Filed on behalf of TPK Touch Solutions Inc.
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`PATENT OWNER REPLY SUPPORTING MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`PATENT OWNER REPLY SUPPORTING MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`TPK’S MOTION TO EXCLUDE SHOULD BE GRANTED .......................1
`
`A.
`
`TPK’s Arguments Are Within the Scope of a Motion To Exclude. .....1
`
`B. Wintek’s New Evidence and Arguments Are Irrelevant and
`Prejudicial..............................................................................................2
`
`1.
`
`2.
`
`3.
`
`4.
`
`Exhibits 1022 and 1023 and Corresponding Arguments............2
`
`Exhibit 1024 and Corresponding Arguments .............................3
`
`Exhibits 1028-1031 and Corresponding Arguments ..................4
`
`Exhibits 1032-1039 and Corresponding Arguments ..................5
`
`III. CONCLUSION................................................................................................5
`
`i
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`TABLE OF AUTHORITIES
`
`CASES
`
`LKQ Corp. v. Clearlamp, LLC,
`IPR2013-00020, Paper 17 (Mar. 5, 2013) .......................................................2
`
`Net MoneyIN, Inv. v. VeriSign, Inc.,
`545 F.3d 1359, 1369 (Fed. Cir. 2008) .............................................................2
`
`STATUTES AND RULES
`
`Fed. R. Evid. 401 .......................................................................................................2
`
`Fed. R. Evid. 403 .......................................................................................................1
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48758 (Aug. 14, 2012)...................................................1
`
`ii
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`LIST OF EXHIBITS
`
`TPK 2002
`TPK 2003
`TPK 2004
`
`TPK 2005
`TPK 2006
`TPK 2007
`
`TPK 2008
`
`TPK 2009
`
`TPK 2010
`
`TPK 2011
`
`TPK Exhibit No. Document Description
`TPK 2001
`G. Barrett & R. Omote, “Projected-Capacitive Touch Tech-
`nology”
`Declaration of Joshua R. Smith
`Curriculum Vitae of Joshua R. Smith
`Walker, “Fundamentals of Touch Technologies and Applica-
`tions”
`Hotelling et al., U.S. Patent No. 7,920,129
`Geaghan, U.S. Patent No. 8,279,187
`Crosby, “Self Capacitive Sensing Brings Touch to Large-
`Screen Products”, Zytronic
`Walker, “Part 1: Fundamentals of Projected-Capacitive Touch
`Technology”
`Deposition Transcript of Dr. Vivek Subramanian, June 11,
`2014
`Decision – Institution of Inter Partes Review, Case IPR2013-
`00568 (not submitted)
`Decision – In the Matter of Certain Mobile Devices, and Re-
`lated Software Thereof, ITC Inv. No. 337-TA-750
`Figure 2 from Japanese Published Patent Appl. No. 61-84729
`to Honeywell (excerpt of Wintek Ex. 1007)
`Information Display Journal, Vol. 26, No. 3, March 2010
`Decision – Institution of Inter Partes Review, Case IPR2013-
`00567 (not submitted)
`Testimony of Dr. Subramanian in ITC Inv. No. 337-TA-750
`Binstead, U.S. Patent Publication No. 2012/0188201
`Declaration of Ted Tsai in Support of Patent Owner’s Re-
`sponse
`Daiwa Capital Markets, March 2012 market report
`Amazon Kindle Electrode Structure (Filed Under Seal)
`iii
`
`TPK 2012
`
`TPK 2013
`TPK 2014
`
`TPK 2015
`TPK 2016
`TPK 2017
`
`TPK 2018
`TPK 2019
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`TPK 2021
`TPK 2022
`
`TPK 2023
`
`TPK Exhibit No. Document Description
`TPK 2020
`NPD DisplaySearch, Q1’14 Quarterly Touch Panel Market
`Analysis, April 2014
`Economic Daily News Article, February 2009
`J.P. Morgan, TPK Holding Co., Ltd. research report, October
`2012
`NPD Display Search, Touch Panel Market Analysis Q4’12
`Update, December 2012
`Stipulated Protective Order – Clean
`Stipulated Protective Order – Redlined
`Affidavit of Derek Tang
`Supplemental Affidavit of Derek Tang
`Patent Owner’s Objections to Evidence, October 3, 2014
`
`TPK 2024
`TPK 2025
`TPK 2026
`TPK 2027
`TPK 2028
`
`iv
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`I.
`
`INTRODUCTION1
`TPK submits this Reply in support of its Motion To Exclude Evidence. 2
`
`II.
`
`TPK’S MOTION TO EXCLUDE SHOULD BE GRANTED
`
`A. TPK’s Arguments Are Within the Scope of a Motion To Exclude
`
`TPK’s Motion seeks to exclude exhibits and arguments in connection with
`
`Petitioner’s Reply to the Patent Owner Response (Paper 45, “Wintek’s Reply”)
`
`that are irrelevant and prejudicial, and therefore outside the scope of Fed. R. Evid.
`
`403. Accordingly, the substance of TPK’s Motion is squarely within the proper
`
`scope of a Motion To Exclude. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48758 (Aug. 14, 2012) (“Admissibility of evidence is generally gov-
`
`erned by the Federal Rules of Evidence.”); LKQ Corp. v. Clearlamp, LLC,
`
`IPR2013-00020, Paper 17, Mar. 5, 2013 at p. 3.
`
`1 TPK and Wintek have settled their pending disputes and the Board has author-
`
`ized the parties to file a Joint Motion To Terminate. Should the Board grant the
`
`parties’ Motion To Terminate, the present evidentiary dispute will be moot.
`
`2 Contrary to Wintek’s counsel’s representation, during the parties’ conference
`
`call, TPK specifically noted that Wintek had not responded to TPK’s objections
`
`and asked if Wintek would consider withdrawing the disputed exhibits and evi-
`
`dence. When Wintek refused, the parties conferred regarding TPK’s objections
`
`and were unable to reach agreement, necessitating TPK’s Motion.
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`In explaining the basis for its Motion, TPK naturally is required to describe
`
`how the disputed evidence submitted by Wintek is irrelevant because it is of no
`
`consequence to any issue in dispute, and prejudicial because it does not actually
`
`support the points for which Wintek appears to have presented it. See Fed R. Evid.
`
`401 (“Evidence is relevant if . . . the fact is of consequence in determining the ac-
`
`tion.”). Wintek’s assertion that TPK’s motion is improper because it “reads like a
`
`substantive sur-reply” (Opp. at 2) simply attempts to wave away the necessary con-
`
`text to adjudge the evidence, and should be disregarded.
`
`B. Wintek’s New Evidence and Arguments Are Irrelevant and Prejudicial
`
`Wintek's arguments in response to TPK’s Motion merely underscore that the
`
`newly submitted exhibits and arguments in Wintek’s Reply do not respond to
`
`TPK’s arguments and are not relevant to any issue in this proceeding; rather, they
`
`seek to cloud the issues actually in dispute and should be excluded.
`
`1.
`
`Exhibits 1022 and 1023 and Corresponding Arguments
`
`Wintek’s argument that U.S. Pat. No. 6,188,391 (Ex. 1022) purportedly
`
`demonstrates that commercial mutual-capacitive touch panels in use prior to the
`
`invention of the ’902 Patent used single-layer structures is factually incorrect.
`
`(Opp. at 4-6.) As Wintek admits, Ex. 1022 contains no disclosure of detecting a
`
`position of touch by measuring mutual capacitance. Id. Nevertheless, Wintek ar-
`
`gues that the use of mutual capacitance is disclosed in U.S. Pat. No. 5,543,590 (Ex.
`
`2
`
`
`
`1023), which incorporates Ex. 1022 by reference.
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`(Id. at 5.) But the citation on
`
`which Wintek relies describes only a prior art “four-level” capacitive structure, not
`
`a single-layer structure. It is well settled that to show prior invention, a reference
`
`“must not only disclose all elements of the claim within the four corners of the
`
`document, but must also disclose those elements arranged as in the claim.” Net
`
`MoneyIN, Inv. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The por-
`
`tions of Ex. 1022 that Wintek argues disclose the use of a “single-layer” capacitive
`
`structure make no reference to mutual capacitance or to Ex. 1023 —or any com-
`
`mercial products—and, thus, are nonresponsive to TPK’s arguments. These exhib-
`
`its and corresponding arguments should be excluded as irrelevant and misleading.
`
`2.
`
`Exhibit 1024 and Corresponding Arguments
`
`Contrary to Wintek’s argument, U.S. Pat. App. No. 2008/0309625 (Ex.
`
`1024) does nothing to rebut TPK’s observation that at the time of the filing of the
`
`’902 Patent, the market leader, Apple, was still relying on two-layer mutual-
`
`capacitance touch panels. Wintek does not dispute that Ex. 1024 in fact postdates
`
`the ’902 Patent or that Apple ever actually developed single-layer mutual capaci-
`
`tance touch panels.
`
`Instead, Wintek attempts to gloss over its errors by arguing
`
`that Ex. 1024 shows that “Apple did . . . have the concept of a single-layer mutual
`
`capacitance touch sensor in 2007.” (Opp. at 6 (emphasis added).) But what “con-
`
`cepts” Apple may or may not have had after the invention of the ’902 Patent are
`
`3
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`irrelevant to the state of the art at the time of the ’902 Patent. Thus, both Exhibit
`
`1024 and Wintek’s related arguments should be excluded.
`
`3.
`
`Exhibits 1028-1031 and Corresponding Arguments
`
`Wintek’s reliance on an expert declaration submitted by Dr. Gerpheide (Ex.
`
`1029) on behalf of Digital Empire in a different proceeding—in lieu of a declara-
`
`tion from its own expert, Dr. Subramanian—is improper. Dr. Gerpheide’s declara-
`
`tion relates to the novelty of U.S. Pat. No. 7,864,503 and has no relevance to the
`
`’902 Patent or the scope of its claims. Wintek’s response that Dr. Gerpheide once
`
`submitted an opinion during the prosecution of the ’902 Patent (Opp. at 7) has no
`
`bearing on the declaration in question. Moreover, Wintek’s attempt to import Dr.
`
`Gerpheide’s opinions on whether Fujitsu anticipates U.S. Pat. No. 7,864,503 into
`
`the present proceeding wholesale, without regard to the specific meanings of vari-
`
`ous terms (e.g., “cells” and “lines”) in the context of the ’902 Patent is inaccurate
`
`and misleading. Dr. Gerpheide’s declaration offers no opinion as to whether Fujit-
`
`su anticipates or renders obvious the claims of the ’902 patent, and should not be
`
`admissible for that purpose. For the same reason, Exhibits 1028, 1030 and 1031
`
`from Digital Empire’s petition for inter partes review of U.S. Pat. No. 7,864,503
`
`are irrelevant and prejudicial. Digital Empire’s petition expresses no opinion re-
`
`garding the ’902 Patent and is of no relevance to the construction of its claim terms
`
`or the scope of its claims when compared to the prior art.
`
`4
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`Exhibits 1032-1039 and Corresponding Arguments
`
`4.
`
`Wintek’s argument that Exhibits 1032-1039 are relevant to show the practi-
`
`cability of “combining Fujitsu with multiple-layer type touch panel systems to
`
`make obviousness arguments” misstates TPK’s Response. (Opp. at 9.)
`
`In its Re-
`
`sponse, TPK argued that it would not be obvious to combine Fujitsu and Miller
`
`because the levels of trans-capacitance generated by Miller would cause unworka-
`
`ble levels of parasitic capacitance in the single-layer solution of Fujitsu, not be-
`
`cause Miller discloses a two-layer solution.
`
`(Paper 28 at 41-50.) Exhibits 1032-
`
`1039 and Wintek’s corresponding arguments are nonresponsive, misleading and
`
`prejudicial. Thus, these Exhibits and Wintek’s arguments should be excluded.
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner TPK respectfully requests that its
`
`Motion to Exclude be granted in its entirety.
`
`Date: November 21, 2014
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti, Reg. No. 47,024
`BRYAN CAVE LLP
`Email: joe.richetti@bryancave.com
`
`David Bilsker, Reg. No. 39,611
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`Email: davidbilsker@quinnemanuel.com
`
`Attorneys for Patent Owner–TPK Touch Solutions Inc.
`
`5
`
`
`
`Case No. IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER RE-
`
`PLY SUPPORTING MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. §
`
`42.64(c) was served electronically via e-mail on November 21, 2014, in its entirety
`
`on the following:
`
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`josephpalys@paulhastings.com
`
`Date: November 21, 2014
`
`Naveen Modi
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`naveen.modi@paulhastings.com
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`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
`
`Attorney for Patent Owner –
`TPK Touch Solutions Inc.
`
`
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