Filed on behalf of TPK Touch Solutions Inc.
`
`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR2013-00567
`Case IPR2014-00541
`U.S. Patent No. 8,217,902
`
`PATENT OWNER FINAL RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`

`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`Procedural Background.........................................................................1
`A.
`Summary of Patent Owner’s Arguments ..............................................3
`B.
`OVERVIEW OF THE ’902 PATENT AND CHALLENGED
`CLAIMS ..........................................................................................................8
`
`II.
`
`Background of the Technology at the Time of the ’902 Patent............8
`A.
`The Invention Described and Claimed in the ’902 Patent ....................9
`B.
`III. CLAIM CONSTRUCTION ..........................................................................14
`
`A.
`
`“wherein a capacitance between a first cell of the plurality of
`first-axis conductor cells and a second cell of the plurality of
`second-axis cells is measured.”...........................................................14
`“conductor assemblies,” “conductor cells,” and “conduction
`lines.”...................................................................................................15
`IV. GROUND 1: BINSTEAD DOES NOT ANTICIPATE THE
`CHALLENGED CLAIMS ............................................................................21
`
`B.
`
`A.
`
`B.
`
`C.
`
`D.
`
`Binstead Does Not Disclose the “Conductor Assemblies,”
`“Conductor Cells” or “Conduction Lines” of the Independent
`Claims..................................................................................................21
`Binstead Does Not Disclose Conductor Cells Having a
`“Contour of a Hexagonal Shape.”.......................................................26
`Binstead Does Not Disclose a Structure Wherein “Each
`Second-Axis Conduction Line Terminates on the Edge of Each
`Second-Axis Conductor Cell to the Adjacent Second-Axis
`Conductor Cells.”................................................................................27
`Binstead Does Not Disclose Electrically Connecting Between
`Conductor Cells Using a Plurality of Conduction Lines.....................28
`
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`
`V.
`
`GROUND 2: THE COMBINATION OF BINSTEAD AND
`HONEYWELL DOES NOT RENDER OBVIOUS THE
`CHALLENGED CLAIMS. ...........................................................................31
`
`VI. GROUND 3: THE COMBINATION OF BINSTEAD AND
`BOLENDER DOES NOT RENDER OBVIOUS THE
`CHALLENGED CLAIMS. ...........................................................................32
`
`VII. GROUND 4: THE COMBINATION OF BINSTEAD AND MILLER
`DOES NOT RENDER OBVIOUS THE CHALLENGED CLAIMS...........34
`
`A.
`
`B.
`
`The Proposed Combination of Binstead and Miller Does Not
`Disclose the “Conductor Assemblies,” “Conductor Cells” or
`“Conduction Lines” of the Independent Claims. ................................34
`A Person of Ordinary Skill Would Not Be Motivated to
`Combine Binstead with Miller in the Manner Proposed.....................35
`Miller Contains No Teaching, Suggestion or Motivation
`1.
`of Measuring Trans-Capacitance in a Single-Layer
`Solution. ....................................................................................36
`
`2.
`
`3.
`
`Binstead Contains No Teaching, Suggestion or
`Motivation of Detecting a Position of Touch by
`Measuring a Change in Capacitance Between Conductor
`Elements....................................................................................40
`
`Combining the Electrode Structure of Binstead with the
`Measurement of Trans-Capacitance in Miller Would
`Result in an Unworkable System..............................................42
`
`VIII. GROUND 5: THE COMBINATION OF BINSTEAD, MILLER AND
`HONEYWELL DOES NOT RENDER THE CHALLENGED
`CLAIMS OBVIOUS. ....................................................................................51
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS SUPPORT THE
`CONCLUSION THAT THE CHALLENGED CLAIMS OF THE
`’902 PATENT ARE NOT OBVIOUS. .........................................................52
`
`A.
`
`Commercial Success and Industry Praise ...........................................53
`
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`
`Long-Felt Need and Failure of Others ................................................54
`B.
`CONCLUSION..............................................................................................58
`
`X.
`
`iii
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`

`

`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Advanced Display Sys. v. Kent State Univ.,
`212 F.3d 1272 (Fed. Cir. 2000)..................................................................... 26, 50
`
`Alco Standard Corp. v. Tennessee Valley Authority,
`808 F.2d 1490 (Fed. Cir. 1986)............................................................................50
`
`Apple Inc. v. Int'l Trade Comm'n,
`725 F.3d 1356 (Fed. Cir. 2013)............................................................................48
`
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249, 1257 (Fed. Cir. 2010)..................................................................24
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009)............................................................................26
`
`Connell v. Sears, Roebuck & Co.,
`722 F.2d 1542 (Fed. Cir. 1983)............................................................................26
`
`Engel Indus., Inc. v. Lockformer Co.,
`96 F.3d 1398, 1404-05 (Fed. Cir. 1996)...............................................................24
`
`Gaus v. Conair Corp.,
`363 F.3d 1284, 1288 (Fed. Cir. 2004)..................................................................24
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................47
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012)............................................................................48
`
`In re Fine,
`837 F.2d 1071.......................................................................................................40
`
`iv
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`

`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`In re Fitch,
`972 F.2d 1260 (Fed. Cir. 1992)............................................................................40
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011)............................................................................39
`
`KSR v. Teleflex,
`550 U.S. 398 (2007) ...................................................................................... 42, 47
`
`Lantech Inc. v. Keip Machine Co.,
`32 F.3d 542, 547 (Fed. Cir. 1994)........................................................................24
`
`Leo Pharm. Prods v. Rea,,
`726 F.3d 1345 (Fed. Cir. 2013)............................................................................51
`
`Monsanto Company v. Pioneer Hi-Bred International, Inc.,
`IPR2013-00022, Paper No. 43 at 7-8, (PTAB April 11, 2013)..............................6
`
`Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005)............................................................................40
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983)............................................................................48
`
`Ex Parte Weideman,
`Appeal No. 2008-3454, Decision on Appeal at 7 (BPAI Jan. 27, 2009) .............25
`
`Wowza Media Systems,
`IPR2013-00054, Paper No. 12 at 12.......................................................................6
`
`STATUTES AND RULES
`
`35 U.S.C. § 103........................................................................................... 2, 3, 4, 48
`35 U.S.C. § 316..........................................................................................................1
`
`v
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`

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`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`REGULATIONS
`
`37 C.F.R. § 42.100. ....................................................................................................1
`37 C.F.R. § 42.107 .....................................................................................................2
`37 C.F.R. § 42.120 .....................................................................................................3
`
`vi
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`Case IPR2014-00541
`Patent Owner Response
`
`LIST OF EXHIBITS
`
`TPK Touch
`Solutions Inc.
`
`Exhibit No.
`
`Document Description
`
`TPK 2001
`
`TPK 2002
`TPK 2003
`TPK 2004
`
`TPK 2005
`TPK 2006
`TPK 2007
`
`TPK 2008
`
`TPK 2009
`
`TPK 2010
`
`TPK 2011
`
`TPK 2012
`
`TPK 2013
`TPK 2014
`
`TPK 2015
`TPK 2016
`TPK 2017
`
`G. Barrett & R. Omote, “Projected-Capacitive Touch
`Technology”
`Declaration of Joshua R. Smith
`Curriculum Vitae of Joshua R. Smith
`Walker, “Fundamentals of Touch Technologies and
`Applications”
`Hotelling et al., U.S. Patent No. 7,920,129
`Geaghan, U.S. Patent No. 8,279,187
`Crosby, “Self Capacitive Sensing Brings Touch to Large-
`Screen Products”, Zytronic
`Walker, “Part 1: Fundamentals of Projected-Capacitive Touch
`Technology”
`Deposition Transcript of Dr. Vivek Subramanian, June 11,
`2014
`Decision – Institution of Inter Partes Review, Case IPR2013-
`00568 (not submitted)
`Decision – In the Matter of Certain Mobile Devices, and
`Related Software Thereof, ITC Inv. No. 337-TA-750
`Figure 2 from Japanese Published Patent Appl. No. 61-84729
`to Honeywell (excerpt of Wintek Ex. 1007)
`Information Display Journal, Vol. 26, No. 3, March 2010
`Decision – Institution of Inter Partes Review, Case IPR2013-
`00567 (not submitted)
`Testimony of Dr. Subramanian in ITC Inv. No. 337-TA-750
`Binstead, U.S. Patent Publication No. 2012/0188201
`Declaration of Ted Tsai in Support of Patent Owner’s
`
`vii
`
`

`

`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`TPK 2018
`TPK 2019
`TPK 2020
`
`TPK 2021
`TPK 2022
`
`TPK 2023
`
`TPK 2024
`TPK 2025
`
`Response
`Daiwa Capital Markets, March 2012 market report
`Amazon Kindle Electrode Structure (Filed Under Seal)
`NPD DisplaySearch, Q1’14 Quarterly Touch Panel Market
`Analysis, April 2014
`Economic Daily News Article, February 2009
`J.P. Morgan, TPK Holding Co., Ltd. research report, October
`2012
`NPD Display Search, Touch Panel Market Analysis Q4’12
`Update, December 2012
`Stipulated Protective Order – Clean
`Stipulated Protective Order – Redlined
`
`viii
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`Case IPR2013-00567
`Case IPR2014-00541
`Patent Owner Response
`
`Patent Owner TPK Touch Solutions Inc. (“TPK”) hereby submits this
`
`Response to the Petition filed by Wintek Corporation (“Wintek”) for inter partes
`
`review of U.S. Patent No. 8,217,902 (“the ’902 Patent”). As discussed in detail
`
`below, Petitioner has failed to meet its burden of proving by a preponderance of
`
`the evidence that any of the challenged claims of the ’902 Patent are unpatentable,
`
`as required by 35 U.S.C. § 316. Accordingly, Patent Owner respectfully requests
`
`that the Patent Trial and Appeal Board (“Board”) issue a final written decision in
`
`favor of the Patent Owner on all Grounds.
`
`I.
`
`INTRODUCTION
`
`A.
`
`Procedural Background
`
`On September 4, 2013, Petitioner filed two petitions under 37 C.F.R.
`
`§ 42.100 et seq., both of which sought inter partes review of all claims (1-68) of
`
`the ‘902 Patent. IPR2013-00567, Paper 2 (“the ’567 IPR”); IPR2013-00568,
`
`Paper 2 (“the ’568 IPR”). In particular, Petitioner raised nine proposed grounds in
`
`the ’567 IPR, challenging the claims based on the Binstead, Miller, Bolender,
`
`Seguine, and Lambert references. ’567 IPR, Paper 2 at 4. In the ’568 IPR,
`
`Petitioner raised nine additional proposed grounds, challenging the claims based on
`
`the Fujitsu, Honeywell, Binstead, Bolender, and Seguine references. ’568 IPR,
`
`Paper 2 at 4.
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`

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`Case IPR2013-00567
`Case IPR2014-00541
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`On December 11, 2013, Patent Owner filed preliminary responses to the two
`
`petitions pursuant to 37 C.F.R. § 42.107, presenting various arguments as to why
`
`none of these proposed grounds rendered any of the challenged claims
`
`unpatentable, and requesting that inter partes review not be instituted. ’567 IPR,
`
`Paper 7; ’568 IPR, Paper 7. On February 27, 2014, the Board issued institution
`
`decisions in the ’567 and ’568 IPRs, granting both petitions in-part, and instituting
`
`inter partes review for certain claims based on certain of the proposed grounds
`
`raised in the petitions. ’567 IPR, Paper 10 (“Decision”) at 29.
`
`Specifically, the Board granted the ’567 Petition only as to the following
`
`proposed grounds and challenged claims:
`
`
`
`
`
`
`
`
`
`Claims 1-3, 5-8, 10-13, 15, 24, 32, 34, 36, 37, 39, 40, 42, 43, 46-48,
`50-55, 57, 58, 60-62, and 64-67 as anticipated under § 102 by
`Binstead;
`
`Claims 4, 9, 14, 16, 31, 38, 41, 45, 49, 56, and 63 as unpatentable
`under § 103 over Binstead and Honeywell;
`
`Claims 33 and 59 as unpatentable under § 103 over Binstead and
`Bolender; and
`
`Claims 17-19, 21, 22, 25-27, 29, 35, 44, and 68 as unpatentable under
`§ 103 over Binstead and Miller.
`
`(Decision at 29). The Board explicitly denied the Petition as to all other grounds
`
`proposed by Petitioner. (Id. at 21). Thus, the Board confirmed the patentability of
`
`2
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`claims 20, 23, 28, and 30 of the ’902 Patent over all of the grounds asserted in the
`
`Petition against these claims.
`
`After failing to persuade the Board that it had demonstrated a reasonable
`
`likelihood of prevailing with respect to these claims in the ’567 IPR, Petitioner
`
`filed a third Petition on March 26, 2014, challenging claims 20, 23, 28, and 30 of
`
`the ‘902 Patent. In this latest challenge, Petitioner relied on the same asserted
`
`references (i.e., Binstead, Fujitsu, Miller, Honeywell and Seguine) and proposed
`
`four new grounds each of which is based on a three-reference obviousness
`
`combination. On June 17, 2014, the Board granted the ’541 Petition only as to the
`
`following proposed ground:
`
`
`
`Claims 20, 23, 28, and 30 under 35 U.S.C. § 103 based on Binstead,
`Miller, and Honeywell.
`
`The Board then granted Petitioner’s motion to join the ’541 and ’567
`
`proceedings, and terminated the ’541 petition. ’567 IPR, Paper No. 23.
`
`Patent Owner submits this Response pursuant to 37 C.F.R. § 42.120, in
`
`order to address the grounds above, and to explain why each of the challenged
`
`claims, as issued, are patentable over all of the prior art identified in these grounds.
`
`B.
`
`Summary of Patent Owner’s Arguments
`
`Patent Owner respectfully asserts that each of the claims involved in this
`
`proceeding is patentable over the four remaining Grounds. For at least the
`
`3
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`
`following reasons, Petitioner has failed to meet its burden of demonstrating, by a
`
`preponderance of the evidence, that any of the claims are not patentable over the
`
`prior art relied upon in these Grounds.
`
`First, the disclosures in Binstead, the reference underlying Petitioner’s only
`
`remaining § 102 ground, are fundamentally different from the invention of the ’902
`
`patent and the challenged claims. In particular, Binstead fails to disclose a single-
`
`layer conductor pattern structure with first- and second-axis “conductor
`
`assemblies” comprising distinct “conductor cells” that are connected by
`
`“conduction lines”—limitations required by every independent claim of the ’902
`
`Patent. As explained in the accompanying expert declaration of Dr. Joshua Smith,
`
`Associate Professor of Computer Science and Principal Investigator for the Sensor
`
`Systems Laboratory at the University of Washington (Ex. 2002), these limitations
`
`impart meaningful functional distinctions over Binstead, which simply discloses
`
`strips of electrodes extended across the surface of the substrate that contain no
`
`distinct cells for the induction of capacitance. For at least these reasons, Ground 1
`
`fails to raise a likelihood of success with respect to any challenged claim of the
`
`’902 Patent.
`
`Second, Petitioner relies on section 103 to argue that the challenged claims
`
`would be obvious in view of a number of combinations between Binstead and
`
`4
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`Case IPR2013-00567
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`
`other references. However, as set forth below, the proposed combinations fail to
`
`teach or suggest material limitations recited in the challenged claims, and therefore
`
`do not render those claims obvious.
`
`Third, Petitioner respectfully submits that the combined teachings of
`
`Binstead and Miller would not have suggested that the claimed inventions are
`
`obvious alleged by Petitioner in Ground 3. Nor would one of ordinary of skill
`
`have been motivated to combine Binstead and Miller in the manner proposed. As
`
`explained in the accompanying declaration of Dr. Joshua Smith, Binstead and
`
`Miller are completely different touch-based systems that are designed for different
`
`sensing mechanisms and circuitry. Binstead describes a single-layer sensor system
`
`that detects a position of touch through self-capacitance and contains “narrow
`
`wires” for conductor electrodes, so as to minimize the potential for cross-
`
`capacitance. Because of the narrowness of the electrodes and the wide inter-
`
`electrode spacing, it would not be advisable—or possible—to attempt detect a
`
`position of touch in the structure of Binstead by attempting to measure trans-
`
`capacitance between those electrodes. By contrast, Miller teaches a two-layer
`
`sensor system that can detect a change in capacitance between sensor “pads” on the
`
`substrate when rows of electrodes on top of the substrate and columns on the
`
`opposite side of the substrate are simultaneously charged. The system of Miller
`
`5
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`Case IPR2013-00567
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`
`would be impracticable in a single layer solution, as the strong levels of parasitic
`
`cross-capacitance induced between the row and column electrodes on a single
`
`surface would diminish the ability of the system to sense a change in capacitance
`
`attributable to a finger or other object
`
`Fourth, while Petitioner attempts to alleviate some of the critical
`
`deficiencies in its proposed Grounds by relying on an accompanying declaration by
`
`Dr. Vivek Subramanian (Ex. 1012), Dr. Subramanian’s declaration fails to provide
`
`any meaningful facts or basis for his opinions. The vast majority of the declaration
`
`simply restates, almost verbatim, the same statements Petitioner makes. Indeed, at
`
`when questioned for further detail at his deposition, Dr. Subramanian conceded
`
`that the structures of Binstead and Miller contain significant differences, and that
`
`the very combinations he proposes in his declaration would introduce serious
`
`difficulties. Moreover, Dr. Subramanian admitted that he lacks experience in
`
`touch sensor design, casting doubt on the credibility of his blanket statements that
`
`it would be obvious or straightforward to combine those references. (Ex. 2009 at
`
`11:16-20, 33:10-16.) In fact, Dr. Subramanian’s only experience designing touch
`
`sensors came after the time of the ‘902 filing date, similarly casting doubt on the
`
`credibility of his opinions concerning the knowledge of a person of ordinary skill
`
`in the art at the time of the invention. (Id. at 11:21-12:8, 31:16-22.) As a result,
`
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`Dr. Subramanian’s declaration does nothing to cure the deficiencies in the
`
`petition. See, e.g., Monsanto Company v. Pioneer Hi-Bred International, Inc.,
`
`IPR2013-00022, Paper No. 43 at 7-8, (PTAB April 11, 2013); Wowza Media
`
`Systems, IPR2013-00054, Paper No. 12 at 12.
`
`Fifth, objective indicia of non-obviousness dictate the conclusion that the
`
`’902 Patent presented a novel and innovative solution for a thin, transparent multi-
`
`touch sensor panel that detects mutual capacitance between conductor cells formed
`
`on the same surface of a substrate. As set forth below and in the declaration of Ted
`
`Tsai, TPK’s Chief Sales Officer (Ex. 2017), TPK’s products were the first
`
`commercial touch panels to achieve these benefits, and have been commercially
`
`successful in the industry for precisely this reason.
`
`In view of the foregoing infirmities (and others discussed below), the
`
`Petition falls short of proving by a preponderance of the evidence that any of
`
`Grounds 1-5 render any of the challenged claims unpatentable. Thus, Patent
`
`Owner respectfully requests that the Board confirm the patentability of all of these
`
`claims as originally issued.
`
`7
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`Case IPR2013-00567
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`
`II. OVERVIEW OF THE ’902 PATENT AND CHALLENGED CLAIMS
`
`A.
`
`Background of the Technology at the Time of the ’902 Patent
`
`The ’902 patent relates to an improved conductor pattern structure for
`
`mutual-capacitance touch panels. A mutual capacitance touch panel detects the
`
`location of a touch by sensing a change in capacitance between two conductor
`
`elements resulting from the presence of the touching object (e.g., a user’s finger)
`
`on the panel. (Ex. 2002 at ¶¶ 46-55.) By contrast, a “self-capacitance” touch panel
`
`detects the position of touch simply by sensing the effect of the presence of an
`
`object on the capacitance between a single conductor element and the ground.
`
`(See, e.g., Ex. 2002 at ¶¶ 34-41; G. Barrett & R. Omote, “Projected-Capacitive
`
`Touch Technology” (Ex. 2001) at 16-17.)
`
`While mutual-capacitance touch panels existed in the prior art, the prior art
`
`devices were thicker and in some cases more cumbersome to manufacture, due in
`
`large part to the need to maintain and measure capacitance between two layers of
`
`conductive material separated by an insulator. (Ex. 1001 at 2:57-63.) The ’902
`
`Patent improves on the prior art by disclosing, inter alia, a conductor pattern
`
`structure that allows for the detection of touch by measuring mutual capacitance in
`
`a single layer of transparent conductive assemblies formed on a substrate. (Id. at
`
`3:20-31.) As explained in the ’902 Patent, this new design provided a number of
`
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`substantial benefits over prior art touch panels, including a thinner profile,
`
`improved transparency and a simplified manufacturing process. (Id. at 3:49-54.)
`
`B.
`
`The Invention Described and Claimed in the ’902 Patent
`
`As explained in the ’902 Patent, prior art mutual capacitance touch panels
`
`generally required a construction “including two capacitive sensing layers spaced
`
`from each other with an insulation material to effect capacitive effect between the
`
`layers.” (Ex. 1001 at 2:58-63.) The same was still the state of the art in 2010.
`
`(See, e.g., Ex. 2001 at 17 (noting that “[i]n a mutual-capacitance touch screen,
`
`transparent conductors are always patterned into spatially separated electrodes in
`
`two layers, usually arranged as rows and columns”).) The ’902 Patent notes that a
`
`mutual capacitance touch panel’s requirement of two overlapping conductive
`
`layers “makes the structure of the panel very thick and is thus against the trend of
`
`miniaturization.” (Ex. 1001 at 2:63-64.) Moreover, because the two sensing layers
`
`are generally formed on opposite sides of an insulating substrate, manufacturing
`
`such a panel is “complicate[d]” by the need to form connections via “through
`
`holes” in the substrate and to adopt “circuit layering” to connect the two layers.
`
`(Id. at 2:64-3:3.) The ’902 Patent cites to a number of prior art mutual-capacitance
`
`references that suffer from these complications, including the Miller patent that
`
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`Petitioner now argues renders the Patent obvious. (Id. at 2:24-28 (citing U.S.
`
`Patent No. 5,374,787).)
`
`The ’902 Patent addresses these and other shortcomings through a new
`
`mutual capacitance touch panel that uses a transparent, “thin conductor pattern
`
`structure” (id. at 3:11-13) and requires only a single layer of conductors. The
`
`structure is illustrated below in Figure 1 of the ‘902 Patent:
`
`The preferred embodiment of the ’902 Patent is a conductor pattern structure
`
`comprising multiple rows of “conductor assemblies” extending along both the x-
`
`axis and y-axis (“first-axis conductor assemblies” 13 and “second-axis conductor
`
`assemblies” 14, respectively) that are formed on the surface of a substrate such as
`
`glass. (Id. at 4:41-63, 5:47.) Each first-axis conductor assembly is comprised of
`
`10
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`“a plurality of first-axis conductor cells 131 that are lined up along the first axis” in
`
`a “substantially equally-spaced manner.” (Id. at 4:53-65.) The first-axis conductor
`
`assemblies and conductor cells are placed so that “a disposition zone 15 is
`
`delimited between adjacent first-axis conductor assemblies 13 and adjacent first-
`
`axis conductor cells.” (Id. at 4:67-5:2.) Set in these disposition zones are
`
`substantially equally-spaced “second-axis conductor cells” 141 that are lined up
`
`along the second axis to form rows of “second-axis conductor assembl[ies]” 14.
`
`(Id. at 5:17-22.)
`
`Each adjacent first-axis conductor cell in a conductor assembly is joined by
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`a “first-axis conduction line” 132 that electrically connects the entire first-axis
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`conductor assembly. (Id. at 5:3-10.) Similarly, each adjacent second-axis
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`conductor cell in a second-axis conductor assembly is joined by a “second-axis
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`conduction line” 142 that electrically connects the entire second-axis conductor
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`assembly. (Id. at 5:29-32.) Both the first-axis and second-axis conductor
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`assemblies are further connected to signal transmission lines 16a and 16b that can
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`transmit signals to a control circuit. (Id. at 5:10-13, 5:32-34.) Both the conducting
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`cells and conducting lines may be made of “transparent conductive film, such as an
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`ITO [indium tin oxide] conductive film.” (Id. at 5:48-52.)
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`To electrically separate the first-axis and second-axis conductor assemblies,
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`the surface of each of the first-axis conductor lines 132 is covered by a transparent
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`insulation cover layer 17, such as a layer made of silicon dioxide. (Id. at 5:14-17.)
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`Each second-axis conductor line 142 then “extends over and across a surface of
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`each insulation layer” 17 to electrically connect the second-axis conductor cells of
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`the same second-conductor assembly. (Id. at 5:24-29.) This arrangement of
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`conductor lines is illustrated in figure 2 of the ‘902 Patent:
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`When a user places his or her finger on a contact area A on the panel, “the
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`first-axis conductor cell 131 of the first-axis conductor assembly 13 and the
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`second-axis conductor cell 141 of the second-axis conductor assembly 14, which
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`are covered by the contact area A, induce a capacitor effect therebetween,”
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`causing a signal to be transmitted to the control circuit indicating the location of
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`the contact area. (Id. at 5:58-6:5 (emphasis added)). In other words, the position
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`of the user’s finger on the touch panel is detected by measuring the capacitance
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`between adjacent conductor cells from first-axis and second-axis conductor
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`assemblies.
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`The ’902 Patent further teaches various methods for manufacturing the
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`preferred conductor pattern structure. In one method, transparent ITO conductive
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`film is applied to the surface of the substrate and then etched and stripped to form
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`the first-axis and second-axis conductor cells, as well as the first-axis conductor
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`lines. (Id. at 6:34-52.) Insulation covering material then is applied to the first-axis
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`conduction lines. (Id. at 6:53-55.) Finally, additional transparent conductive film
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`is applied across the surface of the insulation cover to form the second-axis
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`conductor lines connecting the second-axis conductor cells. (Id. at 6:55-67.)
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`The conductor pattern structure of the ’902 Patent thus achieves multiple
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`benefits over the prior art. The structure is thinner than prior art mutual-
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`capacitance solutions because all conductor cells are formed on the same surface of
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`the substrate. (Id. at 3:49-54). Moreover, a touch position can be detected by
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`measuring the capacitance between adjoining conductor cells in a single layer,
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`rather than overlapping conductor cells in two different layers. (Id. at 3:54-62.)
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`This thinner structure also yields greater transparency, which is beneficial for
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`touch panel devices. Additionally, because the disclosed conductor assemblies
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`“can be formed on only one surface of the substrate by [] general circuit laying
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`techniques,” the conductor pattern structure of the ’902 Patent can be
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`manufactured using “a simple process with high passing rate and low costs.” (Id.
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`at 3:63-67.)
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`III. CLAIM CONSTRUCTION
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`In its Decision, the Board issued preliminary constructions of various terms
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`of the ’902 Patent, namely (i) “wherein a capacitance between a first cell of the
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`plurality of first-axis conductor cells and a second cell of the plurality of second-
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`axis cells is measured” and (ii) “conductor assemblies,” “conductor cells,” and
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`“conduction lines.” (Decision at 9-11.)
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`A.
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`“wherein a capacitance between a first cell of the plurality of first-
`axis conductor cells and a second cell of the plurality of second-
`axis cells is measured.”
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`Patent Owner agrees with the Board’s construction of the term “wherein a
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`capacitance between a first cell of the plurality of first-axis conductor cells and a
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`second cell of the plurality of second-axis cells is measured.” While Petitioner
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`improperly attempted to expand this term to include separately measuring the
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`capacitance of a first conductor, then the capacitance of a second conductor, the
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`Board correctly found that “the plain and ordinary meaning of the claim language
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`requires measuring ‘a capacitance between a first cell . . . and second cell.’”
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`(Decision at 10.) Importantly, in reaching this construction, the Board recognized
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`the essential function of a “conductor cell” in the ’902 Patent, which is to induce a
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`capacitive effect in another conductor cell. (Id. at 11.)
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`B.
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`“conductor assemblies,” “conductor cells,” and “conduction
`lines.”
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`The Board also construed the term “conductor assemblies,” “conductor
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`cells,” and “conduction lines,” which appear in various combinations in every
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`independent claim of the ’902 Patent, and found that “the broadest reasonable
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`interpretation of these claim phrases . . . requires that the ‘conduction line’ be
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`distinct geometrically from the ‘conductor cells.’ However, the ‘conduction line’
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`need not be narrower than the ‘conductor cells,’ nor do the structures need to be
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`formed separately.” (Decision at 10.)
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`While the Board correctly noted that the ’902 Patent requires that “conductor
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`cells” and “conduction lines” be geometrically distinct, the Board erred in
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`suggesting that “conductor cells” and “conduction lines” could be defined by any
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`arbitrary difference in shape. To the contrary, Patent Owner and Petitioner both
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`agree that these terms, as understood by a person of ordinary skill in the art in view
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`of the specification of the ’902 Patent, connote differences in function that
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`inevitably affect their respective geometries. Specifically, a person of ordinary
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`skill would understand the term “conductor cells” to refer to conductor elements
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`that induce or sense a capacitive effect, and “conduction lines” to refer to electrical
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`interconnections between those cells.
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`First, Petitioner and Patent Owner agree with respect to the proper
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`interpretation of these claim terms. When questioned at his deposition regarding
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`the definitions of “conductor cells” and “conduction lines,” Petitioner’s expert Dr.
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`Subramanian testified:
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`Q. So what do you think that a conductor cell and a
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`conductor line is?
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`A. A conductor cell with respect to this would be a
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`conductive feature that's involved in the sensing aspects
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`and a conductor line inter[connects] conductor cells.
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`(Ex. 2009 at 300:7-12.) This is consistent with the opinion of TPK’s expert, Dr.
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`Smith. (Ex. 2002 ¶¶ 78-79 (“[A] person of ordinary skill would understand the
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`term ‘conductor cells’ in a capacitive sensor to refer to discrete, self-contained
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`sensor elements that are for i