DCT
6:20-cv-00507
Neonode Smartphone LLC v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Neonode Smartphone LLC (Wyoming)
- Defendant: Samsung Electronics Co. Ltd. (South Korea) and Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Haley & Olson, P.C.; Hagens Berman Sobol Shapiro LLP
- Case Identification: 6:20-cv-00507, W.D. Tex., 06/08/2020
- Venue Allegations: Venue is alleged to be proper in the Western District of Texas based on Defendants having regular and established places of business in the district, including a campus at 12100 Samsung Boulevard, Austin, Texas, and having committed alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ Galaxy-branded smartphones and tablets infringe two patents related to gesture-based user interface controls on touch-sensitive displays, including features such as swipe-to-unlock and swipe-based typing.
- Technical Context: The technology concerns fundamental user interface interaction methods for mobile devices, specifically the use of swipe gestures starting from a designated area to activate functions without the representation of that function moving on the screen.
- Key Procedural History: The complaint alleges a long history between the parties, including a 2005 license agreement (terminated 2009) involving the application that matured into one of the patents-in-suit. It also alleges Samsung became aware of the patents during the Apple v. Samsung litigation, where Samsung used Neonode’s technology as prior art against Apple’s "swipe-to-unlock" patent. Post-complaint inter partes review (IPR) proceedings have significantly impacted the case: all asserted claims of U.S. Patent No. 8,812,993 were cancelled, while the asserted claims of U.S. Patent No. 8,095,879 survived the IPR challenge.
I. Case Timeline
| Date | Event |
|---|---|
| 2002-12-10 | Priority Date for ’879 and ’993 Patents |
| 2005-07-13 | Neonode and Samsung enter Research & Development/License Agreement |
| 2010-06-01 | Samsung Galaxy S line released for sale in the U.S. (approx. date) |
| 2012-01-10 | ’879 Patent Issued |
| 2012-10-01 | Samsung launches "Continuous Input" (swipe typing) (approx. date) |
| 2014-08-19 | ’993 Patent Issued |
| 2015-09-24 | Neonode allegedly offers patent portfolio license to Samsung |
| 2017-04-01 | Samsung releases Galaxy S8 with facial recognition (approx. date) |
| 2020-06-08 | Complaint Filed |
| 2020-11-06 | IPR filed against ’879 Patent (IPR2021-00144) |
| 2020-11-06 | IPR filed against ’993 Patent (IPR2021-00145) |
| 2024-10-18 | IPR Certificate issues cancelling all claims of the ’993 Patent |
| 2024-12-27 | IPR Certificate issues confirming patentability of ’879 Patent claims |
II. Technology and Patent(s)-in-Suit Analysis
I. U.S. Patent No. 8,095,879 - "User Interface for Mobile Handheld Computer Unit," issued January 10, 2012
I. The Invention Explained
- Problem Addressed: The patent identifies the challenge of creating a user-friendly interface for small handheld devices that must handle significant information and computer applications, while also providing simple navigation and text input functionality (Compl. ¶14; ’879 Patent, col. 1:47-61).
- The Patented Solution: The invention proposes a user interface where a function is activated through a "multi-step operation" consisting of an object (like a finger) first touching a representation of that function on a touch-sensitive display, and then "gliding" away from that starting point. Critically, the on-screen representation of the function itself does not move or get duplicated during the glide, distinguishing it from a drag-and-drop action (’879 Patent, Abstract; col. 6:50-65).
- Technical Importance: This gesture-based method was taught as a way to enable more effective use of the limited screen space on early mobile devices like smartphones (Compl. ¶15).
II. Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶38).
- Essential elements of claim 1 include:
- A non-transitory computer readable medium storing a computer program.
- The program presents a user interface with a touch-sensitive area containing a "representation of a function."
- This representation "consists of only one option for activating the function."
- The function is activated by a multi-step operation: (i) touching the representation's location and then (ii) gliding away from that location.
- The representation is "not relocated or duplicated during the gliding."
- The complaint does not explicitly reserve the right to assert dependent claims.
II. U.S. Patent No. 8,812,993 - "User Interface," issued August 19, 2014
I. The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’879 Patent, the ’993 Patent addresses the same general problems of user interface design for small, touch-screen devices (Compl. ¶14; ’993 Patent, col. 1:59-2:4).
- The Patented Solution: This invention focuses on a user interface with two distinct states: a "tap-present state" (e.g., a home screen) where multiple icons can be activated by tapping, and a "tap-absent state" (e.g., a lock screen) where such icons are absent. The user transitions from the "tap-absent" to the "tap-present" state by performing a multi-step glide gesture that starts within a designated "strip" on the screen (’993 Patent, Abstract; col. 5:50-67).
- Technical Importance: This patent describes a user interaction model for transitioning from a secured or locked state to an active home screen, a common paradigm in modern mobile operating systems.
II. Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶56).
- Essential elements of claim 1 include:
- A non-transitory computer readable medium storing instructions.
- The user interface has at least two states: (a) a "tap-present state" with a plurality of "tap-activatable icons" and (b) a "tap-absent state" where such icons are absent.
- In the "tap-absent state," an "otherwise-activatable graphic is present in a strip along at least one edge of the display screen."
- Transition from the tap-absent to the tap-present state occurs via a multi-step user gesture: (i) touching the screen within the strip and (ii) gliding away from and out of the strip.
- The complaint does not explicitly reserve the right to assert dependent claims. Note: All claims of the ’993 Patent, including claim 1, were subsequently cancelled in IPR proceeding IPR2021-00145.
III. The Accused Instrumentality
I. Product Identification
- The complaint names Samsung Galaxy S, Galaxy A, Galaxy Note, and Galaxy Tab devices, which run Samsung's proprietary user interface (initially TouchWiz, later Samsung Experience and One UI) on the Android operating system (Compl. ¶29, 38).
II. Functionality and Market Context
- The complaint targets several specific functionalities. The "Swipe to unlock" and "Swipe to open" features on the lock screen are accused of infringing both patents (Compl. ¶33, 42, 61). An image of the Galaxy S10 lock screen shows the "Swipe to unlock" legend (Compl. p. 13). The "Continuous Input" or "swipe typing" feature is also accused, where users glide a finger over keyboard keys to enter text (Compl. ¶30). A screenshot from a Samsung support page depicts this functionality on a Galaxy S3 (Compl. p. 10). Other accused features include the "Incoming call" interface, where a user swipes an icon to accept or decline a call, and lock screen shortcuts, where swiping an icon launches an application (Compl. ¶32, 34).
- The complaint alleges that the swipe typing functionality, in particular, was a feature that "favorably differentiated Samsung’s mobile devices from competing devices sold by Apple Inc." for several years (Compl. ¶31).
IV. Analysis of Infringement Allegations
I. ’879 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A non-transitory computer readable medium storing a computer program... which, when read by a mobile handheld computer unit, allows the computer to present a user interface | The accused Samsung Galaxy Devices are mobile handheld computer units containing memory that stores code for presenting a user interface (Compl. ¶40). | ¶40 | col. 6:45-50 |
| a touch sensitive area in which a representation of a function is provided, wherein the representation consists of only one option for activating the function | The "Swipe to unlock" legend is alleged to be a representation of the unlock function, consisting of only one activation option (Compl. ¶43). This is depicted in a screenshot of a Galaxy S10 lock screen (Compl. p. 17). | ¶43 | col. 6:50-54 |
| and wherein the function is activated by a multi-step 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 | The unlock function is activated when a user touches the display at the location of the "Swipe to unlock" legend and glides their finger away from that location (Compl. ¶43). | ¶43 | col. 6:54-61 |
| wherein the representation of the function is not relocated or duplicated during the gliding. | The "Swipe to unlock" legend itself is not relocated or duplicated on the screen as the user's finger glides across the display (Compl. ¶43). | ¶43 | col. 6:61-65 |
- Identified Points of Contention:
- Scope Questions: Will the term "representation of a function" be construed to cover plain text (e.g., "Swipe to unlock")? The patent specification primarily illustrates this element with graphical icons, which may support a narrower interpretation (’879 Patent, Figs. 1, 3, 5). The breadth of this term also impacts the allegations against "swipe typing," raising the question of whether each individual keyboard key qualifies as a distinct "representation."
- Technical Questions: For the "swipe typing" allegation (Compl. ¶47-48), does gliding a finger across multiple keys meet the limitation of gliding "away from the touched location" of a single representation? This raises the question of whether the claim is directed to a single, discrete swipe gesture rather than a continuous path over multiple functional representations.
II. ’993 Patent Infringement Allegations
Note: The following analysis is based on the allegations in the complaint as filed. However, all claims of the ’993 Patent were cancelled in IPR2021-00145, rendering this count moot.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a user interface comprising at least two states, namely, (a) a tap-present state, wherein a plurality of tap-activatable icons for a respective plurality of pre-designated system functions are present... | The accused devices present a "Home Screen" with multiple tap-activatable icons for functions like phone, email, and browser (Compl. ¶59-60). A screenshot of a Galaxy S10 Home Screen provides a visual example (Compl. p. 24). | ¶59-60 | col. 5:52-58 |
| and (b) a tap-absent state, wherein tap-activatable icons are absent but an otherwise-activatable graphic is present in a strip along at least one edge of the display screen... | The accused devices present a "Lock Screen" which is alleged to be the "tap-absent state" because its icons are not tap-activatable (Compl. ¶61-62). An "opened padlock" graphic is present after facial recognition unlocks the device (Compl. ¶61). | ¶61-62 | col. 5:58-62 |
| for transitioning the user interface from the tap-absent state to the tap-present state in response to a multi-step user gesture comprising (i) an object touching the display screen within the strip, and (ii) the object gliding on the display screen away from and out of the strip. | The user transitions from the Lock Screen to the Home Screen by touching the location of the "opened padlock" graphic and gliding downward (Compl. ¶62). A screenshot shows the lock screen with an opened padlock and "Swipe to open" legend (Compl. p. 25). | ¶62 | col. 5:62-67 |
- Identified Points of Contention:
- Viability Question: The dispositive issue is that all asserted claims have been cancelled by the USPTO, meaning there is no longer a valid patent to enforce in this count.
- Scope Questions: Assuming the claim were valid, a key question would be whether the Lock Screen qualifies as a "tap-absent state". The complaint alleges the phone and camera icons on the lock screen are not "tap-activatable" (Compl. ¶62), but elsewhere alleges they are activated by a swiping gesture (Compl. ¶34, 46). The definition of "tap-activatable" would be critical. Further, it is questionable whether the "opened padlock" graphic, located in the upper-center of the display, meets the limitation of being "in a strip along at least one edge of the display screen".
V. Key Claim Terms for Construction
I. For the ’879 Patent:
The Term: "representation of a function"
Context and Importance: The scope of this term is central to nearly all infringement allegations. Practitioners may focus on this term because its construction will determine whether the claim can read on text-based prompts (e.g., "Swipe to unlock"), individual virtual keys ("swipe typing"), and shortcut icons, or if it is limited to the types of primary function icons depicted in the patent's figures.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general, using the broad term "representation" without modifiers like "icon" or "graphical." The specification describes activating functions generally, which could support an interpretation covering any visual cue linked to a function (Compl. ¶15).
- Evidence for a Narrower Interpretation: Every embodiment and figure in the patent depicts the "representation" as a distinct graphical icon (e.g., icons 211-216) for a specific function, not as a text-based instructional prompt (’879 Patent, Fig. 3, 5). An opponent could argue the invention is limited to what was disclosed.
The Term: "not relocated or duplicated during the gliding"
Context and Importance: This limitation distinguishes the claimed gesture from conventional "drag-and-drop" actions. Practitioners may focus on this term because it creates a potential point of non-infringement for the "swipe typing" feature. If the path of the "gliding" finger crosses over other "representations" (i.e., other keys), it raises the question of whether the core condition of the claim is met.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be interpreted simply to mean that the specific representation at the start of the gesture does not itself move, regardless of what the finger glides over subsequently.
- Evidence for a Narrower Interpretation: The language "gliding along the touch sensitive area away from the touched location" could imply a path that is conceptually distinct from the representation itself. An opponent might argue that gliding over other, similar representations is a form of interaction not contemplated by this limitation, which appears to describe a single gesture activating a single, stationary function representation.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of indirect infringement for both patents (Compl. ¶4). For the ’993 Patent specifically, it alleges inducement by claiming Samsung prompts and instructs users to enable facial recognition and the "Stay on Lock screen" feature, which is enabled by default, thereby causing users to perform the allegedly infringing steps (Compl. ¶64-66).
- Willful Infringement: Willfulness is alleged for both patents. For the ’879 Patent, the allegation is based on Samsung’s alleged knowledge since at least February 2012, arising from its participation in the Apple v. Samsung litigation, related press coverage, and a 2015 offer from Neonode to license its portfolio (Compl. ¶16-28, 52). For the ’993 Patent, willfulness is based on alleged knowledge since its issuance, given its relationship to the ’879 Patent (Compl. ¶27, 70).
VII. Analyst’s Conclusion: Key Questions for the Case
A threshold issue is the viability of the lawsuit as a whole: With all asserted claims of the ’993 Patent now cancelled via IPR, Count II is moot. The case hinges entirely on the infringement and validity of the surviving ’879 Patent.
A core issue for the ’879 Patent will be one of definitional scope: can the claim term "representation of a function", which is illustrated in the patent with graphical icons, be construed to cover the dissimilar accused functionalities of a plain-text prompt ("Swipe to unlock") and the individual keys of a virtual keyboard ("swipe typing")?
A key evidentiary question will be one of functional operation: does Samsung's "swipe typing" feature, which involves a continuous gliding motion over numerous distinct "representations" (keys), meet the claim requirement of an object gliding "away from the touched location" of a single representation that is "not relocated or duplicated," or is there a fundamental mismatch in the claimed gesture?