throbber
Filed on behalf of: Wintek Corporation
`By:
`Joseph E. Palys
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`Telephone: 202.551.1700
`Facsimile: 202.551.1705
`E-mail:
`josephpalys@paulhastings.com
`
`
`naveenmodi@paulhastings.com
`
`
`
`
`
`
`Paper No.
`Filed: September 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WINTEK CORPORATION
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`Petitioner
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`v.
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`TPK TOUCH SOLUTIONS INC.
`Patent Owner
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`
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`Case No. IPR2013-00568
`U.S. Patent No. 8,217,902
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`I. 
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`II. 
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`Case No. IPR2013-00568
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`Table of Contents
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`TPK’S CLAIM CONSTRUCTIONS ARE UNREASONABLE .................... 1 
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`FUJITSU ANTICIPATES THE CLAIMS IN GROUND 1 ........................... 3 
`
`a. 
`
`b. 
`
`c. 
`
`Conductor Cells, Conduction Lines, and Conductor Assemblies ......... 3 
`
`TPK’s Other Expert Contradicts Dr. Smith, and Agrees That
`Fujitsu Discloses Conductor Cells and Conduction Lines .................... 5 
`
`Fujitsu Discloses the Other Disputed Claim Features .......................... 6 
`
`III.  THE PRIOR ART RENDERS OBVIOUS CLAIMS IN GROUND 3 ........... 8 
`
`IV.  THE PRIOR ART RENDERS OBVIOUS CLAIMS IN GROUNDS
`2, 4, AND 5 .................................................................................................... 12 
`
`TPK HAS NOT PROVEN THE SECONDARY INDICIA OF
`NONOBVIOUSNESS ................................................................................... 13 
`
`
`
`i
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`V. 
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`Table of Authorities
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`Case No. IPR2013-00568
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` Page(s)
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`FEDERAL CASES
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) .......................................................................... 14
`
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 14
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 9
`
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) ............................................................................ 9
`
`Pfizer, Inc. v. Apotex, Inc.,
`480 F.3d 1348 (Fed. Cir. 2007) .......................................................................... 14
`
`Ritchie v. Vast Resources, Inc.,
`563 F.3d 1334 (Fed Cir. 2009) ............................................................................. 9
`
`
`
`ii
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`

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`Petitioner Wintek Corporation (“Wintek”) replies to Patent Owner TPK
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`Touch Solutions, Inc.’s (“TPK”) Response to Wintek’s Petition (Paper 28,
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`“Response” or “Resp.”) and the Board’s decision to institute inter partes review
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`(Paper 10, “Decision”) of U.S. Patent No. 8,217,902 (“the ’902 patent”). TPK’s
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`arguments should be rejected at least for the reasons set forth in the Petition (Paper
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`2), the testimony of Wintek’s expert (Exs. 1013, 2009), and for the reasons below.
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`I. TPK’S CLAIM CONSTRUCTIONS ARE UNREASONABLE
`The Board’s constructions of “conductor cells” and “conduction lines” are
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`the broadest reasonable constructions and are supported by the evidence. See
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`Decision, 10. While TPK calls the Board’s constructions “tortured,” its own
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`constructions add limitations to the claims and introduce ambiguities that make it
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`impossible to ascertain the claim scope. Resp., 14-18; Ex. 2002, ¶¶ 79, 83.
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`TPK does not explain what it means for a “conductor cell” to be “discrete”
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`and “self-contained.” While its expert tried to relate them to “geometric
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`characteristics,” he could not explain how. Ex. 1026, 56:21-57:3; see also id.,
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`35:14-36:3. He also could not determine where a conduction line ends and a
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`conductor cell begins for the ’902 patent’s structures, or “imagine a situation”
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`where such distinction was necessary. Ex. 1026, 107:8-112:21; Exs. 1019-1021.
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`Nor could he explain how his own exemplary touch panel structure contained such
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`characteristics. Ex. 1026, 64:19-66:11; Ex. 2002, ¶ 84.
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`Case No. IPR2013-00568
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`Contrary to TPK’s position, the ’902 patent simply describes that a
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`“capacitance variation signal” is induced when a finger touches adjacent conductor
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`cells, not that a cell senses capacitance. See Ex. 1001, 3:49-62, 5:62-6:3; Ex. 1026,
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`88:18-19, 88:21-89:2, 89:4-6.1 TPK’s position that conduction lines are “not part of
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`the capacitive structure” also cannot be reconciled with its expert’s testimony that
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`conduction lines have capacitance and, while not part of the “sensor measurement,”
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`are needed for such features since the “system would stop working” if they were
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`removed. Ex. 2002, ¶ 79; Ex. 1026, 39:3-8, 89:12-90:17. Nor could Dr. Smith
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`define how low the capacitive coupling for conduction lines needs to be so that it is
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`not part of the “capacitive structure.” Ex. 1026, 42:24-44:4. Even TPK’s
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`documentation relied on by its expert explains that conduction lines between cells
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`also provide mutual capacitance sensing capabilities. Ex. 2008, 21.
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`TPK’s expert also testified that the terms must be construed based on the
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`intended function and design of a touch panel system that may contain such
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`structures. Ex. 1026, 39:10-14, 41:5-13, 43:4-44:4, 47:14-48:3, 50:5-51:4. But
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`neither the ’902 patent nor any of the other evidence provides such subjective
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`intent of an unknown system designer. TPK’s positions are also suspect and should
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`be given little weight since its expert admittedly never reviewed or considered the
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`1 Wintek’s expert never agreed with TPK’s constructions. Resp., 13-14; Ex. 2009,
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`300:7-12 (stating simply that cells are involved in sensing aspects).
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`2
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`Case No. IPR2013-00568
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`original and reexamination file histories for the ’902 patent. Ex. 1026, 12:3-22,
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`14:10-16. His testimony is also questionable given his selective ability to identify
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`functional aspects of the structures in the ’902 patent simply by “looking only at”
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`illustrated structure (Ex. 2002, ¶ 83), but unable to do the same for other illustrated
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`structures from his own exhibit (see e.g., Ex. 1026, 58:23-62:21; Ex. 2008, 19, 25).
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`TPK’s claim construction position is also flawed given it relies on non-
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`contemporaneous extrinsic sources for the ordinary meaning of conductor cells.
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`See Resp., 16-17; Ex. 2002, ¶ 81 (relying on Ex. 2007, dated June 10, 2013).
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`II. FUJITSU ANTICIPATES THE CLAIMS IN GROUND 1
`a. Conductor Cells, Conduction Lines, and Conductor Assemblies
`TPK does not dispute that Fujitsu discloses the claimed conductor cells,
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`conduction lines, and conductor assemblies under the Board’s constructions. See
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`e.g., Petition, 10-22; Ex. 1013, ¶¶ 30-76; Decision, 17-19. The Examiner who
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`reviewed Fujitsu in the reexamination of the ’902 patent also agrees. Ex. 1027, 5, 7.
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`Further, even if TPK’s incorrect constructions are applied─ they should
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`not─Fujitsu discloses these limitations. See Resp., 14; Ex. 2002, ¶ 79. For instance,
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`portions W1 of Fujitsu’s structure are structurally “self-contained” and “discrete”
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`in relation to portions W2 in a manner no different than the cells and lines
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`disclosed by the ’902 patent. See e.g., Ex. 1005, Fig. 7a; Ex. 1013, ¶ 31, pp. 32-37,
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`38-43; Ex. 1001, Fig. 10. Fujitsu’s wide portions W1 can also be used for inducing
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`Case No. IPR2013-00568
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`and sensing capacitance because they participate in the capacitive aspects of the
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`touchpad to provide the signals used to identify a position of touch. See e.g., Ex.
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`1006, 5-7, 8, l. 28 to 9, l. 1 (explaining that the portions W1 are “configured to be
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`large” compared to participate in the detection of a finger); Ex. 1013, ¶¶ 31, 47, 54,
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`56, 63, 68, 75. Portions W2 are not part of portions W1 and interconnect the
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`portions W1 like the conduction lines of the ’902 patent. See e.g., Ex. 1005, Figs.
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`1a, 7a; Ex. 1013, ¶ 31; Ex. 1001, Fig. 10.
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`TPK alleges that Fujitsu “contrasts sharply with the ’902 [p]atent . . . where
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`capacitance is measured between individual cells along a conductor assembly.”
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`Resp., 20. But such features are not at issue in the claims for Ground 1. Equally
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`unavailing is TPK’s issue with Fujitsu’s structure and how a single conductor may
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`be used for detecting a touch event as the claims at issue do not require any type of
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`sensing technology or measurement at specific points of a single conductor. Resp.,
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`21, citing Ex. 1006. Indeed, Fujitsu’s system is capable of detecting a specific
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`point of touch. Ex. 1006, 4, 5, 7-8. TPK tries to distinguish Fujitsu’s structure
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`because they are “continuous electrodes that have reduced width at their
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`intersection points.” Resp., 20. But the structure disclosed by the ’902 patent has
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`the same characteristics. Ex. 1001, Figs. 5-10. And the conduction lines disclosed
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`in the ’902 patent are not precluded from contributing to sensing. Indeed, they
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`provide the connections between the conductor cells in a conductor assembly
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`Case No. IPR2013-00568
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`connected to signal transmission lines 16a, 16b. Ex. 1001, Fig. 1; Ex. 1026, 39:3-8,
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`89:12-90:17. Also, contrary to TPK’s positions, Wintek does not rely on the same
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`structure for three different claim elements. Fujitsu’s portions W1 of Fig. 7a are the
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`claimed “conductor cells,” the portions W2 are the claimed “conduction lines,” and
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`the collective sets of such structures across each axis are “conductor assemblies.”
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`See e.g., Pet., 10-12, Ex. 1013, ¶ 31; Decision, 17-19.
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`b. TPK’s Other Expert Contradicts Dr. Smith, and Agrees That
`Fujitsu Discloses Conductor Cells and Conduction Lines
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`TPK’s assertions are questionable given its other expert agrees with Wintek
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`and the Board regarding Fujitsu’s teachings. During prosecution of the ’902 patent,
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`TPK offered the opinion of Dr. George E. Gerpheide to rebut the Examiner’s
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`rejections of the then-pending claims. Ex. 1002, 325-333, ¶¶ 5, 9 (discussing
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`Bolender); Ex. 1010. Earlier this year, Dr. Gerpheide provided expert opinions for
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`petitioner Digital Empire Ltd. and testified that Fujitsu discloses features of a
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`single-layer capacitance touch panel patent that contradict the positions that TPK
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`and Dr. Smith now advance before the Board.2 See e.g., Ex. 1028; Ex. 1029; Ex,
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`2 This other Petition was filed by Gokalp Bayramoglu, who was the CTO of TPK
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`(Ex. 1002, 179, 182), participated in the prosecution of TPK’s ’902 patent (Id.,
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`179, 182, 339), and attended the deposition of Wintek’s expert in this case (Ex.
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`2009, 4:4, 5:20-22). Moreover, the patent challenged in this other petition (Ex.
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`Case No. IPR2013-00568
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`1030, Figs. 2, 3, 1:32-38, 3:57-61. In particular, despite TPK’s and Dr. Smith’s
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`insistence that Fujitsu does not disclose conductor cells and conduction lines (see
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`e.g., Resp., 3-4, 18-22; Ex. 2002, ¶¶ 115-17; Ex. 1026, 99:12-22), TPK’s
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`prosecution expert pointed to portions W1 and W2 of Fujitsu to teach separate
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`conductors and lines of a touch panel, as his demonstratives show. Ex. 1029, ¶ 27,
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`pp. 14-16.
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`
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`Id., ¶ 27, pp. 14, 16. A panel of Board judges agreed with the positions offered by
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`TPK’s prosecution expert. IPR2014-00584, Paper 7 (Ex. 1031). Given this
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`testimony, TPK and Dr. Smith’s contrary arguments should be rejected.
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`c. Fujitsu Discloses the Other Disputed Claim Features
`Fujitsu discloses conductor cells that have a hexagonal shape. See supra Part
`
`III.a-b; Pet., 21; Ex. 1013, ¶ 35. TPK’s argument that the wide portions W1 of
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`Fujitsu’s structure do not have a polygon shape is suspect when these structures
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`share the shape of the second axis cells disclosed in the ’902 patent (Ex. 1001, Fig.
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`1030) was asserted against TPK (Hilltop Technology LLC v. TPK Holding Co.,
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`Ltd., et al. (E.D. Tex. Case No. 2:13-cv-00965)).
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`Case No. IPR2013-00568
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`1; Ex. 1005, Fig. 7a). Also, TPK’s allegations that Fujitsu’s wider width parts have
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`no “discernible ‘edges’” cannot be reconciled with the second axis conductor cells
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`of the ’902 patent (see Ex. 1001, Fig. 1) and Dr. Smith’s inability to ascertain
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`where conduction lines end and conductor cells begin and belief that such a
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`distinction is unimportant. Ex. 1026, 107:8-112:21; Exs. 1019-21. Fujitsu’s
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`portions W2 terminate on an edge of the portions W1 no different than the second
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`lines terminate on the second cells in the ’902 patent. See e.g., Ex. 1001, Fig.1;
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`Pet., 22; Ex. 1013, ¶ 46. Also, Fujitsu discloses fabricating processes no different
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`than the ’902 patent. Portions W2 of Fujitsu electrically connect portions W1 when
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`they are formed. Even in TPK’s unsupported hypothetical process (Resp., 30),
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`once the alleged etching process was completed, the newly formed portions W2
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`would electrically connect portions W1.
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`Regarding the “signal transmission lines” limitations, TPK does not dispute
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`that parts of Fujitsu’s conductors (the red lines highlighted by TPK) are on the
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`same surface of the substrate that the portions W1 and W2 are in contact with, as
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`TPK’s annotated version of Fig. 2 shows. Resp., 26. TPK instead argues that those
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`portions of the lines are not the claimed signal transmission lines since they extend
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`from the substrate to control circuitry. But despite repeated attempts by TPK’s
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`counsel to alter his opinion, Dr. Subramanian explained that those portions are the
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`claimed signal transmission lines as they extend from the cells at the end of the
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`Case No. IPR2013-00568
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`substrate. Ex. 2009, 124:15-125:11, 125:18-126:11, 126:20-128:13, 129:4-132:17;
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`Ex. 1013, ¶ 41; Ex. 1005, Figs. 1a, 5, 7a. The conductor portions questioned by
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`TPK do not correspond to two claim elements (Resp., 27) because those portions
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`extend from the end of the conductor assemblies and do not interconnect cells, and
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`so they are signal transmission lines. Ex. 1026, 103:16-104:7. Just like lines 16a,
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`16b of the patent, those portions of Fujitsu extend from the assemblies on the
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`substrate. Ex. 1001, Fig. 1; Ex. 1005, Figs. 1a, 7a. TPK’s arguments against Dr.
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`Subramanian’s testimony (Resp., 27) is also suspect given its own expert, Dr.
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`Smith, could not determine whether a line in Fig. 10 of the ’902 patent was a
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`conduction line or a transmission line unless he knew if the line interconnected
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`another cell. Ex. 1026, 102:25-104:7.
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`III. THE PRIOR ART RENDERS OBVIOUS CLAIMS IN GROUND 3
`TPK does not dispute that single-layer capacitive touch panels that could
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`detect a position of touch existed in the prior art. TPK’s expert also does not
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`dispute that the prior art included mutual-capacitance touch panels that could
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`detect a position of touch or that one skilled in the art at the time of the ’902 patent
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`could have designed such a system. See e.g., Ex. 1026, 73:19-25, 74:15-23, 77:2-
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`17; 78:10-16. TPK alleges that it invented a single-layer conductive pattern
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`structure that measures mutual capacitance (see e.g., Resp., 6, 8, 55-57) and that
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`Fujitsu and Miller cannot be combined because (1) the references do not disclose
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`Case No. IPR2013-00568
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`the claimed cells, lines, and transmission lines, (2) the references individually do
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`not provide a teaching, suggestion, or motivation (“TSM”) to support the
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`combination, (3) one would be deterred from using Miller’s sensing technology
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`with Fujitsu due to parasitic capacitance issues, and (4) the combined system
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`would be unworkable. TPK’s arguments are misplaced and should be rejected.
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`TPK’s arguments regarding the claimed cells, lines, and transmission lines
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`should be rejected for at least the same reasons set forth above for Fujitsu. See
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`supra Part III. Further, TPK’s reliance on each reference individually is misplaced.
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`See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401-02 (2007). The motivation to
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`combine the prior art can come from common sense and such analysis should take
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`account of the inferences, creative steps, and routine steps that an inventor may
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`employ. Id. at 401-03, 418. TPK’s individual attacks of Miller and Fujitsu are off
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`base as combining and the substitution of known elements and processes, like
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`those of Miller and Fujitsu, to obtain predictable results is proper rational for an
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`obviousness determination. See e.g., KSR, 550 U.S. at 401-03, 417; Ritchie v. Vast
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`Resources, Inc., 563 F.3d 1334, 1337 (Fed Cir. 2009); In re Merck & Co., Inc., 800
`
`F.2d 1091, 1097 (Fed. Cir. 1986); Ex.1013, ¶¶ 92-93, 96; Pet., 29-31. Also, TPK
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`provides no basis for arguing that the techniques to measure mutual capacitance in
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`a two layer structure would be different from those in a one layer structure. Resp.,
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`36-40. Indeed, the ’902 patent provides no details on measuring capacitance.
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`Case No. IPR2013-00568
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`TPK also refutes the combination because Miller requires a thick substrate
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`between the lines to compensate for parasitic capacitance relating to Miller’s
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`conduction lines. See e.g., Resp., 39-41, 46, 49-50. But in its piecemeal analysis,
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`TPK ignores that when one of ordinary skill in the art would have implemented the
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`technology of Miller with the structure of Fujitsu, crosstalk caused by the parasitic
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`capacitance between portions W2 would be reduced to a negligible level due to the
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`narrower configuration. Dr. Subramanian confirmed that the proposed combination
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`of Fujitsu and Miller was workable. See Resp., 43, ll. 1-4; Ex. 2009, 248:15-
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`249:10, 250:2-11, 272:6-13, 286:12-24, 289:9-290:3. Dr. Subramanian also
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`explained why Miller uses sense pads such that the thickness of the substrate
`
`between the traces is unimportant and that having traces on both sides of the
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`substrate was an alternative to using bridges. See Ex. 2009, 282:10-283:15, 289:9-
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`290:3; Ex. 1011, 8:40-47. Despite TPK’s cropped citation, Dr. Subramanian
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`actually estimated that typical bridge thickness may be a couple of microns “or
`
`maybe less,” and may be “fractionally” or “an order of magnitude or more thinner”
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`than a standard PCB. Resp., 48-49; Ex. 2009, 287:23-283:9. Only based on the
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`latter scenario, did Dr. Subramanian indicate that the bridge may have an order of
`
`magnitude larger parasitic capacitance. Ex. 2009, 288:10-19.
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`TPK argues that thickness is important because in Miller’s thin version, all
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`“sense pads are eliminated” and thus Miller would sense capacitance using only
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`Case No. IPR2013-00568
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`the traces. Resp., 39-40. But Miller actually states that the cells “can” be omitted,
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`not that they must be. Ex. 1011, 8:5-57. Also, Miller has enlarged sense pads to
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`maximize capacitance detection in its transcapacitance system, which is why
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`insulation thickness between the traces is not limited. Ex. 2009, 289:9-290:3; Ex.
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`1011, Fig. 1a. Fujitsu’s structure uses wide portions W1 for touch detection
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`purposes and includes insulation between portions W2, and thus one of skill would
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`have understood that the mutual-capacitance sensing technology in Miller would
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`work with Fujitsu’s configuration. Ex. 2009, 248:15-249:10, 250:2-11, 272:6-13;
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`Ex. 1013, ¶¶ 92-94, 96. Dr. Smith admitted that it was known, like in Miller, that
`
`one method of increasing baseline mutual capacitance between electrodes was to
`
`place conductive sensing “pads” in both axes on the same surface of the substrate,
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`which Fujitsu’s design provides. Ex. 2002, ¶ 67; Ex. 1005, Figs. 7a, 5b.
`
`TPK issues regarding Miller’s charging technology is contradicted by Dr.
`
`Subramanian and questionable based on its own expert’s testimony. See e.g.,
`
`Resp., 40-41, 49; Ex. 2009, 248:15-249:10, 250:2-11, 272:6-13; Ex. 1013, ¶¶ 92-
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`96; Ex. 1026, 73:19-75:22, 77:2-78:16. Further, Dr. Subramanian’s testimony
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`cropped by TPK (Resp., 50) was responsive to a hypothetical in a system “that
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`doesn’t work well.” Ex. 2009, 232:17-19. The rest of his answer to the
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`hypothetical shows that for a system “that works well,” the capacitive difference is
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`“not small enough that you are not able to distinguish it.” Id., 232:23-233:15. TPK
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`Case No. IPR2013-00568
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`also argues against the combination because Miller does not provide the benefit of
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`multiple-touch detection. Resp., 44-45. But the ’902 patent and its claims have
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`nothing to do with multiple-touch detection, and instead is expressly directed to
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`single-touch detection. See Ex. 1001, 3:54-62, 5:58-6:16, 9:45-48. Likewise,
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`TPK’s arguments about Fujitsu’s conductor sizing and operation should be
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`rejected. Resp., 40, 45-46. The ’902 patent does not claim or disclose the size of
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`the structures, how or why the structures need to be charged in any particular
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`manner, that the touch panel must be configured to detect multiple touches, that it
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`must meet some level of accuracy, or that detection of touch happen at any
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`particular speed. TPK’s arguments ignore that one of ordinary skill would have
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`been able to modify Fujitsu in a way to measure capacitance between conductor
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`cells to detect a single position of touch in light of Miller, and done so to address
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`issues raised by TPK. See e.g., Ex. 1013, ¶¶ 92-96; Ex. 2009, 248:15-249:10,
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`250:2-11, 272:6-13; Ex. 1026, 73:19-74:23. Indeed, TPK’s prosecution expert had
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`no issue with combining Fujitsu with multiple-layer type touch panel systems to
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`support an obviousness position. See e.g., Ex. 1029, ¶¶ 31, 35-49; Exs. 1032-1039.
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`IV. THE PRIOR ART RENDERS OBVIOUS CLAIMS IN GROUNDS 2, 4,
`AND 5
`
`Regarding Ground 2, TPK’s focus on Fujitsu’s teachings is wrong for the
`
`same reasons set forth above. See supra Part III. Also, TPK is misplaced about Dr.
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`Subramanian’s positions. Resp., 32-33. Placing transmission lines that connect to
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`Case No. IPR2013-00568
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`the cells of Fujitsu on the same surface of the substrate, like that disclosed by
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`Binstead (which TPK does not dispute), would contribute to a low profile as the
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`thickness of those lines would not be larger than the layers at the intersections (see
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`Ex. 1005, Fig. 5b). Also, TPK’s arguments are contradicted by its prosecution
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`expert who also combined Fujitsu and Binstead to disclose “connecting lines,”
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`which are like the transmission lines 16a, 16b of the ’902 patent. See Ex. 1029, ¶¶
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`84-85; Ex. 1030, Fig. 2 (61, 62), 3:21-52; Ex. 1001, Fig. 1 (16a, 16b).
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`TPK relies on its arguments that Fujitsu does not disclose the claimed
`
`conductor cells, conduction lines, or conductor assemblies to support its positions
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`regarding Grounds 4 and 5, respectively. Resp., 51-54. Accordingly, for the same
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`reasons set forth above, the Board should maintain its findings of unpatentability
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`for those Grounds. See supra Part III.a-b. Also, despite TPK’s arguments regarding
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`Seguine (Resp., 52), Fujitsu intended for portions W1 to be larger than portions
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`W2 for purposes of detecting a position of touch. Ex. 1006, 8:35-9:1. Forming
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`those cells as hexagons, like those of Seguine, would have been obvious. Pet., 33-
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`36; Ex 1013, ¶¶ 97-104. TPK’s prosecution expert found no issue in combining
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`Fujitsu and Seguine. Ex. 1029, ¶¶ 36-46.
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`V. TPK HAS NOT PROVEN THE SECONDARY INDICIA OF
`NONOBVIOUSNESS
`
`Secondary considerations “do not necessarily control the obviousness
`
`conclusion,” and are entitled little weight when there is no nexus to the claims.
`
`13
`
`

`
`Case No. IPR2013-00568
`
`Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007); Smith &
`
`Nephew, Inc. v. Convatec Techs., Inc., IPR2013-00097, Paper No. 90, at 44-51
`
`(PTAB May 29, 2014). TPK failed to show nexus or that its products were
`
`purchased due to the claimed features. Demaco Corp. v. F. Von Langsdorff
`
`Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); In re Huang, 100 F.3d 135,
`
`140 (Fed. Cir. 1996). TPK’s reliance on Apple’s iPhone actually shows the
`
`existence of an alternative touch panel solution (that TPK supplied to Apple),
`
`which satisfied the industry, was worldly popular and successful from at least 2007
`
`to 2012, and at the “forefront” of transparent mutual-capacitance touch technology.
`
`Ex. 2002 at ¶¶ 176-182; Ex. 2017 at ¶ 5; Resp., 57-58; Ex. 2018, 3, 7, 18, 20; Ex.
`
`1040, 25:17-21, 26:22-27:10, 30:24-32:9, 32:23-25. TPK’s own document states
`
`that in 2012, “there [was] no perfect solution” as “each touch technology [had] its
`
`own strengths and weaknesses” Ex. 2018, 5; Ex. 1040, 28:11-16, 30:19-22.
`
`Also, despite TPK’s assertions (Resp., 56-59, Ex. 2002, ¶ 176) and Mr.
`
`Tsai’s conclusory statements, Apple came up with the concept of a single-layer
`
`mutual-capacitance touch sensor in 2007. See Ex. 1024, ¶¶ 24 (“mutual
`
`capacitance”), 26 (row and column traces “formed on a single side of a
`
`substantially transparent substrate”); Ex. 1026, 152:22-153:2. Ex. 1022, part of the
`
`intrinsic record, also describes a prior art mutual-capacitance touch panel with
`
`sensors on the same side of a substrate. Ex. 1002, 182-84; Ex. 1026, 117:9-18,
`
`14
`
`

`
`Case No. IPR2013-00568
`
`118:18-24, 121:9-12; Ex. 1022, 1:60-2:3, 6:63-7:4, Figs. 8A, 8B, 2:65-3:4, 3:40-44
`
`(incorporating by reference Ex. 1023); Ex. 1023, 4:62-5:3; 9:62-10:7. TPK’s other
`
`evidence also lacks nexus. The alleged success of the company is not linked to any
`
`particular products, technologies, or claimed features, but instead weighs against
`
`any attributed commercial success as it shows alternative reasons for TPK’s
`
`alleged sales, including DITO sales to Apple. See, e.g., Ex. 2017, ¶¶ 18, 19; Ex.
`
`2018, 3; Ex. 1040, 30:24-32:9. Further, TPK cannot rely on its expert as he
`
`admitted that he never looked at any of exhibits 2017-23. Ex. 1026, 18:10-16.
`
`Contrary to TPK’s assertions (Resp., 56), Mr. Tsai’s declaration does not show
`
`praise for “TPK’s” solutions as being “well documented.” See e.g., Ex. 2017, ¶¶
`
`10-11, 13-18; Exs. 2020-2023 (making no link to TPK products or to any claimed
`
`features). In fact, TPK’s customers were apparently not satisfied with its products
`
`as TPK admits one requested TPK to change its design in 2009. Ex. 2017, ¶ 14.
`
`Dated: September 26, 2014
`
` Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508Naveen Modi,
`Backup Counsel
`Registration No. 46,224
`Paul Hastings LLP
`
`
`
`15
`
`

`
`Case No. IPR2013-00568
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 26th day of September 2014, a copy of
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE was served by
`
`electronic mail upon the following:
`
`Joseph J. Richetti (joe.richetti@bryancave.com)
`
`David Bilsker (davidbilsker@quinnemanuel.com)
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Paul Hastings LLP
`
`
`
`Dated: September 26, 2014

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