WEST/302382920

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. §

SAMSUNG’S OPENING CLAIM CONSTRUCTION BRIEF 

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TABLE OF CONTENTS 

Page 

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

II. OVERVIEW OF THE ASSERTED PATENT ....................................................................1

III. LEVEL OF ORDINARY SKILL ........................................................................................3

IV. DISPUTED CLAIM TERMS ..............................................................................................3

A. The preamble of claim 1 ..........................................................................................3

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

(claim 1) ...................................................................................................................5

1. The claim language has at least three possible meanings. ...........................6

2. The specification provides insufficient guidance. .......................................7

3. The original prosecution history confirms the claims are indefinite. ..........8

4. Plaintiff Neonode Smartphone increased the uncertainty over what 

this claim limitation means during the Google IPR. ..................................10

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

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

12) ..........................................................................................................................12

1. Neonode’s IPR statements render the claim terms indefinite. ...................13

2. There is no basis in the intrinsic evidence to exclude a “drag and 

drop operation” from the “gliding” terms. .................................................17

D. “tapping” / “selection of a preferred service or setting is done by tapping” 

(claim 3) .................................................................................................................18

E. “a shell upon an operating system” (claim 15) ......................................................19

V. CONCLUSION ..................................................................................................................20

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 

672 F.3d 1335 (Fed. Cir. 2012)..............................................................................................3, 4 

Aylus Networks, Inc. v. Apple Inc., 

856 F.3d 1353 (Fed. Cir. 2017)................................................................................................10 

Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 

289 F.3d 801 (Fed. Cir. 2002)....................................................................................................4 

Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 

958 F.3d 1348 (Fed. Cir. 2020)..................................................................................................4 

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

987 F.3d 1053 (Fed. Cir.), cert. denied, 211 L. Ed. 2d 364, 142 S. Ct. 585 

(2021) .......................................................................................................................8, 10, 11, 12 

Interval Licensing LLC v. AOL, Inc., 

766 F.3d 1364 (Fed. Cir. 2014)........................................................................................5, 6, 14 

Media Rights Techs., Inc. v. Capital One Fin. Corp., 

800 F.3d 1366 (Fed. Cir. 2015)........................................................................................6, 7, 12 

Multilayer Stretch Cling Film Holdings, Inc. v. Barry Plastics Corp., 

831 F.3d 1350 (Fed. Cir. 2016)................................................................................................18 

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

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

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005) (en banc)............................................................................8, 19 

Rowe v. Dror, 

112 F.3d 473 (Fed. Cir. 1997)....................................................................................................4 

Symantec Corp. v. Computer Assoc. Int’l, Inc., 

522 F.3d 1279 (Fed. Cir. 2008)..................................................................................................4 

TomTom, Inc. v. Adolph, 

790 F.3d 1315 (Fed. Cir. 2015)..................................................................................................4 

Statutes 

35 U.S.C. § 112(d) ...........................................................................................................................5 

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TABLE OF EXHIBITS 

EXHIBIT DESCRIPTION BATES Range 

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

2 Decl. of Andy Cockburn in Support of 

Defendants’ Op. Cl. Constr. Brief

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

Amendment

NEONODE0000534-44 

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

(“Hirshberg”)

507SAM_00039805-24 

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

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

Hearing”) Excerpts

507SAM_00065058-130 

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

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

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

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

Excerpts 

507SAM_00063686-742 

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

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

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

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

Excerpts

507SAM_00061641-806 

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

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

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

Excerpts

507SAM_00054249-394 

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

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

Hearing”) Excerpts

507SAM_00052367-419 

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I. INTRODUCTION 

Plaintiff Neonode seeks to impermissibly alter the scope of its claimed invention through 

claim construction. The sole asserted patent, U.S. Patent No. 8,095,879 (“’879 patent”), recites 

one independent claim and 10 asserted dependent claims. Neonode identified all five disputed 

claim terms for construction, with Samsung also identifying two of those same terms. 

Neonode’s attempt to “fix” its asserted claims to read them on the accused Samsung products 

while at the same time avoiding invalidating prior art should be rejected because: (1) only a 

portion of the preamble, not all of it, is limiting; (2) two of the claim terms should be afforded 

their plain meaning rather than the needlessly complex and improperly limiting constructions 

urged by Neonode; and (3) Neonode’s inconsistent statements to the PTO regarding what its 

claims mean underscore the clearly indefinite nature of its claims. Neonode is not entitled to 

now modify its claims through rehabilitating claim construction. 

II. OVERVIEW OF THE ASSERTED PATENT 

The ’879 patent relates to a user interface for a mobile handheld computer that comprises 

a touch sensitive area that allows a user to navigate among simultaneously running applications. 

Ex. 1 (’879 patent) at 1:6-12. The ’879 patent recognizes that mobile handheld computers “are 

known” and include mobile phones, personal digital assistants and laptop computers. Id. at 1:24-

33. The patent also recognizes that touch sensitive displays are not inventive “and that the 

present invention does not depend on what kind of touch sensitive display is used.” Id. at 3:54-

58. The patent further acknowledges that running applications simultaneously is not inventive 

“and that the present invention does not depend on how this is realised.” Id. at 3:59-67. 

The ’879 patent instead asserts that the “user interface” is itself inventive. Id. at Abstract; 

3:50-58. The annotated version of Figure 1 of the ’879 patent reproduced below illustrates a 

“user interface” with “a touch sensitive area 1, which is divided into a menu area 2 and a display 

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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 (emphasis added). 

“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 [e.g., a finger] 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 (emphasis added), FIG. 2 (annotated). 

The “object 4 can be a finger” or “a pen or other pointing device.” Id. at 6:11-15. 

In the embodiment described in the patent, the activated “first function 21 is a general 

application dependent function” (see FIG. 3), the second function 22 is a keyboard function (see

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FIG. 5), and the third function 23 is a task and file manager (see FIG. 6). Id. at 4:4-6. Using 

Figure 3 as an example, once first function 21 is activated by touching the representation of that 

function (the “+” icon in FIG. 1) with an object and moving the object away from the menu area 

into the display area, “then the display area 3 is adapted to display icons 211, 212, 213, 214, 215, 

216 representing services or functions.” Id. at 4:12-14. The user then selects a particular service 

or function by tapping on the icon, such as icon 213 in Figure 3. Id. at 4:34-35. 

Id. at FIGs. 3, 5, 6. 

III. LEVEL OF ORDINARY SKILL 

A person of ordinary skill in the art (“POSITA”) would have had at least a bachelor’s 

degree in computer science or 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. Ex. 2, Decl. of Andy Cockburn 

in Support of Defendants’ Op. Cl. Constr. Brief (“Cockburn Decl.”) at ¶ 35. 

IV. DISPUTED CLAIM TERMS 

A. The preamble of claim 1 

Defendants’ Proposal Neonode’s Proposal 

Preamble is limiting as to the term “a user 

interface,” otherwise preamble is not limiting 

Preamble is limiting as to the entirety of the 

preamble 

“[A]s a general rule preamble language is not treated as limiting.” Aspex Eyewear, Inc. v. 

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Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012). Instead, a preamble only “limits 

the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, 

and vitality to the claim,” such as providing antecedent basis for the body of the claim. Catalina 

Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotation marks 

omitted); Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008). 

The preamble of claim 1 reads: 

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: 

Ex. 1 (’879 patent) at claim 1 (6:45-49) (emphasis added). 

The entire preamble is not limiting because not every part of the preamble recites 

essential structure and because the entire preamble does not need to be limiting to give meaning 

to the claims. Rather, as described above, the claimed invention is “the user interface” recited in 

the body of claim 1 and the preamble simply “state[s] a purpose or intended use” for that 

invention, which means the preamble is not limiting. Catalina, 289 F.3d at 808 (quoting Rowe v. 

Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). 

The parties agree “a user interface” is limiting because it is the alleged invention. 

However, that does not mean the rest of the preamble is limiting. See Cochlear Bone Anchored 

Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020) (“A conclusion that some 

preamble language is limiting does not imply that other preamble language, or the entire 

preamble, is limiting.”); TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015) (“That 

the phrase in the preamble ‘destination tracking system of at least one mobile unit’ provides a 

necessary structure for claim 1 does not necessarily convert the entire preamble into a limitation, 

particularly one that only states the intended use of the invention.”). 

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Notably, the claim 1 preamble terms “non-transitory computer readable medium” and 

“computer program” do not later appear in the body of any dependent claim. And while the 

claim 1 preamble terms “mobile handheld computer unit” and “computer program code” appear 

in the bodies of dependent claims 6 and 15, respectively, the patentee’s decision to recite those 

added requirements in only those two dependent claims rather than in claim 1 is consistent with 

the role of dependent claims, which is to add requirements not already imposed by an 

independent claim. 35 U.S.C. § 112(d) (a dependent claim “shall contain a reference to a claim 

previously set forth and then specify a further limitation of the subject matter claimed”). 

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

(claim 1) 

Defendants’ Proposal Neonode’s Proposal 

Indefinite. “Plain meaning.” 

This claim phrase is indefinite because a POSITA can read it to mean at least three 

conflicting things—and thus impose three different sets of requirements on accused products and 

prior art—and the intrinsic evidence fails to advise a POSITA with reasonable certainty which 

meaning is correct. Indeed, Neonode itself has advanced at least two of these three meanings 

before the PTO—during original prosecution of the claims and during inter partes review 

(“IPR”)—in order to circumvent different prior art. It is therefore unsurprising that Neonode 

now suggests a “plain meaning” construction rather than articulate what this phrase means. 

A claim is indefinite if its language, when read in light of the specification and the 

prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the 

scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). 

Notably, “a patent does not satisfy the definiteness requirement of § 112 merely because ‘a court 

can ascribe some meaning to a patent’s claims.’” Interval Licensing LLC v. AOL, Inc., 766 F.3d 

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1364, 1371 (Fed. Cir. 2014) (quoting Nautilus, 134 S. Ct. at 2130) (emphasis in original). 

Rather, the claims “must provide objective boundaries for those of skill in the art.” Id. Here, 

claim 1 fails the definiteness requirement because the disputed claim language—which goes to 

the heart of the claimed “interface”—“‘might mean several different things and no informed and 

confident choice is available among the contending definitions.’” Media Rights Techs., Inc. v. 

Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015) (quoting Nautilus, 134 S. Ct. at 

2130 n. 8). 

1. The claim language has at least three possible meanings. 

The phrase “the representation consists of only one option for activating the function” has 

at least the following three possible meanings to a POSITA based upon the claim language: 

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

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

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

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

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

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

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

Ex. 2 (Cockburn Decl.) at ¶¶ 42-44. These three possible meanings are illustrated below (where 

“R” refers to representation, “f” refers to a function and “g” refers to a type of gesture): 

The entire claim phrase reads: “a touch sensitive area in which a representation of a 

function is provided, wherein the representation consists of only one option for activating the 

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function.” Ex. 1 (’879 patent) at 6:50-52. This claim language supports meaning (1) because: 

(a) the claim recites “the function” (in the singular) and a POSITA could read that language as 

referring to a single function; and (b) a POSITA could read the “only one option” language to 

require that only one specific gesture may activate the one function. ’879 patent, claim 1; Ex. 2 

(Cockburn Decl.) at ¶¶ 42-44. 

The claim language supports meaning (2)—a reading Neonode advocated to the PTO—

because: (a) a POSITA recognizes the antecedent basis of “the function” is “a function” and 

knows the use of the “a” could be read by a POSITA to permit one or more functions; and (b) a 

POSITA could read the “only one option” language to require that only one specific gesture may 

activate any given function. ’879 patent, claim 1; Ex. 2 (Cockburn Decl.) at ¶¶ 42-44.

The claim language also supports meaning (3)—another reading Neonode advocated to 

the PTO—because a POSITA could read the “only one option” language as limiting “the 

representation” to one function (rather than limiting the number of activating gestures), in which 

case the claim recites a single function that may be activated by any input gesture. ’879 patent, 

claim 1; Ex. 2 (Cockburn Decl.) at ¶¶ 42-44. 

The scope of claim 1 varies significantly depending on which of these three meanings 

applies, and no informed and confident choice is available among the contending definitions. 

Ex. 2 (Cockburn Decl.) at ¶¶ 42-44. Moreover, as discussed below, the specification provides 

insufficient guidance, and the patentee took contradictory positions regarding what this phrase 

means before the PTO, all further confirming the indefiniteness of the claim. The claim is thus 

invalid. Media Rights, 800 F.3d at 1366. 

2. The specification provides insufficient guidance. 

The specification provides scant disclosure of anything even remotely relating to the 

meaning of this claim phrase. For example, the word “option” does not appear in the 

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specification (much less the broader phrase “only one option for activating the function”). 

Rather, the specification merely says that the menu area “present[s] a representation” of a first, 

second and third function” (Ex. 1 (’879 patent) at 2:5-7, 4:1-3)—without ever explaining what 

that representation consists of—and also says “that any one of these three functions” “can be 

activated” when the touch sensitive area “detects a movement of an object” (id. at 2:10-14, 4:7-

11)—without ever addressing the “only one option for activating the function” claim 

requirement. Accordingly, the specification fails to allow a POSITA to make an informed and 

confident choice among the contending definitions. Ex. 2 (Cockburn Decl). at ¶ 45. 

3. The original prosecution history confirms the claims are indefinite. 

During the original prosecution of the patent application that issued as the ’879 patent, 

the applicant, Neonode Inc., made highly relevant statements about this claim limitation to the 

PTO to circumvent invalidating prior art. Those statements, which constitute intrinsic evidence 

to be considered by the Court, are contradictory regarding the meaning of this claim limitation 

and confirm that it is indefinite. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) 

(en banc) (the court should consider the prosecution history). More specifically: 

The public-notice function of a patent and its prosecution history requires that 

we hold patentees to what they declare during prosecution. Teva, 789 F.3d at 

1344. But holding Infinity to both positions results in a flat contradiction, 

providing no notice to the public of “what is still open to them.” Nautilus, 572 

U.S. at 909, 134 S. Ct. 2120. 

Infinity Computer Prod., Inc. v. Oki Data Americas, Inc., 987 F.3d 1053, 1060 (Fed. Cir.), cert. 

denied, 211 L. Ed. 2d 364, 142 S. Ct. 585 (2021). 

During prosecution, applicant Neonode Inc. added the disputed claim limitation to 

distinguish the claims from the prior art Hirshberg reference. Ex. 3 (’879 patent file history 

(“’879 FH”), 6/30/2010 Amendment) at 2, 8-9. In attempting to distinguish Hirshberg, Neonode 

stated that “Hirshberg teaches a touch and glide operation only for keys that comprise several 

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characters” and that, “[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 8-9 

(emphasis in original). This statement was made to distinguish the patent’s claims from 

Hirshberg on the ground that while the claimed “representation” corresponds to only one 

function, each of the individual keys represented in Hirshberg could perform multiple functions 

(i.e., the entry of different characters depending upon what gesture the user performed on the 

key). Ex. 2 (Cockburn Decl.) at ¶¶ 46-47.1 Neonode Inc. similarly stated, with respect to the 

specification, that elements 22 and 23 (two of the three exemplary “representations” used in the 

specification at col. 4:1-6) each “consists of the one option” of opening their respective 

functions, again indicating that the “one option” claim language refers to the correspondence 

between a representation and its corresponding one function. Ex. 3 (’879 FH, 6/30/2010 

Amendment) at 10; Ex. 2 (Cockburn Decl.) at ¶¶ 47-48. 

These were not Neonode Inc.’s only statements to the PTO about this limitation. In 

identifying support in the specification for its amendment, Neonode Inc. also told the PTO that 

“each representation ... consists of only one option for activating its corresponding function.” 

Ex. 3 (’879 FH, 6/30/2010 Amendment) at 10 (emphasis in original). In contrast to the abovediscussed distinction—which focuses on the claimed representation corresponding to only one 

function—this statement instead appears to also assert there is only one option (gesture) to 

activate a representation’s corresponding function. Ex. 2 (Cockburn Decl.) at ¶¶ 49-50. 

Neonode Inc.’s statements regarding the meaning of this claim limitation during original 

1

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

with the selection of a particular character depending upon which gesture is performed. For 

example, the user could enter “H” by contacting a key and moving it up, while the user could 

enter an “I” by contacting the same key and moving it right. Ex. 4 (U.S. Patent App. Pub. No. 

2002/0027549 (“Hirshberg”)) at Abstract, FIGs. 1, 2 (trace 508 (“H”), trace 506 (“I”)), [0059]. 

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prosecution resulted in further uncertainty rather than clarity, and certainly does not enable a 

POSITA to ascertain its meaning, much less do so with confidence. Id. at ¶ 50. Plaintiff must be 

held to these statements. Infinity, 987 F.3d at 1060. 

4. Plaintiff Neonode Smartphone increased the uncertainty over what 

this claim limitation means during the Google IPR. 

Plaintiff Neonode Smartphone created further uncertainty about what the claim means 

during the IPR proceeding initiated by Google on the ’879 patent (IPR2021-01041) (“Google 

IPR”). Plaintiff’s contradictory statements during the IPR should be considered in evaluating the 

meaning of the claim and Plaintiff must be held to those statements. Aylus Networks, Inc. v. 

Apple Inc., 856 F.3d 1353, 1360-61 (Fed. Cir. 2017); Infinity, 987 F.3d at 1060. 

During the Google IPR, Plaintiff initially explained that the “representation presents the 

user with one option of what to activate,” indicating that the “one option” claim language relates 

to the correspondence between the representation and one function. Ex. 5 (IPR2021-01041, 

Paper 29 (“POR”)) at 5 (emphasis added); Ex. 2 (Cockburn Decl.) at ¶¶ 51-52. Plaintiff also 

argued 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.” Ex. 5 

(IPR2021-01041, POR) at 52 (emphasis added). During the IPR hearing, Plaintiff double 

downed on this, asserting 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. 

But Plaintiff also stated during the IPR hearing 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 representation must represent ‘only one function’”). 

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Plaintiff further argued 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). Thus, here, 

Plaintiff argued that the claim limitation may encompass multiple functions, but only permits one 

function to be activated at a time and that activation must result from a single specified gesture. 

Ex. 2 (Cockburn Decl.) at ¶ 54. 

In short, Plaintiff managed, during a single IPR proceeding, to inconsistently argue that 

the “one option” claim language: 

 Does require that the representation have 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 

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

Thus, rather than provide reasonable certainty of meaning, Plaintiff instead substantially 

amplified the indefiniteness of the claim during the IPR through its contradictions. Id. at ¶ 55. 

Plaintiff should be held to the contradictory statements that it made to the PTO—both 

during original prosecution and during the IPR—which confirm the indefiniteness of the claim. 

See Infinity, 987 F.3d at 1059, 1062 (“Indefiniteness may result from inconsistent prosecution 

history statements where the claim language and specification on their own leave an uncertainty 

that, if unresolved, would produce indefiniteness.”). Like the facts here, the patentee in Infinity 

Computer offered different claim interpretations during prosecution and re-examination. Id. at 

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1056-59. The Court found that “holding [Plaintiff] to both positions results in a flat 

contradiction, providing no notice to the public . . . [such] that the intrinsic evidence leaves an 

ordinarily skilled artisan without reasonable certainty as to [the claim term].” Id. at 1060. 

In summary, because this claim limitation has multiple potential meanings, because the 

claims and specification do not identify which meaning is correct, and because the patentee took 

inconsistent positions as to what this limitation does and does not require, the claim is indefinite 

because “no informed and confident choice is available among the contending definitions.” 

Media Rights, 800 F.3d at 1371. 

Neonode’s “plain meaning” construction should be rejected because, as established 

above, there is no such plain meaning. Indeed, Neonode has not articulated what the supposed 

plain meaning is, or identified any supporting intrinsic evidence. 

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

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

Defendants’ Proposal Neonode’s Proposal 

Indefinite. “Plain meaning, not including a drag and 

drop operation.” 

This claim term is indefinite because Neonode’s statements in the IPRs leave a POSITA 

unable to determine what does and what does not constitute “gliding.” While Neonode told the 

PTAB that the claimed “gliding” is different from a “drag” or a “flick,” and that the cited prior 

art references are distinguishable on that basis, Neonode never explained how a “glide,” drag” or 

flick” are in fact distinct in any meaningful way. Indeed, as discussed below, the little 

explanation that Neonode provided increased (not decreased) the uncertainty over the meaning of 

the claims. In this regard, the public has the right to rely on a patent owner’s affirmative 

statements regarding the scope of its claims, including where, as here, such statements result in 

indefiniteness. Infinity, 987 F.3d at 1059-60. 

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The Court should not adopt the “plain meaning” portion of Neonode’s construction 

because “glide” does not have a plain meaning to a POSITA and there is no intrinsic evidence 

that allows a POSITA to determine either the boundaries of that term, or whether a given user 

gesture is a “glide,” a “drag” or a “flick.” Ex. 2 (Cockburn Decl.) at ¶¶ 56-74. Nor should the 

Court adopt Neonode’s unjustified negative limitation (“not including a drag and drop 

operation”), both because Neonode has not articulated any meaningful distinction between a 

“drag” and a “glide” (much less one based upon intrinsic evidence), and because Neonode’s 

construction incorrectly conflates a user gesture (a drag) with one potential action the computer 

may take as a result of the user performing that gesture (a drop). Id. at ¶¶ 75-77. 

1. Neonode’s IPR statements render the claim terms indefinite. 

In Samsung’s IPR on the ’879 patent (IPR2021-00144) (“Samsung IPR”), Neonode 

asserted in its briefing that “The Plain Meaning Confirms ‘Gliding’ And ‘Dragging’ Are 

Distinct,” but failed to actually articulate what aspect of a “glide” makes it distinct from a 

“drag.” Ex. 9 (IPR2021-00144, Paper 49 (“PO Sur-Reply”)) at 7-9. During oral argument at the 

hearing, when Plaintiff was asked by one of the PTAB Administrative Patent Judges (“APJ”) to 

explain how to distinguish between the two, Neonode asserted—without any supporting intrinsic 

evidence to support its attorney assertion—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. When Plaintiff asked the APJ whether that 

answered the APJ’s question, the APJ responded in part: “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 

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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 40:1-45:2 (Plaintiff’s counsel repeatedly failing to substantively respond to the APJs’ 

earlier requests that Plaintiff explain the differences, if any, between a drag and a glide); 52:20-

53:20 (Plaintiff, in responding to additional APJ questioning, indicating that an alleged 

difference between a glide and a drag is the amount of effort, and that a glide “is a much more 

generic movement”). 

Accordingly, while Plaintiff told the PTAB during the Samsung IPR hearing that a glide 

and a drag are different, the purported differences identified by Plaintiff—a glide allegedly 

requiring “less effort” and being “more generic”—are themselves indefinite in scope because 

they fail to advise a POSITA where one begins and the other ends in an actual device. Ex. 2 

(Cockburn Decl.) at ¶ 58. Nautilus, 134 S. Ct. at 2124 (a claim term is indefinite if it “fail[s] to 

inform, with reasonable certainty, those skilled in the art about the scope of the invention.”). 

In the Google IPR, Plaintiff sought to distinguish the cited prior art by arguing that the 

prior art disclosed a “flick and argued that interpreting a ‘flick’ gesture as a ‘glide’ is “contrary 

to the plain meaning . . . .” Ex. 5 (IPR2021-1041, POR) at 35. Plaintiff asserted in the Google 

IPR that a “glide” refers to “a longer, continuous and effortless motion.” Id. at 44. 

Nothing in intrinsic evidence provides any objective guidelines that would allow a 

POSITA to distinguish among the “glide,” “flick” and “drag” labels used by Plaintiff during the 

IPRs. Ex. 2 (Cockburn Decl.) at ¶¶ 56-74; Interval Licensing, 766 F.3d at 1371 (“The claims, 

when read in light of the specification and the prosecution history, must provide objective 

boundaries for those of skill in the art.”). Because those distinctions cannot be objectively 

identified, the claims are indefinite. Nautilus, 134 S. Ct. at 2124. 

Claim 1 recites “activating the function . . . by a multi-step operation comprising . . . (ii) 

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the object gliding along the touch sensitive area away from the touched location.” Ex. 1 (’879 

patent) at 6:52-57. Importantly, the specification never uses the words “glide,” “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., 4:7-9, 2:10-12 (emphasis added). The 

specification thus provides no information that would allow a POSITA to distinguish between a 

“glide” and a “flick” or “drag.” Ex. 2 (Cockburn Decl.) at ¶¶ 57, 64, 66. 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.” Id. at ¶¶ 57, 64. Neonode’s IPR expert agrees. Ex. 

10 (IPR2021-01041, EX1031 (“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”). 

During original prosecution, Neonode Inc. equated “gliding” with “swiping,” “rubbing” 

and “sliding.” Ex. 12 (’879 FH, 9/3/2008 Applicant Letter to Examiner) at 1. Neonode did not 

distinguish any of these terms from a “flick” or “drag.” Indeed, the applicant instead equated 

“dragging” with “gliding” (Ex. 13 (’879 FH, 2/22/2010 Amendment) at 8 (characterizing the 

prior art Hoshino’s “drag” movement as a “glide”), and the sole named inventor of the ’879 

patent describes the claimed “glide” movement as a “drag.” Ex. 14 (IPR2021-01041, EX1044 

(“Goertz Tr.”)) at 41:8-41:15. Moreover, when the examiner was looking for potentially 

applicable prior art during prosecution, he searched for “flick,” “drag,” “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. Again, none of this allows a POSITA to distinguish a glide from a flick or a drag as 

Neonode urged during the IPRs. Ex. 2 (Cockburn Decl.) at ¶¶ 69-70. 

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Although Neonode failed to articulate in the Samsung IPR what aspect of a “glide” 

makes it distinct from a “drag,” Neonode argued in the Google IPR that a “glide” can be 

distinguished from a “flick” based upon on parameters such as speed, distance, effort, jerkiness 

and smoothness. However, none of these parameters is discussed in the ’879 patent, much less 

in a way that allows a POSITA to distinguish the two terms. Ex. 2 (Cockburn Decl.) at ¶¶ 58-60. 

For example, the patent does not say or suggest what speed, if any, would distinguish a “glide” 

from a “flick,” how much distance must be traversed for a “glide” to be distinguished from a 

“flick,” or what amount of greater or lesser “effort” (however that would be measured) needs to 

be made for a movement to be a “glide” as opposed to a “flick.” 

When the ’879 patent specification does mention “speed of the movement . . . of the 

object 4,” it is not in the context of function activation, but instead relates to 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; 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 that is 

recited in the disputed claim limitation. Ex. 2 (Cockburn Decl.) at ¶ 67. A POSITA would 

understand from this different discussion of speed that the specification identifies speed as a 

relevant factor where appropriate, and that the lack of any such discussion regarding function 

activation informs a POSITA that speed is not relevant to that operation. Id. 

Moreover, Neonode’s expert agrees that the “movement” disclosed in the specification is 

a genus or “superset” of types of object movements for function activation. Ex. 17 (IPR2021-

00144, EX1053 (“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 has not cited any evidence that a 

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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 new matter to 

the application in the form of adding the “gliding” claim term (without amending the 

specification to discuss it). Ex. 12 (’879 FH, 9/3/2008 Applicant Letter to Examiner) at 2, 5 

(proposed amendment adding “gliding”); Ex. 2 (Cockburn Decl.) at ¶¶ 71-72. However, the 

applicant never differentiated, during original prosecution, the newly claimed “gliding” from 

prior art based on parameters such as speed, distance, jerkiness, or smoothness. 

Because “glide” does not have a plain and ordinary meaning and because the intrinsic 

record fails to provide clear notice with reasonable certainty between what is claimed, i.e., a 

“glide,” and what Neonode alleges is open to the public, e.g., a “flick” and a “drag,” the claims 

are indefinite. Nautilus, 134 S. Ct. at 2129. Indeed, the vague and unsupported distinctions 

Neonode cites would result in the very “innovation-discouraging ‘zone of uncertainty’ against 

which [the Supreme Court] has warned. Id. at 2130 (internal citation omitted). 

2. There is no basis in the intrinsic evidence to exclude a “drag and drop 

operation” from the “gliding” terms. 

Neonode’s proposed construction seeks to exclude a “drag-and-drop operation” from the 

scope of the disputed “gliding” terms. There are two major defects in this request. 

First, as discussed above, there is nothing in the intrinsic evidence that allows a POSITA 

to distinguish between a “glide” and a “drag” within the meaning of claim 1. 

Second, nothing in the patent excludes a “drag” operation that results in a “drop.” Ex. 2 

(Cockburn Decl.) at ¶¶ 75-77. A “drag-and-drop operation” may have a multitude of 

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characteristics depending on the designer, none of which are addressed in the ’879 patent. Id.

The claimed “gliding” operation, by contrast, only describes the movement of the object along 

the touch sensitive area, which is an action that the user takes to interact with the touch sensitive 

area. Ex. 2 (Cockburn Decl.) at ¶¶ 75-76; see also Ex. 1 (’879 patent) at FIG. 2, 4:7-11. In 

contrast, a POSITA understands that at least the “drop” part of a “drag-and-drop operation” 

refers to actions performed by the user interface, not the user, following the drag. Ex. 2 

(Cockburn Decl.) at ¶¶ 76-77. While the “drag” might refer to visually moving something on the 

display, the “drop” typically refers to a specifically programmed interaction between a selected 

source item (such as a file or other icon) and a target. Id. at ¶¶ 75-77. 

Accordingly, the action of the user “gliding” a finger or pen “along the touch sensitive 

area” does not preclude a “drag-and-drop” operation from the user interface since (1) there is 

nothing in the intrinsic evidence that distinguishes a drag from a glide, and (2) neither the claims 

nor the specification precludes a subsequent “drop” following a glide in this “comprising” claim. 

Id.; Multilayer Stretch Cling Film Holdings, Inc. v. Barry Plastics Corp., 831 F.3d 1350, 1358 

(Fed. Cir. 2016) (the term “comprising” creates a presumption that the recited elements are only 

part of a device and that the claim does not exclude additional, unrecited elements). 

D. “tapping” / “selection of a preferred service or setting is done by tapping” 

(claim 3) 

Defendants’ Proposal Neonode’s Proposal 

No construction necessary; plain 

and ordinary meaning. 

“Selection of a preferred service or setting is done by 

completion of a gesture that involves the input device 

touching a screen followed directly and immediately 

by lifting off the screen from the same location.”

The term “tapping” / “selection of a preferred service or setting is done by tapping” has a 

well-understood meaning to a POSITA and need not be narrowed by Neonode’s several 

additional, unsupported limitations. First, there is no lexicography or disclaimer that justifies 

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Neonode’s limiting construction. See Phillips, 415 F.3d at 1316. Second, the phrase “directly 

and immediately” finds no support in the term’s plain meaning or the patent’s specification. 

Third, a POSITA would not understand the term to require the precision of lifting off exactly 

“from the same location” or why that aspect of the gesture is relevant to the claims. Fourth, 

Neonode’s construction refers to a “screen,” but the claim language merely requires a “touch 

sensitive area,” not a display screen. Thus, Neonode’s construction should be rejected and the 

term instead should be afforded its plain and ordinary meaning. 

E. “a shell upon an operating system” (claim 15) 

Defendants’ Proposal Neonode’s Proposal 

No construction necessary; plain and ordinary 

meaning. 

“A software interface between the user and 

an operating system.”

The term “a shell upon an operating system” has a plain and ordinary meaning that would 

have been understood by a POSITA such that no construction of this term is necessary. Ex. 2 

(Cockburn Decl.) at ¶ 91. Moreover, there is no basis for Neonode’s narrowing construction. 

First, the broader claim limitation merely requires that the “computer program code is 

adapted to function as a shell upon an operating system.” Ex. 1 (’879 patent) at 8:27-28 

(emphasis added). Thus, the claim is broader than computer program code that is itself a shell 

and would include code that provides the functions of a shell. Ex. 2 (Cockburn Decl.) at ¶ 91. 

Second, the specification uses this term only once, and merely parrots the language of the 

claim without further explanation: “the computer program product is adapted to function as a 

shell upon an operations system.” Ex. 1 (’879 patent) at 6:35-37. Thus, nothing in the 

specification provides a special definition for or otherwise limits the term to something different 

than its plain meaning. Ex. 2 (Cockburn Decl.) at ¶ 92. 

Third, the import of Neonode’s construction is unclear. If Neonode intends to apply its 

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construction to preclude a software interface that is integrated or otherwise associated with the 

operating system because it is not “between the user and an operating system,” then that is 

contrary to the plain meaning of the term because some shells are considered part of their 

corresponding operating system. For example, contemporaneously filed U.S. Patent No. 

7,240,296 (“Matthews”) describes a system where “[t]he navigation system 60 includes a shell 

component 64 associated with the shell user interface 62.” Ex. 18 (Matthews) at 6:11-12. 

Matthews confirms that the shell may be either integrated with or external to the operating 

system. Id. at 6:12-14 (“[S]hell component 64 is integrated into (or alternatively is external to 

and associated with) the operating system 35.”) (emphasis added). Ex. 2 (Cockburn Decl.) at 

¶¶ 94-95. Moreover, contemporaneous dictionary definitions are agnostic regarding the 

orientation of the shell to the operating system. Id. at ¶¶ 96-97. Thus, to the extent Neonode 

intends to exclude software integrated or associated with the operating system, such a 

construction is inconsistent with the breadth of the term’s plain meaning. Id. at ¶¶ 92-97. 

V. CONCLUSION 

Defendants respectfully request that the Court adopt its claim constructions for the 

reasons addressed above. 

Dated: April 14, 2023 Respectfully submitted, 

DLA PIPER LLP (US) 

By: /s/ John M. Guaragna

John M. Guaragna 

Texas Bar No 24043308 

DLA PIPER LLP (US) 

303 Colorado Street, Suite 3000 

Austin, TX 78701-4653 

Tel: 512.457.7125 

Fax: 512.457.7001 

john.guaragna@dlapiper.com 

Mark K. Fowler (Pro hac vice)

Case 6:20-cv-00507-ADA Document 71 Filed 04/14/23 Page 24 of 26
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Bar No. 124235 

mark.fowler@dlapiper.com 

Erik Fuehrer (Pro hac vice) 

Bar No. 252578 

Erik.fuehrer@dlapiper.com 

DLA PIPER LLP (US) 

2000 University Avenue 

East Palo Alto, CA 94303-2214 

Tel: 650.833.2000 

Fax: 650.833.2001 

Tiffany Miller (Pro hac vice) 

Tiffany.miller@dlapiper.com 

DLA PIPER LLP (US) 

401 B St., Ste. 1700 

San Diego, CA 92101 

Tel: 619.699.2700 

Fax: 619.699.2701 

Zachary Loney (Pro hac vice) 

DLA Piper LLP (US) 

303 Colorado St., Suite 3000 

Austin, TX 78701 

Tel: 512.457.7000 

Zachary.loney@us.dlapiper.com 

Benjamin Mueller (Pro hac vice) 

Benjamin.mueller@dlapiper.com 

DLA PIPER LLP (US) 

444 West Lake Street, Suite 900 

Chicago, IL 60606-0089 

Tel: 312.368.4000 

Fax: 312.236.7516 

ATTORNEYS FOR SAMSUNG 

ELECTRONICS CO. LTD. and SAMSUNG 

ELECTRONICS AMERICA, INC. 

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CERTIFICATE OF SERVICE 

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

service are being served on April 14, 2023 with a copy of this document via the Court’s CM/ECF 

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

mail on this same date. 

/s/ John M. Guaragna 

John M. Guaragna 

Case 6:20-cv-00507-ADA Document 71 Filed 04/14/23 Page 26 of 26