Long time, no post….

Well, since not much have happened since judgement of invalidity (Aug 2) from Markman hearing on patent 879, there was not much to write about.
But now we have a new document to analyze and comment on; Neonode’s opening brief on the Appeal after Markman.

The big question now is if the phrase
“the representation consists of only one option for activating the function”
is indefinite or not?
Can Neonode reverse the judgement?

First, we need to go back to prosecution of the 879 patent; Neonode’s amendment of claim 1 in response to the USPTO examiner’s rejection over Hirshberg was a consequential decision in the prosecution of the 879 patent. The addition of the “only one option” language became a focal point, leading to a later finding by the district court that it rendered the claim indefinite. This pivotal point in the patent prosecution process demonstrates the far-reaching implications of wording choices and their impact on legal interpretations of patents and outcomes during litigation.

The Hirshberg document describes a keypad that lets users touch a key to choose from several characters and drag their finger to select a character (from several).

The order for claim construction (following Markman) established limitation 1[b] as indefinite. The court concluded that the phrase “only one option” in claim 1 rendered it indefinite because it “might mean several different things and no informed and confident choice is available among the contending definitions.”

Specifically, the court held that “it is unclear to a POSITA 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).”

The court largely ignored the claim and the prosecution record, focusing instead on the fact that the word “option” does not appear in the specification. The court reiterated this point three times.

Here is where the court decided to take a convenient shortcut.

The court seemed to conveniently avoid considering the entire claim and prosecution history. It appears that they were determined to deem it indefinite without truly delving into the meaning of the phrase, merely accepting Samsung’s argument without providing any rationale.

Neonode states “Three primary legal errors infect the district court’s analysis and conclusion that limitation 1[b] renders claim 1 indefinite.”

I dare say I concur with each and every one of them;

1) This is what I just wrote above, the court taking a shortcut. Too much focus on word “option“.
[Can’t see the forest for the trees]

2) Court’s conclusion that limitation 1[b] could be understood to refer to “presenting the user with an icon,”
This is just wrong! Neither side argued this!

3) What would a POSITA think? In my opinion (having worked in the relevant industry for over 20 years) it should be plain meaning. i.e what to activate.

As I wrote in a previous post “The lack of use (of word option) in specification can lead to its plain meaning.” Which I believe it should! “Option” refers to the “representation of function“, NOT how you enable the function. This goes for both 1) and 3).

Summary:
From my point of view, Neonode has some good arguments, and I was surprised over the courts decision after Markman. Maybe not the decision as such, but the (lack of) arguments. They were almost kind of lame. Appearing more like something someone who doesn’t care to engage in the case would do.

I believe Neonode’s strongest argument lies in the prosecution history regarding Hirschberg. If they can assert this convincingly enough, it has the potential to create an opportunity to overturn Markman ruling on the invalidity order.

NOTE: I have now taken a stake in Neonode, hence I own stocks in this paper ($NEON)