Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Apple Inc. v. Neonode Smartphone LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC., APPLE INC.,
Appellants
v.
NEONODE SMARTPHONE LLC,
Appellee
______________________
2023-1464
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in
No. IPR2021-00144.
______________________
Decided: July 18, 2024
______________________
L AUREN A NN D EGNAN , Fish & Richardson P.C., Wash-
ington, DC, argued for appellants. Apple Inc. also repre-
sented by WALTER K ARL RENNER; N ITIKA G UPTA F IORELLA,
Wilmington, DE; ALEXANDER M ICHAEL P ECHETTE , Boston,
MA; O LIVER RICHARDS , San Diego, CA.
STANLEY J OSEPH P ANIKOWSKI, III, DLA Piper US LLP,
San Diego, CA, for appellants Samsung Electronics Co.,
Ltd., Samsung Electronics America, Inc. Also represented
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by T IFFANY CAROL MILLER; J AMES MARTIN HEINTZ, Reston,
VA.
P HILIP G RAVES , Graves & Shaw LLP, Los Angeles, CA,
argued for appellee. Also represented by G REER N. SHAW ;
ROCCO MAGNI, BRIAN MELTON, Susman Godfrey LLP, Hou-
ston, TX; K ALPANA SRINIVASAN, Los Angeles, CA.
______________________
Before L OURIE, P ROST , and STARK, Circuit Judges.
L OURIE, Circuit Judge.
Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., and Apple Inc. (collectively, “Samsung”) ap-
peal from the final written decision of the U.S. Patent and
Trademark Office Patent Trial and Appeal Board (“the
Board”) concluding that claims 1–6 and 12–17 of U.S. Pa-
tent 8,095,879 (“the ’879 patent”) had not been shown to be
unpatentable as obvious under 35 U.S.C. § 103. Samsung
Elecs. Co. v. Neonode Smartphone LLC,
No. IPR2021-00144 (P.T.A.B. Dec. 1, 2022), J.A. 1–55 (“De-
cision”). For the following reasons, we affirm.
BACKGROUND
Neonode Smartphone LLC (“Neonode”) owns the ’879
patent, which is generally directed to touch-sensitive user
interfaces for mobile handheld computer units, e.g., cell
phones. ’879 patent at Abstract. Claim 1, the only inde-
pendent claim, recites:
1. A non-transitory computer readable medium
storing a computer program with computer pro-
gram code, which, when read by a mobile handheld
computer unit, allows the computer to present a
user interface for the mobile handheld computer
unit, the user interface comprising:
[1a] a touch sensitive area in which a representa-
tion of a function is provided,
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[1b] wherein the representation consists of only
one option for activating the function and
[1c] wherein the function is activated by a multi-
step operation comprising (i) an object touching the
touch sensitive area at a location where the repre-
sentation is provided and then (ii) the object glid-
ing along the touch sensitive area away from the
touched location,
[1d] wherein the representation of the function is
not relocated or duplicated during the gliding.
Id. at col. 6, ll. 45–59 (numbering added). The only claim
limitation disputed in this appeal is that which recites:
“wherein the representation of the function is not relocated
or duplicated during the gliding,” id., which the parties and
Board refer to as “limitation 1d.” See Decision, J.A. 19.
Thus, whether the claim as a whole is invalid for obvious-
ness settles down to whether limitation 1d was obvious.
Samsung petitioned for, and the Board instituted, inter
partes review (“IPR”) of claims 1–6 and 12–17 of the ’879
patent. Samsung argued inter alia that the claims are un-
patentable as obvious over U.S. Patent 5,406,307
(“Hirayama”)1 in combination with various secondary ref-
erences not relevant to the issues on appeal. Hirayama is
generally directed to a data processing apparatus having a
user interface with a number of different functions repre-
sented by various icons, e.g., a telephone, a calculator, etc.,
in an icon group. See Hirayama at Abstract, Figure 3A.
Hirayama discloses in its “Objects and Summary of the
1 The Board and parties refer to this reference as
“Hirayama307” to distinguish it from a separately asserted
patent reference by the same inventor, i.e., U.S. Patent
6,100,878 (“Hirayama878”). Because we need not consider
Hirayama878 to dispose of this appeal, we refer to
Hirayama307 simply as “Hirayama.”
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Invention” that the apparatus can detect when a pen
touches the display at a position in which a desired icon is
displayed and that “the icon display coordinate position is
moved in accordance with the movement” of the pen. Id. at
col. 2, ll. 1–8. Relatedly, Figures 3A and 4A of Hirayama
show that, to activate a function, the user touches the icon
associated with that function with a pen and then “moves
(i.e., drags)” the point of the pen to the display without lift-
ing the pen. Id. at col. 4, l. 63–col. 5, l. 7. It describes that
when the user then “takes the point of the pen [] off from
the surface of the input tablet [], an icon (hereinafter [to]
be referred to as a window) enlarged in the form of the pro-
cessing display mode” of the desired function is “automati-
cally displayed.” Id. at col. 5, ll. 7–12. In the reverse
operation in which a user wants to close a window back to
its original position, Hirayama teaches that the user can
touch the pen to the window and drag the point of the pen
back to the original icon where it can be stored in that po-
sition. Id. at col. 6, ll. 22–31. It explains that “the pen []
need not be always returned to the [original icon], but if the
pen [] is returned to a predetermined icon in the icon group
[], then the window can automatically be stored in the va-
cant icon position.” Id. at col. 6, ll. 31–35.
Samsung argued that Hirayama renders obvious limi-
tation 1d because “it would have been obvious, given
Hirayama’s disclosure, to implement the user interface
such that the icon is not relocated or duplicated during the
gliding of the pen.” Decision, J.A. 20 (cleaned up).
The Board disagreed, finding that Samsung had not es-
tablished by a preponderance of the evidence that
Hirayama teaches the disputed negative limitation, i.e.,
the lack of any relocation or duplication of the activated
icon during the pen movement as limitation 1d requires.
Id. at J.A. 19–20. The Board reached that conclusion after
reviewing Hirayama’s disclosure and figures, taking into
consideration both parties’ expert testimony regarding how
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a person of ordinary skill in the art would understand the
teachings of Hirayama.
First, the Board concluded that, based on Hirayama’s
summary of its disclosure, a person of ordinary skill in the
art would have understood that the icon can move along
with the tip of a pen during the dragging operation. Id. at
J.A. 21. It noted, however, that the “language . . . adds am-
biguity by referring to movement of ‘the icon display coor-
dinate position’ rather than simply the ‘icon.’” Id. at
J.A. 21–22. Accordingly, the Board found that the sum-
mary “does not necessarily teach that the icon is visually
dragged with the pen,” but at minimum “provides at least
some evidence that a person of ordinary skill in the art
would have understood that the icon is visually dragged” in
Hirayama’s disclosure. Id. at J.A. 22 (emphases added).
The Board further credited Neonode’s expert’s testimony
on that point. Id.
Next, the Board looked to the various figures of
Hirayama. With respect to Figure 4A, which depicts a
flowchart of the operation of Hirayama’s device, the Board
concluded that Samsung had not shown by a preponder-
ance of the evidence “that the absence . . . of any step of
moving [the icon] would have suggested to a person of ordi-
nary skill in the art that no such movement or duplication
of [the icon] occurs.” Id. at J.A. 23. It acknowledged Sam-
sung’s expert’s testimony regarding how a person of ordi-
nary skill in the art would interpret the figure but found
the expert’s inference unsupported. Id. at J.A. 23–24.
Looking to Figures 3A and 3B, the Board credited Ne-
onode’s expert testimony that those figures do not neces-
sarily depict that the icon is neither duplicated nor dragged
with the pen because, for example, “Figure 3A simultane-
ously depicts the state of the user interface at two distinct
time periods (immediately after power-on and during a
dragging operation).” Id. at J.A. 25. But overall, the Board
found both parties’ proposed interpretations of those
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figures to be “equally plausible.” Id. at J.A. 26; see also id.
at J.A. 30 (“Given the lack of an explicit disclosure of
whether [the icon] is visually dragged during these opera-
tions, we find [Neonode’s expert’s] interpretation . . . to be
at least as likely as that proposed by [Samsung’s expert.]”).
Thus, “because of the unclarity of what is depicted in Fig-
ures 3A and 3B,” id. at J.A. 26, the Board concluded that
Samsung had failed to meet its burden of persuasion to
show that those figures would have suggested limitation 1d
to a person of ordinary skill in the art.
Finally, the Board observed that, in the reverse opera-
tion of closing a window and returning it as an icon to the
icon group, Hirayama refers to a “predetermined vacant po-
sition.” Id. at J.A. 30–31. The Board credited Neonode’s
expert testimony that a person of ordinary skill in the art
would have understood that the icon must have been relo-
cated during the drag-and-drop operation when it was first
activated because the position to which the icon is being
returned is now vacant. Id. The Board therefore found
Hirayama’s “vacant” icon position as “at least mild evi-
dence” that Hirayama’s activation process involves relocat-
ing or duplicating the icon. Id. at J.A. 33.
Based on this evidence, the Board concluded that Sam-
sung had failed to satisfy its burden of persuasion that
Hirayama teaches limitation 1d. Id. at J.A. 38. The Board
further found that various objective indicia of nonobvious-
ness had a nexus to the claimed invention and weighed sig-
nificantly in favor of nonobviousness. See generally id. at
J.A. 40–52.
Samsung timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
D ISCUSSION
On appeal, Samsung argues that (1) the Board erred in
concluding that Samsung had failed to demonstrate that
the challenged claims would have been obvious over
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Hirayama, and (2) the Board misapplied the nexus require-
ment for objective indicia of nonobviousness. Because we
conclude that the Board’s obviousness analysis based on
the asserted prior art was supported by substantial evi-
dence, we need not reach any secondary considerations of
nonobviousness.
Obviousness is a legal determination based on under-
lying findings of fact. Koninklijke Philips N.V. v. Google
LLC, 948 F.3d 1330, 1335 (Fed. Cir. 2020). We review the
Board’s legal determinations de novo, and its factual find-
ings for substantial evidence. Id. A finding is supported
by substantial evidence if a reasonable mind might accept
the evidence as adequate to support the finding. Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
Samsung first argues that the Board erred as a matter
of law because its finding that Hirayama is ambiguous con-
cerning the relocation or duplication of the icon “compels
the conclusion” that the claims would have been obvious
over Hirayama. Samsung Br. at 22–26. In essence, Sam-
sung invokes a “design choice” argument, contending that,
because there are only two possible choices—(1) relocating
or duplicating the icon or (2) not relocating or duplicating
the icon—it would have been obvious to the person of ordi-
nary skill in the art to arrive at the claimed invention. Id.
We disagree.
We do not understand the Board to have determined
that Hirayama itself is ambiguous as to whether the icon
is relocated or duplicated during the drag-and-drop opera-
tion of Hirayama. Although the Board did conclude that
various portions of Hirayama were “ambiguous” as to the
claimed limitation, see, e.g., Decision, J.A. 21–22, its ulti-
mate conclusion was based on its determination that, as a
whole, Samsung failed to satisfy its burden of persuasion
that Hirayama rendered obvious the claimed invention.
See id. at J.A. 38 (“Having considered all the evidence of
record about Petitioner’s contention that Hirayama[]
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teaches limitation 1d, we do not find the evidence, as a
whole, persuasive by a preponderance of the evidence.”
(emphasis added)). And, even if the Board had concluded
that Hirayama itself was ambiguous, there is insufficient
evidence and argument in the record that there would have
been only two options for solving any particular design
need addressed by limitation 1d. We therefore reject Sam-
sung’s attempts to liken this case to our prior “design
choice” cases.
Samsung also argues that the Board’s conclusion is not
supported by substantial evidence. Again, we disagree. At
each turn, the Board considered and weighed the teachings
of Hirayama with the parties’ expert testimony regarding
how those teachings would have been understood by a per-
son of ordinary skill in the art. E.g., id. at J.A. 22 (acknowl-
edging the reasonableness of Samsung’s interpretation of
Hirayama’s summary while crediting Neonode’s expert’s
interpretation of that summary); id. at J.A. 23–24 (ac-
knowledging Samsung’s expert’s testimony but finding it
not to be “factually support[ed]”); id. at J.A. 24–26 (finding
Samsung’s interpretation of Figure 3A of Hirayama as
“equally plausible” as Neonode’s interpretation, which was
supported by expert testimony). Ultimately, it concluded
that the evidence supporting Samsung’s obviousness posi-
tion was in rough equipoise with the evidence weighing
against that position, such that Samsung had not shown,
by a preponderance of the evidence, that Hirayama taught
or suggested limitation 1d. It is not our job to review or
reweigh that evidence anew. In re NTP, Inc., 654 F.3d
1279, 1292 (Fed. Cir. 2011).
Accordingly, because a reasonable mind might accept
the evidence as adequate to support the Board’s findings,
and because those findings support the Board’s ultimate
conclusion that Samsung failed to show, by a preponder-
ance, that Hirayama renders obvious limitation 1d, we af-
firm.
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CONCLUSION
We have considered Samsung’s remaining arguments
and find them unpersuasive. For the reasons set forth
above, we affirm the Board’s final written decision.
AFFIRMED
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