Samsung Electronics Co Ltd v. Neonode Smartphone LLC

1. Case Identification

• Patent #: 8,095,879
• Filed: November 6, 2020
• Petitioner(s): Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Apple Inc.
• Patent Owner(s): Neonode Smartphone LLC
• Challenged Claims: 1-6 and 12-17

2. Patent Overview

• Title: User Interface for Mobile Handheld Computer Unit
• Brief Description: The ’879 patent relates to a user interface for a mobile handheld computer with a touch-sensitive area. The interface activates a predefined function when it detects an object, such as a finger or stylus, touching a representation of the function in a menu area and then gliding into an adjacent display area.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 12-17 are obvious over combinations based on Ren and Tanaka

• Prior Art Relied Upon: Ren (a 2000 journal article on pen-based interaction), Tanaka (Patent 5,249,296), Hirayama307 (Patent 5,406,307), Hirayama878 (Patent 6,100,878), Allard (Patent 5,615,384), and Henckel (Patent 5,463,725).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the combination of Ren and Tanaka renders claim 1 obvious. Ren taught specific user interaction techniques for small targets on pen-based systems, including a "Slide Off" strategy. This strategy involves touching a target, sliding the pen off the target, and lifting the pen to make a selection, all while the on-screen target remains stationary. Tanaka taught a GUI for a handheld organizer where selecting an icon (e.g., a "TOOLBOX" icon) activates a single corresponding function, such as opening a new window with more options. Critically, Tanaka disclosed that conventional systems adopted exclusively one of two known selection methods ("check" or "drag"). Petitioner contended that Ren's "Slide Off" gesture directly maps to the claimed multi-step touch-and-glide operation where the representation is not relocated. Tanaka's disclosure of exclusive selection methods was used to teach the limitation of having "only one option for activating the function." For dependent claims, other references were added: Hirayama307 to teach displaying icons for services within an activated window, Allard to teach displaying a list of available applications, and Henckel to teach directional swipe gestures for advancing or closing an application (e.g., page-turning).
  • Motivation to Combine (for §103 grounds): A POSITA would combine Ren and Tanaka because both address the problem of target selection on pen-based tablet systems. It would have been obvious to implement Ren's more efficient "Slide Off" technique, which was shown to have a lower error rate, into a known GUI environment like Tanaka's to improve usability on small devices.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the combination involved applying a known gesture to a standard UI, a predictable modification. Tanaka's own discussion of prior art systems using similar methods supported this predictability.

Ground 2: Claims 1, 2, 4, 5, and 14-17 are obvious over Hirayama307 and Ren

• Prior Art Relied Upon: Hirayama307 (Patent 5,406,307) and Ren (a 2000 journal article on pen-based interaction).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Hirayama307 taught most limitations of claim 1. Hirayama307 disclosed a small portable computer with a UI where a user activates a "dialler" function by first touching a telephone icon in an icon bar and then dragging a pen to the main display area. This action opens an enlarged window corresponding to the dialler function. Petitioner argued this is a multi-step touch-and-glide operation that activates a single, specific function. Furthermore, Hirayama307's flowchart logic and description allegedly confirmed this drag gesture was the only way to activate the function and that the icon itself is not relocated during the glide. Ren was cited to supplement this teaching, demonstrating that such interaction techniques were well-understood solutions for the known problem of target selection on small screens, making Hirayama307's implementation obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings because both references are directed to the same problem of target selection in pen-based systems. It would have been obvious to implement or modify the UI in Hirayama307 using the known selection strategies analyzed in Ren to ensure predictable and efficient operation.
  • Expectation of Success (for §103 grounds): The combination would yield predictable results, as it involved implementing known UI interaction principles from Ren within a well-defined device context from Hirayama307.

Ground 3: Claims 1, 14, and 15 are obvious over Jermyn

• Prior Art Relied Upon: Jermyn (a 1999 USENIX paper on graphical passwords).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended the single reference Jermyn rendered the claims obvious. Jermyn disclosed a "draw a secret" graphical password system where a user draws a continuous pattern (a "stroke") across a touch-sensitive grid to gain access to a PDA's resources. Petitioner mapped the on-screen grid to the "representation of a function," with the function being user authentication. The user drawing a continuous stroke was mapped to the multi-step touch-and-glide operation. Because drawing the correct password pattern was the sole method described for activating the authentication function, and the underlying grid remained stationary during the stroke, Petitioner argued Jermyn taught all key limitations of independent claim 1. Jermyn's implementation on PDAs also met limitations in dependent claims related to computer readable media and shell operation.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including various permutations of Hirayama307, Ren, Tanaka, Allard, and Henckel, but relied on similar arguments about combining known UI features for predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §325(d) and §314(a) (Fintiv). Under §325(d), Petitioner asserted that while Hirayama307 was before the examiner, it was not applied in a rejection or analyzed in combination with the other art presented in the petition, making the grounds new and non-cumulative.
• Regarding the Fintiv factors for the parallel district court litigation, Petitioner argued for institution because the litigation was in a very early stage, with the petition filed before claim construction briefs. Petitioner also stipulated it would not pursue the same invalidity grounds in district court if the IPR is instituted, eliminating overlap, and noted that the IPR challenges claims not asserted in the litigation.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6 and 12-17 of Patent 8,095,879 as unpatentable.