IP Law Daily, PATENT—Fed. Cir.: Invalidity ruling on Neonode’s touchscreen interface utility patent reversed, (Aug 20, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

District court erred in interpretation of claim language on activation option in the asserted patent.

The U.S. Court of Appeals for the Federal Circuit reversed and remanded a Texas federal district court's decision that found claim 1 of Neonode Smartphone LLC’s U.S. Patent No. 8,095,879 (the ’879 patent) invalid on the grounds of indefiniteness. The appellate court ruled that the district court misinterpreted the patent’s claim language relating to the activation option, finding it sufficiently clear and not indefinite under 35 U.S.C. § 112 (Neonode Smartphone LLC v.Samsung Electronics Co., Ltd., No. 23-2304 (Fed. Cir. Aug. 20, 2024)).

Background. The plaintiff/ appellant, Neonode Smartphone LLC, is engaged in developing and licensing mobile technology innovations. The company's business primarily focuses on user interface technologies for mobile devices. The defendants/appellees, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively "Samsung"), are major consumer electronics manufacturers, including smartphones and related technologies, operating globally with a significant presence in the mobile technology market.

Neonode’s ’879 patent pertains to a user interface for smartphones. Specifically, it claims a method for activating functions through a touch-sensitive area, using a process called the "touch-and-glide" operation. This involves touching an object (e.g., a finger) to a designated area on the screen and then moving the object away from the touched location to activate a function.

Neonode filed this lawsuit alleging that Samsung's products infringed on the '879 patent. During the proceedings, the district court was tasked with interpreting the patent's claim language, mainly focusing on the phrase "wherein the representation consists of only one option for activating the function." The district court found that this language rendered the patent's claim indefinite, as it was unable to ascertain the meaning of "only one option" within the context of the claim. Consequently, the district court ruled that claim 1 of the asserted patent and its dependent claims was invalid as indefinite under 35 U.S.C. § 112, ¶ 2. Neonode appealed this decision.

“Only one option.” The Federal Circuit’s analysis began with a review of the district court’s interpretation of the phrase "wherein the representation consists of only one option for activating the function." The appellate court disagreed with the lower court’s conclusion, stating that the intrinsic record provided sufficient clarity to understand the claim's scope. The appellate court explained that the term "only one option" referred to the number of functions that could be activated from a given representation at a specific time, with the option being limited to a single function depending on the currently active application.

Neonode distinguished its invention from prior art by emphasizing that its claimed method allowed only one function to be activated per representation at any given time. The Federal Circuit relied on the established standard in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), that patent claims must inform those skilled in the art about the scope of the invention with reasonable certainty and found that the prosecution history provided the necessary clarity.

“Gliding...away.” The Federal Circuit also addressed Samsung's alternative argument regarding the term "gliding...away," which the district court had previously construed as not including certain gestures like dragging or flicking but did not find it rendered the claim indefinite. The appellate court affirmed the district court's construction of this term, stating that it was consistent with both the specification and the prosecution history. Referencing Cox Communications, Inc. v. Sprint Communication Co., 838 F.3d 1224 (Fed. Cir. 2016), the Federal Circuit highlighted that the term provided reasonable certainty to a skilled artisan, thus rejecting Samsung’s claim that the term rendered the patent claim indefinite. The appellate court emphasized that Samsung had not demonstrated that the "gliding...away" limitation created an "innovation-discouraging ‘zone of uncertainty’" as described in Nautilus.

Conclusion. Finally, the Federal Circuit reversed the district court’s decision and remanded it for further proceedings consistent with its findings. As the prevailing party, Neonode was awarded costs for the appeal.

The Case is No. 23-2304.

Judge: Prost, S.

Attorneys: Philip Graves (Graves & Shaw LLP) for Neonode Smartphone LLC. Stanley Joseph Panikowski, III (DLA Piper US LLP) for Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.

Companies: Neonode Smartphone LLC; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.

Cases: Patent FedCirNews TexasNews