In the Matter of
`
`Certain Mobile Devices, and
`
`Related Software Thereof
`
`Investigation No. 337—TA—75O
`
`
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`
`
`
`Washington, DC 20436
`
`TPK 201 1
`Wintek v. TPK Touch Solutions
`
`|PR2013-00568
`
`Patent Holder Exhibit 2011
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`iPR20
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`
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`Wintek v. TPK Touch Solutions
`IPR2013-00568
`
`

`

`
`
`COMMISSIONERS
`
`Deanna Tanner Okun, Chairman
`
`Irving A. Williamson, Vice Chairman
`
`Daniel R. Pearson, Commissioner
`
`Shara L. Aranoff, Commissioner
`
`Dean A. Pinkert, Commissioner
`
`David S. Johanson, Commissioner
`
`Address all communications to
`
`Secretary to the Commission
`United States lnternationai Trade Commission
`
`Washington, DC 20436
`
`

`

`US. International Trade Commission
`
`Washington, DC 20436
`mm-v. 1z.s'1"tC.g0v
`
`In the Matter of
`
`Certain Mobile Devices, and
`Related Software Thereof
`
`Investigation No. 337—TA—750
`
`Publication 4385
`
`
`
`March 2013
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES, AND
`RELATED SOFTWARE THEREOF
`
`
`Inv. No. 337—TA—750
`
`NOTICE OF COMMISSION DECISION TO REVIEW IN PART AND ON REVIEW TO
`AFFIRM A FINAL DETERMINATION FINDING NO VIOLATION OF SECTION 337;
`TERMINATION OF INVESTIGATION
`
`AGENCY:
`
`US. International Trade Commission.
`
`ACTION:
`
`Notice.
`
`SUMMARY: Notice is hereby given that the US. International Trade Commission has
`determined to review in part the presiding administrative law judge’s (“ALI”) final initial
`determination (“ID”) issued on January 13, 2012. finding no violation of section 337 of the
`Tariff Act of 1930, I9 U.S.C. § 1337 in the above~captioned investigation, and on review, to
`affirm the ID’s finding of no violation. The investigation is hereby terminated.
`
`FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the General
`Counsel, US. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,
`telephone (202) 708-2301. Copies of non—contidential documents filed in connection with this
`investigation are or will be available for inspection during official business hours (8:45 aim. to
`5:15 pm.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street,
`S.W., Washington, D.C. 20436, telephone (202) 205—2000. General information concerning the
`Commission may also be obtained by accessing its Internet server at /mg://www.usz'lc.gav. The
`public record for this investigation may be viewed on the Commission's electronic docket (EDIS)
`at fizhtggl;//[eciis'.zzs'itc. gov.
`lsiearingdrnpaired persons are advised that information on this matter can
`be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.
`
`SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
`November 30, 2010, based on a complaint tiied by Apple lne., f/k/a Apple Computer, Inc., of
`Cupertino, California. 75 Fed. Reg. 7408l—82. The complaint alleges violations of section 337 of
`the Tariff Act of 1930, as amended, l9 U.S.C. § 1337, in the importation into the United States,
`the sale for importation, and the sale within the United States after importation of certain mobile
`devices and related software by reason of infringement ofeertain claims of U.S. Patent Nos.
`7,8l2,828 (“the ‘828 Patent”); 7,663,607 (“the ‘607 Patent”); and 5,379,430 (“the ‘430 Patent”).
`The Commission’s notice of investigation named Motorola, Inc. n/k/a Motorola Solutions of
`Sehaumburg, Illinois (“Motorola Solutions”) and Motorola Mobility, Inc. (“Motorola”) of
`
`

`

`Libcrtyville, Illinois as respondents. The Office of Unfair lmport Investigation was named as a
`participating party. The Commission subsequently terminated Motorola Solutions as a
`respondent based on withdrawal of allegations pursuant to Commission Rule 210.21 (a)(1) (19
`C.F.R. § 210.21 (a)(l)). Notice (Aug. 31, 2011).
`
`On January 13, 2012, the ALJ issued his final ID, finding no violation of Section 337.
`Specifically, the ALJ determined that accused products do not infringe the asserted claims of the
`‘828 Patent either literally or under the doctrine of equivalents (“DOE”). The ALJ also found that
`the asserted claims of the ‘828 Patent are not invalid. The ALJ further found that the accused
`products literally infringe the asserted claims of the ‘43O and ‘607 patents, but do not infringe
`under DOE. The ALJ also found that the asserted claims of the ‘430 Patent are invalid under 35
`
`U.S.C. § 102 for anticipation, and that the asserted claims of the ‘607 Patent are invalid under 35
`U.S.C. § 102 for anticipation and under 35 U.S.C. § 103 for obviousness. The ALJ further found
`that Apple has standing to assert the ‘430 Patent, and that Motorola is not licensed to practice the
`‘430 Patent. The 1D also includes the ALJ’s recommended determination on remedy and bonding
`in the event that the Commission reversed his finding of no violation of Section 337.
`
`On January 30, 2012, Apple filed a petition for review of certain aspects of the lD’s
`findings concerning claim construction infringement, and validity. Also on January 30, 2012,
`Motorola filed a contingent petition for review of certain aspects of the ID’s findings concerning
`claim construction infringement, validity, domestic industry, standing, and licensing. On
`February 7, 2012, Motorola tiled a response to Apple’s petition for review. Also on February 7,
`2012, Apple filed a response to Motoro1a’s contingent petition for review. Further on February 7,
`2012, the Commission investigative attorney tiled ajoint response to both Applc’s and
`Motoro1a’s petitions.
`
`On February 22, 2012, non-party Google Inc. filed a public interest statement in response
`to the post-RD Commission Notice issued on January 25, 2012. See Corrected Notice of Request
`for Statements on the Public Interest (Jan. 25, 2012). On February 23, Apple filed a post-RD
`statement on the public interest pursuant to section 201 .50(a)(4) of the Commission’s Rules of
`Practice and Procedure (19 CFR. § 201 .50(a)(4)), along with a motion for leave to file the
`statement out of time.
`
`Having examined the record of this investigation, including the ALJ’s final ID, the
`petitions for review, and the responses thereto, the Commission has determined to review the final
`ID in part.
`
`Specifically, the Commission determines to review the 11) for the limited purpose of
`clarifying that the A [J also found claims 2426, and 29 of the ‘828 Patent not infringed, and on
`review, to afiirni this finding. We note that the ID does not explicitly address the issue of
`infringement of claims 24-26 and 29 of the ‘828 Patent, but finds no violation of Section 337 by
`reason ofinfringentent of claims 1, 2, 10, 1 1, 24-26, and 29 ofthe ‘828 Patent. See ID at 205.
`We find, however, that the ALJ ’s analysis of the claim limitations “mathematically fitting an
`ellipse” and “mathematically lit an ellipse” with respect to claims 1 and 10, respectively, of the
`‘S28 Patent reflects the arguments and evidence adduced by Apple with respect to infringement of
`
`2
`
`

`

`claims 24-26 and 29. Apple presented no argument or evidence concerning infringement of the
`limitation “means for fitting an ellipse to at least one of the pixel groups” in claim 24 and, by
`dependency, claims 25-26 and 29 of the ‘828 Patent separate from its infringement arguments
`concerning claims 1 and I0. Accordingly, Apple has failed to meet its burden to demonstrate
`infringement of claims 25-26 and 29 of the ‘828 Patent.
`
`The Commission also determines to review the HTS finding that the asserted claims of the
`‘607 Patent are obvious under 35 U.S.C. § I03 in View ofthe reference “SmartSl<in: An
`Infrastructure for Freehand Manipulation on Interactive Surfaces” by Jun Rekimoto either alone
`or in combination with .lapan Unexamined Patent Application Publication No. 2002—342033A to
`Jun Rekirnoto, and on review, modify the ID but affinn the finding that Motorola has
`demonstrated by clear and convincing evidence that the asserted claims of the ‘607 Patent are
`invalid under 35 U.S.C. § 103. The Commission’s reasoning will be set forth in an opinion to be
`issued shortly.
`
`The Commission also determines to review the ID’s finding that the accused products
`infringe claims I, 3 and 5 of the ‘430 Patent, and on review, affirm the lD’s finding ofdireet
`infringement, but tind that the analysis ofinfringement is incomplete in the ID because the lD’s
`analysis does not address the Commission’s decision in Certain Electronic Devices with Image
`Processing Systems, Components Thereof And Associated Software, 337-TA—724, Comm. Op. at
`I0-20 (Dec. 2l, 2011).
`
`The Commission has determined not to review the remaining issues decided in the ID.
`Apple’s motion for leave to file its public interest comments out of time is denied as meet.
`
`The authority for the Commission’s determination is contained in section 337 of the
`Taritt‘/—\ct of l 930, as amended (I9 U.S.C. § 1337), and in sections 210.4246 and 210.50 ofthe
`Commission's Rules ofPractice and Procedure (19 C.F.R. § 2I0.42—46 and 210.50).
`
`ByorderoftheCommission.
`
`g Q
`
`fl
`
`
`
`James R. Holbein
`
`Secretary to the Commission
`
`Issued: March I6, 2012
`
`L»)
`
`

`

`CERTAIN MOBILE DEVICES AND RELATED SOFTVVARE
`
`Inv. No. 337-TA—750
`
`PUBLIC CERTIFICATE OF SERVICE
`
`1, James R. Holbein, hereby certify that the attached NOTICE has been served by hand
`upon the Commission Investigative Attorney, Lisa
`Kattan, Esq., and the following parties as
`indicated on March 19, 2012.
`
`
`James R. Holbein Secretary
`US. International Trade Commission
`
`500 E Street, SW, Room 1 12
`
`Washington, DC 20436
`
`On Behalf of Complainant Apple Inc.:
`
`Mark G. Davis, Esq.
`WEIL, GOTSHALL & MANGES LLP
`1300 Eye Street, NW, Suite 900
`Washington, DC 20005
`
`On Behalf of Resgondent Motorola Mobiligr, lnc.:
`
`I
`Charles F. Schill, Esq.
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036
`
`(
`(
`(
`(
`
`(
`(
`(
`(
`
`) Via Hand Delivery
`) V" Overnight Delivery
`ia First Class Mail
`) Other:
`
`) Via Hand Delivery
`) V'a Overnight Delivery
`Via First Class Mail
`)Other:
`
`

`

`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`V‘/ashington, D.C.
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES, AND
`RELATED SOFTVVARE THEREOF
`
`Inv. No. 337—TA-750
`
`COMMISSION OPINION
`
`I.
`
`BACKGROUND
`
`A.
`
`Procedural History‘
`
`The Commission instituted this investigation on November 30, 2010, based on a
`
`complaint filed by Apple lne., f/k/a Apple Computer, Inc., of Cupertino, California (“Apple”). 75
`
`Fed. Reg. 74081 -82. The complaint alleges violations of section 337 of the Tariff Act of 1930,
`
`as amended, I9 U.S.C. § 1337 (“Section 337”), in the importation into the United States, the sale
`
`for importation, and the sale within the United States after importation of certain mobile devices
`
`and related software by reason of infringement oticertain claims of US. Patent Nos. 7,812,828;
`
`7,663,607 (“the ‘607 Patent”); and 5,379,430 . The Commission’s notice of investigation named
`
`Motorola, Inc. n/k/a Motorola Solutions of Schaumburg, Illinois (“Motorola, Inc.”) and Motorola
`
`Mobility, Inc. of Libertyville, Illinois (“Motorola”) as respondents. The Office of Unfair Import
`
`Investigation (“IA”) was named as a participating party. On August 16, 201}, the presiding
`
`administrative law judge (“ALI”) issued an initial determination (“ID”) granting a joint
`
`I The procedural history of the investigation prior to the issuance ofthe final ID is fully set forth
`in that document. See Final ID at I-2.
`
`

`

`PUBLIC VERSION
`
`unopposed motion to terminate the investigation as to Motorola, Inc. See Order No. 10 (Aug. 16,
`
`2011). The Commission determined not to review Order No. 10. See Notice (Aug. 31 , 201 1).
`
`On January 13, 2012, the ALJ issued his final ID (“Final ID”), finding no violation of
`
`Section 337.
`
`In particular, as is relevant to this opinion, the ALI found that the asserted claims
`
`of the ‘607 Patent are invalid for anticipation under 35 U § 102 and invalid for obviousness
`
`under 35 U.S.C, § 103. On January 30, 2012, Apple filed a petition for review of certain aspects
`
`of the final ID.
`
`In particular, Apple requested that the Commission review the ID’s findings that
`
`the asserted claims ofthe ‘607 Patent are invalid.2 On February 7, 2012, Motorola and the IA
`
`tiled responses to Apple’s petition for review.3p
`
`On March 16, 2012, the Commission determined to review the final ID in part, and on
`
`review, to affirm the lD’s finding of no violation of Section 337 and to terminate the
`
`investigation. See Notice of Commission Decision to Review In Part And On Review To Affirm
`
`a Final Determination Finding No Violation of Section 337; Termination of Investigation (March
`
`16, 2012).
`
`In particular, the Commission determined to review the IDS finding that the asserted
`
`claims of the ‘607 Patent are obvious under 35 U.S.C. § 103 in View of the reference “SmartSkin:
`
`An Infrastructure for Freehand Manipulation on Interactive Surfaces” by Jun Rekimoto
`
`(“SmartSkin”), either alone or in combination with Japan Unexamined Patent Application
`
`Publication No. 2002-342033/X to Jun Rckimoto (“Rekinioto ‘033"‘). As discussed below, on
`
`review, the Commission affirms the ID’s finding of obviousness in view ofthe SmartSl<in
`
`2 Also on January 30, 2012, Motorola filed a contingent petition for review of certain aspects of
`the final ID.
`
`3 The IA’s February 7, 2012, filing included her response to Motorola’s contingent petition.
`Apple also filed a response to Motoro1a’s contingent petition on February 7, 2012.
`
`

`

`PUBLIC VERSION
`
`reference in combination with Rekimoto ‘033 and finds that Motorola has demonstrated by clear
`
`and convincing evidence that the asserted claims of the ‘607 Patent are invalid under 35 U.S.C. §
`
`103 based on modified reasoning.
`
`B.
`
`Patent at Issue
`
`The ‘607 Patent is entitled “Multipoint Touchscreen” and is directed to a touch panel that
`
`has a transparent capacitive sensing medium configured to detect multiple touches or near
`
`touches that occur simultaneously and at different locations on the touch panel.
`
`In response to
`
`the multiple touches, the sensing medium produces distinct signals representative of the location
`
`of the touches. The inventors of the ‘607 Patent are Steve Hotelling, Joshua A. Stricken, and
`
`Brian Q. Huppi. The patent is assigned to Apple. The ‘607 Patent has ll claims, of which
`
`claims l—7 and 10 were asserted against Motorola.
`
`Asserted claim 1 of the ‘607 Patent and its dependent asserted claims 2-7 are directed
`
`generally to a touch panel having a transparent capacitive sensing medium configured to detect
`
`multiple, co-occurring touches at different locations on the touch panel and to produce signals
`
`representative of the location of the touches. The touch panel comprises two layers oftransparcnt
`
`electrically—isolated conductive lines where the two layers are spatially separated from each other
`
`and where the conductive lines in one layer are positioned transverse to the conductive lines in
`
`the other layer, creating an array of intersection points. Capacitive monitoring circuitry is
`
`COl'L1gL!I'C(,l to detect changes in the capacitance between the two layers of conductive lines,
`
`indicating the location of the multiple touches on the touch panel. Asseited claim 10 of the 607
`
`Patent is directed generally to a display arrangement comprising a display for a graphical user
`
`interface and a transparent touch panel, which has a multipoint sensing arrangement configured
`
`

`

`PUBLIC VERSION
`
`to recognize multiple, eo«oeeu1“ring touches at different locations on the touch panel by sensing a
`
`resulting change in capacitive coupling associated with the touches and is capable of outputting
`
`this information to a host device to form a pixilated image. The touch panel has three glass
`
`plates separating two transparent conductive layers. Each conductive layer contains a plurality
`
`of spaced parallel lines having the same pitch and linewidths, where the lines in one of the layers
`
`are perpendicular to the lines in the other layer.
`
`11.
`
`STANDARD OF REVIEW
`
`Once the Commission determines to review an initial determination, its review is
`
`conducted de novo. Certain Polyethylene Terephthalate Yarn and Prods. Contairzing Same, lnv.
`
`No. 337-T/\—457, Comm’n Op. at 9 (June 18, 2002). Upon review, the "Commission has ‘all the
`
`powers which it would have in making the initial determination,’ except where the issues are
`
`limited on notice or by rule.” Certain F[ash A/[emery Circuits and Prods. Containing Same, Inv.
`
`No. 33 7-TA—3 82, USl'l'C Pub. 3046, Comm’n Op. at 9~10 (July 1997) (quoting Certain Acid-
`
`Washed Denim Garrrzents and Accessories, Inv. No. 337-TA-3224, Comm'n Op. at 5 (Nov. 1992)).
`
`Commission practice in this regard is consistent with the Administrative Procedure Act. Certain
`
`EPROA/L EEPROM Flash Memory, and Flash Microcontroller Semiconductor Devices and
`
`Prods. Containing Same, lnv. No. 337—TA-395, Comrn'n Op. at 6 (Dec. 1 1, 2000) (“EPROM”);
`
`see also 5 U.S.C. § 557(b).
`
`Upon review, “the Commission may afiirnri, reverse, modify, set aside or remand for
`
`further proceedings, in whole or in part, the initial determination of the administrative law
`
`judge.” 19 C.F.R. § 2 lO.45(c). “The Commission also may make any findings or conclusions
`
`that in its judgment are proper based on the record in the proceeding."
`
`Id. This rule reflects the
`
`

`

`PUBLIC VERSION
`
`fiict that the Commission is not an appellate court, but is the body responsible for making the
`
`final agency decision. On appeal, only the Commission's final decision is at issue. See EPROM
`
`at 6 (citing Fischer cit Porter Co. v. US. Int? Trade Comm ii, 831 F.2d 1574, 1576—77 (Fed. Cir.
`
`1987)).
`
`III.
`
`OBVIOUSNESS OF THE ‘607 PATENT
`
`Under 35 U.S.C. § l03(a), a patent is valid unless “the differences between the subject
`
`matter sought to be patented and the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made to a person having ordinary skill in the art
`
`to which said subject matter pertains.” 35 U.S.C. § lO3(a). The ultimate question of
`
`obviousness is a question of law, but “it is well understood that there are factual issues
`
`underlying the ultimate obviousness decision.” Richards0n— Vickr Inc. v. Lflvjo/in Ca, 122 F.3d
`
`1476, 1479 (Fed. Cir. 1997).
`
`Once claims have been properly construed, “[t]he second step in an obviousness inquiry
`
`is to determine whether the claimed invention would have been obvious as a legal matter, based
`
`on underlying factual inquiries including: (1) the scope and content of the prior art, (2) the level
`
`of ordinary skill in the art, (3) the differences between the claimed invention and the prior art;
`
`and (4) secondary considerations of non—obviousness.” Smiths Ina,’us. Med. Sys, Inc. v. Vital
`
`Signs, Inc., 183 F.3d 1347, 1354 (Fed. Cir. 1999) (citing Graham v. John Deere C0,, 383 U.S. 1,
`
`17 (1966)). The Federal Circuit previously required that, in order to prove obviousness, the
`
`patent challenger must demonstrate, by clear and convincing evidence, that there is a “teaching,
`
`suggestion, or motivation to combine.” The Supreme Court, however, rejected this “rigid
`
`approach” in KSR Int ’1 Co. v. Teleflex Ina:
`
`U1
`
`

`

`PUBLIC VERSION
`
`The obviousness analysis cannot be confined by a formalistic Conception
`of the words teaching, suggestion, and motivation, or by overemphasis on
`the importance of published articles and the explicit content of issued
`patents. The diversity of inventive pursuits and of modern technology
`counsels against limiting the analysis in this way.
`In many fields it may
`be that there is little discussion of obvious techniques or combinations,
`and it often may be the case that market demand, rather than scientific
`literature, will drive design trends. Granting patent protection to advances
`that would occur in the ordinary course without real innovation retards
`progress and may, in the case of patents combining previously known
`elements, deprive prior inventions of their Value or utility.
`
`550 US. 398, 419 (2007).
`
`In determining that the SmartSl<in reference (RX-367) does not anticipate the asserted
`
`claims of the ‘607 Patent, the ALJ concluded that the only limitation SmartSkin does not disclose
`
`is “the use of transparent conductive lines using [indium tin oxide} ITO.” Final ID at 148.
`
`Specifically, the ALJ found that the inclusion of the discussion concerning transparent ITO
`
`electrodes in the section entitled “Conclusion and Directions for Future Work” “indicates that it
`
`likely was not contemplated for that specific reference.” ]d,; see RX-367 (SrnartSl<in) at 7.
`
`Motorola argued before the ALJ that SmartSl<in in combination with Rekimoto ‘O33
`
`renders the claim limitations concerning the use of transparent electrodes, separate layers, and
`
`the use of glass members recited in the ‘607 Patent obvious, while the IA additionally argued
`
`that SmartSkin alone “would make it obvious to try to use transparent electrodes.” Id. at 172.
`
`Apple argued that SmartSkin does not disclose the transparent electrode limitations for the same
`
`reasons that the ALJ found S1nartSl<in does not anticipate the asserted claims ofthe ‘607 Patent.
`
`See id. Apple also argued that the combination of S1nartSkin and Rekimoto ‘033 does not
`
`disclose the layer and glass limitations.
`
`la’. Specifically, Apple asserted that, because, Rekimoto
`
`‘Q33 and SmattSl<in disclose different sensors, there is no motivation to combine the references
`
`6
`
`

`

`PUBLIC VERSION
`
`without “improper hindsight bias.” Id. Apple further argued that “Rekimoto ‘033 discloses only
`
`a single glass substrate and not the second and third glass member” recited in the asserted claims
`
`of the ‘607 Patent. Id.
`
`The ID finds that “SmartSkin alone would render the use of transparent electrodes
`
`obvious.” Id.
`
`In particular, the ALJ concluded that “{SmartSl<in] ilsclfdiscloses using
`
`transparent electrodes[,]” and, therefore, SmartSkin provides the motivation to do so. Id. at 172-
`
`l73. The ALJ also found that “ITO was well known at the time.” Id. The ALJ, therefore, found
`
`that “SmartSl<in would motivate one of ordinary skill in the art to use transparent electrodes and
`
`that the use of materials, such as ITO, in creating the transparent electrodes was well known at
`
`the time [of the invention of the ‘607 Patent]” and as such “would have been obvious to one of
`
`ordinary skill in the art.” Id.4 The ID also finds that “SmartSkin, in combination with Rekimoto
`
`‘O33, renders the asserted claims of the ‘(S07 Patent obvious.” Id. Noting Apple’s arguments
`
`concerning why SmartSl<in does not anticipate the ‘607 Patent, the ALJ found that SrnartSl<in
`
`discloses the “glass member” limitations and that SrnartSl<in in combination with Rekimoto ‘O33,
`
`which was published within months of the publication of the SmattSkin reference, disclose the
`
`“glass member” and “layer” limitations. Id. at 176 (citing .lX—367 (SmartSl<in) at 4 and Fig. 9;
`
`RX—1888 (Rekimoto ’()33) at Fig. 9).5
`
`The Commission concurs with the ALJ ’s conclusion that Smartskin provides the reason
`
`4 The ID finds that, with respect to the ‘607 Patent, one of ordinary skill in the art “would have a
`bachelor’s degree in electrical engineering, physics, computer engineering, or a related field and
`[two to three] years of work experience with input devices.” ID at l7.
`
`5 The ID construes the claim limitation “glass member” to mean “a glass or plastic element.” ID
`at 53. The parties do not contest this construction.
`
`

`

`PUBLIC VERSION
`
`to combine the use of transparent electrodes made of materials such as ITO with the mutual-
`
`capacitance sensor for detecting multiple touches on the sensor surface disclosed in SmartSl<.in.
`
`See RX—l885C (Wolfe Direct Witness Statement) at Q. 321. We also agree with the ALJ that
`
`SrnartSl<in in combination with Rekimoto ‘033 discloses the transparent electrode limitations, the
`
`layer limitations, and the glass member limitations recited in the asserted claims of the ‘607
`
`Patent, with Rekimoto ‘O33 disclosing the layer and glass member limitations(’ The
`
`Commission, however, finds that SmartSl<in provides “one of ordinary skill .
`
`.
`
`. [with] a
`
`reasonable expectation of success” that the combination of transparent ITO electrodes with the
`
`mutual-capacitance touch screen disclosed in SmartSkin would be operable for different reasons
`
`than those articulated in the final ID. See Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir.
`
`2003i7
`
`The claim limitations in dispute, which are referred to as the “transparent limitations,” are
`
`highlighted below:
`
`1, A touch panel comprising a transparent capacitive
`sensing medium configured to detect multiple touches or near
`touches that occur at a same time and at distinct locations in a
`
`plane of the touch panel and to produce distinct signals
`representative of a location of the touches on the plane of the touch
`panel for each of the multiple touches, wherein the transparent
`capacitive sensing medium comprises:
`
`a first layer having a plurality of transparent first conductive
`lines that are electrically isolated from one another;
`
`6 We disagree with the AL.l’s conclusion that Rekimoto ‘O33 teaches the use of transparent
`electrodes. See id. at 174.
`
`7’ We do not review, and therefore do not address, the lD’s findings concerning secondary
`considerations.
`ID at 176-177.
`
`

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`PUBLIC VERSION
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`a second layer spatially separated from the first layer and
`having a plurality of transparent second conductive lines that are
`electrically isolated from one another, the second conductive lines
`being positioned transverse to the first conductive lines, the
`intersection of transverse lines being positioned at different
`locations in the plane of the touch panel, each of the second
`conductive lines being operatively coupled to capacitive
`monitoring circuitry;
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`wherein the capacitive monitoring circuitry is configured to
`detect changes in charge coupling between the first conductive
`lines and the second conductive lines.
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`4. The touch panel as recited in claim 1 wherein the
`transparent first conductive lines of the first layer are disposed
`on a first glass member, and wherein the transparent second
`conductive lines of the second layer are disposed on a second
`glass member, the first glass member being disposed over the
`second glass member.
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`6. The touch panel as recited in claim 1 wherein the
`conductive lines are formed from indium tin oxide (ITO).
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`‘607 Patent at 21:35-22:13.
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`Apple contends that SrnartSkin discloses the use of only opaque, rather than transparent,
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`sensors and that SrnartSl<in’s purported disclosure of transparent ITO represents only speculative
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`future possibilities. The ID finds, and Apple does not dispute, that the use of ITO in creating
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`transparent conductive lines or electrodes was well known at the time of the invention of the
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`‘607 Patent. See Final ID at 173. The evidence supports this conclusion.
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`In particular, the
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`SmartSl<in reference, which is prior art to the ‘607 Patent, states that “most of today’s flat panel
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`displays rely on aetive—matrix and transparent electrodes[.]”’
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`JX—367 (SmartSl<in) at 7.
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`Motorola's expert, Dr. Wolfe, likewise testified that “two-layer sensors with rows and columns
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`of ITO [are] standard products" (Wolfe, Tr. at l39l :1 1-22) and that “the use of transparent
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`electrodes .
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`.
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`. has been known in the art for twenty years” (RX—l885C (Wolfe Direct Witness
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`Statement) at Q. 326).
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`In KSR, the Supreme Court stressed that, “[t]he combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than yield predictable
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`results.” KSR Int ‘'1 Ca, 350 US. at 4l6. Here, the use of transparent ITO in combination with
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`the mesh grid touch sensor of SmartSkin is just the type of “combination of familiar elements”
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`that KSR discusses. See JX—367 at 7 and Fig. 2. Motorola’s expert, Dr. Wolfe, who has over
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`twenty years of experience making capacitive touch overlay sensors using ITO, testified at the
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`hearing precisely on this point as follows:
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`Q. Figure 2 [of SrnartSkin] doesn’t show a transparent sensor, does it‘?
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`A.
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`It is the same kind of drawing that’s in the ‘607 [Patent]. To a
`person who understands the technology, it doesn’t matter whether
`that sensor is transparent or opaque.
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`In fact,
`Q. But there is nothing in figure 2 that is a transparent sensor.
`ifyou read the whole thing, you know that the sensor that they are
`talking about in figure 2 is a non~transparent sensor, opaque, right‘?
`
`A. No, you know that they describe how to build a sensor with rows
`and columns of conductors, and then they talk about a particular
`first embodiment they made that was opaque, and then how you
`could build a transparent one as well.
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`Wolfe, Tr. l309:l4—13l0:5; see also id. at l39l:l l-22 (“[t]wo—layer sensors with rows and
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`columns of ITO were standard products, and I think that a person of ordinary skill, who we agree
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`is a touchscreen engineer .
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`.
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`. would just read this to say this is an ordinary row and column ITO
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`touch overlay that’s being used in a unique way in the SmartSl<in product”); id. 1392220-l 393:8
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`(stating that he has been making ITO touch screen products since 1983).
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`Apple’s expert, Dr. Subrarnanian, disputed this conclusion. testifying that SmartSkin
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`“provide[s] no instructions for how to ‘obtain’ a transparent sensor using ITO and .
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`.
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`. even the
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`researchers working on the [SmartSkin] system who authored the article believed that such a
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`transparent sensor was merely a future possibility[.]” CX~569C (Subramanian Rebuttal Witness
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`Statement) at Q. 117. But the evidence supports the conclusion that using transparent ITO for
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`the “transparent conductive lines” claimed in the ‘607 Patent and discussed in SmartSkin would
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`have been within the ability of one of ordinary skill in the art. In particular, Dr. Wolfe testified
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`as follows:
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`The ‘607 patent does not disclose any special characteristics of the
`ITO that make it suitable for use in the ‘607 patent; not its resistivity,
`capacitance, uniformity, thickness, or thermal characteristics. In any
`case, none of these need be disclosed since normal, commercially
`available and well known ITO materials are suitable for both
`SmartSkin and the ‘607 Patent.
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`RX-l 885C at Q. 326; see also Wolfe, Tr. at l390:l 9-l 397216 (discussing that one of ordinary
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`skill in the art would know how to implement the SmartSkin sensor using transparent ITO
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`electrodes).
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`Apple further contends that SmartSkin does not enable the use of a transparent ITO
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`sensor with the multi~toueh mutua1~capaeitance system disclosed in that reference because
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`substituting transparent ITO conductive lines for the opaque copper lines used with one
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`embodiment of the voltage-based sensing system of SmartSkin would require a complete
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`redesign. See Subramanian, Tr. at 1533-34, 153639, 1574-84, l585—97.8 Specifically, Apple’s
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`8 Motorola argued that Apple waived any argument concerning the different types of sensors
`used in the SrnartSkin system and the system disclosed in the ‘607 Patent because Dr.
`Subramanian did not mention the issue in his witness statements and because Apple failed to
`raise the issue in its pre—hearing statement. During the hearing, Motorola belatedly objected to
`Dr. Subrarnanian’s testimony during his re-direct examination, but the AL] ruled that the
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`expert, Dr. Subramanian, testified under eross—examination that, because the voltage—sensor used
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`in the SmartSl<in system receives very low strength signals, it is very sensitive to the resistance
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`of the material used to conduct the current from the signal source to the receiver, hence the use
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`of low resistance copper conductors in the SmartSl<in system. Subramanian, Tr. at l537:l7~
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`1538:17. Dr. Subramanian further explained that transparent ITO has such a high resistance and
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`thus a lower conductivity ~ approximately 100 times less than copper ~ that ITO cannot be used
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`successfully in a vo1tage—sensing system. 1d,; see also JX-367 (SmartSkin) at Fig. 2; ‘607 Patent
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`at Figs. 12, 13, l7:12—61. Dr. Subramanian compared the system disclosed in SrnartSl<in to the
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`multi-touch system disclosed in the ‘607 Patent, which he explained uses a detector that counts
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`charge in lieu of sensing voltage to account for the low conductivity of transparent ITO.
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`Subramanian, Tr. 1582:1 1—1584:7. Apple contends that, because of the difterent types of sensors
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`used to implement the SrnartSkin system and the system disclosed in the ‘607 Patent, it would
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`not have been obvious to combine the two systems. Id. (citing Subramanian, Tr. at l53'7:2—
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`1539:10).
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`It is axiomatic that, in evaluating an assertio