Paper No.
`Filed: March 10, 2014
`
`
`Filed on behalf of: Wintek Corporation
`By:
`Joseph E. Palys
`
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.cwom
`
` naveen.modi@finnegan.com
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WINTEK CORPORATION
`Petitioner
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
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`
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`
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`
`
`Case IPR2013-00568
`Patent 8,217,902
`
`
`
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`
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`Filed: March 10, 2014
`
`
`Filed on behalf of: Wintek Corporation
`By:
`Joseph E. Palys
`
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.cwom
`
` naveen.modi@finnegan.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`WINTEK CORPORATION
`Petitioner
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00568
`Patent 8,217,902
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Table of Contents
`
`Table of Authorities .................................................................................................. ii
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Reasons for Rehearing ..................................................................................... 1
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`III. Conclusion ....................................................................................................... 6
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`Certificate of Service
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`- i -
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`Table of Authorities
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`FEDERAL REGULATIONS
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`Page(s)
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`- ii -
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`
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`I.
`
`Introduction
`
`Case IPR2013-00568
`Patent 8,217,902
`
`Pursuant to 37 C.F.R. § 42.71(d), Wintek Corporation (“Petitioner”) requests
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`a rehearing of certain aspects of the Board’s Decision (Paper 10, February 27,
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`2014, “Decision”) to institute an inter partes review of U.S. Patent No. 8,217,902
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`(“the ’902 patent”) (Ex. 1001) assigned on its face to TPK Touch Solutions Inc.
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`(“Patent Owner”). Specifically, Petitioner seeks rehearing of the Board’s
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`non-adoption of the rejection as it applies to certain claims in Petitioner’s proposed
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`Ground 4 because the Board appears to have misapprehended or overlooked
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`certain arguments and evidence presented in the Petition. See Decision at 24-26.
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`Specifically, Petitioner requests that the Board reconsider the disclosure of Seguine
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`(Ex. 1012) and adopt the rejection of claims 17-23, 25-30, 35, 44, and 68 as
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`obvious over Fujitsu (Ex. 1005) in view of Seguine.
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`II. Reasons for Rehearing
`
`In the Decision, the Board concluded that Petitioner’s discussion of Seguine
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`did not demonstrate that Seguine disclosed measuring capacitance between two
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`conductor cells. Decision at 24. In reaching that conclusion, however, the Board
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`appears to have focused on certain portions of Seguine while overlooking other
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`disclosures of Seguine identified by Petitioner that demonstrate that Seguine
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`discloses the features that the Board believed were missing from the reference.
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`Specifically, independent claims 17 and 25 recite that “a capacitance
`
`
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`1
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`
`
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`between a first cell of the plurality of first-axis conductor cells and a second cell of
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`Case IPR2013-00568
`Patent 8,217,902
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`the plurality of second-axis conductor cells is measured to detect a position of
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`touch.” Similarly, independent claims 35, 44, and 68 recite “measuring 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 conductor cells to detect a position of
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`touch.” In the Decision, the Board declined to adopt the obviousness rejection of
`
`claims 17-23, 25-30, 35, 44, and 68 as obvious over Fujitsu in view of Seguine,
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`concluding that Seguine did not disclose measurement of capacitance between
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`conductor cells as required by these claims. See Decision at 24-26. Specifically,
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`the Board stated: “After examining Wintek’s citations, we are unable to find a
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`disclosure of measuring capacitance between two conductor cells” in Seguine.
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`Id. at 24.
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`In the Decision, the Board focused on ¶¶ 0026, 0029, and 0040 of Seguine
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`and stated that “Seguine discloses a vertical capacitance (i.e., self-capacitance)
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`between electrodes 301 and 302 and a finger, the sum of which yields capacitance
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`CF” and that “Seguine also discloses an edge or parasitic capacitance between the
`
`electrodes themselves, designated CP.” Decision at 24. The Board relied on
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`Seguine’s disclosure that “[d]etermining sensor element activation is then a matter
`
`of measuring the change in the capacitance (CF) or capacitance variation” (Ex.
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`1012, ¶ 0026) to conclude that “the citations indicate that only CF (self-
`
`
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`2
`
`
`
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`capacitance) is measured.” Decision at 24. In doing so, the Board appears to have
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`Case IPR2013-00568
`Patent 8,217,902
`
`overlooked Seguine’s disclosures of the measurement of the capacitance CP
`
`between conductor cells to detect a position of touch that were referenced by
`
`Petitioner in the Petition. See Petition at 32. Indeed, the Board acknowledges
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`Petitioner’s citations to these disclosures but appears to have overlooked them.
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`See Decision at 24 (confirming that “Wintek asserts that Seguine discloses
`
`measuring a capacitance variation CF over a base capacitance CP between two
`
`sensor elements. Id. 32 (citing Ex. 1012 ¶¶ 0026-0029, 0032, 0040; Figs. 3A, 4A,
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`5A, 5B; Ex. 1013 ¶ 101),” which references Seguine at ¶¶ 0027, 0033).
`
`For example, Seguine discloses that “[t]he capacitance generated by
`
`operation of capacitive sensor element 300 may be measured by a processing
`
`device 210.” Ex. 1012, ¶ 0027. Seguine further discloses that “[i]n one
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`embodiment, the process device 210 may include a capacitive switch relaxation
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`oscillator (CSR)” and that “the present embodiments are not limited to using
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`relaxation oscillators, but may include other methods, such as current versus
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`voltage phase shift measurement, resistor-capacitor charge timing, capacitive
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`bridge divider, charge transfer, or the like.” Id. at ¶ 0033, emphasis added.
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`Seguine makes clear that that “[t]he charge transfer may be conceptually similar
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`to an R-C charging circuit” and “[i]n this method, CP is the capacitance being
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`sensed.” Id., emphasis added. Seguine explains that this embodiment and other
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`
`
`3
`
`
`
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`disclosed alternative embodiments “for measuring capacitance are known by those
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`Case IPR2013-00568
`Patent 8,217,902
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`of ordinary skill in the art.” Id.
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`The Board also relied on ¶ 0040 of Seguine and noted that “when a finger or
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`conductive object is placed on the sensor element, the capacitance increases from
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`Cp to Cp+Cf.” Decision at 24. Although the Board relied on ¶ 0040 of Seguine,
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`the Board overlooked other disclosures in that same paragraph. For example,
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`Seguine discloses in the same sentence referenced by the Board that “when a finger
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`or conductive object is placed on the sensor element, the capacitance increases
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`from Cp to Cp+Cf so the relaxation oscillator output signal 456 (FOUT)
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`decreases.” Ex. 1012, ¶ 0040, emphasis added. In the next sentence, Seguine
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`discloses that “[t]he relaxation oscillator output signal 356 (FOUT) is fed to the
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`digital counter 440 for measurement.” Id., emphasis added. Thus, according to
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`Seguine, the digital counter measures the signal FOUT, which represents a
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`capacitance that includes Cp—the capacitance between the conductor cells of
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`Seguine.
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`Thus, the passages of Seguine referenced by the Petitioner explicitly disclose
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`measuring the capacitance CP between conductor cells.1 See also Ex. 1013, ¶ 101.
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`1 In its Preliminary Response, Patent Owner asserts that “the variable Cp
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`represents the capacitance between two sensor plates that together form a single
`
`
`
`4
`
`(continued…)
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`
`
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`Moreover, the ability to measure the capacitance CP is used for detecting a position
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`Case IPR2013-00568
`Patent 8,217,902
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`of touch, as evidenced by Seguine in ¶¶ 0026-29, 32, 33, 40, and Figs. 3A, 3B, 4A,
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`5A, 5B—all referenced by Petitioner in the Petition. See Petition at 32; see also
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`Ex. 1012, ¶ 0027 (“[t]he capacitance generated by operation of capacitive sensor
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`element 300 may be measured by a processing device 210”), ¶ 0032 (“The NXM
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`sensor matrix, in conjunction with the processing device 210, is configured to
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`detect a position of a presence of the conductive object 303 in the x-, and y-
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`directions”), ¶ 0033, Figs. 3A, 3B, 4A, 5A, 5B; Ex. 1013, ¶ 101.
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`Because the Board appears to have overlooked or misapprehended Seguine’s
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`disclosures of measuring capacitance between two conductor cells to detect a
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`position of touch, and because the Petitioner identified these disclosures of
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`Seguine, the Board should reconsider its decision not to institute inter partes
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`review of claims 17-23, 25-30, 35, 44, and 68 based on Fujitsu and Seguine.
`
`
`(…continued)
`sensor element.” Prelim. Resp. at 34. Petitioner disagrees, especially since
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`Seguine refers to those “plates” as “sensor elements.” Ex. 1012, ¶ 27.
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`5
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`III. Conclusion
`
`Case IPR2013-00568
`Patent 8,217,902
`
`For at least the reasons provided above, Petitioner requests reconsideration
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`of the Board’s Decision and requests that the Board adopt Petitioner’s obviousness
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`rejection of claims 17-23, 25-30, 35, 44, and 68 over Fujitsu and Seguine.
`
`Dated: March 10, 2014
`
`Respectfully submitted,
`
`
`
` By: /Joseph E. Palys/
`
`Joseph E. Palys, Lead Counsel
`
`Registration No. 46,508
`
`Naveen Modi, Backup Counsel
`
`Registration No. 46,224
`
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
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`
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`6
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`Case IPR2013-00568
`Patent 8,217,902
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 10th day of March, 2014, a copy of the foregoing
`
`Petitioner’s Request for Rehearing for Inter Partes Review of U.S. Patent No.
`
`8,217,902 under 37 C.F.R. § 42.71(d) was served by electronic mail upon the
`
`following:
`
`Joseph J. Richetti (Lead Counsel for TPK)
`BRYAN CAVE, LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`David Bilsker (Backup Counsel for TPK)
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`General Tel: (415) 875-6600
`Direct Tel: (415) 875-6432
`Fax: (415) 875-6700
`Email: davidbilsker@quinnemanuel.com
`
`Dated: March 10, 2014
`
`Respectfully submitted,
`
` By: /Joseph E. Palys/
`
`Joseph E. Palys
`
`Finnegan, Henderson, Farabow,
`
` Garrett & Dunner, LLP
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