NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

GOOGLE LLC,

Appellant

v.

NEONODE SMARTPHONE LLC,

Appellee

______________________ 

2023-1638

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in 

No. IPR2021-01041.

______________________ 

Decided: July 18, 2024

______________________ 

DANIEL C. TUCKER, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Reston, VA, argued for appellant. 

Also represented by ERIKA ARNER, Washington, DC; KEVIN 

D. RODKEY, Atlanta, GA.

 PHILIP GRAVES, Graves & Shaw LLP, Los Angeles, CA, 

argued for appellee. Also represented by GREER N. SHAW; 

ROCCO MAGNI, BRIAN MELTON, Susman Godfrey LLP, Houston, TX; KALPANA SRINIVASAN, Los Angeles, CA. 

______________________ 

Case: 23-1638 Document: 49 Page: 1 Filed: 07/18/2024
2 GOOGLE LLC v. NEONODE SMARTPHONE LLC

Before LOURIE, PROST, and STARK, Circuit Judges.

LOURIE, Circuit Judge. 

Google LLC appeals from the final written decision of 

the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) concluding that claims 1–7, 9, 12, 

13, and 15–17 of U.S. Patent 8,095,879 (“the ’879 patent”) 

had not been shown to be unpatentable as obvious under 

35 U.S.C. § 103. Google LLC v. Neonode Smartphone LLC, 

No. IPR2021-01041 (P.T.A.B. Jan. 11, 2023), J.A. 1–40 

(“Decision”). For the following reasons, we affirm. 

BACKGROUND

Neonode Smartphone LLC (“Neonode”) owns the ’879 

patent, which is generally directed to touch-sensitive user 

interfaces for mobile handheld computer units, e.g., cell 

phones. ’879 patent at Abstract. Claim 1, the only independent claim, recites:

1. A non-transitory computer readable medium 

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

computer unit, allows the computer to present a 

user interface for the mobile handheld computer 

unit, the user interface comprising:

[1a] a touch sensitive area in which a representation of a function is provided, 

[1b] wherein the representation consists of only 

one option for activating the function and 

[1c] wherein the function is activated by a multistep operation comprising (i) an object touching the 

touch sensitive area at a location where the representation is provided and then (ii) the object gliding along the touch sensitive area away from the 

touched location, 

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GOOGLE LLC v. NEONODE SMARTPHONE LLC 3

[1d] wherein the representation of the function is 

not relocated or duplicated during the gliding. 

Id. at col. 6, ll. 45–59 (numbering added). The only claim 

limitation disputed in this appeal is that which recites: “the 

object gliding along the touch sensitive area away from the 

touched location,” id. (emphases added), which the parties 

and Board refer to as “limitation 1c.” See Decision, J.A. 15. 

Thus, whether the claim as a whole is invalid for obviousness settles down to whether limitation 1c was obvious.

Google petitioned for, and the Board instituted, inter 

partes review (“IPR”) of claims 1–7, 9, 12, 13, and 15–17 of 

the ’879 patent. Google argued, inter alia, that the claims 

are unpatentable as obvious over Robertson1 and Maddalozzo.2 Id. at J.A. 7. Robertson describes an early-90s 

desktop computer using an “X window system.” J.A. 2693. 

That system includes gesture-based “XButtons,” which appear on the user interface in small rectangles with accompanying editable text. See id. According to Robertson:

XButtons support mouse-based or pen-based gestural input in addition to simple “pressing”. Whenever a user gestures at an XButton, a gesture 

parser interprets mouse or pen movement and classifies it as one of a small set of easily differentiated 

gestures (flick left, flick right, flick up, flick down, 

click, rubout, check, or insert). Once a gesture has 

been identified, the XButton executes the 

1 George G. Robertson et al., Buttons as First Class 

Objects on an X Desktop, UIST: Proceedings of the ACM 

Symposium on User Interface Software and Technology: 

Hilton Head, South Carolina, USA, 35–44 (1991), J.A.

2683–702.

2 U.S. Patent 7,768,501. Google only relied on Maddalozzo to argue that the preamble, which is not at issue 

here, would have been obvious. Decision, J.A. 15 n.7. 

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4 GOOGLE LLC v. NEONODE SMARTPHONE LLC

appropriate action (i.e., there is an action for each 

of the gestures). During the gesture, feedback is 

provided in the form of a mouse track displayed on 

the screen. As soon as the gesture is completed, the 

feedback is erased.

Id. at 2697 (emphases added). Robertson further 

teaches that “[a]lthough a gesture must start in an 

XButton . . . it can move outside the XButton.” Id. at 

2701.

During the IPR proceedings, neither party proposed 

any explicit claim constructions. Decision, J.A. 10. But in 

its Patent Owner Response, Neonode raised various arguments regarding proper construction of the “gliding . . . away” limitation in the context of the asserted prior 

art, to which Google responded in its Reply. Id.

In its decision, the Board concluded that it need not 

construe any term of the asserted claims explicitly and, to 

the extent a term needed to be interpreted, the Board

would do so in the context of the prior art. Id. On the merits, the Board concluded that Google had failed to show by 

a preponderance of the evidence that the claim would have 

been obvious over the cited prior art. Id. at 15. Specifically, 

the Board concluded that Google had not shown that Robertson’s “flick” gesture renders obvious limitation 1c. Id. at 

25–26. In reaching that conclusion, the Board implicitly 

adopted Neonode’s claim construction that, based on 

amendments made during prosecution of the ’879 patent,

the claimed “gliding . . . away” is clearly intended to cover 

what is known today as a “swipe” gesture as opposed to a 

“drag-and-drop” operation described in the prior art. Id. at 

26. It determined that the claimed gesture “is more specific 

than merely an on-screen movement from one location to 

another.” Id. (emphasis added).

The Board therefore concluded that a person of ordinary skill in the art would not have understood Robertson’s 

“flick” gesture, which was not described in any more 

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GOOGLE LLC v. NEONODE SMARTPHONE LLC 5

specific terms, to comprise “gliding . . . away,” crediting 

Neonode’s expert’s testimony, dictionary definitions, and 

evidence that modern Google developers maintain a meaningful distinction between “flick” and “swipe” gestures. Id.

at 28. 

The Board also concluded that Robertson’s “insert” gesture, which it found would have been understood “to be 

similar to the way a person would draw a caret to indicate 

an insertion within existing text,” did not comprise “gliding . . . away.” Id. at 29. The Board again credited Neonode’s expert’s testimony and found that Robertson’s 

“insert” gesture “would involve two brief, connected movements with a sharp peak, neither of which would be a continuous gliding or swiping motion.” Id.

Accordingly, the Board held that Google had failed to 

show the challenged claims to be unpatentable. 

Google timely appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).

DISCUSSION

On appeal, Google argues only that (1) the Board erred 

in construing “gliding . . . away,” and (2) under the correct 

construction, in which “gliding . . . away” simply requires 

“movement,” Robertson renders obvious the limitation. 

Google Br. at 2, 49.3 Because we agree with the Board’s 

construction of the disputed term, we need not consider 

Google’s second argument. 

Claim construction is a question of law reviewed de 

novo. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808 (Fed. 

Cir. 2021). We review any underlying intrinsic-evidence 

3 Google does not argue that, even under the Board’s 

(allegedly erroneous) construction, the Board erred in holding that Robertson does not render obvious the “gliding . . . away” limitation.

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6 GOOGLE LLC v. NEONODE SMARTPHONE LLC

aspects of the Board’s claim-construction analysis de novo, 

and any extrinsic-evidence aspects of that analysis for substantial evidence. Id. A finding is supported by substantial 

evidence if a reasonable mind might accept the evidence as 

adequate to support the finding. Consol. Edison Co. v. 

NLRB, 305 U.S. 197, 229 (1938).

Here, the intrinsic evidence, i.e., the claims, the specification, and the prosecution history, see Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), is 

enough to support the Board’s implicit construction of the 

disputed “gliding . . . away” limitation. “[T]he words of a 

claim ‘are generally given their ordinary and customary 

meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 

(Fed. Cir. 2005) (en banc) (quoting Vitronics, 90 F.3d at 

1582). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be 

readily apparent even to lay judges, and claim construction 

in such cases involves little more than the application of 

the widely accepted meaning of commonly understood 

words.” Id. at 1314 (citation omitted). This is such a case.

The plain and ordinary meaning of “gliding,” a simple 

term, is certainly more specific than Google’s proposed construction, which equates “gliding” with the more general 

“moving.” Google faults the Board for looking to dictionaries to support its determination that “gliding” connotes 

movement that is “smooth,” “continuous,” and possibly 

“quiet” or “effortless.” Decision, J.A. 28; Google Br. at 

43–44. But, as noted in Phillips, in cases like this, where 

Google does not argue that “gliding” is a term of art that 

would be understood any differently by a person of ordinary 

skill than a lay judge, “general purpose dictionaries may be 

helpful” in determining its plain and ordinary meaning. 

415 F.3d at 1314. Accordingly, we agree with the Board 

that “gliding” is more specific than general “movement.” 

Importantly, however, neither our nor the Board’s ultimate 

construction rests on dictionary definitions.

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GOOGLE LLC v. NEONODE SMARTPHONE LLC 7

That “gliding” cannot mean just any type of “moving” 

is further supported by the prosecution history. An earlier 

version of claim 1 recited, in part, that the functions of the 

claimed device were activated by “an object moving in a direction from a starting point that is the representation of 

the function.” J.A. 1967 (emphasis added). During prosecution the applicant sought an examiner interview, proposing claim amendments that would eliminate the “moving” 

language and replace it with the at-issue “gliding . . . away” language. See id. at 2097. In its request for 

the interview, the applicant stated:

For the interview, I would like to discuss the attached draft proposed amendment. Specifically, I 

would like to discuss the touch-and-glide thumb 

movement, variously referred to as “swiping”, “rubbing”, “gliding” and “sliding”. This movement is described in claim 1 as “an object touching a location 

in the touch sensitive area at which the representation of the function is displayed and then gliding

along the touch sensitive area away from the location.” . . . I believe that the touch-and-glide movement of the claimed invention is different than the 

input movements disclosed in the cited prior art[.]

Id. at 2091 (emphases added). Ultimately, the examiner 

accepted the amendment and the applicant continued to 

maintain throughout the remainder of prosecution that the 

claimed gesture was a more specific movement akin to 

“rubbing,” “swiping,” and “touch-and-glide.” See, e.g., id. at 

2208; id. at 2210 (likening the claimed gesture to a prior 

art reference’s disclosed “gliding movement,” but distinguishing that reference by its functionality). That the applicant amended the claim to eliminate “moving” and 

replace it with “gliding” demonstrates that Google’s proposed construction cannot be correct. Ajinomoto Co. v. Int’l 

Trade Comm’n, 932 F.3d 1342, 1351 (Fed. Cir. 2019)

(“[W]hen a word is changed during prosecution, the change 

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8 GOOGLE LLC v. NEONODE SMARTPHONE LLC

tends to suggest that the new word differs in meaning in 

some way from the original word.”).

We are further unpersuaded by Google’s arguments 

that the specification does not support the Board’s construction and that, under the Board’s construction, limitation 1c lacks written description support. Google Br. at 

29–32, 47–49. To be sure, Google is correct that “the specification is always highly relevant to the claim construction 

analysis” and “the single best guide to the meaning of a 

disputed term.” Phillips, 415 F.3d at 1315 (cleaned up). 

But here, the construction adopted by the Board is not inconsistent with the specification. Although the specification generally describes that the claimed functions can be 

activated when the device detects “movement” of an object, 

see, e.g., ’879 patent at Abstract, it nowhere forecloses a 

claim to any particular type of movement, such as “gliding.” 

Thus, this is not a case where the specification evidences a 

disavowal or intentional disclaimer of the plain and ordinary meaning of the disputed term. Nor is it a case in 

which the applicant acted as its own lexicographer to redefine a commonly understood term. See Phillips, 415 F.3d 

at 1316 (“[O]ur cases recognize that the specification may 

reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise 

possess. . . . In other cases, the specification may reveal an 

intentional disclaimer, or disavowal, of claim scope by the 

inventor.” (internal citation omitted)). Moreover, that the 

specification does not use the term “gliding” is not dispositive, as there is no requirement that the specification disclose the claim language in haec verba. See, e.g., Trustees 

of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 

(Fed. Cir. 2016) (citing Aventis Pharma S.A. v. Hospira, 

Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012)). 

We therefore agree with the Board that, based on the 

intrinsic evidence, “gliding . . . away” does not simply mean 

“moving.” Because we are satisfied that the intrinsic evidence is enough to support the Board’s implicit claim 

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GOOGLE LLC v. NEONODE SMARTPHONE LLC 9

construction, we need not further address the extrinsic evidence. We therefore affirm the Board’s claim construction, 

and hence its conclusion that the claims were not shown to 

be unpatentable as obvious.

CONCLUSION

We have considered Google’s remaining arguments and 

find them unpersuasive. For the foregoing reasons, we affirm the Board’s decision that Google failed to show the 

challenged claims to be unpatentable.

AFFIRMED

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