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

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NEONODE SMARTPHONE LLC,
Plaintiff-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC.,
Defendants-Appellees
______________________
2023-2304
______________________
Appeal from the United States District Court for the
Western District of Texas in No. 6:20-cv-00507-ADA, Judge
Alan D. Albright.
______________________
Decided: August 20, 2024
______________________
P HILIP G RAVES , Graves & Shaw LLP, Los Angeles, CA,
argued for plaintiff-appellant. Also represented by G REER
N. SHAW; BRYCE BARCELO, ROCCO MAGNI, BRIAN MELTON,
Susman Godfrey LLP, Houston, TX; K ALPANA SRINIVASAN,
Los Angeles, CA.
STANLEY J OSEPH P ANIKOWSKI, III, DLA Piper US LLP,
San Diego, CA, argued for defendants-appellees. Also rep-
resented by T IFFANY CAROL MILLER; BRIAN K. ERICKSON,
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NEONODE SMARTPHONE LLC v.
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Austin, TX; MARK D. F OWLER, Palo Alto, CA; J ESSICA
HANNAH , San Francisco, CA.
______________________
Before L OURIE, P ROST , and STARK, Circuit Judges.
P ROST , Circuit Judge.
Neonode Smartphone LLC (“Neonode”) sued Samsung
Electronics Co., Ltd. and Samsung Electronics America,
Inc. (collectively, “Samsung”) for infringement of U.S. Pa-
tent No. 8,095,879 (“the ’879 patent”) in the U.S. District
Court for the Western District of Texas. After claim-con-
struction briefing, the district court concluded that claim 1
of the ’879 patent is invalid as indefinite. The district court
entered final judgment against Neonode, and Neonode ap-
pealed to this court. For the reasons that follow, we disa-
gree with the district court’s conclusion that claim 1 of the
’879 patent is indefinite. We thus reverse and remand for
further proceedings.
BACKGROUND
I
The ’879 patent “relates to a user interface for a mobile
handheld computer unit.” ’879 patent Abstract. Figure 1
illustrates one embodiment of a mobile handheld computer
unit:
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21 22 23
Fig . 1_
3
2
I d. at Fi g. 1. It sh ows a "tou ch se n sit i ve area 1, w hich is
div ided in to a me nu ar ea 2 an d a di s pl ay ar ea 3." I d. at
col. 3 11. 53-54 . Me nu ar ea 2 cont a ins "a re p rese n tati on of
a fir st 21, a secon d 22[,] an d a t hir d 23 p redefi ned func-
tion." I d. at col. 4 11. 2- 3.
T hese r ep rese nt a tion s are invol ved in t h e act i va tion of
fun ction s 21, 22, a nd 23. T he specificati on expl ai ns t h at
t hese func tion s ca n be activa t ed with a multi- ste p op era-
tion tha t the part i es ca ll a tou ch-an d- g lide oper ation. First ,
an ob ject Qi ke a fin ger) touch es t he mob il e d evice "w ithin
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4 NEONODE SMARTPHONE LLC v.
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t he re pres entati on of a fun ction on t h e me nu ar ea 2." Id.
at col. 4 11. 9-1 0. Secon d, the object moves from "t he me nu
ar ea 2 to the di s pl ay area 3 ." I d. at co l. 4 1. 11.
Fi gure 3 illu s tr ate s a poss ible re su lt of act i vatin g fun c-
tion 21:
211
D
fl
-
+ ... • ••• ....
•••
212
Id. at Fi g. 3. Thi s fi gur e s hows va rious icons di s pl ayed af-
t er t h e acti vation of fu ncti on 21 in t he de picte d embodi-
ment . T he se icons ar e not static but ra t her ca n ch an ge
"depe ndin g on t he cu rrent acti ve a pplication." I d. at col. 4
11. 1 4- 15. P ut di ffer ently, acti vati ng funct i on 21 can pro-
duce differ ent result s at di ffer ent t im es , depe ndin g on wh at
a u ser is doin g on the mobil e device.
Cla im 1, t he sole indep en dent cla im , reci tes :
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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:
a touch sensitive area in which a represen-
tation of a function is provided, wherein the
representation consists of only one option
for activating the function and wherein the
function is activated by a multi-step opera-
tion 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, wherein
the representation of the function is not re-
located or duplicated during the gliding.
Id. at claim 1 (emphases added).
II
At claim construction, the district court was asked to
construe the limitations “wherein the representation con-
sists of only one option for activating the function” and
“gliding . . . away” in claim 1. J.A. 23, 31. The district court
determined that the limitation “wherein the representa-
tion consists of only one option for activating the function”
renders claim 1 indefinite. J.A. 31. The court specifically
took issue with the word “option,” noting that “the word
‘option’ does not appear in the specification (much less the
broader phrase ‘only one option for activating the func-
tion’).” J.A. 29. In assessing what “option” means, the dis-
trict court noted that “it is unclear to a [skilled artisan]
whether the claim term ‘only one option’ refers to either a
gesture or function (as Samsung asserts) or to presenting
the user with an icon (as Neonode appears to contend).”
J.A. 30 (emphases omitted). The district court, accepting
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Samsung’s position, found itself presented with “three
equally competing interpretations of what this claim term
means.” J.A. 31. Unable to choose among these interpre-
tations, the district court held that claim 1 is indefinite.
Because all other claims in the ’879 patent depend from
claim 1, the district court also concluded that all dependent
claims are invalid as indefinite.
As to the “gliding . . . away” limitation, the district
court construed this term according to its plain and ordi-
nary meaning, with the caveat that the plain and ordinary
meaning did “not includ[e] dragging, flicking, or a drag and
drop operation.” J.A. 31. The district court based its con-
struction on the scope of the claim that Neonode distin-
guished “throughout the prosecution history” and in the
’879 patent inter partes reviews (“IPRs”). J.A. 34. The dis-
trict court thereafter entered final judgment against Ne-
onode on the basis that “all claims of the ’879 patent are
invalid as indefinite under 35 U.S.C. § 112, ¶ 2.” J.A. 35.
Neonode timely appealed, and we have jurisdiction un-
der 28 U.S.C. § 1295(a)(1).
D ISCUSSION
We review a district court’s ultimate conclusion of in-
definiteness and any determinations based on intrinsic ev-
idence de novo and any underlying factual determinations
for clear error. Cox Commc’ns, Inc. v. Sprint Commc’n Co.,
838 F.3d 1224, 1228 (Fed. Cir. 2016). Section 112 requires
that “a patent’s claims, viewed in light of the specification
and prosecution history, inform those skilled in the art
about the scope of the invention with reasonable certainty.”
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
(2014).
Neonode argues that the district court erred by con-
cluding that the “wherein the representation consists of
only one option for activating the function” limitation ren-
ders claim 1 indefinite. Samsung disagrees, arguing that:
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(1) the district court properly evaluated indefiniteness with
respect to the “only one option” language; and (2) as an al-
ternative ground for affirmance, the “gliding . . . away” lim-
itation likewise renders claim 1 indefinite (contrary to the
district court’s conclusion). We address the district court’s
treatment of each limitation in turn.
I
We start with the district court’s analysis of the
“wherein the representation consists of only one option for
activating the function” limitation. Ultimately, we con-
clude that the district court erred by concluding that this
limitation renders claim 1 indefinite. We first explain our
construction of the limitation and then explain why we find
Samsung’s counterarguments unpersuasive.
A
When addressing indefiniteness, applying traditional
claim-construction principles “is a helpful tool.” Cox
Commc’ns, 838 F.3d at 1232. And here, these traditional
principles provide “reasonable certainty” about claim
scope. See Nautilus, 572 U.S. at 910. We interpret claims
by looking to the claim language, the specification, the
prosecution history, and, where relevant, extrinsic evi-
dence. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
Cir. 2005) (en banc). “The prosecution history, in particu-
lar, may be critical in interpreting disputed claim terms.”
Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d
1336, 1340 (Fed. Cir. 2020) (cleaned up).
Starting with the claim language, we recognize that,
although the claim language alone does not resolve our in-
quiry, it provides helpful information on what the recited
“option” is not. Claim 1 distinguishes its “option” from the
representation and the function itself: the representation
“consists of” the option, and the option is “for activating”
the function. The option is also not how the function is ac-
tivated. That process is described as “a multi-step
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operation comprising” what the parties call a touch-and-
glide operation.
What exactly the claimed “option” is, though, is not di-
rectly indicated by the claim language. The specification
likewise does not definitively answer this question; as the
district court recognized, the specification does not use the
word “option.” Rather, the meaning of “option,” and the
reason for its use, becomes apparent from the prosecution
history.
During prosecution, the examiner rejected a previous
version of claim 1 over a prior-art reference called Hirsh-
berg.1 The main focus in prosecution was on Hirshberg’s
multifunction keys (which, for our purposes, are similar to
the representations in Figure 1 of the ’879 patent). Hirsh-
berg discloses a method for activating multifunction keys
that involves, in simplified terms, touching an object to a
key, moving the object away from the key, and determining
what function to activate based on the direction of motion.
J.A. 1255 ¶ [0027]. Thus, a user could activate multiple
functions from each key. In one example from Hirshberg,
touching a key and moving upward will display the letter
“H,” while touching a key and moving left will display the
letter “G.” J.A. 1243 Fig. 2a. Hirshberg refers to the asso-
ciation between one key and multiple functions as there be-
ing “options” for what a user can do. Specifically,
Hirschberg references “the basic princip[le] of having [a]
soft key selected by the initial contact point on any location
on the key then selecting one of several options,” noting
that a skilled artisan can modify “the numbers of func-
tions” associated with a key. J.A. 1259 ¶ [0082] (emphasis
added). Thus, in Hirshberg, as relevant here, “option”
1 U.S. Patent App. Pub. No. 2002/0027549 (“Hirsh-
berg”). J.A. 1241–60.
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refers to the number of functions a user can activate from
a given key.
The examiner rejected the previous version of claim 1
based on Hirshberg’s multi-function keys. The examiner
read Hirshberg “as teaching a multi-step operation com-
prising an object touching a corresponding location and
then the object gliding along the touch sensitive area away
from the touched location.” J.A. 2941. To the examiner,
Hirshberg taught the claimed touch-and-glide operation in
the previous version of claim 1. Neonode overcame this re-
jection by amending claim 1 to include the “wherein the
representation consists of only one option for activating the
function” limitation. As Neonode explained, “[i]n distinc-
tion” to Hirshberg, “the claimed invention uses a multi-step
touch-and-glide operation for representations that consist
of only one option for activating a function.” J.A. 2942 (em-
phasis omitted). Thus, unlike in Hirshberg, where a user
had multiple options for what function to activate, claim 1
gives the user “only one option” for what function to acti-
vate. The added limitation, which takes its wording from
Hirshberg, serves to limit the number of functions a user
can activate from a given representation to one.
The context of this amendment over Hirshberg pro-
vides sufficient clarity for us to construe the “only one op-
tion” language. E.g., Univ. of Mass. v. L’Oréal S.A., 36
F.4th 1374, 1382–83 (Fed. Cir. 2022) (using the circum-
stances of a claim amendment that overcame a prior-art
rejection to construe a claim limitation). The prosecution
history indicates that, for a given representation, the num-
ber of functions that may be activated is limited to “only
one option”; or, to put it more simply, one.
This understanding harmonizes with the specification.
For example, the specification includes an embodiment
containing “a menu area 2,” which “is adapted to present a
representation of a first 21, a second 22[,] and a third 23
predefined function.” ’879 patent col. 4 ll. 1–3. And the
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specification states that “any one of these three functions
21, 22, 23 can be activated” when an object touches the cor-
responding representation and moves away from menu
area 2 to display area 3. Id. at col. 4 ll. 7–11. In one em-
bodiment, “if the first function 21 is activated, then the dis-
play area 3 is adapted to display icons . . . representing
services or functions depending on the current active appli-
cation.” Id. at col. 4 ll. 12–15.
This embodiment shows only one function, rather than
multiple functions, being activated by interacting with a
given representation. What this embodiment also reveals
is that the single function activated by interacting with a
given representation can change over time. This change
over time happens when the user changes applications
(such as between a texting and internet application). Both
the specification and a dependent claim show that the func-
tion activated from a given representation can be different
for different applications (but not for the same application).
Id. at col. 4 ll. 14–15 (“depending on the current active ap-
plication”); id. at claim 2 (“wherein the function, when ac-
tivated, causes the user interface to display icons
representing different services or settings for a currently
active application” (emphasis added)).2
The intrinsic record resolves our inquiry. We thus con-
strue “wherein the representation consists of only one op-
tion for activating the function” as: wherein the
representation consists of only one option for what function
to activate at a given time (where a given time means the
currently active application).3
2 By focusing on this embodiment, we do not mean to
suggest that the claims are limited to it.
3 The district court may need to further refine this
construction on remand, consistent with our holding here.
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B
Samsung primarily defends the district court’s conclu-
sion that claim 1 is indefinite by asserting that “wherein
the representation consists of only one option for activating
the function” has three possible meanings, with no way to
choose among them. Samsung’s first proposed meaning is
that “[t]he representation represents a single function and
there is only a single option to activate that function (e.g.,
only one specific input gesture will activate that function).”
J.A. 24 (emphasis omitted). Samsung’s second proposed
meaning is that “[t]he representation may represent mul-
tiple functions but there is only a single option to activate
one particular function (e.g., only one specific input gesture
will activate one function, but a different input gesture ac-
tivates a second function).” J.A. 24 (emphasis omitted).
Samsung’s third proposed meaning is that “[t]he represen-
tation represents a single function and the claim allows
multiple options to activate that function (e.g., any input
gesture will activate that function).” J.A. 24 (emphasis
omitted).
Initially, Samsung cannot establish indefiniteness by
“merely identify[ing] different ways one could interpret”
the “only one option” limitation. See ClearOne, Inc. v.
Shure Acquisition Holdings, Inc., 35 F.4th 1345, 1351 (Fed.
Cir. 2022). “Such a test would render nearly every claim
term indefinite so long as a party could manufacture a
plausible construction.” Nevro Corp. v. Bos. Sci. Corp., 955
F.3d 35, 41 (Fed. Cir. 2020). And Samsung’s meanings are
not all plausible.
We can quickly dispose of Samsung’s second and third
proposed meanings as inconsistent with the intrinsic rec-
ord. Samsung’s second meaning, which allows multiple
In re Papst Licensing Digital Camera Pat. Litig., 778 F.3d
1255, 1261 (Fed. Cir. 2015).
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functions to be activated from the same representation, is
inconsistent with Neonode’s amendment over Hirshberg.
Neonode expressly distinguished claim 1 from Hirshberg’s
multi-function keys, and Samsung’s second proposed
meaning reads on Hirshberg’s multifunction keys. Sam-
sung’s third meaning, which allows “any input gesture” to
activate a function, is inconsistent with claim 1 as a whole.
Claim 1 specifies that a touch-and-glide gesture activates
the function, not any gesture.
Samsung’s first proposed meaning is the closest to the
construction we adopt and is the most plausible, at least to
the extent that it reflects a correspondence between one
representation and only one function. Two refinements to
Samsung’s first proposed meaning, however, are neces-
sary. First, the single function corresponding to a repre-
sentation can change over time (i.e., depending on the
currently active application). Second, to the extent Sam-
sung’s construction could be so read, the option is not the
claimed touch-and-glide gesture; rather, it is the number of
functions that may be activated from a given representa-
tion (here, only one).4 The district court thus erred by ac-
cepting Samsung’s three-competing-meanings argument.
Samsung also argues that Neonode has made incon-
sistent arguments both in the ’879 patent IPRs and during
the district court litigation. According to Samsung, Ne-
onode’s inconsistent statements about the meaning of “op-
tion” in claim 1 undermine any clarity that may come from
the Hirshberg amendment.
While we disagree with Samsung, we do note that Ne-
onode’s statements, in isolation, introduce some confusion
into the record. For example, during one IPR, Neonode
4 We understand the “only one specific input ges-
ture” in Samsung’s first proposed meaning to refer to the
claimed touch-and-glide gesture.
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stated that it was “not proposing that the representation of
a function can only be activated with one gesture.”
J.A. 740. And before the district court, Neonode stated that
“[t]he language does not limit the number of functions that
may be represented, nor does it limit the ways in which to
activate the function.” J.A. 3539. Further, during the
claim-construction hearing, when asked to define “option,”
Neonode responded that “[t]he option is the single app that
is currently active.” J.A. 43.5
These isolated statements, however, do not suffice to
establish indefiniteness. Neonode’s other descriptions of
claim 1’s scope conform to the construction it has advanced
and the construction we adopt today. E.g., J.A. 745 (“The
point is, at any given time, the user is given only one option
in terms of what gesture to put in and what action to
take.”); J.A. 745 (“You swipe, the device activates what it
activates.”). While Neonode’s statements in the IPRs are
on equal footing with Neonode’s statements to the exam-
iner, Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327
(Fed. Cir. 2023), Samsung’s position improperly elevates
the contextless, isolated meaning of a small snippet in the
prosecution history above the discernable meaning gleaned
from examining the intrinsic record as a whole. See Univ.
of Mass., 36 F.4th at 1384 (noting that a “bare statement
made after allowance in the [patent’s] prosecution history
does not provide a sufficient reason to adopt a different con-
struction from the one clearly indicated by the rest of the
prosecution history (and specification)”). Understood in its
entire context, the prosecution history establishes a rea-
sonably certain boundary for the meaning of the “only one
option” language: that it limits how many functions can be
5 The lack of precision in some of Neonode’s state-
ments may have led to the district court’s misapprehension
that Neonode argued “option” to mean “presenting the user
with an icon.” J.A. 30 (emphasis omitted).
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activated from a given representation to one (with the ca-
veat that this one function can change over time, depend-
ing on the currently active application).
II
Samsung argues, as an alternative ground for affir-
mance, that the term “gliding . . . away” is not susceptible
to a definite construction and thus renders claim 1 invalid.
We disagree. The district court’s construction of the term,
which closely tracks the construction we affirmed in a com-
panion case, Google LLC v. Neonode Smartphone LLC, No.
23-1638, 2024 WL 3451831, at *2–4 (Fed. Cir. July 18,
2024), provides “reasonable certainty” to a skilled artisan
about whether an accused device might fall within
claim 1’s scope. See Nautilus, 572 U.S. at 910. On this rec-
ord, Samsung has not established that claim 1’s “gliding
. . . away” limitation creates an “innovation-discouraging
‘zone of uncertainty’” about infringement. Id. at 911 (quot-
ing Union Carbon Co. v. Binney & Smith Co., 317 U.S. 228,
236 (1942)). We thus affirm the district court’s conclusion
that Samsung did not establish that the “gliding . . . away”
limitation renders claim 1 indefinite.
CONCLUSION
We have considered Samsung’s remaining arguments
and find them unpersuasive. The district court erred in
concluding that the “wherein the representation consists of
only one option for activating the function” language ren-
ders claim 1 indefinite. We reverse and remand for pro-
ceedings consistent with this opinion.
REVERSED AND REMANDED
COSTS
Costs to Neonode.
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