DCT
6:23-cv-00204
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 asserted based on Samsung maintaining regular and established places of business in the Western District of Texas, including a specific facility in Austin, and allegedly committing acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones and tablets, which include features like swipe-to-unlock, swipe typing, and gesture-based call answering, infringe two patents related to user interfaces for touch-sensitive displays.
- Technical Context: The technology at issue concerns fundamental gesture-based interactions on mobile devices, such as swiping a finger to activate functions, which is a core component of the modern smartphone user experience.
- Key Procedural History: The complaint alleges a long and complex history between the parties, asserting that Samsung has been aware of the patented technology since at least 2005 through a now-terminated license agreement for a parent application. It further alleges Samsung gained knowledge of the issued patents through the Apple v. Samsung litigation, where Samsung allegedly used Neonode technology as a prior art reference and where Neonode's CEO was deposed. The complaint also cites a 2015 offer to license the patent portfolio, which Samsung allegedly declined.
Case Timeline
| Date | Event |
|---|---|
| 2002-12-10 | Earliest Priority Date for ’879 and ’993 Patents |
| 2005-07-13 | Neonode Sweden AB and Samsung enter into a License Agreement |
| 2009-Early | Alleged termination of the Samsung License Agreement |
| 2010-06-01 | Samsung Galaxy S line first released for sale in the U.S. |
| 2012-01-10 | U.S. Patent 8,095,879 (’879 Patent) issues |
| 2012-02-08 | Apple Inc. files complaint against Samsung |
| 2012-02-22 | Tech Journal article on Neonode’s “Swipe-To-Unlock Patent” published |
| 2012-10-01 | Samsung allegedly introduces “Continuous Input” (swipe typing) |
| 2013-01-01 | Samsung allegedly introduces swipe-to-answer/decline call interface |
| 2013-07-08 | Samsung files invalidity references in Apple litigation citing Neonode N1 guide |
| 2014-01-01 | Samsung allegedly includes “Swipe to unlock” on devices |
| 2014-08-19 | U.S. Patent 8,812,993 (’993 Patent) issues |
| 2015-09-24 | Neonode representative allegedly contacts Samsung’s counsel to discuss patent portfolio |
| 2015-10-22 | Samsung allegedly communicates it is uninterested in a license |
| 2017-04-01 | Samsung releases Galaxy S8 with alleged infringing facial recognition feature |
| 2020-06-08 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,095,879 - "User Interface for Mobile Handheld Computer Unit" (Issued Jan. 10, 2012)
The Invention Explained
- Problem Addressed: The patent identifies the challenge of creating a user-friendly interface for small, handheld devices that must handle large amounts of information, provide easy text input, and offer simple navigation for common functions within a limited screen area (Compl. ¶14; ’879 Patent, col. 1:47-61).
- The Patented Solution: The invention proposes a user interface where functions are activated by a specific "touch-and-glide" gesture. A user touches an on-screen representation of a function and then glides their finger away from that starting point to activate it, without the on-screen representation itself moving (’879 Patent, Abstract). This method is intended to make more efficient use of the constrained display space on mobile devices (Compl. ¶15; ’879 Patent, col. 2:6-14).
- Technical Importance: The technology provided a method for gesture-based commands beyond simple tapping, a foundational concept for navigating the increasingly complex operating systems of early smartphones (Compl. ¶12, 15).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶38).
- Claim 1 requires:
- A non-transitory computer readable medium with code for a user interface.
- A touch-sensitive area with a "representation of a function" that has only one activation option.
- The function is activated by a multi-step operation: (i) touching the representation's location and then (ii) gliding away from that location.
- Critically, the "representation of the function is not relocated or duplicated during the gliding."
- The complaint reserves the right to assert additional claims (Compl. ¶39).
U.S. Patent No. 8,812,993 - "User Interface" (Issued Aug. 19, 2014)
The Invention Explained
- Problem Addressed: Sharing a specification with the ’879 Patent, this patent addresses the same problems of user interface design and navigation on small, handheld devices (Compl. ¶14; ’993 Patent, col. 1:59-2:4).
- The Patented Solution: This invention focuses on a user interface with at least two distinct states: a "tap-present state" (e.g., a home screen with multiple tappable application icons) and a "tap-absent state" where such icons are not present (e.g., a lock screen). The user transitions from the tap-absent to the tap-present state by performing a touch-and-glide gesture on an "otherwise-activatable graphic" located "in a strip along at least one edge of the display screen" (’993 Patent, Claim 1).
- Technical Importance: The patent describes a specific method for transitioning a device from a locked or limited-functionality state to an unlocked state using a gesture, a ubiquitous interaction paradigm in modern mobile devices (Compl. ¶56, 62).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶56).
- Claim 1 requires:
- A non-transitory computer readable medium with instructions for a user interface.
- The interface must have 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."
- A multi-step gesture on this graphic (touching within the strip and gliding away from and out of it) transitions the interface to the tap-present state.
- The complaint reserves the right to assert additional claims (Compl. ¶57).
III. The Accused Instrumentality
Product Identification
- The complaint names Samsung’s Galaxy S, Galaxy A, Galaxy Note, and Galaxy Tab device lines as the accused instrumentalities (Compl. ¶38, 56).
Functionality and Market Context
- The infringement allegations target several user interface features running on Samsung's proprietary software overlay (originally TouchWiz, later Samsung Experience and One UI) (Compl. ¶29). The accused features include:
- "Continuous Input" (Swipe Typing): A keyboard function allowing users to enter text by gliding a finger across letters instead of tapping them individually (Compl. ¶30). The complaint includes a screenshot from Samsung's website demonstrating this feature (Compl. p. 10). It is alleged that this feature provided a competitive advantage over Apple devices, which initially lacked a native swipe keyboard (Compl. ¶31).
- Incoming Call Interface: The screen presented for an incoming call, which requires the user to swipe a green icon to accept or a red icon to decline the call (Compl. ¶32).
- Lock Screen Unlock: The "Swipe to unlock" or "Swipe to open" functionality, where a user swipes across the screen to proceed to a home screen or passcode entry (Compl. ¶33).
- Lock Screen Shortcuts: Icons on the lock screen (e.g., for the phone or camera) that are activated by a swipe gesture starting on the icon (Compl. ¶34).
- "Stay on Lock Screen" after Facial Recognition: A feature where, after facial recognition successfully unlocks the device, the display remains on the lock screen showing an "opened padlock" graphic until the user performs a swipe gesture to transition to the home screen (Compl. ¶35).
IV. Analysis of Infringement Allegations
’879 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a touch sensitive area in which a representation of a function is provided... | Accused devices have touch-sensitive displays that present representations such as the "Swipe to unlock" legend, keyboard keys, and incoming call icons. A screenshot shows the "Swipe to unlock" legend on a Galaxy S10 (Compl. p. 17). | ¶41, 42 | col. 3:50-58 |
| wherein the representation consists of only one option for activating the function... | Each representation allegedly has a single purpose: the "Swipe to unlock" legend unlocks the phone; a keyboard key inputs one letter; the green telephone icon answers a call. | ¶43, 48, 50 | col. 5:49-51 |
| ...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 complaint alleges users activate these functions by touching the legend or icon and swiping away. This is alleged for swipe-to-unlock, swipe typing, and answering calls. A screenshot shows a user's finger gliding over a keyboard (Compl. p. 10). | ¶43, 48, 50 | col. 4:6-11 |
| ...wherein the representation of the function is not relocated or duplicated during the gliding. | The complaint alleges that the underlying "Swipe to unlock" legend, keyboard keys, and telephone icons remain in their original positions during the swipe gesture. | ¶43, 45, 46, 50 | col. 5:61-63 |
- Identified Points of Contention:
- Scope Questions: The infringement theory relies on the term "representation of a function" covering a range of UI elements, from a text legend ("Swipe to unlock") to graphical icons (call buttons) and individual keyboard keys. A dispute may arise over whether the patent's disclosure supports such a broad interpretation or is limited to the specific icon-based menu system depicted in its figures.
- Technical Questions: For the "swipe typing" allegation, a key question is whether gliding across multiple keys to form a word constitutes the claimed activation mechanism of gliding away from the location of a single function's representation. The functionality of swipe typing may not align with the specific "touch-and-glide-away" activation step required by the claim.
’993 Patent Infringement Allegations
| 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 allegedly have a "Home Screen" that serves as the "tap-present state," featuring multiple tappable icons for applications. A screenshot shows a Galaxy S10 Home Screen (Compl. p. 24). | ¶59, 60 | col. 4:29-32 |
| ...and (b) a tap-absent state, wherein tap-activatable icons are absent but an otherwise-activatable graphic is present... | The "Lock Screen" with the "Stay on Lock Screen" feature enabled is alleged to be the "tap-absent state." In this state, the complaint claims tap-activatable icons are absent, while an "opened padlock" graphic is present. A screenshot shows this lock screen state (Compl. p. 25). | ¶61 | col. 7:1-3 |
| ...in a strip along at least one edge of the display screen... | The complaint does not directly map this element. It identifies the "opened padlock" graphic as being in the "upper center of the display" (Compl. ¶61), not in a strip along an edge. | ¶61 | col. 8:8-10 |
| ...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... away from and out of the strip. | The complaint alleges a user transitions from the Lock Screen to the Home Screen by touching near the "opened padlock" graphic and gliding downward. | ¶62 | col. 8:10-16 |
- Identified Points of Contention:
- Scope Questions: A central dispute will likely focus on whether the "opened padlock" graphic located in the "upper center of the display" can satisfy the claim limitation requiring the graphic to be "in a strip along at least one edge of the display screen." The alleged location appears to be a direct mismatch with the plain language of the claim.
- Technical Questions: The complaint asserts that in the accused "tap-absent state," the icons on the lock screen (e.g., for the phone and camera) are not "tap-activatable" (Compl. ¶61). This is a factual assertion that will require evidence, as the nature of those shortcut icons (whether tap, swipe, or otherwise activated) is critical to establishing the "tap-absent" condition.
V. Key Claim Terms for Construction
’879 Patent (Claim 1)
- The Term: "representation of a function"
- Context and Importance: The viability of the infringement claims against the various accused features (unlock legends, keyboard keys, call icons) depends on this term being construed broadly. Practitioners may focus on this term because its scope will determine whether text-based prompts and individual keyboard keys fall within the claim, or if it is limited to the discrete graphical icons shown in the patent's embodiments.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses functions and the icons that represent them in general terms, without explicitly limiting the form a "representation" must take (e.g., ’879 Patent, col. 2:19-21, "icons representing services or settings").
- Evidence for a Narrower Interpretation: The patent's figures and detailed descriptions consistently depict distinct, bounded icons within a dedicated "menu area" at the bottom of the screen (’879 Patent, Fig. 1, 3). A party could argue the term should be construed as limited to these specific graphical embodiments.
’993 Patent (Claim 1)
- The Term: "a strip along at least one edge of the display screen"
- Context and Importance: This term's construction appears to be a critical, and perhaps dispositive, issue for the infringement allegation against the ’993 Patent. The complaint identifies an accused graphic in the "upper center" of the display (Compl. ¶61), which does not facially appear to be "in a strip along at least one edge."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not offer a basis for a broader interpretation. A party might argue that "along an edge" does not require the strip to be immediately adjacent to or span the entire edge, but this could be a difficult position to maintain.
- Evidence for a Narrower Interpretation: The plain meaning of the phrase suggests a defined, elongated area positioned against and parallel to one of the four sides of the screen. The shared specification’s description of a "menu area" at the bottom of the screen (’993 Patent, Fig. 1) provides context for a defined region that could be considered a "strip."
VI. Other Allegations
- Indirect Infringement: The complaint alleges Samsung indirectly infringes the ’993 Patent by inducing its users (Compl. ¶64). The basis for this claim is that Samsung allegedly encourages users to enable the accused facial recognition and "Stay on Lock Screen" features, which are enabled by default, and provides instructions for their use on its support website (Compl. ¶65).
- Willful Infringement: Willfulness is alleged for both patents, based on a detailed history of alleged knowledge (Compl. ¶52, 70). The complaint asserts Samsung had pre-suit knowledge of the patented technology and the patents themselves through multiple events, including a 2005 license agreement for the parent application, the patents’ role in the Apple v. Samsung litigation in 2012-2013, and a direct licensing discussion in 2015 that did not result in an agreement (Compl. ¶16-28).
VII. Analyst’s Conclusion: Key Questions for the Case
- '993 Patent - Claim Scope vs. Accused Location: A core issue will be one of definitional scope: can the claim term "a strip along at least one edge of the display screen" be construed to cover the "opened padlock" graphic located in the "upper center" of the accused lock screen? The apparent mismatch between the specific language of the claim and the location of the accused feature presents a significant hurdle for the infringement allegation.
- '879 Patent - Operational Mismatch: A key evidentiary question will be one of functional equivalence: does the accused "swipe typing" feature, which operates by gliding across a path of multiple keys, perform the same function as the claimed method, which requires activating a single function by gliding away from its representation? This raises a question of a potential mismatch in technical operation.
- Willfulness and Pre-Suit Knowledge: Given the complaint’s extensive allegations of a decade-long history involving a prior license, high-profile litigation context, and direct licensing negotiations, a central issue will be whether the alleged infringement, if found, was willful. The development of the factual record concerning Samsung’s state of mind and pre-suit knowledge will be critical to this aspect of the case.