Federal

“The CAFC said that, although the claimed ‘option’ is ‘not directly indicated by the claim language’ or the specification, ‘the meaning of ‘option,’ and the reason for its use, becomes apparent from the prosecution history.'”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday reversed and remanded the Western District of Texas district court’s decision that Claim 1 of Neonode’s patent for a tablet display was indefinite.

Neonode sued Samsung Electronics for infringement of its U.S. Patent No. The Claim 1 describes:

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 district court took issue with the word “option,” explaining that “the word ‘option’ does not appear in the specification (much less the broader phrase ‘only one option for activating the function’)” and held 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).” On appeal, Neonode said the district court erred in its analysis of the limitation and the CAFC agreed, reasoning that, although the claimed “option” is “not directly indicated by the claim language” or the specification, “the meaning of ‘option,’ and the reason for its use, becomes apparent from the prosecution history.”

During prosecution, Neonode amended the claim to overcome a rejection from the examiner that found its initial version of claim 1 was taught by the relevant prior art. The The The same embodiment also shows that this single function can change over time, said the court, and thus the CAFC construed “wherein the representation consists of only one option 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).”[the prior art]Samsung attempted to argue that there were three possible meanings that could be attributed to the limitation in question, with no way to choose among them, but the Federal Circuit said “Samsung cannot establish indefiniteness by ‘merely identify

different ways one could interpret’ the ‘only one option’ limitation” and also said that not all of Samsung’s proposed meanings are “plausible.” The court did recognize Samsung’s argument about conflicting arguments Neonode made in inter partes review (IPR) proceedings related to the ‘879 patent and the district court proceedings, conceding that they “introduce some confusion into the record,” but said these “isolated statements…do not suffice to establish indefiniteness.” Ultimately, said the CAFC:[ing]”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.”

In a footnote, the CAFC also granted that the “lack of precision” in some of Neonode’s statements could have contributed to the district court’s incorrect conclusions.

Samsung argued in the alternative that the term “gliding . . . away” is not susceptible to a definite construction, but the CAFC cited to its construction of that term in Google LLC v. Neonode Smartphone LLC, which it said the district court’s construction closely tracked.

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Author: almoond
Eileen McDermott