Google LLC v. Neonode Smartphone LLC

1. Case Identification

• Case #: IPR2021-01041
• Patent #: 8,095,879
• Filed: June 14, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): Neonode Smartphone LLC
• Challenged Claims: 1-7, 9, 12-13, 15-17

2. Patent Overview

• Title: User Interface for a Mobile Handheld Computer Unit
• Brief Description: The ’879 patent discloses a touch-based user interface for mobile devices. The core claimed feature is a multi-step gesture for activating a function, comprising an object touching a representation of the function on a touch-sensitive area and then gliding away from that location without the representation being relocated or duplicated.

3. Grounds for Unpatentability

Ground 1: Obviousness over Robertson and Maddalozzo

Claims 1-5, 13, and 15-17 are obvious over Robertson in view of Maddalozzo.

• Prior Art Relied Upon: Robertson (a 1991 ACM Symposium publication entitled "Buttons as First Class Objects on an X Desktop") and Maddalozzo (Patent 7,768,501).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Robertson discloses a gesture-based UI toolkit with configurable "XButtons" for touch screens. These buttons activate functions via multi-step, pen-based gestural inputs, including touching a button and then gliding the pen away (e.g., a "flick right" gesture). Robertson's system shows a static button representation that is not relocated or duplicated during the glide. Maddalozzo provides the necessary context by disclosing mobile handheld computers (e.g., laptops, PDAs) with touch-screen interfaces and on-screen keyboards. Petitioner contended that implementing Robertson's UI on a mobile device as taught by Maddalozzo would have been obvious.
  • Motivation to Combine: A POSITA would combine Robertson's gesture-based UI with Maddalozzo's mobile handheld devices to enhance user experience on devices with small screens. This combination would provide more capable, multi-function inputs without requiring external keyboards or mice, which was a known design goal for improving the portability and convenience of such devices.
  • Expectation of Success: Implementing pen-based gestures on touch-screen mobile devices was a well-known and conventional practice. A POSITA would have expected success in applying Robertson's established UI principles to the mobile computing platforms described by Maddalozzo, as it involved the predictable application of known technologies.

Ground 2: Obviousness over Tarpenning

Claims 1, 4-6, 13, and 15-17 are obvious over Tarpenning.

• Prior Art Relied Upon: Tarpenning (Patent 6,181,344).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Tarpenning, by itself, renders the claims obvious. Tarpenning discloses a handheld electronic reading device with a touch-sensitive display and fixed icons. It explicitly teaches activating functions through a multi-step "touch-then-glide" gesture. For example, a user can touch a "hotkey" icon with a stylus and then drag or glide the stylus to a target item in a menu to activate an "assignment" function. This directly maps to the claimed multi-step operation of touching a representation and gliding away to activate a function. Tarpenning's icons are "fixed" and are not relocated or duplicated during the glide.
  • Motivation to Combine (within the single reference): Petitioner argued it would have been obvious to a POSITA to substitute Tarpenning's simple touch activation for menu functions with its disclosed touch-then-glide gesture. This modification would serve the predictable purpose of preventing accidental activation of menus, a common problem when users inadvertently touch the screen.
  • Expectation of Success: Because Tarpenning's device already used both touch and touch-then-glide gestures to activate functions, applying the touch-then-glide gesture to a different function (menu activation) was a known design option. A POSITA would have expected the predictable result of displaying a menu in response to this known activation gesture.

Ground 3: Obviousness over Robertson, Maddalozzo, and Vayda

Claims 6-7 and 9 are obvious over Robertson and Maddalozzo in view of Vayda.

• Prior Art Relied Upon: Robertson (1991 ACM publication), Maddalozzo (Patent 7,768,501), and Vayda (Patent 5,745,717).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the combination of Robertson and Maddalozzo by adding Vayda to teach limitations related to displaying and navigating lists. Vayda discloses a "File Management Menu" on a touch-screen device that displays a list of available applications and files. Vayda further teaches navigating this list by gliding a stylus along a command bar, which causes a moveable marker to highlight different items as the stylus moves, without the underlying list itself scrolling.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Vayda's menu system into the gesture-based UI of Robertson. Specifically, a POSITA would use one of Robertson's unassigned gestures (e.g., "flick up" or "check") to open a file and application list as taught by Vayda. This would provide an efficient, gesture-based method for users to find and execute applications on a handheld device, eliminating the need for an external mouse or keyboard and improving navigation.
  • Expectation of Success: Combining these known UI elements was straightforward. Displaying a list of files and applications on a mobile device was a conventional feature, and using a gesture to activate it would have produced the ordinary, expected result of providing a more convenient gesture-based navigation system.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Robertson/Maddalozzo/Bedford-Roberts, Tarpenning/Vayda, and Tarpenning/Bedford-Roberts, but relied on similar design modification theories.

4. Arguments Regarding Discretionary Denial

• §325(d) - Same or Similar Art: Petitioner argued against denial under §325(d), asserting that the primary references (Robertson and Tarpenning) were not before the examiner during prosecution. Petitioner contended these references are not cumulative of the cited art because they teach the key limitation—a representation that is not relocated or duplicated during a glide gesture—which was added to the claims to overcome prior art rejections.
• §314(a) - Fintiv Factors: Petitioner argued that Fintiv factors strongly favor institution. Key arguments included that Petitioner is not a party to any co-pending litigation involving the ’879 patent, all known litigations involving the patent are stayed, and the petition's grounds do not overlap with other proceedings.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-7, 9, 12-13, and 15-17 of the ’879 patent as unpatentable under 35 U.S.C. §103.