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expert in the fields relating to the ’879 patent and other related fields, and I remain an active 

researcher in these fields. 

24. Based on my professional experience, I believe I am qualified to testify as an 

expert on matters related to the patent at issue. 

II. UNDERSTANDING OF THE LAW 

25. I am not a legal expert and therefore I offer no opinions on the law. However, I 

have been informed and am aware of legal standards that are relevant to my analysis, as 

summarized below. 

26. I have been informed and understand that claims are generally given their 

ordinary and customary meaning as understood by a person of ordinary skill in the art 

(“POSITA”) at the time of the alleged invention, in light of the patent specification and 

prosecution history. Such an individual is considered to possess ordinary skills and knowledge 

in a particular technical field and is not an automaton. I have been informed that claim 

construction is a matter of law and that the final claim constructions for this proceeding will be 

determined by the Court. 

27. It has been explained to me that the patent statute includes a requirement that 

claims be definite. I have been informed that, to meet this “definiteness” requirement, the claims 

must particularly point out and distinctly claim the subject matter that the applicant regards as his 

or her invention. I understand that indefiniteness is evaluated from the perspective of a POSITA 

at the time of a patent’s filing. It has been explained to me that a patent claim is indefinite if the 

claim, when read in light of the specification and the prosecution history, fails to inform a 

POSITA of the scope of the invention with reasonable certainty. It was further explained to me 

that absolute or mathematical precision in claim language is not required. However, it is not 

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enough that some meaning can be ascribed to a patent’s claims. A claim is indefinite if its 

language might mean several different things and no informed and confident choice is available 

among the contending definitions. 

28. I have been informed and understand that a patentee’s statements during inter 

partes review should also be considered in evaluating the meaning of a claim. 

29. I have been informed by counsel that the claim language “consists of” is a term of 

art in patent law with a distinct and well-established meaning, and there is an exceptionally 

strong presumption that a claim term set off with “consisting of” is closed to unrecited elements. 

III. THE ’879 PATENT 

A. Summary of the ’879 Patent 

30. The ’879 patent “relates to a user interface for a mobile handheld computer unit, 

which computer unit comprises a touch sensitive area.” Ex. 1 (’879 patent) at 1:6-8. The ’879 

patent recognizes that “[m]obile handheld computers” include a “mobile phone,” a “personal 

digital assistant (PDA),” and a “laptop computer.” Id. at 1:24-33. 

31. Figure 1 illustrates a “user interface” with “a touch sensitive area 1, which is 

divided into a menu area 2 and a display area 3.” Id. at 3:51-54. Menu area 2 is “adapted to 

present a representation of a first 21, a second 22 and a third 23 predefined function.” Id. at 4:1-

3. 

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Id. at FIG. 1 (annotated). 

32. “FIG. 2 [below] 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.” Id. at 4:7-11, FIG. 2 (annotated). 

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33. The ’879 patent discloses “the object 4 can be a finger” or “a pen or other 

pointing device.” Id. at 6:11-15. 

B. Level of Ordinary Skill in the Art 

34. I have also been advised that a POSITA is a hypothetical person who is capable of 

understanding the scientific and engineering principles applicable to the relevant art of the 

claimed subject matter. I understand that a POSITA is presumed to have known the relevant 

prior art at the time of the alleged invention. 

35. I understand the application that issued as the ’879 patent was filed on 

December 10, 2002 (the “critical date”). In my opinion, a POSITA as of the critical date of the 

’879 patent 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. Additional years of experience could substitute for formal education, 

and vice versa. 

36. Based on my experience, education, and training, I met the definition of a 

POSITA in December of 2002, the time of the critical date of the ’879 patent. I also had 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. My 

opinions concerning the ’879 patent claims and the prior art are from the perspective of a 

POSITA, as set forth above. If the Patent Owner alleges an earlier invention date, such as 2001 

or 2000, my opinions from the perspective of a POSITA at that time would not change. 

37. I understand that Neonode has not yet offered its view of the level of ordinary 

skill in the art. To the extent that Neonode or its expert provides its view of the level of ordinary 

skill in the art, I reserve the right to respond to the extent that opinion is different than mine. I 

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also note that my opinions provided in this Declaration would not change in view of any 

insignificant modifications to this level of skill. 

IV. CLAIM CONSTRUCTIONS 

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

(’879 Patent, claim 1) 

Defendants’ Proposed Construction Neonode’s Proposed Construction 

Indefinite. Plain meaning. 

1. Claim Language 

38. This term has no plain and ordinary meaning to a POSITA and the ambiguity 

inherent in the plain language of the claim creates multiple unanswerable questions as to its 

scope. As stated above, I have been informed by counsel that the claim language “consists of” is 

a term of art in patent law with a distinct and well-established meaning, carrying an 

exceptionally strong presumption that the scope of the claim term is closed to unrecited 

elements. With this understanding, the phrase would close the “representation” off from 

unrecited elements, but there is no reasonable guidance in the claims or intrinsic record as to 

what is included and excluded from the claimed “representation.” 

39. The claim lacks any reasonable clarity as to how the unidentified features of a 

“representation” are closed off by the phrase “consists of only one.” While a POSITA would 

recognize a representation might have some visual aspect, the claims do not require that the 

representation be displayed, but merely “provided.” Thus, the scope of the claim would include a 

representation that is printed, engraved, or otherwise affixed on the touch sensitive area. The 

claim does not specify any visual aspect of the “representation” other than it represents “a 

function.” The representation might also have a physical or structural aspect, e.g., to provide 

tactile information to the user, but that is not mentioned in the claim (or specification). 

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40. As described in the following paragraphs, a POSITA would not know whether the 

claim term “representation consists of only one option for activating the function” related to 

visual aspects of the representation, to the availability of gesture(s) associated with the 

representation, or to the function(s) accessible from the representation. 

41. Does this term limit the representation to a single visual aspect? The claim does 

not explicitly require a specific visual component, and there is no indication regarding what type 

of visual aspects may be included or excluded. As noted above, the claims allow for the 

representation to be engraved or printed on the touch sensitive area. A POSITA would readily 

understand that the visual aspect of such representation could not readily change and thus be 

limited to only that one visual aspect. Conversely, the claims also allow for a representation 

displayed on a display screen within the touch sensitive area. A POSITA would understand that 

the visual aspects of such representations have the potential to change or remain static, 

dependent on the underlying software controlling the visual aspects of the representation. 

Furthermore, even if the displayed visual aspect of the representation remained static, a POSITA 

would understand that a static representation may display more than one available function—for 

example, the ISO/IEC 9995-8 standard numeric keypad, as shown below, was commonly 

emulated within user interfaces before 2002. It includes some interactive representations that 

depict only one function (e.g., “1”), while other representations depict several functions (e.g., 

“ABC 2”). Under this “visual aspect” interpretation, a POSITA could not ascertain whether the 

“consists of” language limits the representation to being affixed to the device, whether it allows 

for software generated representations that do or do not change, or whether it limits the range of 

functions displayed within the representation. 

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42. A POSITA would also recognize that another aspect of the “representation of the 

function” would be how to interact with it in order to activate the function(s). For example, the 

phrase “option for activating” seems to refer to how a user interacts with the representation to 

invoke a response from the user interface (i.e. “only one option for activating”). For example, 

the only “option for activating the function” addressed in the claims is a user gesture such as 

“gliding.” An “option for activating” could refer to an action or type of input gesture by the user, 

where a tap, a drag, and a long press might each be a separate “option.” A POSITA would also 

understand that gestures such as a drag-left and drag-right would each be a different “option.” 

The ’879 patent, for example, instructs that “direction B” is part of the “movement” for 

activating functions 21, 22, and 23. Ex. 1 (’879 patent) at 4:7-11. But 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. Reading the “consists of” language to limit how a user interacts with the 

representation also causes confusion because a POSITA would typically not consider a 

representation as “consist[ing]” of a user gesture or the software response to a user gesture. The 

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gesture “options” are manners in which a user may interact with the representation, and they 

would not be considered as part of the representation. A POSITA would readily understand that 

these gestures (e.g., tap, drag, long press, etc.) may be used in a variety of ways with the user 

interface and are not tied to any specific representation. 

43. A POSITA would also recognize that another aspect related to the “representation 

of the function” is what function(s) the representation is associated with. I understand that “a” in 

the context of a patent claim can refer to “one or more”, and “the” therefore could refer to “the 

one or more,” in which case the language of the claim would not limit the representation to 

representing a single function, where “a function” and “the function” could mean one or more 

functions. While a POSITA would interpret the phrases “a function” and “the function” as 

referring to the same function, a POSITA would not know whether “the representation consists 

of only one option for activating the function” 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). However, the 

claims provide no guidance on which of these interpretations might be correct. 

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44. The claim language includes multiple inherent ambiguities that compound upon 

one another, resulting in multiple, equally plausible meanings, where the selection of any one 

interpretation over another would be mere guesswork. For example, at least the below three 

possible interpretations would be readily identified by a POSITA. A POSITA would understand 

there are additional possible interpretations of the claim, particularly related to the visual aspect 

of the representation. However, I have focused on the following three meanings in view of the 

applicant’s arguments in the prosecution history and what Neonode argued in the IPR 

proceedings: 

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

how to activate the function (e.g., only one specific input gesture, such as tap or dragleft, will activate the function); 

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

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

activate one function, but, if the representation also represents a second different 

function, then only a second different input gesture will activate that second 

function); and 

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

options for how to activate the function (e.g., any input gesture, such as tap or drag in 

any direction, will activate the single function). 

These three possible meanings are illustrated below, where the “R” refers to “representation,” “f” 

refers to a “function,” and “g” refers to a gesture: 

The scope of claim 1 varies significantly depending on which of these meanings are applied. 

However, no informed and confident choice is available among these definitions. 

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2. Specification 

45. The specification offers no additional guidance relating to the meaning of this 

disputed claim phrase. The patent discusses only two aspects of a “representation of a 

function”—which function(s) is associated with representation, and how to activate the function 

by interacting with the representation: 

Ex. 1 (’879 patent) at 4:1-11 (emphasis added). The word “option” does not appear in the 

specification (nor does the broader phrase “only one option for activating the function”), and the 

specification does not describe the “representation” as “consist[ing]” of anything, let alone how 

the representation might consist of “only one option for activating the function.” The 

specification (and the claims) recites that the representation is “present[ed],” and does not 

explain what the representation “consists of,” or require nor limit whether it is displayed, or any 

visual or physical aspect of the representation. The specification also does not limit what action 

of the user can activate the functions 21, 22, and 23, leaving open the ability to activate a 

function, for example, with a tap gesture in addition to the “movement” shown in Figure 2. Id. at 

4:7-11. However, the specification does not address what it means for there to be “only one 

option for activating the function.” The specification also does not limit a “representation of a 

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function” to only one function, teaching instead that representation of function 21 corresponds to 

a specific function when no application is active, and, if an application is active, a function 

particular to that application. Id. at 4:7-15, 4:29-33. Thus, the only relevant disclosure that can 

be gleaned from the specification is that “any one” function (as opposed to multiple functions) 

might be activated through a gesture (and the specification never discloses multiple functions 

being activated by one user gesture at the same representation), which, as described above, 

would be inconsistent with the normal usage of “a” in the claim when it recites “a function.” 

The specification therefore fails to allow a POSITA to make an informed and confident choice 

among the contending definitions. 

3. Prosecution History 

46. The original prosecution history of the application that issued as the ’879 patent 

also supports multiple plausible readings of this claim term. The ’879 patent issued from U.S. 

Patent Application No. 10/315,250 (“the ’250 Application”), filed December 10, 2002. The ’250 

Application was originally filed with one independent claim, which is markedly different from 

the issued independent claim 1 of the ’879 patent. Original claim 1 was similar to the 

embodiment disclosed in the specification and illustrated in Figure 1 of the ’879 patent: 

1. User interface for a mobile handheld computer unit, 

where said computer unit comprises a touch sensitive area, which touch 

sensitive area is divided into a menu area and a display area, 

where said computer unit is adapted to run several applications 

simultaneously, and to present an active application on top of any other 

application on said display area, 

characterised in, that said menu area is adapted to present a representation 

of a first, a second and a third predefined function, 

that said first function is a general application dependent function, 

that said second function is a keyboard function, 

that said third function is a task and file manager, and 

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that any one of said three functions can be activated when said 

touch sensitive area detects a movement of an object with its 

starting point within the representation of said function on said 

menu area and with a direction from said menu area to said display 

area. 

Appx. B (’879 patent File History (“’879 FH”), 12/10/2002 Claims) at 10 (emphasis 

added). In the first incarnation of the ’879 patent, the applicant described the activation 

operation as a “movement of an object.” 

47. After numerous rejections by the Examiner and amendments by the applicant to 

independent claim 1, in a June 30, 2010 amendment Neonode introduced the disputed term to 

distinguish the prior art Hirshberg reference from the claimed “representation of a function” that 

responds to a “touch-and-glide operation.” Ex. 3 (’879 FH, 6/30/2010 Amendment), at 2, 8-9. 

Hirshberg discloses multifunction keys, where each key corresponds to multiple characters and 

responds to multiple gestures such that, for example, an “H” is entered by contacting a key and 

moving up/north, and an “I” is entered by contacting the same key and moving right/east. Ex. 4 

(U.S. Patent App. Pub. No. 2002/0027549 (“Hirshberg”)) at Abstract, FIGs. 1, 2 (trace 508 

(“H”), trace 506 (“I”)), [0059]. The applicant remarked that “Hirshberg teaches a touch and 

glide operation only for keys that comprise several characters,” Ex. 3 (’879 FH, 6/30/2010 

Amendment) at 8 (emphasis added), and “for single character keys Hirshberg teaches using a 

conventional touch operation without a glide.” Id. at 9 (emphasis in original). Neonode further 

stated “[i]n distinction, the claimed invention uses a multi-step touch-and-glide operation for 

representations that consist of only one option for activating a function.” Id. at 9 (emphasis in 

original). Neonode underlined the pertinent language where it believed the distinction was: 

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Hirshberg ’879 Patent 

“Applicant respectfully submits that 

Hirshberg teaches a touch and glide operation 

only for keys that comprise several characters. 

On the contrary, for single character keys 

Hirshberg teaches using a conventional touch 

operation without a glide”

“uses a multi-step touch-and-glide operation 

for representations that consist of only one 

option for activating a function” 

Id. at 8-9 (emphasis in original). 

48. The applicant also similarly stated that “[e]lement 22 consists of the one option of 

opening a keypad and text window,” and “[e]lement 23 consists of the one option of opening a 

list of computer system applications and files,” referring to each element as a “one-option 

element[].” Id. at 10. This suggests the “only one option” language of the claim refers to the 

representation’s corresponding function, and means the representation corresponds to only one 

function, thereby distinguishing Hirshberg’s keys that “comprise” or provide for different 

functions, i.e., entry of “several characters.” This interpretation of “only one option” is that the 

independent claim does not apply to representations that correspond to multiple potential 

functions. Rather, the scope of the ’879 patent is limited to representations of only a single 

function (such as Hirshberg’s single character key) that are also activated by a touch-and-glide 

gesture. In other words, applicant distinguished Hirshberg because its single character keys (i.e., 

only one function) did not utilize a glide gesture and the Hirshberg keys that did utilize a touchand-glide gesture were not limited to a single function. 

49. But the applicant further stated, in identifying support in the specification for the 

amendment, that “each representation 21-23... consists of only one option for activating its 

corresponding function.” Id. at 10 (emphasis in original). In contrast to the distinction discussed 

above, this suggests the disputed term means there is only one option for how to activate (e.g., a 

gesture) a representation’s “corresponding function.” Applicant’s statements could be 

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interpreted to mean that a user interface in which a representation’s corresponding function can 

be activated using two or more different types of gestures would not fall within the scope of 

the ’879 patent. In this manner, Hirshberg’s multiple-character keys would not practice the 

limitation because each key responds to multiple gestures. For example, a key representing one 

character on the left side and one character on the right side would allow for multiple gestures, 

e.g., touch and move left and touch and move right, to enter a character. 

50. In sum, a POSITA would have found the prosecution history to add more 

confusion than clarity regarding the meaning of the disputed claim term. The prosecution history 

is thus insufficient to help a POSITA to choose amongst the multiple potential meanings with 

any confidence, let alone reasonable confidence. Moreover, even if the prosecution statements 

suggest that the correct meaning is that only one function is associated with the representation, 

such a meaning (as noted above) would be inconsistent with the plain meaning by reading the 

“activating” term out of the claim. 

4. IPR Statements 

51. I understand that there were two inter partes review (IPR) proceedings against 

the ’879 patent: IPR2021-00144 (the “Samsung IPR”) and IPR2021-01041 (the “Google IPR”). 

Neonode’s statements in the Google IPR are internally contradictory as well as contradictory to 

the statements in the original prosecution history, and therefore fail to provide reasonable 

certainty as to which of the multiple definitions of the disputed claim term is correct. 

52. Neonode initially stated that a POSITA would understand the “only one option” 

term limited the representation to a single function. In IPR2021-01041, where Petitioner Google 

LLC challenged the ’879 patent, Neonode explained in its Patent Owner Response that the 

“representation presents the user with one option of what to activate.” Ex. 5 (IPR2021-01041, 

Case 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 21 of 48
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Paper 29 (“POR”)) at 5 (emphasis added). A POSITA would have therefore understood 

Neonode to be arguing that the disputed term means the representation is limited to only a single 

function. Neonode also argued that the “one-option limitation” should not be interpreted to 

“require that each function associated with the representation of the function can be activated 

only by one gesture.” Id. at 52 (emphasis added). During the IPR oral hearing, Neonode 

confirmed that it was “not proposing that the representation of a function can only be activated 

with one gesture.” Ex. 6 (IPR2021-01041, Paper 50 (“Record of Oral Hearing”)) at 48:2-3. 

Likewise, Neonode’s expert, Dr. Rosenberg, opined that “there [need] be only a single option 

with respect to the representation of the function regardless of the direction of ‘gliding . . . 

away.’” Ex. 5 (IPR2021-01041, POR) at 52 (emphasis added); Appx. C (IPR2021-1041, 

EX2019 (“Rosenberg 2nd Decl.”)) at ¶ 105. 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. 

53. But during the very same oral hearing, Neonode contradicted its earlier 

statements. The IPR Board commented during Patent Owner’s oral argument on this claim 

limitation that “if we put aside the prosecution history for a moment and just looked at the plain 

language, it seems like it could be read to say that a representation could have multiple functions 

and that there’s only one option for activating each of the functions that could be associated with 

that representation.” Ex. 6 (IPR2021-01041, Record of Oral Hearing) at 71:25-72:13 (emphasis 

added). Neonode then abandoned its earlier position in the IPR and its arguments in the 

prosecution history, making clear that “we are not arguing that the representation must only have 

one function. That’s not what we’re arguing.” Id. at 72:23-24 (emphasis added); see also Ex. 7 

(IPR2021-01041, Paper 44 (“PO Sur-Reply”)) at 10 (“Neonode does not argue that the 

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representation must represent ‘only one function’”); Ex. 10 (IPR2021-01041, EX1031 

(“Rosenberg Tr.”)) at 45:24-47:4, 48:6-49:3 (explaining “function” is a very broad term). 

Taking this statement at face value, a POSITA would understand that Neonode’s position 

changed to allow for the representation to represent multiple functions. 

54. Moreover, Neonode pivoted to yet another contradictory interpretation at the surreply and hearing stage of the IPR that “a representation can at different times have multiple 

functions” so long as “at any given time, the user is given only one option in terms of what 

gesture to put in and what action to take.” Ex. 6 (IPR2021-01041, Record of Oral Hearing) at 

73:1-6 (emphasis added); Ex. 7 (IPR2021-01041, PO Sur-Reply) at 10-11 (“even if the 

representation may represent different functions depending on the context, the user is provided 

with only one option on what action to initiate in that context.”) (emphasis added). This appears 

to be a combination of both the function and gesture aspects of the representation, where the 

representation is limited to only one function and only one gesture for activating the single 

function, but with an added context of “at any given time.” Based on these statements by 

Neonode, a POSITA would understand the term to mean the representation represents multiple 

functions, but only permits one function to be activated at a time and that activation must result 

from a single specified gesture. But there is no basis in the plain language of the claim for the 

added “at any given time” context. 

55. Neonode managed, during a single IPR proceeding, to inconsistently argue that 

the “only one option” claim language: 

 Does require that the representation have only one corresponding function; 

 Does not require that the representation have only one corresponding function; 

 Does require that each function be activated by a single gesture; and 

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 Does not require that each function be activated by a single gesture; 

Thus, Neonode’s statements in the Google IPR fail to provide the required reasonable certainty 

of meaning to the disputed claim term and instead amplify the lack of certainty. 

B. “gliding” (’879 Patent, claim 1) 

Defendants’ Proposed Construction Neonode’s Proposed Construction 

Indefinite. Plain meaning, not including a drag and drop 

operation.

56. I understand that Neonode has not provided its understanding of the plain and 

ordinary meaning of “gliding” in this litigation, or what the term does and does not include. In 

the Samsung IPR, Neonode stated that “The Plain Meaning Confirms ‘Gliding’ And ‘Dragging’ 

Are Distinct,” but did not articulate what aspect of a “glide” makes it distinct from a “drag” in its 

briefing. Ex. 9 (IPR2021-00144, Paper 49 (“PO Sur-Reply”)) at 7-9. In the Google IPR, 

Neonode argued that interpreting a “flick” gesture as a “glide” is “contrary to the plain 

meaning . . . . ” Ex. 5 (IPR2021-1041, POR) at 35. Only in the Google IPR did Neonode’s 

papers suggest a meaning of “glide,” which it alleged to be “a longer, continuous and effortless 

motion.” Id. at 44. However, 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 is instead a “flick” or a “drag.” 

57. Claim 1 recites “activating the function . . . by a multi-step operation 

comprising . . . (ii) the object gliding along the touch sensitive area away from the touched 

location.” Ex. 1 (’879 patent) at 6:52-57. The specification never uses the word “glide” or 

“gliding,” or “flick” or “drag,” or any variations thereof. Instead, the specification recites 

activating a function by detecting the “movement of an object” as shown in Figure 2. See id., 

Case 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 24 of 48
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4:7-9, 2:10-12 (emphasis added). But a “glide,” “flick,” and “drag” all correspond to “movement 

of an object.” The specification thus provides no information to a POSITA that would allow 

them to distinguish between a “glide” and a “flick” or a “drag.” For example, a POSITA 

recognizes that the action of the finger in Figure 2 is the same for a “glide” and for what 

Neonode calls a “flick” and a “drag.” Neonode’s expert in the IPRs against the ’879 patent 

agreed. Ex. 10 (IPR2021-01041, Rosenberg Tr.) at 21:4-22:6, 36:2-12 (admitting that flick and 

glide gestures both start at a touched location and move away from the touched location while 

continuing to touch the screen); Ex. 11 (IPR2021-00144, EX2007 (“Rosenberg Decl.”)) at ¶ 65 

(stating a “glide” and a “drag” “may have overlapping movements”). 

58. During the parties’ hearing in the Samsung IPR, one of the PTAB judges asked 

Neonode to explain how to distinguish between a “glide” and a “drag.” Neonode’s counsel 

responded, without pointing to any intrinsic or other evidence to support his statement, that 

“dragging is much more intensive, harder and laborious, whereas a glide is much more seamless 

and effortless.” Ex. 19 (IPR2021-00144, Paper 55 (“Record of Oral Hearing”)) at 46:1-4. 

Neonode’s counsel asked the judge whether his explanation answered his question, to which the 

judge responded: “I guess it doesn’t answer mine because I still don’t know how to look at the 

description of the actual movement in the [prior art] reference and determine whether it’s a slider 

or a glide or not. . . . Well, it could just be that they mean the same thing, that the description of 

the glide that is a movement of something along the touchscreen is a glide. That seems like the 

plain and ordinary meaning. I mean, you’re telling me that’s a drag and I’m trying to figure out, 

well, how is that not a glide?” Id. at 46:14-47:2; see also id. at 40:1-45:1, 52:20-53:20 

(Neonode’s counsel indicating that an alleged difference between a glide and a drag is the 

amount of effort, and a glide “is a much more generic movement”). However, intensity, 

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hardness, labor, seamlessness, and effort find no support in the patent or the prosecution history. 

Nor are these terms of art that a POSITA would be able to use to identify the boundary between 

a “glide” and a “drag” with reasonable certainty. For example, there is no guidance as to the 

boundary between an intensive, laborious gesture and an effortless gesture. The same gesture 

might be considered effortless by one person and laborious by another. 

59. Neonode argued in the Google IPR that a “glide” is distinguished from a “flick” 

based on multiple parameters, including speed, distance, effort, jerkiness and smoothness. See

Ex. 5 (IPR2021-1041, POR) at 41 (“‘flick’ is [] a jerky, quick and short motion”), 43 (“flick” 

“plain meaning [is] a short, jerky motion”), 44 (“glide” is a “longer, continuous and effortless 

motion” whereas a flick is “higher speed and shorter distance”); Ex. 6 (IPR2021-01041, Record 

of Oral Hearing) at 46:19-21 (“glide, which again consistently requires a smooth, continuous, 

and effortless movement”). None of these parameters find support in the patent itself, nor are 

they mentioned in the prosecution history, and certainly not in a way that would allow a POSITA 

to make a distinction between a glide and a flick. Neonode admitted that, to make such 

distinctions between types of movement, the system would have to “keep track of the 

characteristics of the motion, whether it’s speed or acceleration or distance . . . that would make 

it a gliding as opposed to a flick.” Ex. 6 (IPR2021-01041, Record of Oral Hearing) at 50:14-21. 

But neither the claims nor the patent specification teach which, if any, of the characteristics of 

the motion are relevant to distinguishing a glide from a flick. 

60. The hindsight identification of movement parameters by Neonode’s expert in the 

IPR proceedings does not provide scope to the claim language. For example, even if a 

programmer chose a certain speed to identify a flick (see Appx. C (IPR2021-1041, Rosenberg 

2nd Decl.) at ¶ 84: “slower” for glide, “faster” for flick), there are no guidelines in the intrinsic 

Case 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 26 of 48
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record to inform a POSITA what speed is for a flick as opposed to a glide. In other words, a 

programmer would not know, based on the intrinsic record, when they have crossed the threshold 

in their programmed speed attribute from a movement allegedly outside the claim scope (flick), 

to one allegedly in claim scope (glide). Similarly, if the difference between the two gestures is 

dependent on distance as the parameter (see id. at ¶ 86 (a flick “only moves on the screen for a 

very short distance”)), a programmer would not know based on the intrinsic record when they 

crossed the threshold in the programmed distance attribute from a flick to a glide. Put another 

way, a programmer would not know how “short” is “very short,” according to Dr. Rosenberg. A 

POSITA would face the same challenges in distinguishing a “glide” from a “drag.” 

61. Moreover, Dr. Rosenberg suggests that additional factors related to the particular 

device might impact whether a gesture is the claimed “glide” or the allegedly excluded “flick,” 

such as screen size, resolution of the screen, input device, and the task. Ex. 10 (IPR2021-01041, 

Rosenberg Tr.) at 27:15-29:6. But the intrinsic record provides no guidance on how to use these 

factors to distinguish between a glide and flick. For example, to the extent Dr. Rosenberg is 

suggesting the vertical stroke gesture well-known for Palm users might be a glide gesture on a 

Palm device, but a flick on a larger device, the intrinsic record still fails to inform a POSITA 

where the thresholds are in the various factors to distinguish between the gestures. Dr. 

Rosenberg admitted the difference between a flick and a glide “would really depend on so many 

attributes” that are absent from the ’879 patent and the intrinsic record. Id. at 29:2-6. 

62. Dr. Rosenberg also agreed during the IPRs that the action of the finger described 

in Figure 2 of the ’879 patent is the same for a “glide,” “flick,” and a “drag.” Id. at 21:4-22:6, 

36:2-12 (admitting that flick and glide gestures both start at a touched location and move away 

Case 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 27 of 48
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from the touched location while continuing to touch the screen); Ex. 11 (IPR2021-00144, 

Rosenberg Decl.) at ¶ 65 (stating a “glide” and a “drag” “may have overlapping movements”). 

63. Nothing in the claims or specification, or prosecution history, provides a POSITA 

with guidance on how to interpret Neonode’s IPR statements or how to determine objective 

boundaries for the claimed “gliding” such that a POSITA could determine when a gesture is a 

“glide” and when the gesture is a “flick” or a “drag.” The claims merely recite an “object gliding 

along the touch sensitive area away from the touched location.” Ex. 1 (’879 patent) at 6:56-57. 

The claim does not provide any indication related to other parameters that would be useful 

objective boundaries for a POSITA to understand the scope of what “gliding” is. 

64. The specification never uses the word “glide” or “gliding” to refer to the claimed 

function activation. Instead, the specification recites activation by detecting the “movement of 

an object” (e.g., a pen or finger) as shown in Figure 2. See id. at 4:7-9, 2:10-12 (emphasis 

added). It never describes “gliding.” Nor does it use or define any similar words, such as 

“swipe,” “slide,” “drag,” or “flick,” or reference any of the parameters Neonode identified in 

IPR, such as speed, distance, effort, jerkiness, or smoothness. The ’879 patent provides no 

guidance to a POSITA on when a movement may be considered a “glide” (and therefore within 

scope) or a “drag” or “flick” (allegedly out of scope, according to Neonode). For example, 

Figure 2 of the patent depicts the action of the user to activate a function. Id. at 4:7-11, FIG. 2. 

The user contacts the touch-sensitive surface with a finger, then moves the finger in contact with 

the surface away from the initially touched location. A POSITA would have recognized that the 

action of the finger in Figure 2 is the same for a “glide” as well as what Neonode calls a “flick” 

and a “drag.” The specification makes no mention of a need to differentiate between user 

Case 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 28 of 48
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gestures or how gestures could be differentiated. Rather, Figure 2’s illustration and description 

(id.) describe only touch and movement. 

65. A POSITA would understand the movement as it is described in the specification 

could include a drag, swipe, flick, and/or variations of those movements (e.g., a slide, a chevron, 

or curl gesture). See, e.g., Ex. 11 (IPR2021-00144, Rosenberg Decl.) at ¶ 65 

(“‘gliding . . . away’ and a drag-and-drop gesture . . . may have overlapping movements”); Ex. 

17 (IPR2021-00144, EX1053 (“Rosenberg Tr.”)) at 48:19-49:6 (agreeing that the action of the 

thumb or stylus in FIG. 2 would be similar for glide, swipe, and drag); Appx. C (IPR2021-1041, 

Rosenberg 2nd Decl.) at ¶ 84 (equating claimed gliding to swiping). 

66. Like the claims, the specification does not describe the parameters of how a 

“gliding” gesture may be measured, such as time, distance, and speed, or some specific 

combination thereof, as discussed above. The specification provides no guidance, for example, 

so as to distinguish gestures such as “flick” and “drag.” For example, there is no mention of 

timing as to how long the object is in contact with the touch sensitive area which would prove 

useful in programming when a successful “glide” is completed in order to activate the function, 

as well as in distinguishing gestures that are in contact with the screen for a shorter or longer 

length of time. There is no mention of the speed of the movement to establish how slow or fast 

the execution of a claimed glide is and how that might be different from a flick or drag. There is 

no mention of distance travelled by the glide on the touch sensitive area to inform a POSITA as 

to what movements are too short or too long to be considered a glide as opposed to a flick or a 

drag. Nor is there any mention of how any of these three parameters might be used together to 

distinguish a glide from a flick or a drag. Accordingly, a POSITA would recognize that there are 

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no objective guidelines in the specification that provide a POSITA with reasonable certainty as 

to how the claimed “glide” might distinguish a “flick” or “drag.” 

67. When the patent specification does mention “speed of the movement ... of the 

object 4,” it is not in the context of function activation, but instead marking the name of an 

application or file at a “speed lower than the speed of the movement . . . of the object.” Ex. 1 

(’879 patent) at 5:29-35 (“FIG. 8 shows that navigation in the list is performed by moving the 

object 4 in a direction I towards the top 231a of the list 231 or towards J the bottom 231b of the 

list 231. This movement I, J of the object 4 will cause the marking 232 to move K, L in the same 

direction. The speed of the movement K, L of the marking 232 is lower than the speed of the 

movement I, J of the object 4.”) (emphasis added), FIG. 8; Ex. 10 (IPR2021-01041, Rosenberg 

Tr.) at 34:24-35:17. This operation is unrelated to the claimed touch and glide motion that 

activates a function. For example, when scrolling through a list, the ’879 patent teaches that the 

marking depicting a highlighted list item would travel slower than the speed of the actual touch. 

In other words, the highlight marking would “follow” the touch rather than be directly 

underneath it. A POSITA would understand this has nothing to do with the claimed touch and 

glide motion to activate a function. Accordingly, a POSITA would understand the patent to 

identify speed as a factor where appropriate, and that the lack of discussion of speed for the 

action that activates a function informs them that speed is not relevant to that operation. 

68. The original patent application made no mention of “gliding,” and the term was 

added by amendment years after the original filing. Appx. D (’879 FH, 9/8/2008 Applicant 

Amendment) at 5, 9-10. It is worth noting the amendment was not solely to change the original 

claim term “moving” to “gliding”—rather, the amendment was made in the larger context of the 

object’s movement in contact with or across the surface of the touch-sensitive area: 

Case 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 30 of 48
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Id., at 5-6 (claim 1). 

Id., 9-10 (claim 12). 

69. The applicant’s only alleged support for the amendment fails to provide relevant 

guidance: The applicant relied only on disclosures of “movement” generally, not “gliding.” Id. 

at 26. No distinction was made between a “glide” and a “drag” or “flick” in the amendments. 

Rather, the applicant equated the claimed “gliding” with “swiping,” “rubbing,” and “sliding.” 

Ex. 12 (’879 FH, 9/3/2008 Applicant Letter to Examiner) at 1; see also Appx. D (’879 FH, 

9/8/2008 Applicant Amendment) at 25 (“The subject claimed invention teaches ‘rubbing,’ 

‘touch-and-glide’ movements to operate a user interface, whereby the thumb touches a touchsensitive screen and rubs, or glides, along the screen without lifting the thumb.”) (emphasis 

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added); Appx. E (’879 FH, 4/22/2009 Applicant Amendment) at 7 (“User inputs include finger 

taps and movements. One such movement is a ‘rubbing’ / ‘swiping’ / ‘touch-and-glide’ 

movement, whereby a finger touches a touch-sensitive screen at a location where an icon for a 

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

location without lifting the finger.”) (emphasis added). Like “gliding,” none of these other 

allegedly synonymous terms appear in the specification. The prosecution in fact demonstrates 

that a “glide” is also synonymous with a “drag” and a “flick.” The applicant equated a 

“dragging” movement of the prior art with the claimed “gliding” movement. Ex. 13 (’879 FH, 

2/22/2010 Amendment) at 8 (characterizing the prior art Hoshino’s “drag” as a “glide”).

Id. 

70. Furthermore, the sole named inventor described the claimed “glide” movement as 

a “drag.” Ex. 14 (IPR2021-01041, EX1044 (“Goertz Tr.”)) at 41:8-41:15. And the examiner, 

during prosecution, when searching for potentially relevant prior art, searched for “flick” 

alongside “glide” and “swipe.” Ex. 15 (’879 FH, 12/23/2008 Search Notes) at 2, 5-7; Ex. 16 

(’879 FH, 7/8/2009 Search Notes) at 3, 6-10. 

71. Neonode’s expert also agreed during the IPR that the “movement” disclosed in 

the specification is a genus or “superset” of types of object movements for function activation. 

Ex. 17 (IPR2021-00144, Rosenberg Tr.) at 45:25-47:8 (“‘movement’ . . . is a superset that 

represents many types of movements”); Ex. 10 (IPR2021-1041, Rosenberg Tr.) at 17:17-18:8, 

20:1-8 (agreeing “movement is like a genus”). However, Neonode did not cite any evidence that 

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a POSITA in December 2002—when the ’879 patent application was filed—understood whether 

or how any alleged “species” within that genus could be distinguished in a way relevant to the 

’879 patent claims. And it was not until September of 2008—nearly six years after the ’879 

patent application was filed and after much of the industry development of touch user interface 

and gesture recognition technology had occurred—that the applicant introduced the “gliding” 

claim term. Ex. 12 (’879 FH, 9/3/2008 Applicant Letter to Examiner) at 2, 5 (proposed 

amendment adding “gliding”). In 2002, most input methods for touch sensitive user interfaces 

were accomplished via a pen or stylus, although such interfaces also accepted input by a finger. 

Mobile device platforms such as Windows CE or Pocket PC, which were common at the time, 

substantially treated these inputs as a surrogate for mouse input. See, e.g., Appx. F (Robert 

O’Hara, Microsoft Windows CE: A New Handheld Computing Platform, Proceedings of the 

1997 ACM Symposium on Applied Computing, 1997) at 295-96. In 2002, a popular design 

philosophy for touch interfaces on mobile devices, for example, was to leverage the user’s 

knowledge and experience in using Windows on a PC and its applications such that users would 

have a shorter learning curve. Id. The touch input at its most basic components was understood 

as a series of X and Y coordinates between when the user touched down on the touch sensitive 

surface and when the user released the pen or finger from the surface (a.k.a. “touch up”). It was 

common for a user interface that accepted touch-input gestures to translate these coordinates to 

correspond to known mouse gestures. 

72. After the filing of the application that issued as the ’879 patent, advancements 

were made in the field of touch input and their user interfaces. For example, touch input devices 

became mainstream and well-known, such as the iPhone, which was released in 2007. Devices 

that relied primarily on gesture-based input, mostly with a finger rather than a stylus or pen, 

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became more common. Even though the physical gestures, such as tap, double tap, and touchand-move, were already known in the art and to users, the development of systems and 

applications shifted away from treating touch input as though it emulated mouse input and 

instead enabled various gesture recognizers. Software development kits (SDKs) and application 

programming interfaces (APIs) were introduced that enabled recognition of specific gestures 

rather than translating touch input to mouse or keyboard inputs. However, this change of focus 

to recognition of specific gestures, and what some people may now recognize as commonplace 

in 2023, occurred many years after the 2002 filing date for the ’879 patent. Thus, in 2002, given 

the ’879 patent claims and specification, the boundaries between a “flick” and a “glide” or a 

“drag” and a “glide” were not determinable with any reasonable certainty. A POSITA would not 

have found the terms “continuous and effortless,” for example, to provide reasonable certainty 

from the perspective of a designer as to the boundary of a “glide” so as to exclude a “drag” or a 

“flick.” 

73. The intrinsic record fails to provide sufficient guidance to identify with 

reasonable certainty the boundaries between the claimed “glide” and the “flick” and “drag” that 

Neonode has argued are outside the scope of the claim. 

74. In addition, during prosecution of a related child patent application, the applicant 

admitted that a “flick” movement includes some amount of a “glide:” 

Appx. G (16/796,880 Application File History, 9/27/2021 Applicant Letter) at 4; Ex. 6 

(IPR2021-01041, Record of Oral Hearing) at 48:6-9 (Neonode suggesting a representation 

“activated by both a gliding away and a flick” would satisfy the “only one option for activating 

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the function” limitation”). During prosecution of another related patent, U.S. 8,812,993 (the 

“’993 patent”), the applicant presented claims reciting an “object gliding along the touch 

sensitive display in a specific direction,” and chose not to distinguish the claimed “gliding” from 

prior art disclosing a “flick” and also a “drag.” Appx. H (’993 patent File History (“’993 FH”), 

12/28/2011 Preliminary Amendment) at 6, 10-11. The applicant argued that, “[r]egarding 

novelty . . . , the closest prior art known to applicant” included “‘T-Cube: A Fast, SelfDisclosing, Pen-Based Alphabet’ to Venolia et al. (‘Venolia’).” Id. at 10. Venolia discloses an 

interface for entering text to a pen-based computer where different letters are entered depending 

on the direction of a flick or drag. Appx. I (Venolia) at 265. Similar to the gesture shown in the 

’879 patent’s Figure 2, Venolia describes that a “flick gesture has two easily controlled aspects: 

its starting point and its direction,” and Venolia describes the gesture as including the operation 

of “[d]ragging the pen.” Id. 1 The applicant, however, did not distinguish Venolia based on any 

alleged difference between the claimed “gliding” and Venolia’s flick/drag. Appx. H (’993 FH, 

12/28/2011 Preliminary Amendment) at 10-11. Venolia was also used to reject claims during 

prosecution of the ’879 patent, but there, too, the applicant did not distinguish Venolia based on 

any alleged difference between Venolia’s flick/drag and a “glide.” Ex. 8 (’879 FH, 8/23/2007 

Amendment) at 15-16. Accordingly, a POSITA would not conclude from the prosecution 

history that a “flick” or “drag” are outside the scope of the claimed “glide,” nor does the 

1

 “Each flick starts in one of the nine cells arranged into a ‘target’ shown in Figure 1a. The target 

is typically 0.3 to 0.7 inches in diameter. The direction of the flick can be vertical, horizontal or 

diagonal, specifying one of eight directions. The combination of nine starting cells with eight 

directions yields 72 different gestures. Each gesture represents a character, e.g., ‘w’ or ‘7’, or an 

operation, e.g. Backspace, Return or Shift.” Appx. I (Venolia) at 265. “Dragging the pen 

highlights one of the characters (c), and shows the result of the drag (d).” Id. 

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prosecution history provide any guidance with reasonable certainty as to the alleged boundaries 

between the claimed “glide” and a “flick” or “drag.” 

75. Neonode’s claim construction proposal seeks to exclude a “drag-and-drop 

operation” from the scope of the disputed “gliding” terms. Neither the plain meaning of the 

claim nor anything in the specification excludes a “drag-and-drop operation.” A “drag-and-drop 

operation” may have a multitude of characteristics depending on the designer, none of which are 

addressed in the patent. The claimed “gliding” operation describes the movement of the object 

(e.g., a pen or finger) along the touch sensitive area, that is, the action of the user to interact with 

the touch sensitive area. Ex. 1 (’879 patent) at 4:7-11, FIG. 2. In contrast, a POSITA would 

understand 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. The “drag” might refer to visually 

moving something on the display, and the “drop” would typically refer to a specifically 

programmed interaction between a selected source item (such as a file or other icon) and a target. 

Thus, 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. In other words, nothing about 

Figure 2 that illustrates the user gesture, or the disputed “gliding” terms in the claim, excludes a 

“drag-and-drop operation” response from the user interface. Nothing 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. 

76. Moreover, the specification fails to provide a flowchart or any description of how 

the user interface reacts during the “movement” shown in Figure 2, such as what might be shown 

on the display area 3 or what happens to the representation (if anything) during the gesture. The 

claimed multi-step operation as described with respect to Figure 2, which illustrates how the 

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user’s finger physically interacts with the touch sensitive area 1, is a motion and does not bear on 

what is displayed on the user interface in response to the motion. See id. The only information 

about how the user interface reacts is that a function is activated and displayed in the display area 

3, where Figures 3, 5, and 6 show the display after activation of a function, not during the 

“movement” of Figure 2 that activates the function. Id. at 4:12-15, 4:36-38, 4:63-65, FIGs. 3, 5, 

6. Indeed, a POSITA would understand the plain language of the “gliding . . . away” limitation 

(putting aside the last limitation of the claim) could allow for a drag-and-drop operation, because 

such an operation would include a pen/finger touching down on the source and dragging their 

pen/finger away from the touched location. Accordingly, the specification does not speak to 

whether a “drag-and-drop operation” is excluded or part of the alleged invention. Even if a 

“drag-and-drop operation” were to be excluded from the scope of the “gliding” terms, there is no 

guidance in the specification to inform a POSITA with reasonable certainty as to what is 

excluded from the claim. 

77. A POSITA would also have appreciated that drag-and-drop operations include 

specific programming of the underlying system. That is, specific programming of the underlying 

system would define items as a source/selection objects, and target/destination objects that 

receive the source via the “drop.” Appx. J (IPR2021-00144, EX1059 Microsoft Windows, THE 

WINDOWS INTERFACE GUIDELINES – A GUIDE FOR DESIGNING SOFTWARE, February 1995) at 74-

75 (“How the transferred object is integrated and displayed in the drop destination is determined 

by the destination’s context.”), 221-22 (“When the user drags a selection into a container, the 

container application can interpret the operation using information supplied by the source. . . .”). 

But none of those programming aspects are referenced by the “gliding . . . away” language of the 

claim or the specification. There are no flow charts or description that would exclude a “dragCase 6:20-cv-00507-ADA Document 71-2 Filed 04/14/23 Page 37 of 48
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and-drop,” and the specification tells the reader nothing about what happens to the 

“representations” of functions 21-23 during that movement. Ex. 17 (IPR2021-00144, Rosenberg 

Tr.), 34:8-36:14. A POSITA therefore would recognize that the gliding terms do not exclude 

“drag-and-drop” programming. 

1. Numerous Potential Parameters 

78. A POSITA would understand from Neonode’s statements that numerous different 

parameters may be utilized to define a movement gesture on a touch sensitive interface, 

including distance, duration, direction, and exit/entry. Neither the patent, the intrinsic record, or 

Neonode itself provides a POSITA with an objective method for determining what is and is not a 

glide. 

79. For example, a POSITA would recognize that a movement gesture like a glide 

could be understood in terms of the distance traveled by the object on the touch sensitive area. A 

POSITA would understand that no movement (e.g., a touch-down followed by a touch-up from 

the same or similar location) may be interpreted as a first gesture, a short movement as a second, 

different gesture, and a long movement as yet a third, different gesture. A POSITA would also 

have understood that a distance measurement may be absolute or relative to the device used. A 

POSITA would not have understood a “glide” gesture to be limited to any particular length. 

Rather, whether a gesture is understood as a glide or not based on length of movement would be 

dependent on implementation. There was no well-known or widely accepted distance threshold 

that could be used to distinguish a glide from other movement gestures, such as a flick, a drag or 

a “stroke” in 2002. 

80. A POSITA would also have understood that a movement gesture like a glide 

could be understood in terms of the duration that the object is in contact with the touch sensitive 

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area. For example, a short duration may be interpreted as one gesture and a longer duration as a 

different gesture. A tap and long press is an example of differentiating gestures in terms of 

duration. Like distance, whether the duration of a touch represents one gesture or another 

depends on implementation. There was no well-known or widely accepted duration threshold 

that would distinguish a glide from a not-glide in 2002. 

81. A POSITA would also have understood that a movement gesture like a glide 

could be understood in terms of both distance and duration. More specifically, a POSITA would 

have understood that a glide gesture could be understood based on the velocity of the movement. 

For example, a fast movement may be interpreted differently from a slow movement. Similarly, 

a movement with an ending velocity greater than a starting velocity may be interpreted 

differently from a movement that ends with a slower velocity than the starting velocity. There 

was no well-known or widely accepted velocity threshold or combination of thresholds in 2002 

that would have provided a POSITA with reasonable confidence to distinguish a glide from other 

movement gestures, such as a flick or a drag. 

82. A POSITA would have understood that a movement gesture like a glide could be 

understood in terms of exit from or entry into an area of the touch sensitive interface. For 

example, a gesture may incorporate movement out of a specific area and/or movement into a 

specific area to distinguish amongst movement gestures. For example, rather than using a 

distance parameter to determine whether the user’s finger or pen has moved outside the area of 

an icon, the designer could instead use an exit-from approach using the display coordinates of the 

icon and the coordinates of the detected contact of the user’s finger or pen. Though these types 

of design approaches were well known to a POSITA at the time of the application for the ’879 

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patent, nothing in the claims or the specification provides any guidance how they might be used 

to distinguish the claimed glide from other movement gestures such as a flick or a drag. 

83. The claims themselves make no mention of any of these parameters in defining a 

glide. The specification also does not mention any of these parameters in the context of 

understanding what is and is not a glide. Neonode’s statements in IPR added confusion by 

injecting ambiguous and undefined limitations to the gliding term, including but not limited to 

smoothness and effortlessness. Even with the addition of those parameters, the POSITA does 

not have reasonable certainty as to how to distinguish the claimed “glide” from the “flick” and 

“drag” of the prior art that Neonode argued were different in the IPR proceedings. 

2. Dictionary Definitions and Other Extrinsic Evidence 

84. The extrinsic evidence also does not clarify the scope of this term for a POSITA. 

In the Google IPR, Neonode cited several general dictionary definitions of “flick” and “glide” 

from 1993, 1997, 2002, and 2012. None of the definitions are in the context of computing, let 

alone touchscreens, and none are from technical dictionaries. A POSITA would not understand 

the confusing comparison of these definitions to distinguish the claimed glide from Neonode’s 

ill-defined “flick.” 

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Ex. 5 (IPR2021-01041, POR) at 35-36. For example, both “flick” and “glide” are defined as 

movements and there is no clear delineation between the additional modifiers. While a “flick” is 

described as “light,” the definitions of “glide” provide no similar description. A “flick” is also 

defined in terms of speed (“quick,” “sudden”) while the definitions of “glide” make no reference 

to speed. Indeed, a “smooth, quiet, continuous” motion can also be “quick” or “sudden.” The 

definitions require line drawing on many different axes: forcefulness, speed, relative timing, 

effort, sound, etc. Applying the axes to a touchscreen application further muddies the waters: 

Do the axes change before, during, or after touching the screen? Are the axes relative to the 

screen, or relative to the object making the touch? Does the size of the screen or the object alter 

the axes? For example, a gesture on a large screen may be considered a “flick” due to the 

relatively low ratio between the movement distance and the screen size. The same motion on a 

smaller screen may be considered a glide due to the same gesture traveling a greater proportion 

of the screen size. See also Ex. 10 (IPR2021-01041, Rosenberg Tr.) at 27:15-29:6 (difference 

between a “flick” and a “glide” would depend on screen size, resolution of the screen, input 

device, “whether you’re using a stylus, whether you’re using a light pen, whether you’re using a 

finger,” and the task); Ex. 6 (IPR2021-01041, Record of Oral Hearing) at 61:3-10 (whether a 

specific movement is a swipe/glide or a flick is dependent on context). Or, a POSITA can easily 

envision a glide crossing some sort of imaginary line to become a flick if only it is performed 

quickly enough. But again, Neonode provides no specific speed in its construction of the term, 

and the ’879 patent provides no indication that a “glide” excludes movements of certain speeds 

or distance. A POSITA would therefore interpret the “flick” and “glide” dictionary definitions to 

only muddle the issue as to whether a claimed “glide” encompasses a “flick.” 

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85. At a more fundamental level, Neonode’s definitions are far removed from the 

relevant inquiry here—what “gliding” means to a POSITA in the context of the ’879 patent. Dr. 

Rosenberg only argues that the “common usage” of a “flick” is distinct from a “glide.” Appx. C 

(IPR2021-01041, EX2019 (“Rosenberg 2nd Decl.”)) at ¶ 78. None of the examples he cites are 

in the context of interactions with touchscreens, e.g., the flick of the wrist in basketball, flick 

football, and a flick of a finger in air. Id. How a user might perform a “flick” in the context of a 

touchscreen is different than all three of Dr. Rosenberg’s illustrations. Id. Dr. Rosenberg then 

states the “plain and ordinary meaning” of “gliding” is “completely different,” but again cites to 

no examples in the context of touchscreens, and instead points to ice skating, paragliding, and a 

slip n’ slide. Id. at ¶ 79. The error in Dr. Rosenberg’s analysis here is that the “plain and 

ordinary meaning” of the term is the meaning that the term would have to a POSITA—that is, the 

meaning in the context of the entire patent, not human experience at large. Id.

86. Contemporaneous prior art supports that swipes, a movement Neonode has 

conflated with glides, can be fast and traverse short distances, descriptors that are in keeping 

with Neonode’s definitions of “flick.” Appx. K (U.S. Patent No. 5,463,725 (filed Dec. 31, 1992) 

(“Henckel”)) at 3:17-22 (“Thus, a series of short, fast swipes can be performed by the user to 

page quickly through the electronic book. For example, assuming a display device which is 12 

inches wide, the user preferably need only make a swipe which is one-half to one inch long in 

order to cause a page to be turned.”) (emphasis added). Neonode’s arguments are further at odds 

with prior art that differentiates “swipe” and “drag” movements, whereas Neonode claims that a 

“glide,” “swipe,” and “drag” are the same movement. Appx. L (U.S. Patent Application 

Publication No. 2002/0015064 (filed Nov. 29, 2000) (“Robotham”)) at [0328]-[0329] (“‘swipe’: 

a relatively quick traversal along a path,”; “‘drag’: a relatively slower traversal along a path”); 

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[0334] (“The swipe and drag gestures are the ‘selection mode’ equivalents to move gestures. In 

selection mode, the speed of traversal is the primary factor used to differentiate a swipe from a 

drag gesture.”); [0523] (“The swipe gesture is recognized when a swipe-compatible selection 

event meets the minimum swipe distance and velocity requirements (11-4).”); [0529] (“A drag 

motion is confirmed when the minimum swipe distance has been met, but the velocity of this 

motion is below the minimum swipe velocity.”). A POSITA would understand that the 

delineations Neonode is drawing between glide/swipe/drag and flick are arbitrary because no 

such delineation exists with reasonable certainty in the prior art, leaving a POSITA without 

reasonable certainty as to what movement is the claimed “gliding” as opposed to the “flick” and 

“drag” that Neonode has argued are not a “glide.” 

87. Still, other prior art simply uses the term “gliding” as a synonym for the broader 

term “moving,” not unlike how the ’879 specification’s general “movement” disclosures are the 

only amendment support for the “gliding” claim language. Appx. M (David J. Ward et al., 

Dasher – a Data Entry Interface Using Continuous Gestures and Language Models, Proceedings 

of the 13th Annual ACM Symposium on User Interface Software and Technology 129 (2000)); 

compare id. at 131 (“The user writes [the string] by gliding towards the alphabetically ordered 

books and selecting the desired book.”) (emphasis added) with id. at 130 (“The user moves the 

pen in the direction of a selection region, which either selects a character or reveals a further set 

of alternatives.”) (emphasis added). A POSITA would equate the terms without a meaningful 

distinction. 

88. Yet another contemporary prior art reference describes a user movement 

analogous to the user movement in Figure 2 as a “full-screen pen stroke” and a “[d]rag to top of 

screen,” further evidence that it would not be clear to a POSITA that the term “gliding” is 

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immediately synonymous with the movement depicted in the ’879 patent. Appx. N (IPR2021-

00144, EX1026 Handbook for Palm m500 Series Handhelds (2001)) at 211. 

Id. 

89. Therefore, the extrinsic evidence does not cure the term’s indefiniteness and only 

confirms the term’s lack of reasonably certain boundaries. 

90. For at least the reasons stated above, a POSITA would not be able to identify with 

reasonable certainty the boundaries of the claimed “gliding” that allegedly exclude a “flick” and 

a “drag,” and therefore the term is indefinite. 

C. “a shell upon an operating system” (’879 Patent, claim 15) 

Defendants’ Proposed Construction Neonode’s Proposed Construction 

No construction necessary; plain and 

ordinary meaning.

“A software interface between the user and an 

operating system.” 

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91. Within the ’879 patent, the term “a shell upon an operating system” appears in 

claim 15, which reads “The computer readable medium of claim 1, characterised in, that said 

computer program code is adapted to function as a shell upon an operating system.” A POSITA 

would understand that according to the plain language of claim 15, the claim does not require the 

computer readable medium to be a shell upon an operating system. It merely requires that the 

medium is “adapted to function” as a shell upon an operating system. Therefore, a POSITA 

would understand the claimed “shell” includes software that provides the functions of a shell and 

is not limited to the shell being code residing within the operating system. 

92. The ’879 specification provides little further description of the term, merely 

repeating similar language to that of claim 15: “The present invention also teaches that the 

computer program product is adapted to function as a shell upon an operations system.” Ex. 1 

(’879 patent) at 6:35-37. A POSITA would understand the specification’s reference to “an 

operations system” to include the “operating system,” and that it would provide access to 

services and settings of the computer unit. Id. at 2:22-25 (“The icons are adapted to represent 

services or settings of the operations system of said computer unit, such as background picture, 

clock, users, help, etc. if no application is currently active on the computer unit.”). A POSITA 

would recognize that while some shells are part of their related operating systems, the ’879 

patent specifically broadens its claim to include any program adapted to function as a shell. A 

POSITA would understand that the patent’s reference to a shell merely refers to a program that 

could function as an interface between the user and functionality within the operating system, 

regardless of whether the program was part of the operating system or not. 

93. The AppLens interface is a contemporary example that ran as a shell on top of 

Microsoft Windows Mobile 2003. Appx. O (IPR2021-00144, EX2006 Amy K. Karlson et al., 

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AppLens and LaunchTile: Two Designs for One-Handed Thumb Use on Small Devices, CHI 

2005 ׀ PAPERS: Small Devices 1) at 203, 206. A POSITA would recognize the AppLens

interface to be a typical shell running on top of an operating system. 

94. Contemporaneous patent applications are consistent with a POSITA’s 

understanding at the time that shells need not be part of the operating system. For example, U.S. 

Patent 7,240,296 to Matthews (“Matthews”) is directed “particularly to a graphical user interface 

for a computer operating system.” Ex. 18 (Matthews) at 1:7-8. When describing the architecture 

of its system with respect to Figure 2 (shown below), Matthews states “[t]he navigation system 

60 includes a shell component 64 associated with the shell user interface 62. The shell 

component 64 is integrated into (or alternatively is external to and associated with) the operating 

system 35.” Id. at 6:11-14 (emphasis added). A POSITA would understand this disclosure to 

accurately reflect the breadth of “shell,” i.e., a shell may be separate or intertwined with an 

operating system. 

95. A POSITA would understand that Matthews’s description of “Shell UI 62” that 

sits outside the operating system, but provides access to functions within it, is directly analogous 

to the ’879 patent’s “computer program code, which, when read by a mobile handheld computer 

unit, allows the computer to present a user interface” (claim 1), “characterised in, that said 

computer program code is adapted to function as a shell upon an operating system” (claim 15). 

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Id. at FIG. 2. 

96. A dictionary definition from the relevant time period defines “shell” as “[a]n outer 

layer of a program that provides the user interface, or the user’s way of commanding the 

computer. Instead of presenting the user with a bland C prompt, i.e. C:> the shell presents a list 

of programs that the user can choose from, making it easier, allegedly, to figure out which 

program to run.” Appx. P (Harry Newton, NEWTON’S TELECOM DICTIONARY (19th ed. 2003)) at 

718. A POSITA would understand this definition to be agnostic as to the orientation of the shell 

to the operating system—it uses no “between” language like in Neonode’s construction and does 

not discuss operating systems in its definition. 

97. I have reviewed Neonode’s dictionary definitions cited as extrinsic evidence for 

this claim term. The definitions evidence a variety of potential interpretations for shell, 

including, notably, “[a] piece of software, usually a separate program, that provides direct 

communication between the user and the operating system.” Appx. Q (Microsoft Computer 

Dictionary (4th ed. 1999)) at 407 (emphasis added). The Microsoft Computer Dictionary 

definition reflects a POSITA’s understanding that a shell can be “a separate program” from the 

operating system. 

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

that the foregoing is true and correct. 

Date: April 14, 2023

Andy Cockburn

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