[00:00:00] Speaker 01:
The next case is NeoNode versus Samsung in 2023-2004.

[00:00:08] Speaker 01:
And this is the first of three on the 879 patent, dealing with different claim limitations.

[00:00:21] Speaker 01:
This is 1B on indefiniteness.

[00:00:24] Speaker 01:
So Mr. Graves, when you're ready for this case.

[00:00:29] Speaker 04:
Thank you.

[00:00:30] Speaker 04:
One moment, please.

[00:01:06] Speaker 04:
Thank you, Your Honors.

[00:01:08] Speaker 04:
Philip Graves for Neonode Smartphone LLC.

[00:01:12] Speaker 04:
This court should reverse the district court's judgment of indefiniteness with respect to claim one of the 879 patent because the district court committed three errors of law, all flowing from the failure to apply the Nautilus and Phillips standards

[00:01:35] Speaker 04:
First, the court failed to apply the Nautilus and Phillips frameworks to Samsung's argument that the claim limitation, limitation 1B at issue, is subject to three equally competing interpretations.

[00:01:56] Speaker 04:
Instead, the court took an erroneous shortcut, failing to review the prosecution file or consider the prosecution file.

[00:02:04] Speaker 00:
I want to ask questions, but I know you want to get three things out, so you want to run through those three things more quickly so we can move on.

[00:02:11] Speaker 04:
Certainly, Your Honor.

[00:02:13] Speaker 04:
Yes, so the first error of law was failing to apply the analytical frameworks of Nautilus and Phillips to Samsung's three meanings argument.

[00:02:21] Speaker 04:
The second error of law was focusing on the issue of whether the specification contains the word option to the exclusion of the prosecution file and reviewing the claim limitation at issue within the context of the claim.

[00:02:39] Speaker 04:
And the third error of law was basing its conclusion in part on its determination that Neonode had failed to prove an argument that Neonode

[00:02:49] Speaker 04:
never made.

[00:02:51] Speaker 04:
This again reflects a failure to apply the proper analytical framework under Nautilus and Phillips.

[00:02:56] Speaker 00:
Let me start off with just a housekeeping question.

[00:02:58] Speaker 00:
If we were to affirm in this case, does that get rid of the two IPRs that follow here this morning?

[00:03:06] Speaker 04:
If it could render them, I wouldn't say

[00:03:13] Speaker 04:
No, I actually don't think it would.

[00:03:17] Speaker 04:
So if you were to affirm in this case, that would render the patent unenforceable.

[00:03:26] Speaker 04:
So I think, effectively, it could.

[00:03:29] Speaker 01:
Well, it would render it invalid.

[00:03:31] Speaker 04:
Invalid and not invalid.

[00:03:32] Speaker 01:
And so the subsequent cases would be moot.

[00:03:36] Speaker 04:
Correct, yes.

[00:03:37] Speaker 04:
Invalid and unenforceable against any other party.

[00:03:43] Speaker 00:
Don't answer plain meaning, please.

[00:03:46] Speaker 00:
What is your view of the meaning of this claim term, the construction of this claim term?

[00:03:53] Speaker 04:
Well, Your Honor, so we've provided that in our briefing.

[00:03:56] Speaker 04:
And it's the same meaning or explanation of plain meaning that we provided below.

[00:04:04] Speaker 04:
And it tracks the language of the limitation fairly closely, because we don't believe that there are any terms here that require any

[00:04:12] Speaker 04:
technical exegesis.

[00:04:17] Speaker 04:
So wherein the representation consists of only one option for activating one of the one or more functions.

[00:04:25] Speaker 04:
That's what we proposed for our claim construction below.

[00:04:28] Speaker 00:
That's the language of the claim.

[00:04:30] Speaker 04:
With a slight gloss, one or more functions at any given time.

[00:04:36] Speaker 04:
Apologies, I left that off at the end.

[00:04:38] Speaker 00:
So read it to me again.

[00:04:41] Speaker 00:
Your construction of we're in the representation consists of only one option for activating the function.

[00:04:48] Speaker 04:
For activating one of the one or more functions, calling back to the indefinite article A, a representation of A function in the preceding limitation at any given time.

[00:05:03] Speaker 00:
Where do we get to get at any given time?

[00:05:06] Speaker 04:
Yeah, that comes from the specification.

[00:05:07] Speaker 04:
Your honor, one of the curious things here is that the court focused its analysis solely on the specification without reviewing the prosecution file, and yet missed the fact, which we pointed out, that there are actually examples, three examples, of exactly what's recited in limitation 1b, a representation that consists of only one option,

[00:05:30] Speaker 04:
for activating the function.

[00:05:31] Speaker 00:
Does it say at any given time?

[00:05:32] Speaker 04:
And one of them, one of them, and this is representation of the general application dependent function 21.

[00:05:40] Speaker 04:
So if the court will turn to appendix 85, figure 1.

[00:05:45] Speaker 00:
Yeah, but where's the narrative and the specification?

[00:05:50] Speaker 04:
And the narrative and the specification is that appendix 90, column 4, lines 1 to 33.

[00:05:56] Speaker 04:
And that's the predetermined function as well.

[00:05:59] Speaker 04:
Correct.

[00:06:00] Speaker 04:
Three different predetermined functions.

[00:06:02] Speaker 04:
One of them is a general application dependent function.

[00:06:06] Speaker 04:
So in two of these functions, and that's function 21, there are three functions.

[00:06:13] Speaker 04:
21, 22, 23.

[00:06:14] Speaker 04:
21 is a general application dependent function.

[00:06:17] Speaker 04:
22 is a keyboard function.

[00:06:19] Speaker 04:
23 is a task and file manager.

[00:06:23] Speaker 04:
and the representations for activating those functions are shown in figure one at the lower portion of the display.

[00:06:32] Speaker 04:
Now the at any given time comes from general application dependent function 21.

[00:06:37] Speaker 00:
So can I ask, I'm sorry we have to keep moving on so I'm sorry to interrupt, but Samsung proposed three alternatives which the district court got on to.

[00:06:48] Speaker 00:
What's wrong with their first proposal?

[00:06:51] Speaker 00:
Seems like that's quite close to yours, but you seem to have rejected that.

[00:06:56] Speaker 04:
Right.

[00:06:57] Speaker 04:
So their first proposal, I believe, is that the representation represents a single function, and only one specific gesture will activate that function.

[00:07:08] Speaker 04:
Well, that's not consistent with the claim language, first of all.

[00:07:12] Speaker 04:
The claim language in limitation 1A recites

[00:07:15] Speaker 04:
a representation of a function.

[00:07:17] Speaker 04:
This connotes one or more representations of one or more functions.

[00:07:22] Speaker 04:
And limitation 1B, wherein the representation consists of only one option for activating the function, calls back to limitation 1A, one or more functions.

[00:07:33] Speaker 04:
So under the claim language, limitation 1B does not limit the claim to the representation representing only a single function.

[00:07:45] Speaker 00:
I guess they said their first proposed meaning is that the representation represents a single function, and there is only a single option to activate that function.

[00:07:55] Speaker 00:
Only one specific input gesture will activate that function, except for not having the words at any given time.

[00:08:02] Speaker 00:
I understood this to be what you're advocating.

[00:08:07] Speaker 04:
No?

[00:08:07] Speaker 04:
No, Your Honor.

[00:08:08] Speaker 04:
It is not.

[00:08:10] Speaker 04:
There is not, in the claim language, there's not a one-to-one mapping of

[00:08:15] Speaker 04:
function to representation.

[00:08:17] Speaker 04:
There are two examples of that in the specification.

[00:08:20] Speaker 04:
Functions 22 and 23.

[00:08:22] Speaker 04:
Function 21, though, the general application dependent function, does not map to just a single function.

[00:08:31] Speaker 04:
So general application dependent function 21, if you activate it, you will get a series of icons providing the user with tap-activatable

[00:08:43] Speaker 04:
functions for settings and services of the application that is currently active when that function is activated.

[00:08:53] Speaker 04:
So as explained in the specification, if there's a camera application that's currently active and the user opens up that general application dependent function 21, you'll get icons for the camera application.

[00:09:06] Speaker 01:
Council, this claim limitation was added to distinguish over Hirschberg

[00:09:12] Speaker 01:
Right?

[00:09:12] Speaker 04:
That is absolutely correct, Your Honor.

[00:09:17] Speaker 01:
We're not arguing that, as I might expect, that by looking at Hirschberg we would know what this isn't and therefore find some definiteness to this claim limitation because it's not what Hirschberg describes.

[00:09:34] Speaker 04:
That is exactly right, Your Honor.

[00:09:36] Speaker 04:
So this language was added to the claim in order to distinguish Hirschberg

[00:09:41] Speaker 04:
which taught a series of what Hirschberg called multi-function keys, which were keys where you could activate different alphanumeric characters depending on your trace off of the key in one of the four cardinal directions, ABC1, DEF2, and so on.

[00:09:58] Speaker 04:
The examiner cited Hirschberg, and the applicant amended to add limitation 1B.

[00:10:07] Speaker 00:
agree with you.

[00:10:08] Speaker 00:
That's what the examiner accepted it.

[00:10:11] Speaker 00:
But how is it that if I'm correct, they said Hirschberg did not disclose activating only one function using a touch and glide gesture, right?

[00:10:23] Speaker 00:
That was the distinction drawn.

[00:10:26] Speaker 00:
But Hirschberg doesn't disclose activating multiple functions using touch and glide.

[00:10:34] Speaker 00:
inherently disclosed, activating a single function using touch and glide?

[00:10:39] Speaker 00:
That's why I don't understand the distinction between Hirschberg.

[00:10:42] Speaker 00:
Hirschberg says you can do several things.

[00:10:46] Speaker 00:
And if you can do just one of those, isn't that inherent in Hirschberg?

[00:10:50] Speaker 04:
No, I would say it's not, Your Honor, because Hirschberg offers the opportunity to activate multiple different functions or multiple different alphanumeric characters

[00:11:02] Speaker 04:
And the claim was limited to enable the representation to only activate one.

[00:11:12] Speaker 04:
And that was actually not disclosed.

[00:11:14] Speaker 04:
At any time in Hershberg with the multifunction keys, the user could always activate more than just one of those alphanumeric characters.

[00:11:23] Speaker 00:
But if it could activate more than one, it can necessarily activate only one.

[00:11:29] Speaker 00:
Am I missing something?

[00:11:32] Speaker 00:
It was only your thing.

[00:11:33] Speaker 00:
Hirschberg was only capable of activating multiple.

[00:11:36] Speaker 00:
But if you're capable of activating multiple, why doesn't that include multiple that you could do on individuals as well?

[00:11:43] Speaker 04:
Because the keys were not.

[00:11:45] Speaker 04:
You're speaking to what the user could do.

[00:11:47] Speaker 04:
But the keys offered always, regardless of what the user decides to do with the key, the keys offered always the capability to activate more than one.

[00:12:00] Speaker 02:
Herschberg did also disclose one key, 108, that had only a single function.

[00:12:07] Speaker 02:
How did you distinguish that key?

[00:12:09] Speaker 04:
And that key was only activatable by touch.

[00:12:11] Speaker 02:
Whereas your touch and glide, right?

[00:12:14] Speaker 04:
Exactly, exactly.

[00:12:15] Speaker 04:
And what the examiner pointed to with Herschberg was the multifunction keys.

[00:12:19] Speaker 04:
because those were the keys that were activatable by what the examiner appeared to believe was a touch and glide motion, which was already in the case.

[00:12:29] Speaker 02:
Can I ask you, the language that really confuses me is options.

[00:12:34] Speaker 02:
understand what options is doing in your amendment, but I take it options came from Hirshfield to describe what you're talking about with Judge Proves that you could pick four different letters depending on which way you strike the same key and and your contention appears to be all you did with this amendment is exclude

[00:12:57] Speaker 02:
what Hirschfield called a multi-option key, essentially.

[00:13:03] Speaker 02:
Is that all this is about from your perspective?

[00:13:05] Speaker 04:
Yes.

[00:13:05] Speaker 04:
I mean, that's a large part of it, is that the scope of the claim is, the scope of the limitation is fairly discernible by looking at Hirschberg, and then discerning from that that's outside the scope of the claim.

[00:13:21] Speaker 04:
And in fact, at Hirschberg, Hirschberg does use the word option,

[00:13:26] Speaker 04:
And that is at paragraph 82 of Hirschberg, appendix 1259.

[00:13:35] Speaker 02:
And is what you mean by option and what you propose to the district court that option means?

[00:13:40] Speaker 02:
Does it mean what Hirschberg said?

[00:13:42] Speaker 02:
Is that what you're proposing?

[00:13:45] Speaker 04:
I would say that that would be fairly discernible, yes.

[00:13:49] Speaker 00:
Where is it in Hirschberg?

[00:13:50] Speaker 00:
I couldn't find it in Hirschberg 1259.

[00:13:52] Speaker 04:
Certainly, Your Honor.

[00:13:52] Speaker 04:
It's in appendix 1259, paragraph 82 of Hirschberg.

[00:13:56] Speaker 04:
And the quote is, and this is Hirschberg discussing an additional embodiment, using the basic principle of having soft keys selected by the initial contact point on any location on the key, then selecting one of several options based on the trace.

[00:14:14] Speaker 04:
So here, Hirschberg is talking about we can have this interface that I'm teaching in a virtual interface format as well, soft keys instantiated by software, right?

[00:14:26] Speaker 00:
A lot of, in defense of the district court, he doesn't need my defense.

[00:14:31] Speaker 00:
But there was a lot of confusion in the record in terms of statements he made.

[00:14:36] Speaker 00:
And one of those in particular, and the other side outlines it in their briefs.

[00:14:41] Speaker 00:
But at the Google IPR hearing,

[00:14:44] Speaker 00:
you seem to me to make inconsistent statements.

[00:14:47] Speaker 00:
At one point you stated, quote, we are not proposing that the representation of a function can only be activated by one gesture.

[00:14:56] Speaker 00:
And then another point you stated, quote, 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.

[00:15:09] Speaker 00:
These statements seem irreconcilable to me.

[00:15:12] Speaker 04:
Why am I wrong?

[00:15:14] Speaker 04:
Well, so two responses.

[00:15:17] Speaker 04:
First, I think it's easy to try to nitpick and find some little nugget in the record, particularly at an IPR hearing, and try to point out, try to say this is inconsistent with everything else that's been said in the briefing and other statements that were made in the hearing.

[00:15:33] Speaker 00:
Is that an acknowledgment that these statements were wrong or irreconcilable?

[00:15:36] Speaker 04:
Excuse me?

[00:15:37] Speaker 00:
Are you acknowledging?

[00:15:38] Speaker 04:
No, Your Honor.

[00:15:39] Speaker 04:
That's an initial point, which is I don't think it rises to the level of proving indefiniteness by clearing convincing evidence to pluck one statement in an IPR hearing when the patent donor was very clear.

[00:15:53] Speaker 00:
But it's challenging, candidly.

[00:15:54] Speaker 00:
I mean, I think this is a challenging case.

[00:15:57] Speaker 00:
And one of the challenges arises from statements made not just in the IPR, but at the Markman hearing and in your claim construction briefing

[00:16:08] Speaker 00:
that is kind of comparable to these that just make it very challenging to identify precisely what your position is.

[00:16:15] Speaker 00:
Unfair?

[00:16:17] Speaker 04:
Well, I, of course, would not say unfair.

[00:16:20] Speaker 00:
Because you used nitpicking before, and I think it's a little more than nitpicking.

[00:16:25] Speaker 04:
Well, when the patent owner was so clear in the hearing,

[00:16:31] Speaker 04:
There are statements in the Google IPR hearing.

[00:16:35] Speaker 04:
There were statements, a statement you pointed out and Athalie pointed out, but also the patent owner expressly said, we are not limiting the representation to only one function.

[00:16:49] Speaker 04:
That is not our argument.

[00:16:51] Speaker 04:
We're not saying the representation is limited to one gesture.

[00:16:54] Speaker 04:
That is not our argument.

[00:16:56] Speaker 04:
Those statements were categorical and clear.

[00:16:58] Speaker 04:
And I think to the extent that there is any ambiguity in any of the other statements, that it is resolvable by looking at the categorical statements of the petitioner regarding their position, which also is consistent with the statements that were made by the patent owner, which is also consistent with the statements made by the patent owner in the briefing in the IPR.

[00:17:23] Speaker 02:
That's just one other thing that happened in the district court that I'm struggling with.

[00:17:28] Speaker 02:
You did put in an expert report, a claim construction, and you seem to think you cited to it extensively, but you actually told the district court it was a different exhibit that maybe doesn't even exist.

[00:17:39] Speaker 02:
and then the district court says there is no expert support for your construction.

[00:17:44] Speaker 02:
Are you contending that was an abuse of discretion on his part and should we even be considering remanding for further fact finding maybe on whether these claims are indefinite or is this just a

[00:17:57] Speaker 02:
If everyone agrees this turns on the intrinsic evidence, then we decide it one way or the other.

[00:18:02] Speaker 04:
I think we agree that this turns on the intrinsic evidence with respect to this issue.

[00:18:06] Speaker 04:
On the gliding issue, there are issues of fact.

[00:18:09] Speaker 04:
But on this, it's the intrinsic evidence.

[00:18:12] Speaker 02:
Did the district court make a material error in saying there is no expert testimony support for your construction on this?

[00:18:20] Speaker 02:
Or is that really not important here?

[00:18:23] Speaker 04:
I think it's unimportant.

[00:18:26] Speaker 04:
with respect to the issue of the indefiniteness related to, or the alleged indefiniteness related to, limitation 1B.

[00:18:35] Speaker 04:
Yes.

[00:18:37] Speaker 01:
Your time has expired, but let's leave from the other side and we'll give you two minutes for a bottle.

[00:18:43] Speaker 04:
I appreciate it.

[00:18:43] Speaker 04:
Thank you very much, Your Honor.

[00:18:45] Speaker 01:
Mr. Panachowski.

[00:18:58] Speaker 03:
Thank you and good morning again, Your Honors.

[00:19:00] Speaker 03:
This Court's decisions in Infinity Computer Products and TeVA, which are both discussed in the red brief at pages 29 to 32, provide a clear blueprint to affirming the District Court's ruling of indefiniteness here.

[00:19:17] Speaker 03:
Your honors, this is a case where the claim language and the specification provide no reasonable certainty under Nautilus as to the meaning of the claim term consists of only one option for activating the function.

[00:19:34] Speaker 03:
Turning then to the prosecution history,

[00:19:36] Speaker 03:
Your Honor focused on the applicant's remarks in response to the Hirschberg rejection at appendix pages 623 to 626.

[00:19:46] Speaker 03:
And Your Honors, that discussion itself is unclear as to what it is that the applicant was saying is the only one option for activating the function of which the representation consists.

[00:20:00] Speaker 03:
There are statements at pages 623 to 626 of the appendix that seem to point toward gesture.

[00:20:07] Speaker 03:
Maybe there are statements that... Show us one of them.

[00:20:09] Speaker 03:
Yes.

[00:20:10] Speaker 03:
So, Your Honor, if you look at appendix page

[00:20:17] Speaker 03:
625 in discussing the support for the claims in the original specification, the last full paragraph there on page 625 of the appendix, when the applicant says that it notes that each representation, 21 to 23, shown in Figure 1 of the original specification

[00:20:37] Speaker 03:
consists of only one option for activating its corresponding function.

[00:20:42] Speaker 03:
The fact that you're talking about only one option for activating the corresponding function of the representation indicates that the option is not a function itself, because the function is already fixed as corresponding to the representation

[00:20:59] Speaker 03:
that suggests that you're talking about the gesture.

[00:21:02] Speaker 02:
And then at the end of that... I don't see that.

[00:21:04] Speaker 02:
It's distinguishing from Hirschberg, which would have had, instead of one option, it would have had A, B, C, D on each key, something to that effect.

[00:21:15] Speaker 02:
Isn't that all it's saying?

[00:21:17] Speaker 03:
No, your honor, that is not all it's saying, because when the applicant is distinguishing Hirschberg on the prior page, Appendix Page 624, we're not sure whether

[00:21:28] Speaker 03:
the applicant is focused only on the single function key aspect of it, or focused on the fact that you only activate the function on that key with one gesture, a hard touch in Hirschberg, as opposed to the multi-function keys, where on the prior page... What leaves you unclear about that?

[00:21:49] Speaker 03:
It is because of what the applicant is saying here in the applicant's language.

[00:21:54] Speaker 03:
So, Your Honors, what the applicant does is refer to two embodiments in Hirshberg.

[00:22:00] Speaker 03:
The single function key at paragraph 55, and then the single function mode at paragraph 74, where you elect a single function on contact, but there could be different motions.

[00:22:11] Speaker 03:
And then it says,

[00:22:12] Speaker 03:
In distinction, the claimed invention uses a multi-step touch and glide operation for representations that consist of only one option for activating the function.

[00:22:22] Speaker 03:
So in that sentence where the applicant is purportedly making the distinction, the applicant is talking about both the multi-step touching wide operation and then using this vague language consists of only one option for activating a function.

[00:22:37] Speaker 02:
And we're simply not sure if the applicant is... I guess, yeah, I'm unclear on what you're unsure about.

[00:22:43] Speaker 02:
It seems to me they're talking about key 108 from Hirschfield there, and they're saying,

[00:22:50] Speaker 02:
We recognize Hirschberg has one embodiment with one single option key.

[00:22:57] Speaker 02:
It's called send in Hirschberg.

[00:23:00] Speaker 02:
And our distinction of that key is that instead of just a touch gesture, which is what Hirschberg uses to activate that send function, we need a multi-step gesture, at least a touch and glide.

[00:23:16] Speaker 02:
And that's how we're distinguishing around Hirschberg's

[00:23:19] Speaker 02:
key 108.

[00:23:20] Speaker 02:
Everything else we're talking about is we're not multi-option because every other key on Hirschberg is multi-option meaning you can do more than one thing by pressing that key or doing some gesture to that key.

[00:23:33] Speaker 02:
All of our keys that is in the patent that's being challenged here

[00:23:38] Speaker 02:
are single option keys.

[00:23:40] Speaker 02:
I know that sounds complicated, but you understand what I'm saying.

[00:23:44] Speaker 02:
Why isn't that exactly what the patentee was saying?

[00:23:49] Speaker 02:
And clearly the examiner agreed with it.

[00:23:51] Speaker 03:
So, Your Honor, that is not exactly what the patentee was saying.

[00:23:56] Speaker 03:
That is a reasonable gloss on the effort to distinguish Hirshberg.

[00:24:01] Speaker 03:
But the problem that we have here, Your Honor, is this court has said that we need to focus on the claim language to determine what does this claim language mean.

[00:24:11] Speaker 03:
So when the applicant here introduces this language,

[00:24:15] Speaker 03:
consists of only one option for activating a function.

[00:24:19] Speaker 03:
And the language that is used there at page 624 is actually a little bit different than what actually ends up in the claims.

[00:24:26] Speaker 03:
But the problem we have here is that even if Your Honor can clearly distinguish Hirschberg from the claimed invention,

[00:24:33] Speaker 03:
We still don't know what this vague language consists of only one option for activating the function is referring to.

[00:24:40] Speaker 03:
And in addition to what I quoted from page 625, Your Honor, at the end of that paragraph, it also says, moreover, each of these one option elements is activated by a multi-step touching glide operation, pivoting again to the gesture.

[00:24:55] Speaker 03:
Your Honor, if you disagree

[00:24:58] Speaker 03:
with Samsung's position that these pages of the prosecution history discussing Hirschberg are unclear.

[00:25:05] Speaker 03:
And even if you were to find, contrary to Samsung's position, that if the prosecution ended here, we would know what this vague claim language means, Infinity Computer Products and Teva

[00:25:21] Speaker 03:
require this court to affirm the district court's ruling of indefiniteness.

[00:25:25] Speaker 03:
And that is because, as this court held in A-list v. Apple, the applicants and patentee statements in IPR proceedings are also relevant to claim construction.

[00:25:37] Speaker 03:
They can bind the patentee.

[00:25:38] Speaker 03:
They can inform claim construction to the same extent as the original prosecution.

[00:25:43] Speaker 02:
Can you tell me where, and it could include in the IPRs, where did neo-nodes say that

[00:25:49] Speaker 02:
The only one option is a gesture.

[00:25:52] Speaker 03:
Yes, Your Honor.

[00:25:53] Speaker 03:
There are at least three places in the Google IPR proceedings.

[00:25:59] Speaker 03:
So the first two are at appendix page 745, the Google IPR hearing.

[00:26:05] Speaker 03:
And one of NeoNode's statements there is, and again, these are statements under this course decision in AILS v. Apple that bind the patentee.

[00:26:14] Speaker 03:
Quote, the point is at any given time.

[00:26:17] Speaker 02:
What line are you on?

[00:26:18] Speaker 02:
I'm sorry.

[00:26:18] Speaker 03:
So Your Honor, at appendix page 745.

[00:26:21] Speaker 03:
It looks like line four.

[00:26:25] Speaker 03:
Yes.

[00:26:26] Speaker 03:
And Your Honor, what Neonode, the patentee, said here was 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.

[00:26:42] Speaker 03:
clearly identifying the option as the gesture.

[00:26:46] Speaker 02:
I think at best for you ambiguous, but maybe.

[00:26:49] Speaker 02:
You have two other examples.

[00:26:51] Speaker 03:
Yes, Your Honor.

[00:26:52] Speaker 03:
On that same page, appendix page 745, starting at line 8, Neonode says, so you don't have to memorize 20 different gestures.

[00:27:04] Speaker 03:
It's a simple one-option activation.

[00:27:07] Speaker 03:
You swipe.

[00:27:08] Speaker 03:
the device activates what it activates.

[00:27:11] Speaker 03:
Again, referring to the gesture.

[00:27:13] Speaker 03:
And not only that, Your Honor, but in appendix page 709, in Neonode's patent owner response in the Google IPR, Neonode is attempting to distinguish Robertson.

[00:27:26] Speaker 03:
And what NeoNode said is, Robertson's different gestures provide the user with several options for activating the function.

[00:27:36] Speaker 03:
Thus, it fails to meet the one option limitation.

[00:27:41] Speaker 03:
This court held in Teva that even a single contradictory statement.

[00:27:45] Speaker 02:
It's using options, like Hirschberg is using options, that

[00:27:49] Speaker 02:
In Robertson, it was those X keys or whatever.

[00:27:52] Speaker 02:
There's multiple things depending on which way you swipe.

[00:27:55] Speaker 02:
And it's saying, that's not us.

[00:27:58] Speaker 02:
There's only one thing which, again, the word option isn't great, but it's just taken from Hirschberg.

[00:28:05] Speaker 02:
Whatever way you swipe or do your multi-step gesture in our patent, you're going to only always get one option at a particular time.

[00:28:16] Speaker 03:
and isn't that what it's saying but no you're on it but it is not what what it's saying and i would i would like to address paragraph eighty two in in the hirschberg shortly but it's a focus on this statement appendix page seven oh nine in you know it's not an order response your honor there is no reasonable interpreted interpretation of that statement except that you know it is identifying the option as the gesture what it says is robertson's different gestures

[00:28:44] Speaker 03:
Provide the user with several options for activating the function not saying anything about Robertson having different functions on the same key that you can activate based on the gesture no Robertson's different gestures Provide the user with several options for activating the functions and even clearly said the gesture is the option and if it weren't clear enough from that sentence and

[00:29:09] Speaker 03:
Neonode punctuates it in the next sentence of appendix page 709.

[00:29:13] Speaker 03:
Thus, it fails to meet the one option limitation.

[00:29:17] Speaker 03:
So Neonode is clearly arguing that you fail to meet the one option limitation if you use different gestures.

[00:29:25] Speaker 03:
That is different from the gloss that they're trying to put on the original prosecution history discussion of Hirschberg.

[00:29:32] Speaker 03:
And to turn to that, Your Honors, Neonode has said,

[00:29:37] Speaker 03:
that it got the word option from Hirschberg.

[00:29:40] Speaker 03:
And the word option does appear in Hirschberg, appendix page 1259, paragraph 82.

[00:29:48] Speaker 03:
However, in the original prosecution at appendix pages 623 to 626,

[00:29:56] Speaker 03:
The applicant never pointed to paragraph 82 and never quoted or pointed to the use of the word option in Hirshberg.

[00:30:05] Speaker 03:
So that argument is entirely post-hoc, litigation-driven, cannot cure indefiniteness.

[00:30:12] Speaker 02:
Doesn't the specification itself give us three examples of the only one option for activating a function that is figure one and the key number

[00:30:23] Speaker 02:
The icons may be numbers 21 to 23.

[00:30:25] Speaker 02:
Isn't that what Neonote cited during the prosecution history?

[00:30:30] Speaker 02:
And isn't that what the specification is more support for what they meant by the only one option?

[00:30:36] Speaker 03:
No, Your Honor, it's not.

[00:30:37] Speaker 03:
So looking at the specification itself, before we get to the prosecution history arguments, the word option is not used in the specification.

[00:30:46] Speaker 03:
the phrase consists of only one option for activating the function is not used in the specification.

[00:30:53] Speaker 03:
The only references to activating a function in the specification are in connection with gestures, in connection with figure two.

[00:31:03] Speaker 03:
So if you were to bring any type of hint

[00:31:08] Speaker 03:
or lean from the claim language and specification, you wouldn't ultimately be able to glean anything.

[00:31:14] Speaker 03:
But when you talk about consists of only one option for activating the function, you would naturally gravitate toward gesture, because it's a gesture that activates the function.

[00:31:24] Speaker 00:
What about the language your friend pointed us to on column four at the beginning, where it talks about a predefined function?

[00:31:30] Speaker 03:
Your Honor, that doesn't tell us anything.

[00:31:33] Speaker 03:
That's simply identifying the fact that in this exemplary embodiment, which the patent also describes as schematic and highly simplified, that 21, 22, and 23 are predefined functions.

[00:31:48] Speaker 03:
There's nothing in the patent, Your Honor, that connects any of that to the claim language.

[00:31:53] Speaker 00:
Let me just get a little more general.

[00:31:57] Speaker 00:
If the claim said we're in the representation consists of only one option, for what function to activate at a given time, would that be clear in your view?

[00:32:14] Speaker 03:
Your Honor, that will get closer.

[00:32:16] Speaker 03:
That would be a clue that would push us in the direction of option being correlated with the function.

[00:32:24] Speaker 03:
But of course, that's not what the claim language says.

[00:32:27] Speaker 03:
It says only one option for activating the function.

[00:32:30] Speaker 00:
But do you disagree that in their brief, I'm not going to dispute that there were statements that are best confusing in the IPR, even in the markman, in the claims and judgment briefing?

[00:32:41] Speaker 00:
But it's also clear that your friend did make an argument that's kind of close to this at any given time, explaining it the way I just explained it, which you agreed would be sufficiently clear to its extent through the end argument, right?

[00:32:57] Speaker 03:
Your Honor, we wouldn't agree that that would be sufficiently clear.

[00:32:59] Speaker 03:
That would be one.

[00:33:02] Speaker 03:
clue that would point to function, but we would still have the fact that the specification doesn't give any clarity.

[00:33:10] Speaker 03:
We would still have an ambiguous prosecution history.

[00:33:13] Speaker 03:
And Your Honor, we would still have these contradictory statements in the IPR proceedings, which under this course decisions in Infinity, Computer Products, and Teva would require

[00:33:26] Speaker 03:
a conclusion of indefiniteness here.

[00:33:29] Speaker 03:
And so, Your Honor, if the claim language were to be rewritten in that way, we would have a different type of analysis before us that may still lead to the same conclusion.

[00:33:40] Speaker 03:
But I think Your Honor's rewriting of the claim language underscores the problem that Neonode has here.

[00:33:47] Speaker 03:
where it shows this particular claim language.

[00:33:49] Speaker 03:
And this court has instructed in interval licensing.

[00:33:52] Speaker 00:
You know what we do for a living, which is a heck of a lot of claim construction.

[00:33:56] Speaker 00:
Yes, Your Honor.

[00:33:56] Speaker 00:
And in every claim construction, there's always some ambiguity or some need to consult either extrinsic or intrinsic evidence to establish what the meaning is.

[00:34:07] Speaker 00:
So just ambiguity and some lack of clarity doesn't get us to the indefinite bucket.

[00:34:14] Speaker 00:
So aren't we there, given what I read you, which you conceded would have been probably clear enough, and it's not that different for another way, a better way of saying what the claims

[00:34:29] Speaker 00:
and is consistent with at least some of the remarks your friend has made through these proceedings.

[00:34:35] Speaker 03:
Your Honor, there are three issues with that.

[00:34:37] Speaker 03:
First, that is not what the claim language says.

[00:34:40] Speaker 00:
And in this court can only- Yeah, we always do claim constructions that say something other than what the claim language says, unless we say plain and ordinary.

[00:34:48] Speaker 03:
Correct, Your Honor, but Your Honor's hypothetical posited that the claim language says something different and said that if the claim language said this, how would the analysis differ?

[00:34:59] Speaker 03:
What we have here is not, Your Honor, that that being a permissible construction of the claim language, we simply have different claim language.

[00:35:08] Speaker 03:
And Neonode itself, even today, cannot explain what it is

[00:35:12] Speaker 03:
that the only one option corresponds to.

[00:35:16] Speaker 03:
And so, Your Honors, we have a situation like in Infinity Computer Products, like in Teva, where the claim language is indeterminate.

[00:35:25] Speaker 03:
You can try on gesture.

[00:35:26] Speaker 03:
You can try on function in the actual claim language.

[00:35:29] Speaker 03:
And none of it really fits.

[00:35:31] Speaker 03:
How does a representation of a function consist of a function?

[00:35:35] Speaker 03:
How does it consist of a gesture?

[00:35:37] Speaker 00:
Can I ask you one?

[00:35:38] Speaker 00:
Yes, Your Honor.

[00:35:39] Speaker 00:
It's not housekeeping, but it's kind

[00:35:41] Speaker 00:
This amendment was made eight years into prosecution history.

[00:35:45] Speaker 00:
What was going on?

[00:35:46] Speaker 00:
What was taking eight years?

[00:35:48] Speaker 03:
Your Honor, there were numerous amendments to the claims during that time in response to a series of rejections.

[00:35:56] Speaker 03:
And I think that what- Not to one B, though.

[00:35:58] Speaker 00:
This was the only.

[00:35:59] Speaker 03:
Correct, Your Honor.

[00:36:01] Speaker 03:
There were other types of claim limitations, including limitations that the court will hear about in the next two appeals that were being amended during that time.

[00:36:10] Speaker 03:
The gliding limitation, that is an alternative ground for affirmance that we argued in our brief, was also the subject of amendments.

[00:36:18] Speaker 03:
That was added six years into prosecution.

[00:36:20] Speaker 03:
And I think, Your Honor, what the prosecution history

[00:36:23] Speaker 03:
which includes the subsequent IPR proceedings under ALIS, underscores, is that Neonode was trying to use this application and this patent like a nose of wax to meet the demands of the day to try to dodge rejections, to try to dodge invalidity, and that even still today is not able to offer an answer to what is the only one option.

[00:36:47] Speaker 03:
And that implicates

[00:36:49] Speaker 03:
The Supreme Court's concerns in Nautilus.

[00:36:51] Speaker 03:
This Court's concerns in interval licensing that the patentee should not be able to reap the advantages of the uncertainty.

[00:36:59] Speaker 03:
that it has sown.

[00:37:01] Speaker 03:
It should not be able to impose disadvantages on others through the lack of reasonable certainty.

[00:37:07] Speaker 03:
We need to know what it is that is open to us and what is not by virtue of these claims.

[00:37:13] Speaker 03:
In this court.

[00:37:14] Speaker 01:
Thank you.

[00:37:14] Speaker 01:
Thank you, counsel.

[00:37:15] Speaker 01:
We appreciate the principles.

[00:37:17] Speaker 01:
And as you can see, your time has expired.

[00:37:19] Speaker 01:
Thank you, your honor.

[00:37:21] Speaker 01:
Mr. Graves, since Mr. Panikowski went over, we'll give you your full three minutes.

[00:37:28] Speaker 04:
Thank you, your honor.

[00:37:38] Speaker 04:
First, with respect to the statements that were made in the Google IPR, and further responding, Judge Prost, to your questions, if you go to appendix 745, I believe it is, you'll see the principal statements that were made during the hearing that my colleague is pointing to.

[00:38:01] Speaker 04:
So it's important to understand that the statements that were being made at this point in the hearing

[00:38:07] Speaker 04:
New Notes Council was explaining why the phone was being praised for its simplicity.

[00:38:14] Speaker 04:
A large focus of that phrase, in fact the primary focus, was on the swiping functionality, where you could just swipe.

[00:38:23] Speaker 04:
You didn't have to memorize 20 different gestures or know where you're dragging and dropping something.

[00:38:29] Speaker 04:
So the focus there wasn't on the issue of what does limitation 1B mean.

[00:38:36] Speaker 04:
The focus really was on the reasons that the phone is being praised for its simplicity, which was one of the secondary considerations at issue.

[00:38:47] Speaker 04:
And juxtapose that with the categorical statement made by Neonode's counsel, quote,

[00:38:55] Speaker 04:
We are not proposing that the representation of a function can only be activated with one gesture."

[00:39:01] Speaker 04:
Close quote.

[00:39:02] Speaker 04:
Categorical statement at appendix 2051.

[00:39:06] Speaker 04:
So there's no real ambiguity.

[00:39:09] Speaker 04:
As I said, you can pluck statements here and there to try to manufacture one.

[00:39:13] Speaker 04:
But ultimately, the statements made in the IPR are consistent with the claim construction arguments and position.

[00:39:23] Speaker 04:
that was proposed.

[00:39:24] Speaker 02:
Your friend says that even today you're not telling us what the only one option corresponds to.

[00:39:29] Speaker 02:
What's your response?

[00:39:30] Speaker 04:
Okay, well I would say that if we're going to try to isolate the word option or only one option within the limitation as a whole, the only one option would be the function among the universe of functions that are available to be activated by interacting with that representation.

[00:39:51] Speaker 04:
That's what I would say the only one option.

[00:39:54] Speaker 00:
Can you give that to me again?

[00:39:55] Speaker 04:
Yeah, it's the function among the universe of available functions, available to be activated by interacting with the representation.

[00:40:09] Speaker 04:
So that, again, looks to... Yeah, if you had to dumb it down, what does that look like on a phone, for example?

[00:40:16] Speaker 00:
You're talking about the only one option.

[00:40:18] Speaker 00:
Where does the only one option come into that?

[00:40:20] Speaker 04:
So this is the only one option.

[00:40:23] Speaker 04:
It's the one function among the universe of available possible functions that can be activated by interacting with that representation.

[00:40:36] Speaker 04:
And if you want an example, look at application-dependent function 21.

[00:40:42] Speaker 04:
uh... that's shown at appendix eighty-five and discussed at appendix ninety column four lines one to thirty-three that's where you could look for an example of that uh... of that only one option where the send key in hirschberg well uh... but you just heard of it just a different gesture right that has that it meets what you're saying about war only one option uh... i would agree with that that is correct yes uh... as would

[00:41:13] Speaker 04:
the representations of functions 22 and 23 in the specification as well.

[00:41:20] Speaker 04:
Those two representations map to only a single function ever, right?

[00:41:25] Speaker 04:
Just a keyboard function for 22, just a task and file manager for 23.

[00:41:30] Speaker 04:
So they're less versatile than general application dependent function 21 as outlined in the specification.

[00:41:40] Speaker 01:
Thank you, counsel.

[00:41:41] Speaker 01:
The case is submitted.

[00:41:43] Speaker 04:
Thank you, Your Honor.

[00:41:45] Speaker 01:
Mr. Graves will move across the aisle.