NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG 

ELECTRONICS AMERICA, INC., APPLE INC.,

Appellants

v.

NEONODE SMARTPHONE LLC,

Appellee

______________________ 

2023-1464

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in 

No. IPR2021-00144.

______________________ 

Decided: July 18, 2024

______________________ 

LAUREN ANN DEGNAN, Fish & Richardson P.C., Washington, DC, argued for appellants. Apple Inc. also represented by WALTER KARL RENNER; NITIKA GUPTA FIORELLA, 

Wilmington, DE; ALEXANDER MICHAEL PECHETTE, Boston, 

MA; OLIVER RICHARDS, San Diego, CA.

 STANLEY JOSEPH PANIKOWSKI, III, DLA Piper US LLP, 

San Diego, CA, for appellants Samsung Electronics Co., 

Ltd., Samsung Electronics America, Inc. Also represented 

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by TIFFANY CAROL MILLER; JAMES MARTIN HEINTZ, Reston, 

VA.

 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. 

______________________ 

Before LOURIE, PROST, and STARK, Circuit Judges.

LOURIE, Circuit Judge.

Samsung Electronics Co., Ltd., Samsung Electronics 

America, Inc., and Apple Inc. (collectively, “Samsung”) appeal from the final written decision of the U.S. Patent and 

Trademark Office Patent Trial and Appeal Board (“the 

Board”) concluding that claims 1–6 and 12–17 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. Samsung 

Elecs. Co. v. Neonode Smartphone LLC, 

No. IPR2021-00144 (P.T.A.B. Dec. 1, 2022), J.A. 1–55 (“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, 

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[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, 

[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: 

“wherein the representation of the function is not relocated 

or duplicated during the gliding,” id., which the parties and 

Board refer to as “limitation 1d.” See Decision, J.A. 19. 

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

Samsung petitioned for, and the Board instituted, inter 

partes review (“IPR”) of claims 1–6 and 12–17 of the ’879 

patent. Samsung argued inter alia that the claims are unpatentable as obvious over U.S. Patent 5,406,307 

(“Hirayama”)1 in combination with various secondary references not relevant to the issues on appeal. Hirayama is 

generally directed to a data processing apparatus having a 

user interface with a number of different functions represented by various icons, e.g., a telephone, a calculator, etc., 

in an icon group. See Hirayama at Abstract, Figure 3A. 

Hirayama discloses in its “Objects and Summary of the 

1 The Board and parties refer to this reference as 

“Hirayama307” to distinguish it from a separately asserted

patent reference by the same inventor, i.e., U.S. Patent 

6,100,878 (“Hirayama878”). Because we need not consider 

Hirayama878 to dispose of this appeal, we refer to 

Hirayama307 simply as “Hirayama.”

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Invention” that the apparatus can detect when a pen 

touches the display at a position in which a desired icon is 

displayed and that “the icon display coordinate position is 

moved in accordance with the movement” of the pen. Id. at 

col. 2, ll. 1–8. Relatedly, Figures 3A and 4A of Hirayama 

show that, to activate a function, the user touches the icon 

associated with that function with a pen and then “moves 

(i.e., drags)” the point of the pen to the display without lifting the pen. Id. at col. 4, l. 63–col. 5, l. 7. It describes that 

when the user then “takes the point of the pen [] off from 

the surface of the input tablet [], an icon (hereinafter [to] 

be referred to as a window) enlarged in the form of the processing display mode” of the desired function is “automatically displayed.” Id. at col. 5, ll. 7–12. In the reverse 

operation in which a user wants to close a window back to 

its original position, Hirayama teaches that the user can 

touch the pen to the window and drag the point of the pen 

back to the original icon where it can be stored in that position. Id. at col. 6, ll. 22–31. It explains that “the pen [] 

need not be always returned to the [original icon], but if the 

pen [] is returned to a predetermined icon in the icon group 

[], then the window can automatically be stored in the vacant icon position.” Id. at col. 6, ll. 31–35.

Samsung argued that Hirayama renders obvious limitation 1d because “it would have been obvious, given 

Hirayama’s disclosure, to implement the user interface 

such that the icon is not relocated or duplicated during the 

gliding of the pen.” Decision, J.A. 20 (cleaned up).

The Board disagreed, finding that Samsung had not established by a preponderance of the evidence that 

Hirayama teaches the disputed negative limitation, i.e., 

the lack of any relocation or duplication of the activated 

icon during the pen movement as limitation 1d requires. 

Id. at J.A. 19–20. The Board reached that conclusion after 

reviewing Hirayama’s disclosure and figures, taking into 

consideration both parties’ expert testimony regarding how 

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a person of ordinary skill in the art would understand the 

teachings of Hirayama. 

First, the Board concluded that, based on Hirayama’s 

summary of its disclosure, a person of ordinary skill in the 

art would have understood that the icon can move along 

with the tip of a pen during the dragging operation. Id. at 

J.A. 21. It noted, however, that the “language . . . adds ambiguity by referring to movement of ‘the icon display coordinate position’ rather than simply the ‘icon.’” Id. at 

J.A. 21–22. Accordingly, the Board found that the summary “does not necessarily teach that the icon is visually 

dragged with the pen,” but at minimum “provides at least 

some evidence that a person of ordinary skill in the art 

would have understood that the icon is visually dragged” in 

Hirayama’s disclosure. Id. at J.A. 22 (emphases added). 

The Board further credited Neonode’s expert’s testimony 

on that point. Id.

Next, the Board looked to the various figures of 

Hirayama. With respect to Figure 4A, which depicts a

flowchart of the operation of Hirayama’s device, the Board 

concluded that Samsung had not shown by a preponderance of the evidence “that the absence . . . of any step of 

moving [the icon] would have suggested to a person of ordinary skill in the art that no such movement or duplication 

of [the icon] occurs.” Id. at J.A. 23. It acknowledged Samsung’s expert’s testimony regarding how a person of ordinary skill in the art would interpret the figure but found 

the expert’s inference unsupported. Id. at J.A. 23–24.

Looking to Figures 3A and 3B, the Board credited Neonode’s expert testimony that those figures do not necessarily depict that the icon is neither duplicated nor dragged 

with the pen because, for example, “Figure 3A simultaneously depicts the state of the user interface at two distinct 

time periods (immediately after power-on and during a 

dragging operation).” Id. at J.A. 25. But overall, the Board 

found both parties’ proposed interpretations of those 

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figures to be “equally plausible.” Id. at J.A. 26; see also id. 

at J.A. 30 (“Given the lack of an explicit disclosure of 

whether [the icon] is visually dragged during these operations, we find [Neonode’s expert’s] interpretation . . . to be 

at least as likely as that proposed by [Samsung’s expert.]”). 

Thus, “because of the unclarity of what is depicted in Figures 3A and 3B,” id. at J.A. 26, the Board concluded that 

Samsung had failed to meet its burden of persuasion to 

show that those figures would have suggested limitation 1d 

to a person of ordinary skill in the art.

Finally, the Board observed that, in the reverse operation of closing a window and returning it as an icon to the 

icon group, Hirayama refers to a “predetermined vacant position.” Id. at J.A. 30–31. The Board credited Neonode’s 

expert testimony that a person of ordinary skill in the art 

would have understood that the icon must have been relocated during the drag-and-drop operation when it was first 

activated because the position to which the icon is being 

returned is now vacant. Id. The Board therefore found 

Hirayama’s “vacant” icon position as “at least mild evidence” that Hirayama’s activation process involves relocating or duplicating the icon. Id. at J.A. 33.

Based on this evidence, the Board concluded that Samsung had failed to satisfy its burden of persuasion that 

Hirayama teaches limitation 1d. Id. at J.A. 38. The Board 

further found that various objective indicia of nonobviousness had a nexus to the claimed invention and weighed significantly in favor of nonobviousness. See generally id. at 

J.A. 40–52.

Samsung timely appealed. We have jurisdiction under 

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

DISCUSSION

On appeal, Samsung argues that (1) the Board erred in 

concluding that Samsung had failed to demonstrate that 

the challenged claims would have been obvious over 

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Hirayama, and (2) the Board misapplied the nexus requirement for objective indicia of nonobviousness. Because we 

conclude that the Board’s obviousness analysis based on 

the asserted prior art was supported by substantial evidence, we need not reach any secondary considerations of 

nonobviousness.

Obviousness is a legal determination based on underlying findings of fact. Koninklijke Philips N.V. v. Google 

LLC, 948 F.3d 1330, 1335 (Fed. Cir. 2020). We review the 

Board’s legal determinations de novo, and its factual findings 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).

Samsung first argues that the Board erred as a matter 

of law because its finding that Hirayama is ambiguous concerning the relocation or duplication of the icon “compels 

the conclusion” that the claims would have been obvious

over Hirayama. Samsung Br. at 22–26. In essence, Samsung invokes a “design choice” argument, contending that, 

because there are only two possible choices—(1) relocating 

or duplicating the icon or (2) not relocating or duplicating 

the icon—it would have been obvious to the person of ordinary skill in the art to arrive at the claimed invention. Id. 

We disagree.

We do not understand the Board to have determined 

that Hirayama itself is ambiguous as to whether the icon 

is relocated or duplicated during the drag-and-drop operation of Hirayama. Although the Board did conclude that 

various portions of Hirayama were “ambiguous” as to the 

claimed limitation, see, e.g., Decision, J.A. 21–22, its ultimate conclusion was based on its determination that, as a 

whole, Samsung failed to satisfy its burden of persuasion 

that Hirayama rendered obvious the claimed invention. 

See id. at J.A. 38 (“Having considered all the evidence of 

record about Petitioner’s contention that Hirayama[] 

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teaches limitation 1d, we do not find the evidence, as a 

whole, persuasive by a preponderance of the evidence.”

(emphasis added)). And, even if the Board had concluded 

that Hirayama itself was ambiguous, there is insufficient

evidence and argument in the record that there would have 

been only two options for solving any particular design 

need addressed by limitation 1d. We therefore reject Samsung’s attempts to liken this case to our prior “design 

choice” cases. 

Samsung also argues that the Board’s conclusion is not 

supported by substantial evidence. Again, we disagree. At 

each turn, the Board considered and weighed the teachings 

of Hirayama with the parties’ expert testimony regarding 

how those teachings would have been understood by a person of ordinary skill in the art. E.g., id. at J.A. 22 (acknowledging the reasonableness of Samsung’s interpretation of 

Hirayama’s summary while crediting Neonode’s expert’s 

interpretation of that summary); id. at J.A. 23–24 (acknowledging Samsung’s expert’s testimony but finding it 

not to be “factually support[ed]”); id. at J.A. 24–26 (finding 

Samsung’s interpretation of Figure 3A of Hirayama as 

“equally plausible” as Neonode’s interpretation, which was 

supported by expert testimony). Ultimately, it concluded 

that the evidence supporting Samsung’s obviousness position was in rough equipoise with the evidence weighing 

against that position, such that Samsung had not shown, 

by a preponderance of the evidence, that Hirayama taught 

or suggested limitation 1d. It is not our job to review or 

reweigh that evidence anew. In re NTP, Inc., 654 F.3d 

1279, 1292 (Fed. Cir. 2011). 

Accordingly, because a reasonable mind might accept 

the evidence as adequate to support the Board’s findings, 

and because those findings support the Board’s ultimate 

conclusion that Samsung failed to show, by a preponderance, that Hirayama renders obvious limitation 1d, we affirm.

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CONCLUSION

We have considered Samsung’s remaining arguments 

and find them unpersuasive. For the reasons set forth 

above, we affirm the Board’s final written decision.

AFFIRMED

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