- Google LLC v. Neonode Smartphone LLCNo claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01041 · APJ Christopher L Ogden · IPR · Final written decision
Google did not show claims 1–7, 9, 12, 13, and 15–17 unpatentable because the asserted combinations did not teach or suggest the claimed multi-step activation involving gliding away.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“For Google, Dr. Wobbrock testifies that a person of ordinary skill in the art at the time of the invention, would have had “at least a bachelor’s degree in Computer Science, Human-Computer Interaction, Symbolic Systems, or related engineering disciplines, and at least two years of experience designing and programming graphical user interfaces,” but that “[r]elevant work experience can substitute for formal education and advanced degree studies could substitute for work experience.” Ex. 1003 ¶ 49. Testifying for Neonode, Dr. Rosenberg states that for his declaration, he “will apply the same definition of the level of skill of a [person of ordinary skill in the art]” as Dr. Wobbrock. Ex. 2019 ¶ 27. We find Dr. Wobbrock’s uncontested articulation to be reasonable in light of the subject matter involved in the ’879 patent and the asserted prior art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses technical problems including “to provide a user-friendly interface . . . on a small handheld computer unit”). Thus, we adopt it for our decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Google does not propose any explicit claim constructions in its Petition. See Pet. 4. Neonode does not propose any explicit constructions either, but in its Response, Neonode raises a number of claim construction arguments regarding the term gliding . . . away as it appears in limitation 1c, to which Google responds in its Reply. See PO Resp. 31–50, 66–69; Pet. Reply 7–12, 19–21; see also PO Sur-reply 1–10, 19–21. We do not need to construe this term explicitly for our decision, and to the extent we need to interpret this or any other terms, we address the terms below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find Google’s argument unpersuasive.10 Tarpenning’s assignment operation for hotkey 82 is in the nature of a drag-and-drop operation, where the user drags the pen from hotkey 82 to the intended menu item to which hotkey 82 will be assigned. But Google identifies the “function [to be] activated”—not as the actual assignment of hotkey 82 to the menu item when the user lifts from the intended menu item—but as the underlying software process that looks to see whether the user has lifted yet from the selected menu item. See Pet. Reply 19–20; Tr. 37:17–39:16. Essentially, Google asserts that the recited function is part of processing the gesture itself, which we do not find persuasive. As counsel for Neonode argued at the hearing, unless the user lifts off from a menu item, no assignment to hotkey 82 has been made and nothing has actually been done. See Tr. 80:4– 13. 10 We also consider this argument untimely, as it appears to contradict Google’s original theory of obviousness in the Petition, which states that the “‘assignment’ function” is “completed when the user reaches the target item to be assigned.” Pet. 79; see also Tr. 80:2–3 (counsel for Neonode arguing, “I submit that’s not only a new point they’re making, it’s unsupported and . . . incorrect.”); 37 CFR § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner response[] or decision on institution.”). We also find unpersuasive Google’s original argument in the Petition that the recited “function” is activated when the user reaches the target menu item being assigned to hotkey 82. See Pet. 79. This is essentially a traditional drag-and-drop operation. But we credit Dr. Rosenberg’s testimony that when the user lifts from the intended menu item, no function has actually been activated. See Ex. 2019 ¶ 139. Rather, at this point a function has merely been assigned to the hotkey for future activation by touching the hotkey. See id. Thus, we determine that Google has not identified any disclosure in Tarpenning in which any “function is activated by a multi-step operation” as recited in limitation 1c. Absent that teaching or suggestion, Google’s argument (Pet. 80–82) does not adequately articulate why a person of ordinary skill in the art would have modified Tarpenning’s book menu key 84 or library menu key 86 to achieve limitation 1c, and we find Google’s obviousness argument unpersuasive as to claim 1.” slip op. at 36
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“would have understood Robertson’s “flick” gesture to comprise “gliding . . . away” as we interpret that term. Robertson says very little about the “flick” gestures themselves, other than using the word flick. See, e.g., Ex. 1005, 39. Robertson teaches that its gestures should be “easily differentiated,” and in addition to “flick” gestures, Robertson also teaches “drag and drop” operations. Id. at 36 (“[Y]ou can drag a document icon and drop it into a printer icon to print the document . . . .”). We credit Dr. Rosenberg’s testimony that, for the XButton system to immediately distinguish between dragging and flicking, there must be some distinction between a “flick” and a “drag,” and that the most plausible difference is in terms of their speed, distance, or both. See Ex. 2019 ¶ 90. Although Robertson discloses that its system is capable of recognizing gestures that start on an XButton and extend outside it (see Ex. 1005, 43), a “glide” or that the distinction is arbitrary. Cf. Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1360 (Fed. Cir. 2014) (“Descriptive words . . . are commonly used in patent claims, to ‘avoid[] a strict numerical boundary to the specified parameter.’” (alteration in original) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995))) the only gesture for which Robertson specifically indicates this would be necessary is a “circling gesture[] for grouping, moving, and copying graphical objects” (id. at 39). Thus, we disagree with Google that Robertson’s teaching in this regard is relevant to what Robertson means by a “flick” gesture. We also find persuasive Neonode’s dictionary definitions, spanning from 1993 to 2012, which consistently indicate that the word flick describes a movement that is “light,” “sharp” or “quick,” and “jerky” or “sudden,” as opposed to definitions of “glide” referring to a movement that is “smooth,” “continuous,” and possibly “quiet” or “effortless.” Exs. 2049, 2050, 2052, 2057.9 And although the evidence postdates Robertson, we find relevant the supporting evidence that modern Apple and Google developers maintain a meaningful distinction between “flick” and “swipe” gestures. See Ex. 2022, 4; Ex. 2023, 6; Ex. 2025, 21; Ex. 2026, 5; Ex. 2029, 2; Ex. 2019 ¶¶ 80–81. We further credit Dr. Rosenberg’s opinion that in the relevant time frame, a person of ordinary skill in the art would have interpreted a “flick” gesture as one in which “the pen would touch the screen, but only moves on the screen for a very short distance and is quickly lifted from the screen in a ‘jerky’ motion.” Ex. 2019 ¶¶ 85–86. 9 The earliest dictionary definitions (Ex. 2052) are from 1993, which is roughly contemporary with Robertson (1991), and are sufficiently close in time to be relevant. Google does not present any evidence suggesting that the meaning of flick had changed between 1991 and 1993. See PO Sur-reply 2. Thus, we agree with Neonode that Google has not shown that Robertson’s “flick” gesture comprises “gliding . . . away,” and thus falls within the scope of claim 1. Finally, we also agree with Neonode that Google has not established that Robertson’s “insert” (caret) gesture comprises “gliding . . . away.” Although Robertson does not provide much information about this gesture, we find Dr. Rosenberg’s interpretation and annotated version of Figure 1 (Ex. 2019 ¶¶ 99–102) more credible than those of Dr. Wobbrock (Ex. 1003 ¶ 108). We credit Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood the “insert” gesture to be similar to the way a person would draw a caret to indicate an insertion within existing text. See Ex. 2019 ¶ 99. Thus, we agree it would involve two brief, connected movements with a sharp peak, neither of which would be a continuous gliding or swiping motion. Id. ¶¶ 100–102.” slip op. at 27
Patent outcomesUS 8,095,879 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,095,879 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision
Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.
RulingsFinal written decision- ExcludeMixed
“Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21
- BurdenDecided for patent owner
“involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29
Patent outcomesUS 8,542,880 not shown unpatentable§ 102 anticipationPatents in suitUS 8,542,880 - Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01374 · APJ Linda M Gaudette · IPR · Final written decision
Claims 1, 2, 4–6, 9–11, 14–17, and 20 were not shown unpatentable under § 102(b) over Averbuj because its BIST controller did not generate the claimed address signals.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“Sechen believes a person of ordinary skill in the art would have additional experience, education, or a combination of the two, beyond that proposed by Dr. Bagherzadeh. Both experts have been employed as professors since the mid 1980s. Dr. Bagherzadeh also has some experience working with engineers in the industry by virtue of his employment with AT&T Bell Labs from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh was awarded a doctorate in computer engineering, while Dr. Sechen was awarded a doctorate in electrical engineering. Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-971. We, therefore, adopt our finding in IPR-971 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10
- Expert testimonyPetitioner expert discountedMixed
“We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“arranged” or “prepared.” Reply 9–10. Responsive to this Board panel’s questioning during the oral hearing, however, Petitioner agreed that “designed to, adapted to, or arranged to” was an acceptable definition for the claim term “configured to.” See Tr. 22:7–17. Patent Owner contends the phrase “configured to generate” should be construed as “programmed to generate.” PO Resp. 9. Patent Owner does not propose a separate construction for the term “configured.” See generally id. at 9–17. In support of its proposed construction, Patent Owner relies on language in the ’501 patent and the testimony of its expert, Dr. Sechen. See id. Dr. Sechen testifies as to the meaning of “configured to generate,” but does not provide a separate discussion of the meaning of “configured to” outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57. As explained in our Final Decision in IPR-971, the term “configured to” is used in the ’501 patent in conjunction with numerous terms, such as “provide” and “selectively input,” and there is a presumption that the term “configured to” should carry the same meaning in each instance. See IPR- 971 FWD, 18–19. The evidence relied on by Patent Owner in support of its proposed construction of the term “configured to” in the present inter partes review does not differ materially from the evidence relied upon by Patent Owner in IPR-971. Compare PO Resp. 9–17 with IPR-971, Paper 19, 14– 19. Accordingly, we determine the broadest reasonable construction of “configured to” is “designed to, adapted to, or arranged to” for the reasons stated above and in our Final Written Decision in IPR-971. We adopt and incorporate by reference our analysis and construction of the term “configured to” in our Final Written Decision in IPR-971 (IPR-971 FWD, 18–22). slip op. at 18
Patent outcomesUS 8,359,501 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,359,501
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.