PTAB

IPR2021-00145

Samsung Electronics Co Ltd v. Neonode Smartphone LLC

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1. Case Identification

2. Patent Overview

  • Title: USER INTERFACE
  • Brief Description: The ’993 patent relates to a user interface for a mobile handheld computer with a touch-sensitive screen. The interface activates functions via a multi-step user gesture that involves touching an object within a "strip" along an edge of the screen and then gliding the object away from the strip and into a main display area.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hisatomi and Ren - Claims 1-3, 7, and 8 are obvious over Hisatomi in view of Ren and general POSA knowledge.

  • Prior Art Relied Upon: Hisatomi (JP Published Application No. 2002-55750) and Ren (“Improving Selection on Pen-Based Systems,” an ACM journal article from September 2000).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hisatomi, a portable information device (PDA) with a touch screen, discloses the core limitations of the challenged claims. Hisatomi teaches a "tap-absent" state with a full-screen image and "trigger areas" along the screen edges (the claimed "strip"). A multi-step gesture, sliding a pen from a trigger area toward the screen center, transitions the interface to a "tap-present" state by displaying a pull-out menu of function icons. This gesture comprises touching within the strip and gliding away from it.
    • Motivation to Combine: While Hisatomi discloses displaying the function icons, Petitioner asserted that Ren teaches the well-known "Direct Off" tapping technique for activating such icons. A person of ordinary skill in the art (POSA) would have been motivated to implement Hisatomi's icon menus using the conventional and predictable tap-selection method described in Ren to provide a familiar user experience.
    • Expectation of Success: A POSA would have had a high expectation of success in combining these references, as both relate to user interfaces for handheld, pen-based devices and address the common challenge of navigating functions on a small screen.

Ground 2: Obviousness over Hansen and Gillespie - Claims 1-3, 7, and 8 are obvious over Hansen in view of Gillespie.

  • Prior Art Relied Upon: Hansen (Patent 5,821,930) and Gillespie (Application # 2005/0024341).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Hansen teaches a user interface activated by an "input stroke"—a continuous finger movement from a "predetermined area" at the edge of a touch screen toward the center. This action transitions the interface from a "tap-absent" state (displaying only windows) to a "tap-present" state (displaying a list of selectable icons along the edge). This system discloses the claimed multi-step gesture from a "strip" that transitions between states.
    • Motivation to Combine: Hansen's "predetermined area" for initiating the gesture is not visually indicated, making it undiscoverable for novice users. Petitioner argued Gillespie addresses this exact problem by teaching the use of visual conventions (e.g., colored lines, dashed lines, or inverted backgrounds) to indicate special control regions on a touch screen. A POSA would have been motivated to combine Gillespie's visual cues with Hansen's interface to provide a clear "affordance," visually indicating to the user where the input stroke could be initiated, thereby improving usability.
    • Expectation of Success: A POSA would have expected success in this combination because it addresses a known usability gap in Hansen with a known solution from Gillespie, both within the same field of touch-screen interface design.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for dependent claims 4, 5, and 6. These grounds argued it would have been obvious to add common functions to the interfaces of Hisatomi or Hansen by incorporating teachings from Allard-656 (Patent 5,422,656) for a "help" function (Claim 4), Tanaka (Patent 5,249,296) for a "clock" function (Claim 5), and Kodama (Patent 6,710,791) for an "alarm" function (Claim 6).

4. Key Technical Contentions (Beyond Claim Construction)

  • Visual Affordance to Improve Usability: A central technical contention, particularly for the Hansen-based grounds, is that a POSA would have been motivated to solve a known usability problem. Hansen's gesture-initiation area is invisible, which Petitioner argued would be confusing. Gillespie explicitly teaches adding visual cues to "indicate control regions" and reduce user confusion. Petitioner asserted that combining these teachings is not merely substituting parts but is a motivated design choice to provide a necessary "affordance" that makes the interface intuitive.

5. Arguments Regarding Discretionary Denial

  • Arguments against §325(d) Denial (Becton Factors): Petitioner argued against discretionary denial because the primary prior art references and arguments were not previously considered by the USPTO.
      • Hisatomi and Ren were never before the Examiner.
      • While Hansen was considered during prosecution, it was combined with a different reference (Hirayama) for a different purpose. The current combination with Gillespie presents a new, non-cumulative rationale based on improving usability with visual affordances, a teaching not present in the art previously considered by the Examiner.
  • Arguments against §314(a) Denial (Fintiv Factors): Petitioner argued that the Fintiv factors strongly favor institution of the IPR.
      • The parallel district court litigation was in a very early stage, as the petition was filed shortly after infringement contentions were served and before any significant orders, claim construction, or discovery had occurred.
      • Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court, thus avoiding significant overlap between the proceedings.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-8 of the ’993 patent as unpatentable.