Neonode Smartphone LLC v. Samsung Electronics America, Inc.
Docket No. 2023-2024
LOURIE, PROST, STARK
August 20, 2024
Non-Precedential
Brief Summary: DC indefiniteness finding reversed and remanded, the FC panel finding the prosecution history “provides sufficient clarity”.
Summary: Neonode sued Samsung for infringement of U.S. Patent No. 8,095,879, which relates to a user interface for a mobile handheld computer unit with a “touch sensitive area in which a representations of a function is provided…wherein the representation consists of only one option for activating the function” and “object gliding along the touch sensitive area away from the touched location.” The DC concluded the terms “only one option” to be indefinite, and Neonode appealed. The FC panel disagreed with the DC’s conclusion, holding that the term “only one option” was sufficiently clear when considering the entire intrinsic record, including the patent’s prosecution history (Phillips, FC 2025; Personalized Media, FC 2020). The FC panel found that the term limited the number of functions that could be activated by a given representation to one, albeit allowing that the function could change depending on the application in use (e.g., “The context of this amendment over Hirshberg provides sufficient clarity for us to construe the ‘only one option’ language…Both the specification and a dependent claim show that the function activated from a given representation can be different for different applications (but not for the same application).” Univ. Mass., FC 2022). The FC panel explained “Samsung cannot establish indefiniteness by ‘merely identify[ing] different ways one could interpret’ the “only one option” limitation” (ClearOne, FC 2022; Nevro, FC 2020). The FC panel reversed the DC decision and remanded the case for further proceedings, also affirming that the “gliding… away” limitation in claim 1 was not indefinite (e.g., “Samsung has not established that claim 1’s ‘gliding…away’ limitation creates an “innovation-discouraging ‘zone of uncertainty’ about infringement.” Nautlius, US 2014; Union Carbide, US 1942). Neonode was awarded costs on appeal.