by Dennis Crouch
In Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., the Federal Circuit has reversed Judge Albright’s holding that claims of Neonode’s US8095879 are invalid as indefinite. No. 2023-2304 (Fed. Cir. Aug. 20, 2024) (non-precedential). The appellate panel concluded that Albright failed to properly consider the full context of the intrinsic record, particularly the prosecution history.
The ‘879 patent describes a touch-sensitive interface where functions are activated by a multi-step operation involving touching a representation of a function and then gliding away from it. Disputed claim 1 is directed to software for making this happen. In patent speak, this is claimed as a “non-transitory computer readable medium storing a computer program with computer program code …”
1. A non-transitory computer readable medium storing a computer program with computer program 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 representation 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 operation 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 relocated or duplicated during the gliding.
The key claim language in dispute was is the limitation highlighted above: “wherein the representation consists of only one option for activating the function.” The district court found this language indefinite, leading to invalidation of all claims of the ‘879 patent.
The Law of Indefiniteness: The requirement for claim-definiteness stems from 35 U.S.C. § 112(b), which mandates that patent claims “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards as the invention.” The Supreme Court, in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), established the current “reasonable certainty” standard for indefiniteness: a patent is invalid for indefiniteness if its claims, read in light of the specification and prosecution history, fail to inform those skilled in the art about the scope of the invention with reasonable certainty. Issued patents are presumed valid, but the presumption is fairly weak for indefiniteness because the issue is determined as a question of law and only a small potential that underlying factual issues will influence the outcome. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015); Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017). Typically a judge will decide the indefiniteness issue prior to trial as part of the claim construction analysis. That is what Judge Albright did here.
This “reasonable certainty” standard is lower than the prior “insolubly ambiguous” test offered by the Federal Circuit — thus making it easier to invalidate patent as indefinite. However, the Supreme Court was clear that patentees have substantial wiggle-room with their claims — recognizing that absolute precision is unattainable and not required. As the Court noted, “the definiteness requirement must take into account the inherent limitations of language,” while still ensuring that patent claims are precise enough to afford sufficient notice of what is claimed.
Judge Albright found the phrase “wherein the representation [of a function on the touch sensitive screen] consists of only one option for activating the function” to be indefinite. In its indefiniteness argument, Samsung relied upon the notion that a claimed element can typically be singular or plural. Here, they noted that the claim language could have at least three possible meanings: (1) the representation represents a single function with only one way to activate it, (2) the representation may represent multiple functions but there’s only one way to activate a particular function, or (3) the representation represents a single function but allows multiple ways to activate it. These multiple plausible interpretations with no way to choose among them led the district court to find the claim indefinite.
On appeal, the Federal Circuit reversed and remanded – finding the claim language sufficiently definite. With regard to the three possible definitions, the Federal Circuit disagreed with Samsung on both the law and the facts. First, the court noted that the fact that a term is open to multiple plausible definitions does not automatically render the term indefinite, especially recognizing that attorney wordsmiths are trained to manufacture many plausible meanings. Nevro Corp. v. Bos. Sci. Corp., 955 F.3d 35 (Fed. Cir. 2020) (““Such a test would render nearly every claim term indefinite so long as a party could manufacture a plausible construction.”). Further, in this case, the court concluded that two of the proposed constructions were not plausible. Specifically, the court rejected Samsung’s second proposed meaning (allowing multiple functions to be activated from the same representation) as inconsistent with the prosecution history — Neonode’s narrowing amendment made during prosecution to overcome prior art reference. The court also dismissed the third proposed meaning (allowing any input gesture to activate a function) as inconsistent with claim 1’s specific recitation of a touch-and-glide gesture.
The court agreed with Samsung that the patentee “made inconsistent arguments” regarding claim scope in both the IPR (that confirmed patentability – see below) and the district court litigation. However, the court ultimately identified these as “isolated statements” that do not overcome the clear scope of the claim in light of the prosecution history. To be clear, statements made during an IPR are included within the prosecution history and are treated on “equal footing” with other prosecution history documents. Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317 (Fed. Cir. 2023). Here, however, the court concluded that “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.” I break all this down to three key legal points:
- Importance of Intrinsic Evidence to both Claim Construction and Definiteness.
- Whole Context Over Isolated Statements. See Univ. of Mass. v. L’Oréal S.A., 36 F.4th 1374 (Fed. Cir. 2022).
- Close Relationship Between Claim Construction and Indefiniteness. On this point, it seems that the court is suggesting that a claim which can be construed is very likely definite. Here, the court construed the disputed term, and that allowed it to resolve the indefiniteness issue.
Prosecution History: Patent attorneys should also be reminded here that the case was saved based upon narrowing statements made during patent prosecution. Folks should not be afraid to limit an invention to the actual invention. Other inventions can be claimed in other patents.
= = =
In a related appeal argued on the same day and decided in July 2024, Federal Circuit affirmed a PTAB IPR final written decision that upheld the validity of the same ‘879 patent. Samsung Electronics Co., Ltd. v. Neonode Smartphone LLC, No. 2023-1464 (Fed. Cir. July 18, 2024). The key dispute centered on the claim limitation “wherein the representation of the function is not relocated or duplicated during the gliding.”
The Federal Circuit found substantial evidence supported the Board’s conclusion that Samsung failed to prove by a preponderance of the evidence that the prior art (Hirayama) taught or suggested the limitation. Samsung had argued that ambiguity in Hirayama suggested that the particular approach was simply an obvious “design choice.” The appellate panel disagreed and instead concluded that the Board had properly weighed conflicting expert testimony and evidence in reaching its conclusion.
= = =
Both panels included Judges Lourie, Prost, and Stark. Judge Lourie wrote the indefiniteness reversal with Judge Prost authoring the IPR affirmance.
Philip Graves (Graves & Shaw) handled both appeals for the patentee, joined on the brief by his partner Greer Shaw along with several Susman Godfrey attorneys, including Rocco Magni, Brian Melton, and Kalpana Srinivasan.
Stanley Panikowski of DLA Piper argued on behalf of Samsung in both cases and was joined on the briefs by Tiffany Miller, Brian Erickson, Mark Fowler, Jessica Hannah, and James Heintz.
The IPR appeal also include petitioner Apple. Lauren Degnan (Fish & Richardson) argued for Apple and was joined on the brief by Walter Renner, Nitika Gupta Fiorella, Alexander Pechette, and Oliver Richards.
This outcome seems fine on its own facts, but there are some broad statements about indefiniteness that I think are not well-taken. The Federal Circuit is not fond of indefiniteness; that’s no secret. But they tend to make broad pronouncements that can skew the law over time.
For example: “the fact that a term is open to multiple plausible definitions does not automatically render the term indefinite.” Isn’t it a problem for a claim term to have multiple plausible definitions? What kind of notice does that provide to the public?
Also, I’m not sure that the prosecution history should have so much influence here. Is it really realistic to expect the public to dissect the prosecution history (and IPRs!) to divine what claim terms really mean? How are they supposed to know which one of the “conflicting statements” are to be taken seriously vs. ignored as a “contextless, isolated” “snippet”?
In general, the Federal Circuit does not appreciate how challenging it is for the public to navigate their way around the opaque claims they have so much indulgence for.
I see that Neonode is a Swedish company with 49 employees. I’m impressed.
David vs a whole bunch of Goliaths?
Surprising that there is still a broad smartphone or tablet “swipe to operate” patent claim indicated unexpired until 2026* especially since it is widely assumed the basic concept was invented by Apple or someone else a long time ago. But, we tend to forget how relatively new all smartphones are.
Also suprising, and ironic, that this is a patent suit in which Judge Albright of Waco E.D.TX, famous for acquiring a huge docket of patent cases, and assumed pro-patent owner, and assumed not to give many pro-defendant Markman decisions, had ruled in a pre-trial Markman hearing for the defendant and was reversed by a more pro-patent owner decision of the Fed. Cir. [on claim indefiniteness]. The defendant having also already lost the IPR, the continued lawsuit and its damages trial should be interesting to follow.
*The patent in suit has a 2002-12-10 filing and priority date, so presumably got PTE?
The ”swipe gesture” touch screen user interface was invented by the patent owner Neonode, who made the first smarphones back in 2002: The Neonode N1 and then N2. This was years before the iPhone was even a thought incSteve Jobs mind.
Samsung was so impressed with Neonode’s swipe gestures that they took a license for the ’879 patent back in 2005! The license agreement said Samsung would pay 2 euro for every smartphone they sold using swipe gestures!
In the swipe-to-unlock patent casesbetween Apple/Samsung they actually used the Neonode N1 phone as prior art!
Now Neonode has sued Samsung and Apple, and Google is up next (as the maker of Android operating system using the swipe gestures in the 879 patent).
Using the 2 euro per sold smartphone as a baseline, with inflation and treble damage this could be 10+ USD in damages for Samsung, per sold smartphone since 2014!
There are lots of Smartphones being sold between 2014 and 2026, between Samsung, Apple and all Android devices.
Many billion smartphones! This is why some people believe this case may become the largest patent cases in the world.
Heading for Discovery in Texas and then jury trial. Also restarting trial against Apple in California.
“This is why some people believe this case may become the [first of the?] largest patent cases in the world.”
Facinating!
Thank you.
Yes, there are several cases. So far Neonode has sued Samsung and Apple. I believe they will go after Google next, to reach all Android devices.
Each of these individual cases has the possibility to become the largest patent case in the world, both with regards to the number of devices, and with regards to the potential total damages amount.
Looking at possibly several billion US dollars in each case.
Thanks Jonas. Didn’t know that Neo was first.
They don’t call the Big Tech cabal predatory infringers for nothing.
Indeed, in Apple’s case, Jobs was a well known innovation rip off artist of the highest degree.
Yes, Neonode was first. Before the N1 and N2 Neo phones, what existed was the Blackberry type of devices, with a hard keyboard.
Neonode was invented the touch screen finger swiping user interface that we all take for granted and use everyday today.
With Apple there is an interesting story. Neonode showcased the N1 smartphone on an industry fair (Cebit) and the Apple employees flocked their booth and was very interested in the device. Shortly after Apple purchased a N1 device, via a 3rd party, and Neonode later tracked that specific device to the Apple headquarters where it ended up in their development division.
Neonode later also reached out to Apple to offer them to buy the patent, Apple after some months of deliberation “declined on the opportunity”.
Apple also references the 879 patent multiple times in their own user interface patents, so they must have been well aware of its existence from the start.
Can somebody explain why N has brought proceedings against its own licensee, Samsung? What proceedings? Infringement? Could it be that S has suspended its 2 dollar payment to N, for every phone it sells?
Exactly, Samsung “forgot” about the license agreement when Neonode reconstructed their Swedish business in 2007/2008, after the iPhone was released using their swipe gestures. Neonode did not have the financial muscles to go after Apple or Samsung, at that time.
Samsung’s explanation for that they stopped paying the agreed to license fees to Neonode was that the executive in charge of the license deal left Samsung, at least that is what they have argued in the current patent case so far.
PTA of 872 days. As the product covered by this patent didn’t required FDA or other regulatory approval for marketing, it was not eligible for PTE.
The “basic concept” of “swiping” a moveable toggle or doohickey (or whatever you want to call it) is thousands of years old. That’s the main problem with all these cruddy “oh but this is a virtual version” patents. Just obvious as heck.
You know what is WAY more older than that?
These things called electrons, protons and neutrons.
But gee, imagine the relationships possible…
(but please where is your gaslighting that you are not anti-patent?)