Filed on behalf of TPK Touch Solutions Inc.
`
`Case IPR 2013-00567
`Patent Owner Preliminary 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 IPR 2013-00567
`U.S. Patent No. 8,217,902
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`

`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ...........................................................................................1
`
`OVERVIEW OF THE ‘902 PATENT AND CHALLENGED
`CLAIMS ..........................................................................................................4
`
`PETITIONER’S PROPOSED CONSTRUCTIONS FAIL TO
`COMPLY WITH 37 C.F.R. § 42.104(b)(3)..................................................10
`
`IV. NONE OF THE PROPOSED GROUNDS SHOWS A
`REASONABLE LIKELIHOOD OF PREVAILING ON ANY
`CHALLENGED CLAIM ..............................................................................12
`
`A.
`
`Ground 1: Binstead Does Not Disclose The Limitations of The
`Challenged Claims ..............................................................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Binstead Does Not Disclose the “Conductor
`Assemblies,” “Conductor Cells” or “Conduction Lines”
`of the Independent Claims ........................................................14
`
`Binstead Does Not Disclose Measuring a “Capacitance
`Between a First Cell of the Plurality of First-Axis
`Conductor Cells and a Second Cell of the Plurality of
`Second-Axis Conductor Cells to Detect a Position of
`Touch”.......................................................................................15
`
`Binstead Does Not Disclose Conductor Cells Having a
`“Contour of a Hexagonal Shape”..............................................19
`
`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”.................................................20
`
`B.
`
`Ground 2: The Combination of Binstead and Honeywell Does
`Not Render Obvious The Challenged Claims.....................................20
`
`1.
`
`The Proposed Combination of Binstead and Honeywell
`Does Not Disclose the “Conductor Assemblies,”
`“Conductor Cells” or “Conduction Lines” of the
`Independent Claims...................................................................21
`
`i
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`2.
`
`3.
`
`The Proposed Combination of Binstead and Honeywell
`Does Not Disclose “Measuring a Capacitance Between a
`First Cell of the Plurality of First-Axis Conductor Cells
`and a Second Cell of the Plurality of Second-Axis
`Conductor Cells to Detect a Position of Touch” ......................22
`
`A Person of Ordinary Skill Would Not Be Motivated to
`Combine Binstead with Honeywell in the Manner
`Proposed....................................................................................23
`
`C.
`
`D.
`
`Ground 3: The Combination of Binstead and Bolender Does
`Not Render Obvious the Challenged Claims ......................................26
`
`Ground 4: The Combination of Binstead and Miller Does Not
`Render Obvious the Challenged Claims .............................................28
`
`1.
`
`2.
`
`The Proposed Combination of Binstead and Miller Does
`Not Disclose the “Conductor Assemblies,” “Conductor
`Cells” or “Conduction Lines” of the Independent Claims........29
`
`A Person of Ordinary Skill Would Not Be Motivated to
`Combine Binstead with Miller in the Manner Proposed ..........29
`
`E.
`
`Ground 5: Binstead and Seguine Do Not Render Obvious the
`Challenged Claims ..............................................................................32
`
`1.
`
`2.
`
`3.
`
`The Proposed Combination of Binstead and Seguine
`Does Not Disclose the “Conductor Assemblies,”
`“Conductor Cells” or “Conduction Lines” of the
`Independent Claims...................................................................33
`
`The Proposed Combination of Binstead and Seguine
`Does Not Disclose Measuring “A Capacitance Between a
`First Cell of the Plurality of First-Axis Conductor Cells
`and a Second Cell of the Plurality of Second-Axis
`Conductor Cells” to “Detect a Position of Touch”...................33
`
`A Person of Ordinary Skill Would Not Be Motivated to
`Combine Binstead With Seguine in the Manner Proposed.......36
`
`F.
`
`Ground 6: Lambert Does Not Disclose the Limitations of the
`Challenged Claims ..............................................................................38
`
`ii
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`1.
`
`2.
`
`3.
`
`4.
`
`Lambert Does Not Disclose the “Conductor Assemblies,”
`“Conductor Cells” or “Conduction Lines” of the
`Independent Claims...................................................................39
`
`Lambert Does Not Disclose A Plurality of Second-Axis
`Conductor Cells Arranged “On the Surface of the
`Substrate”..................................................................................41
`
`Lambert Does Not Disclose Measuring a “Capacitance
`Between a First Cell of the Plurality of First-Axis
`Conductor Cells and a Second Cell of the Plurality of
`Second-Axis Conductor Cells to Detect a Position of
`Touch”.......................................................................................42
`
`Lambert Does Not Disclose “A Plurality of Signal
`Transmission Lines Formed on the Surface of the
`Substrate”..................................................................................44
`
`G.
`
`Ground 7: The Combination of Lambert and Miller Does Not
`Render Obvious The Challenged Claims............................................46
`
`1.
`
`2.
`
`The Proposed Combination of Lambert and Miller Does
`Not Disclose the “Conductor Assemblies,” “Conductor
`Cells” or “Conduction Lines” of the Independent Claims........46
`
`A Person of Skill in the Art Would Not Be Motivated to
`Combine Lambert and Miller in the Manner Proposed............47
`
`H.
`
`Ground 8: The Combination of Lambert and Seguine Does Not
`Render Obvious The Challenged Claims............................................49
`
`1.
`
`2.
`
`The Proposed Combination of Lambert and Seguine Does
`Not Disclose the “Conductor Assemblies,” “Conductor
`Cells” or “Conduction Lines” of the Independent Claims........49
`
`The Proposed Combination of Lambert and Seguine Does
`Not Disclose Measuring “A Capacitance Between a First
`Cell of the Plurality of First-Axis Conductor Cells and a
`Second Cell of the Plurality of Second-Axis Conductor
`Cells” to “Detect a Position of Touch”.....................................50
`
`iii
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`3.
`
`A Person of Skill in the Art Would Not Be Motivated To
`Combine Lambert and Seguine in the Manner Proposed .........51
`
`I.
`
`Ground 9: The Combination of Lambert and Bolender Does
`Not Render Obvious The Challenged Claims.....................................53
`
`V.
`
`CONCLUSION..............................................................................................56
`
`iv
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`

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`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Cont’l Can Co. USA v. Monsanto Co.,
`948 F.2d 1264, 1268 (Fed. Cir. 1991) ...........................................................17
`
`Corning Inc. v. DSM IP Assets B.V,
`IPR2013-00045, Paper No. 11 (PTAB May 13, 2013) .................................11
`
`Denso Corporation and Clarion Co. Ltd. v. Beacon Navigation GmbH,
`IPR2013-00026, Paper No. 12 at 18 (PTAB March 18, 2013) .............. 13, 38
`
`Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00222, Paper No. 12 at 29 (PTAB August 12, 2013)....................24
`
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper No. 12 at 9-10 (PTAB July 31, 2013)......................24
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398, 416 (2007) ........................................................... 25, 31, 36, 37
`
`Monsanto Company v. Pioneer Hi-Bred International, Inc.,
`IPR2013-00022, Paper No. 43 at 7-8 (PTAB April 11, 2013)........................3
`
`Norman Noble v. NUTech Ventures,
`IPR2013-00101, Paper No. 14 (PTAB June 20, 2013) ............ 14, 35, 39, 50
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc)......................................10
`
`In re Robertson,
`169 F.3d 743, 745 (Fed. Cir. 1999) ...............................................................19
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255, 1259 (Fed. Cir. 2010) ...........................................................10
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper No. 16 (PTAB Feb. 22, 2013)..................................10
`
`Tasco, Inc. v. David Pagnani,
`IPR2013-00103, Paper No. 6 at 11 (PTAB May 23, 2013) ................... 13, 38
`
`v
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`

`

`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`Transclean Corp. v. Bridgewood Servs., Inc.,
`290 F.3d 1364, 1373 (Fed. Cir. 2002) ...........................................................19
`
`Veeam Software Corp. v. Symantec Corp.,
`IPR2013-00144, Paper No. 11 at 11 (PTAB August 7, 2013)......................17
`
`Veeam Software Corp. v. Symantec Corp.,
`IPR2013-00145, Paper No. 12 at 11-12 (PTAB Aug. 7, 2013) ....................23
`
`Wowza Media Systems LLC v. Adobe Systems Inc.,
`IPR2013-00054, Paper No. 12 (PTAB April 8, 2013) ....................................3
`
`STATUTES AND RULES
`
`35 U.S.C. § 314..........................................................................................................4
`
`37 C.F.R. § 42.100(b) ..............................................................................................10
`
`77 Fed. Reg. 48763 .......................................................................................... 14, 39
`
`vi
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`

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`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`LIST OF EXHIBITS
`
`Document Description
`
`G. Barrett & R. Omote, “Projected-Capacitive Touch
`Technology”
`
`TPK Touch Solutions
`Exhibit No.
`
`TPK 2001
`
`vii
`
`

`

`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`Patent Owner TPK Touch Solutions Inc. (“TPK”) hereby submits this
`
`preliminary response to the Petition filed by Wintek Corporation (“Wintek”)
`
`accorded a filing date of September 4, 2013, which seeks inter partes review of
`
`claims 1-68 of U.S. Patent No. 8,217,902 (“the ‘902 Patent”). As discussed in
`
`detail below, Petitioner has failed to meet its burden of showing a reasonable
`
`likelihood of prevailing on any challenged claim. Accordingly, Patent Owner
`
`respectfully requests that the Patent Trial and Appeal Board (“Board”) deny inter
`
`partes review for all Grounds set forth in the Petition.
`
`I.
`
`INTRODUCTION
`
`The ‘902 patent relates to an improved conductor pattern structure for
`
`mutual-capacitance touch panels. While mutual-capacitance touch panels existed
`
`in the prior art, the prior art devices were thick, opaque and 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 requires only 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 substantial benefits over prior
`
`art touch panels, including a thinner profile, improved transparency and a
`
`simplified manufacturing process. (Id. at 3:49-54.)
`
`

`

`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`The present petition seeks inter partes review of all 68 claims of the ‘902
`
`Patent. However, Petitioner does not raise a meaningful challenge with respect to
`
`the patentability of the challenged claims. First, both of the prior art references
`
`relied on in Petitioner’s § 102 grounds are missing critical limitations recited in the
`
`challenged claims. In particular, neither reference discloses a single-layer
`
`conductor pattern structure with first- and second-axis “conductor assemblies”
`
`comprising distinct “conductor cells” electrically connected by “conduction
`
`lines”—limitations required by every independent claim of the ‘902 Patent.
`
`Moreover, neither reference discloses the critical limitation 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 conductor cells is measured to detect a position of
`
`touch”—which appears in claims 17-20, 22, 25-28, 35, 44, and 68. For at least
`
`these reasons, Petitioner’s § 102 grounds fail to raise a likelihood of success with
`
`respect to any challenged claim of the ‘902 Patent.
`
`Second, Petitioner fails to raise a prima facie case of obviousness with any
`
`of its seven proposed § 103 grounds. Instead, Petitioner attempts to combine
`
`essential elements of completely different systems but provides no analysis or
`
`explanation as to how or why a person of ordinary skill in the art would have
`
`modified and/or combined the cited references in the manner required by the ‘902
`
`Patent claims, or even who a person of ordinary skill in the art would be. Indeed,
`
`2
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`

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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`the references Petitioner seeks to combine expressly teach away from (or, at a
`
`minimum, teach an entirely different approach than) the proposed combinations
`
`Petitioner seeks to assert. Moreover, in many instances, both references fail to
`
`disclose limitations required by the claims. Accordingly, Petitioner’s § 103
`
`grounds also fail to raise a likelihood of success with respect to any challenged
`
`claim of the ‘902 Patent.
`
`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 largely mirrors the
`
`Petition and, more importantly, fails to provide any meaningful facts or basis for
`
`his opinions. Indeed, the vast majority of the declaration simply restates, almost
`
`verbatim, the same statements Petitioner makes. As a result, 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 LLC v. Adobe
`
`Systems Inc., IPR2013-00054, Paper No. 12 (PTAB April 8, 2013) at 12.
`
`In view of the foregoing infirmities (and others discussed below), the
`
`Petition falls short of demonstrating a “reasonable likelihood that Petitioner will
`
`prevail with respect to any of the claims challenged in the Petition.” 35 U.S.C. §
`
`3
`
`

`

`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`314. Thus, the Petition should be denied in its entirety and no trial should be
`
`instituted.
`
`II. OVERVIEW OF THE ‘902 PATENT AND CHALLENGED CLAIMS
`
`The ‘902 Patent is directed to an improved form of “mutual capacitance”
`
`touch panel. A mutual capacitance touch panel detects the location of a touch by
`
`sensing a change in capacitance between a two conductor elements resulting from
`
`the presence of the touching object (e.g., a user’s finger) on the panel. 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., G. Barrett & R. Omote, “Projected-Capacitive
`
`Touch Technology,” at 16-17 (Exhibit TPK 2001).)
`
`As explained in the ‘902 Patent, prior art mutual capacitance touch panels
`
`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.,
`
`Exhibit TPK 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
`
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`miniaturization.” (Id. 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 addresses these shortcomings (and others) 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:
`
`5
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`

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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`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
`
`“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
`
`a “first-axis conduction line “132 that electrically connects the entire first-axis
`
`conductor assembly. (Id. at 5:3-10.) Similarly, each adjacent second-axis
`
`conductor cell in a second-axis conductor assembly is joined by a “second-axis
`
`conduction line” 142 that electrically connects the entire second-axis conductor
`
`assembly. (Id. at 5:29-32.) Both the first-axis and second-axis conductor
`
`assemblies are further connected to signal transmission lines 16a and 16b that can
`
`6
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`transmit signals to a control circuit. (Id. at 5:10-13, 5:32-34.) Both the conducting
`
`cells and conducting lines may be made of “transparent conductive film, such as an
`
`ITO [indium tin oxide] conductive film.” (Id. at 5:48-52.)
`
`To electrically separate the first-axis and second-axis conductor assemblies,
`
`the surface of each of the first-axis conductor lines 132 is covered by a transparent
`
`insulation cover layer 17, such as a layer made of silicon dioxide. (Id. at 5:14-17.)
`
`Each second-axis conductor line 142 then “extends over and across a surface of
`
`each insulation layer” 17 to electrically connect the second-axis conductor cells of
`
`the same second-conductor assembly. (Id. at 5:24-29.) This arrangement of
`
`conductor lines is illustrated in figure 2 of the ‘902 Patent:
`
`7
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`When a user places his or her finger on a contact area A on the panel, “the
`
`first-axis conductor cell 131 of the first-axis conductor assembly 13 and the
`
`second-axis conductor cell 141 of the second-axis conductor assembly 14, which
`
`are covered by the contact area A, induce a capacitor effect therebetween,”
`
`causing a signal to be transmitted to the control circuit indicating the location of
`
`the contact area. (Id. at 5:58-6:5 (emphasis added).)
`
`In other words, the position
`
`of the user’s finger on the touch panel is detected by measuring the capacitance
`
`between adjacent conductor cells from first-axis and second-axis conductor
`
`assemblies.
`
`The ‘902 Patent further teaches various methods for manufacturing the
`
`preferred conductor pattern structure. In one method, transparent ITO conductive
`
`film is applied to the surface of the substrate and then etched and stripped to form
`
`the first-axis and second-axis conductor cells, as well as the first-axis conductor
`
`lines. (Id. at 6:34-52.) Insulation covering material then is applied to the first-axis
`
`conduction lines. (Id. at 6:53-55.) Finally, additional transparent conductive film
`
`is applied across the surface of the insulation cover to form the second-axis
`
`conductor lines connecting the second-axis conductor cells. (Id. at 6:55-67.)
`
`The conductor pattern structure of the ‘902 Patent thus achieves multiple
`
`benefits over the prior art. The structure is thinner than prior art mutual-
`
`capacitance solutions because all conductor cells are formed on the same surface of
`
`8
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`the substrate. (Id. at 3:49-54.) Moreover, touch position can be is detected by
`
`measuring the capacitance between adjoining conductor cells in a single layer,
`
`rather than overlapping conductor cells in two different layers. (Id. at 3:54-62.)
`
`This thinner structure also yields greater transparency, which is beneficial for
`
`touch panel devices. Additionally, because the disclosed conductor assemblies
`
`“can be formed on only one surface of the substrate by [] general circuit laying
`
`techniques,” the conductor pattern structure of the ‘902 Patent can be
`
`manufactured using “a simple process with high passing rate and low costs.” (Id.
`
`at 3:63-67.)
`
`Petitioner has requested inter partes review of claims 1-68 of the ‘902 Patent,
`
`which include 13 independent claims: (i) claims 1, 6, 17, 25, 46 and 53, which are
`
`directed to a device or apparatus having the conductor pattern structure disclosed
`
`in the ‘902 Patent; and (ii) claims 32, 35, 42, 44, 58, 66 and 68, which are directed
`
`to methods of constructing the disclosed conductor pattern structure. All claims
`
`require the same basic structure involving first-axis and second-axis conductor
`
`cells on the same surface of the substrate electrically connected by conduction
`
`lines. In addition, independent claims 17, 25, 35, 44 and 68 all further require
`
`measuring “a capacitance between a first cell of the plurality of the first-axis
`
`conductor cells and a second cell of the plurality of second-axis conductor cells to
`
`detect a position of touch”.
`
`9
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`III. PETITIONER’S PROPOSED CONSTRUCTIONS FAIL TO
`COMPLY WITH 37 C.F.R. § 42.104(b)(3)
`
`As part of the determination whether to institute a trial, the Board must
`
`interpret the challenged claims, which may include determining a specific meaning
`
`for certain critical claim terms or phrases, by applying the “broadest reasonable
`
`interpretation” standard. 37 C.F.R. § 42.100(b); see also Synopsys, Inc. v. Mentor
`
`Graphics Corp., IPR2012-00041, Paper No. 16 (PTAB Feb. 22, 2013) at 5-7.
`
`Generally, claim terms should be given their ordinary and customary meaning as
`
`would be understood by one of ordinary skill in the art. Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`This standard, however, does not give the Board (or a petitioner) “an
`
`unfettered license to interpret claims to embrace anything remotely related to the
`
`claimed invention.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
`
`2010). Rather, it is well settled that the “broadest reasonable interpretation” must
`
`be applied in view of the specification as interpreted by one of ordinary skill in the
`
`art at the time of the invention. Thus, claim interpretations are only reasonable if
`
`they are consistent with the specification. Id. (“claims should always be read in
`
`light of the specification and teachings in the underlying patent.”).
`
`In a section entitled “Claim Construction,” Petitioner argues that the claim
`
`term “in a substantially equally-spaced manner,” which appears in claims 1, 17, 25,
`
`10
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
`
`32, 35, 42, 44, 46, 58, 66 and 68 of the ‘902 Patent, should be construed to mean
`
`“the distances between the centers of adjacent conductor cells or between the edges
`
`of adjacent conductor cells are substantially equal.” Petitioner’s proposed
`
`construction, while purporting to be the “broadest reasonable interpretation,” in
`
`fact imposes arbitrary constraints on the claim term, none of which are required by
`
`the claim language itself. Indeed, Petitioner fails to point to anything in the
`
`intrinsic record to support its proposed construction.
`
`Moreover, Petitioner does not even explain why such a construction is
`
`necessary, as Petitioner does not assert that any of the grounds raised in the
`
`Petition requires its proposed construction. See, e.g., Corning Inc. v. DSM IP
`
`Assets B.V, IPR2013-00045, Paper No. 11 (PTAB May 13, 2013) at 6-7 (agreeing
`
`that a petitioner’s proposed claim constructions were “unnecessary” and explaining
`
`that “the limitations discussed need not be construed in a manner that departs from
`
`their ordinary and customary meanings for purposes of this decision”).
`
`Accordingly, Petitioner’s unsupported and unnecessary construction should be
`
`rejected, and the term “in a substantially equally-spaced manner” should simply be
`
`given its plain and ordinary meaning.
`
`Moreover, while not raised in its “Claim Construction” section, Petitioner
`
`appears to take the position that the limitation “wherein a capacitance between a
`
`first cell of a plurality of first-axis conductor cells and a second cell of the plurality
`
`11
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`Case IPR 2013-00567
`Patent Owner Preliminary Response
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`of second-axis conductor cells is measured,” which appears in claims 17-19, 21, 22,
`
`25-27, 29, 35, 44 and 68 of the ‘902 Patent, may be satisfied by “the measurement
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`of capacitance induced between a first-axis conductor cell and [a] finger and
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`capacitance induced between a second-axis conductor cell and the finger.”
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`(Petition at 18-19 n.2.) Patent Owner disagrees with Petitioner’s apparent
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`construction of this limitation, which is contrary to its plain and ordinary meaning.
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`The claims specifically require measuring a capacitance between two conductor
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`cells, not measuring two separate capacitances, one between a conductor cell and a
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`foreign object and one between another conductor cell and that object. Notably,
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`Petitioner fails to provide any evidence from the ‘902 Patent to support its overly
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`broad interpretation and, instead, appears to improperly rely on the disclosure in its
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`asserted references (i.e., Binstead) in order to construe this limitation. Patent
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`Owner therefore respectfully requests that Petitioner’s apparent claim construction
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`of this term be rejected.
`
`IV. NONE OF THE PROPOSED GROUNDS SHOWS A REASONABLE
`LIKELIHOOD OF PREVAILING ON ANY CHALLENGED CLAIM
`
`The nine proposed Grounds raised in the Petition suffer from numerous
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`deficiencies, each of which shows that there is no reasonable likelihood that
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`Petitioner will prevail with respect to any of the challenged claims. Patent Owner
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`provides, herein, examples of why these proposed Grounds fail to render the
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`claims unpatentable, and expressly reserves the right to provide additional reasons
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`and support should a trial be instituted on any proposed Ground.
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`A.
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`Ground 1: Binstead Does Not Disclose The Limitations of The
`Challenged Claims
`Proposed Ground 1 alleges that Binstead (Ex. 1005) discloses all the
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`limitations of claims 1-3, 5-8, 1-13, 15, 17, 19-21, 22, 24-27, 29, 32, 34-37, 39, 40,
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`42-44, 46-48, 50-55, 57, 58, 60-62 and 64-68 of the ‘902 Patent.
`
`As set forth below, Binstead fails to disclose at least one material claim
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`limitation in each of the challenged claims. Petitioner’s cursory claim charts fail to
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`establish a basis for alleging that Binstead satisfies the limitations of the
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`challenged claims. Instead, in many instances, Petitioner quotes or cites text and
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`figures in Binstead that are unrelated to the corresponding claim elements with no
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`explanation as to how its quotations or citations align with the claim language.
`
`See, e.g., Denso Corporation and Clarion Co. Ltd. v. Beacon Navigation GmbH,
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`IPR2013-00026, Paper No. 12 at 18 (PTAB March 18, 2013) (“Petitioners
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`substantially rely on claim charts to establish their anticipation contentions without
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`significant explanation apart from the chart … Relying on claim charts with little
`
`or no supporting discussion or explanation assumes that the anticipation
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`contentions are self-evident from them. That is usually not the case”); Tasco, Inc.
`
`v. David Pagnani, IPR2013-00103, Paper No. 6 at 11 (PTAB May 23, 2013)
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`(“Rather than providing specificity, Petitioner merely identifies structures in
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`Blades, without explaining why or how the identified structures allegedly meet the
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`requirements of the claim”); Norman Noble, Inc. v. NUTech Ventures, IPR2013-
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`00101, Paper No. 14 (PTAB June 20, 2013) at 10; see also 77 Fed. Reg. 48763.
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`Accordingly, Petitioner has not demonstrated a reasonable likelihood of success for
`
`Ground 1 with respect to any of the challenged claims.
`
`1.
`
`Binstead Does Not Disclose the “Conductor Assemblies,”
`“Conductor Cells” or “Conduction Lines” of the
`Independent Claims
`
`Every independent claim of the ‘902 Patent discloses a conductor pattern
`
`structure or method of constructing a conductor pattern structure comprising
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`“conductor cells” that are connected by “conduction lines.” Independent claims 1,
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`17, 25, 32, 35, 42, 44, 46, 58, 66 and 68 further disclose that these structures
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`comprise “conductor assemblies.” To argue disclosure of this limitation, Petitioner
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`points to a single figure (fig. 3a) depicting what Binstead refers to as “conductor
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`elements,” and arbitrarily labels certain portions of the figure “conductor cells” and
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`other portions “conduction lines.” (See Petition at 13-15; Ex. 1005 at 3:25-29.)1
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`1 Petitioner also suggests that fig. 1 of Binstead discloses first-axis and
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`second-axis “conductor cells.” However, the “conductor cells” pointed to by
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`Petitioner were drawn by Petitioner and do not appear in the actual figure. (See
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`But with respect to fig. 3a, Binstead merely states that “the conductor elements
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`have a more substantial width 22, at the intersections 20 the width 24 is greatly
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`reduced.” (Ex. 1005 at 4:63-65.) Therefore, Binstead discloses only continuous,
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`strip-shaped conductor elements that have reduced width at their intersection
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`points, not distinct “conductor cells” and “conductor lines.” (Id.) Accordingly,
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`Binstead does not disclose “conductor assemblies” comprised of “conductor cell”
`
`elements and “conduction lines” connecting the conductor cells. For this reason,
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`Petitioner has not demonstrated a reasonable probability of success of Ground 1
`
`with respect to any of the challenged claims.
`
`2.
`
`Binstead Does Not Disclose Measuring a “Capacitance
`Between a First Cell of the Plurality of First-Axis
`Conductor Cells and a Second Cell of the Plurality of
`Second-Axis Conductor Cells to Detect a Position of Touch”
`
`Independent claims 17, 25, 35, 44 and 68 of the ‘902 Patent all require that
`
`the claimed conductor pattern structure “detect a position of touch” by measuring a
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`“capacitance between a first cell of the plurality of first-axis conductor cells and a
`
`second cell of the plurality of second-axis conductor cells.” Petitioners’ arguments
`
`that Binstead discloses this limitation fail for numerous reasons.
`
`Petition at 3-14.) Fig. 1 of Binstead does not depict “conductor cells” on either the
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`x- or y-axis.
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`First, as discussed above, Binstead does not disclose any conductor cells at
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`all, let alone the claimed first axis and second axis conductor cells. Second, even
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`if one were to adopt Petitioner’s position that the “wider width parts” of each
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`conductor element in Binstead are “conductor cells” (Petition at 13), Binstead does
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`not disclose measuring the capacitance between a “wider width part” of one
`
`conductor element and a “wider width part” of another conductor element along a
`
`different axis.
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`Third, Binstead does not even disclose measuring the capacitance between
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`two conductor elements. In fact, the quote relied on by Petitioner expressly
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`teaches away from measuring