Filed on behalf of TPK Touch Solutions Inc.
`
`Case IPR 2013-00568
`Patent Owner Preliminary Response
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`Case IPR 2013-00568
`Patent Owner Preliminary Response
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR 2013-00568
`U.S. Patent No. 8,217,902
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`Case IPR 2013-00568
`Patent Owner Preliminary Response
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ...........................................................................................1
`
`OVERVIEW OF THE ‘902 PATENT AND CHALLENGED
`CLAIMS ..........................................................................................................4
`
`PETITIONER’S PROPOSED CONSTRUCTIONS FAIL TO
`COMPLY WITH 37 C.F.R. § 42.104(b)(3)....................................................9
`
`IV. NONE OF THE PROPOSED GROUNDS SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING ON THE CHALLENGED
`CLAIMS ........................................................................................................11
`
`A.
`
`Ground 1: Fujitsu Does Not Disclose the Limitations of the
`Challenged Claims ..............................................................................11
`
`1.
`
`2.
`
`3.
`
`4.
`
`Fujitsu Does Not Disclose The “Conductor Assemblies”
`or “Conductor Cells” of the Independent Claims....................14
`
`Fujitsu Does Not Disclose “A Plurality of Signal
`Transmission Lines [Formed] on the Surface of the
`Substrate”..................................................................................15
`
`Fujitsu Does Not Disclose Conductor Cells Having a
`“Contour of a Hexagonal Shape”..............................................16
`
`Fujitsu Does Not Disclose a Structure Having a “Second-
`Axis Conduction Line [that] Terminates on the Edge of
`[Any] Second-Axis Conductor Cell..........................................17
`
`B.
`
`Ground 2: The Combination of Fujitsu and Binstead Does Not
`Render Obvious the Challenged Claims .............................................17
`
`1.
`
`2.
`
`The Proposed Combination of Fujitsu and Binstead Does
`Not Disclose “Conductor Assemblies” or “Conductor
`Cells” as Required By Each Challenged Claim........................19
`
`The Proposed Combination of Fujitsu and Binstead Does
`Not Disclose Measuring a Capacitance Between First-
`Axis Conductor Cells and Second-Axis Conductor Cells ........19
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`Patent Owner Preliminary Response
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`3.
`
`4.
`
`A Person Of Ordinary Skill Would Not Be Motivated To
`Combine Fujitsu With Binstead To Measure a
`Capacitance Between First-Axis Conductor Cells and
`Second-Axis Conductor Cells to Detect a Position of
`Touch.........................................................................................21
`
`A Person Of Ordinary Skill Would Not Be Motivated To
`Combine Fujitsu With Binstead To Disclose
`“Transmission Lines Formed on the Surface of the
`Substrate”..................................................................................26
`
`C.
`
`Ground 3: The Combination of Fujitsu and Miller Does Not
`Render Obvious the Challenged Claims .............................................29
`
`1.
`
`2.
`
`The Proposed Combination of Fujitsu and Miller Does
`Not Disclose “Conductor Assemblies” or “Conductor
`Cells” as Required By Each Challenged Claim........................29
`
`A Person Of Ordinary Skill Would Not Be Motivated To
`Combine Fujitsu With Miller In the Manner Proposed............29
`
`D.
`
`Ground 4: The Combination of Fujitsu and Seguine Does Not
`Render Obvious the Challenged Claims .............................................33
`
`1.
`
`2.
`
`3.
`
`The Proposed Combination of Fujitsu and Seguine Does
`Not Disclose “Conductor Assemblies” or “Conductor
`Cells” as Required By Each Challenged Claim........................34
`
`The Proposed Combination of Fujitsu and Seguine Does
`Not Disclose Measuring A Capacitance Between a First-
`Axis Conductor Cell and a Second-Axis Conductor Cell ........34
`
`A Person Of Ordinary Skill Would Not Be Motivated To
`Combine Fujitsu With Seguine In the Manner Proposed .........35
`
`E.
`
`F.
`
`Ground 5: The Proposed Combination of Fujitsu and Bolender
`Does Not Render Obvious the Challenged Claims.............................39
`
`Ground 6: Honeywell Does Not Disclose the Limitations of the
`Challenged Claims ..............................................................................40
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`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Honeywell Does Not Disclose “Conductor Assemblies,”
`“Conductor Cells” or “Conduction Lines” as Required
`By Each Challenged Claim” .....................................................42
`
`Honeywell Does Not Disclose “Second-Axis Conductor
`Cells Arranged on the Surface of the Substrate”......................43
`
`Honeywell Does Not Disclose “Each Second-Axis
`Conductor Cell Being Set in each Disposition Zone” ..............44
`
`Honeywell Does Not Disclose Measuring A Capacitance
`Between a First-Axis Conductor Cell and Second-Axis
`Conductor Cells.........................................................................45
`
`Honeywell Does Not Disclose A Signal Transmission
`Line Formed on the Surface of the Substrate”..........................46
`
`G.
`
`Ground 7: The Combination of Honeywell and Binstead Does
`Not Render Obvious the Challenged Claims ......................................47
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Proposed Combination of Honeywell and Binstead
`Does Not Disclose the “Conductor Assemblies,”
`“Conductor Cells” and Related Limitations Required by
`All Claims .................................................................................47
`
`The Proposed Combination of Honeywell and Binstead
`Does Not Disclose Conductor Cells Having “a Contour
`of a Hexagonal Shape”..............................................................48
`
`A Person of Ordinary Skill Would Not Have Been
`Motivated to Modify Honeywell to Include Conductor
`Cells Having “a Hexagonal Shape” Based on Binstead ...........49
`
`A Person of Ordinary Skill Would Not Have Been
`Motivated to Modify Honeywell to Include Conductor
`Cells Having “Transmission Lines on the Surface of the
`Substrate” In Light of Binstead.................................................51
`
`H.
`
`Ground 8: The Combination of Honeywell and Seguine Does
`Not Render Obvious the Challenged Claims ......................................53
`
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`1.
`
`2.
`
`3.
`
`The Proposed Combination of Honeywell and Seguine
`Does Not Disclose Measuring A Capacitance Between a
`First-Axis Conductor Cell and Second-Axis Conductor
`Cell ............................................................................................54
`
`A Person of Ordinary Skill Would Not Have Been
`Motivated To Modify Honeywell to Measure A
`Capacitance Between a First-Axis Conductor Cell and
`Second-Axis Conductor Cell ....................................................55
`
`A Person of Ordinary Skill Would Not Have Been
`Motivated To Modify Honeywell to Include Conductor
`Cells Having “a Hexagonal Shape” in Light of Seguine..........56
`
`I.
`
`Ground 9: The Proposed Combination of Honeywell and
`Bolender Does Not Render Obvious the Challenged Claims .............58
`
`V.
`
`CONCLUSION..............................................................................................60
`
`iv
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`TABLE OF AUTHORITIES
`
`CASES
`
`Corning Inc. v. DSM IP Assets B.V,
`IPR2013-00045, Paper No. 11 (PTAB May 13, 2013) .................................10
`
`Denso Corporation and Clarion Co. Ltd. v. Beacon Navigation GmbH,
`IPR2013-00026, Paper No. 12 (PTAB March 18, 2013) ..............................13
`
`Dominion Dealer Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00222, Paper No. 12 (PTAB August 12, 2013).......... 23, 31, 36, 51
`
`Ex Parte Konstant,
`Appeal No. 2009-001901, Decision on Appeal (PTAB
`August 20, 2009) .................................................................................... 15, 44
`
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper No. 12 at 9-10
`(PTAB July 31, 2013)........................................................... 24, 29, 31, 36, 51
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255, 1259 (Fed. Cir. 2010) .............................................................9
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398, 416 (2007) ................................................................. 26, 29, 34
`
`Lantech Inc. v. Keip Machine Co.,
`32 F.3d 542, 547 (Fed. Cir. 1994) .......................................................... 15, 44
`
`Monsanto Company v. Pioneer Hi-Bred International, Inc.,
`IPR2013-00022, Paper No. 43 at 7-8 (PTAB April 11, 2013).... 3, 14, 33, 37
`
`Norman Noble v. NUTech Ventures,
`IPR2013-00101, Paper No. 14 (PTAB June 20, 2013) ...............................13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) .......................................9
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper No. 16 at 5-7 (PTAB Feb. 22, 2013) .........................9
`
`v
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`Patent Owner Preliminary Response
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`Tasco, Inc. v. David Pagnani,
`IPR2013-00103, Paper No. 6 at 11................................................................13
`
`Veeam Software Corp. v. Symantec Corp.,
`IPR2013-00145, Paper No. 12 at 11-12 (PTAB Aug. 7, 2013) . 23, 31, 36, 51
`
`Wowza Media Systems LLC v. Adobe Systems Inc.,
`IPR2013-00054, Paper No. 12 at 12 (PTAB April 8, 2013) ....... 3, 14, 33, 37
`
`STATUTES AND RULES
`
`35 U.S.C. § 314..........................................................................................................4
`
`37 C.F.R. § 42.100(b) ................................................................................................9
`
`77 Fed. Reg. 48763 .................................................................................................13
`
`vi
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`Case IPR 2013-00568
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`LIST OF EXHIBITS
`
`Document Description
`
`G. Barrett & R. Omote, “Projected-Capacitive Touch
`Technology”
`
`TPK Touch Solutions
`Exhibit No.
`
`TPK 2001
`
`vii
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`
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`Case IPR 2013-00568
`Patent Owner Preliminary Response
`
`Patent Owner TPK Touch Solutions Inc. (“TPK”) hereby submits this
`
`preliminary response to the Petition filed by Wintek Corporation (“Wintek”)
`
`accorded a filing date of September 4, 2013, which seeks inter partes review of
`
`claims 1-68 of U.S. Patent No. 8,217,902 (“the ‘902 Patent”). As discussed in
`
`detail below, Petitioner has failed to meet its burden of showing a reasonable
`
`likelihood of prevailing on any challenged claim. Accordingly, Patent Owner
`
`respectfully requests that the Patent Trial and Appeal Board (“Board”) deny inter
`
`partes review for all Grounds set forth in the Petition.
`
`I.
`
`INTRODUCTION
`
`The ‘902 patent relates to an improved conductor pattern structure for
`
`mutual-capacitance touch panels. While mutual-capacitance touch panels existed
`
`in the prior art, the prior art devices were thick, opaque and cumbersome to
`
`manufacture, due in large part to the need to maintain and measure capacitance
`
`between two layers of conductive material separated by an insulator. (Ex. 1001 at
`
`2:57-63.) The ‘902 Patent improves on the prior art by, inter alia, disclosing a
`
`conductor pattern structure that requires only a single layer of transparent
`
`conductive assemblies formed on a substrate. (Id. at 3:20-31.) As explained in the
`
`‘902 Patent, this new design provided a number of substantial benefits over prior
`
`art touch panels, including a thinner profile, improved transparency and a
`
`simplified manufacturing process. (Id. at 3:49-54.)
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`The present petition seeks inter partes review of all 68 claims of the ‘902
`
`Patent. However, Petitioner does not raise a meaningful challenge with respect to
`
`the patentability of the challenged claims. First, both of the prior art references
`
`relied on in Petitioner’s § 102 grounds are missing critical limitations recited in the
`
`challenged claims. In particular, neither reference discloses a single-layer
`
`conductor pattern structure with first- and second-axis “conductor assemblies”
`
`comprising distinct “conductor cells” electrically connected by “conduction
`
`lines”—limitations required by the independent claims of the ‘902 Patent.
`
`Moreover, neither reference discloses the critical limitation wherein “a capacitance
`
`between a first cell of the plurality of first-axis conductor cells and a second cell of
`
`the plurality of second-axis conductor cells is measured to detect a position of
`
`touch”—which appears in claims 17-20, 22, 25-28, 35, 44, and 68. For at least this
`
`reason, Petitioner’s § 102 grounds fail to raise a likelihood of success with respect
`
`to any challenged claim of the ‘902 Patent.
`
`Second, Petitioner fails to raise a prima facie case of obviousness with any
`
`of its seven proposed § 103 grounds. Instead, Petitioner attempts to combine
`
`essential elements of completely different systems but provides no analysis or
`
`explanation as to how or why a person of ordinary skill in the art would have
`
`modified and/or combined the cited references in the manner required by the ‘902
`
`Patent claims, or even who a person of ordinary skill in the art would be. Indeed,
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`the references Petitioner seeks to combine expressly teach away from the
`
`combinations Petitioner seeks to assert. Moreover, in multiple instances, both
`
`references fail to disclose limitations required by the claims. Accordingly,
`
`Petitioner’s § 103 grounds also fail to raise a likelihood of success with respect to
`
`any challenged claim of the ‘902 Patent.
`
`While Petitioner attempts to alleviate some of the critical deficiencies in its
`
`proposed Grounds by relying on an accompanying declaration by Dr. Vivek
`
`Subramanian (Ex. 1013), Dr. Subramanian’s declaration largely mirrors the
`
`Petition and, more importantly, fails to provide any meaningful facts or basis for
`
`his opinions. Indeed, the vast majority of the declaration simply restates, almost
`
`verbatim, the same statements Petitioner makes. (Compare, e.g., Petition at 27
`
`with Ex. 1013 at ¶ 89.) As a result, Dr. Subramanian’s declaration does nothing to
`
`cure the deficiencies in the petition. See, e.g., Monsanto Company v. Pioneer Hi-
`
`Bred International, Inc., IPR2013-00022, Paper No. 43 at 7-8 (PTAB April 11,
`
`2013); Wowza Media Systems LLC v. Adobe Systems Inc., IPR2013-00054, Paper
`
`No. 12 at 12 (PTAB April 8, 2013).
`
`In view of the foregoing infirmities (and others discussed below), the
`
`Petition falls short of demonstrating a “reasonable likelihood that Petitioner will
`
`prevail with respect to any of the claims challenged in the Petition.” 35 U.S.C. §
`
`314. Thus, the Petition should be denied in its entirety and no trial should be
`
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`instituted.
`
`II. OVERVIEW OF THE ‘902 PATENT AND CHALLENGED CLAIMS
`
`The ‘902 Patent is directed at an improved form of “mutual capacitance”
`
`touch panel. A mutual capacitance touch panel detects the location of a touch by
`
`sensing a change in capacitance between two conductor elements resulting from
`
`the presence of the touching object (e.g., a user’s finger) on the panel. By contrast,
`
`a “self capacitance” touch panel detects the position of touch simply by sensing the
`
`effect of the presence of an object on the capacitance between a single conductor
`
`element and the ground. (See, e.g., G. Barrett & R. Omote, “Projected-Capacitive
`
`Touch Technology,” at 16-17 (Exhibit TPK 2001).)
`
`As explained in the ‘902 Patent, prior art mutual capacitance touch panels
`
`required a construction “including two capacitive sensing layers spaced from each
`
`other with an insulation material to effect capacitive effect between the layers.”
`
`(Ex. 1001 at 2:58-63.) The same was still the state of the art in 2010. (See, e.g.,
`
`Exhibit TPK 2001 at 17 (noting that “[i]n a mutual-capacitance touch screen,
`
`transparent conductors are always patterned into spatially separated electrodes in
`
`two layers, usually arranged as rows and columns”).) Discussing the prior art, the
`
`‘902 Patent notes that the traditional requirement of two overlapping conductive
`
`layers “makes the structure of the panel very thick and is thus against the trend of
`
`miniaturization.” (Id. at 2:63-64.) Moreover, because the two sensing layers are
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`generally formed on opposite sides of an insulating substrate, manufacturing such a
`
`panel may be “complicate[d]” by the need to form “through holes” in the substrate
`
`and to adopt “circuit layering” to connect the two layers. (Id. at 2:64-3:3.)
`
`The ‘902 Patent addresses these shortcomings by teaching a transparent,
`
`“thin conductor pattern structure” (id. at 3:11-13) that requires only a single layer
`
`of conductors. The structure is illustrated below in Figure 1 of the Patent:
`
`The preferred embodiment of the ‘902 Patent is a conductor pattern structure
`
`comprising multiple rows of “conductor assemblies” extending along both the x-
`
`axis and y-axis (“first-axis conductor assemblies” 13 and “second-axis conductor
`
`assemblies” 14, respectively) that are formed on the surface of a substrate such as
`
`glass. (Id. at 4:41-63, 5:47.) Each first-axis conductor assembly is comprised of
`
`“a plurality of first-axis conductor cells 131 that are lined up along the first axis” in
`
`a “substantially equally-spaced manner.” (Id. at 4:53-65.) The first-axis conductor
`
`assemblies and conductor cells are placed so that “a disposition zone 15 is
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`delimited between adjacent first-axis conductor assemblies 13 and adjacent first-
`
`axis conductor cells.” Set in these disposition zones are substantially equally-
`
`spaced “second-axis conductor cells” 141 that are lined up along the second axis to
`
`form rows of “second-axis conductor assembl[ies]” 14. (Id. at 4:67-5:22.)
`
`Each adjacent first-axis conductor cell in a conductor assembly is joined by
`
`a “first-axis conduction line “ 132 that electrically connects the entire first-axis
`
`conductor assembly. (Id. at 5:3-10.) Similarly, each adjacent second-axis
`
`conductor cell in a second-axis conductor assembly is joined by a “second-axis
`
`conduction line” 142 that electrically connects the entire second-axis conductor
`
`assembly. (Id. at 5:29-32.) Both the first-axis and second-axis conductor
`
`assemblies are further connected to signal transmission lines 16a and 16b that can
`
`transmit signals to a control circuit. (Id. at 5:10-13, 5:32-34.) Both the conducting
`
`cells and conducting lines may be made of “transparent conductive film, such as an
`
`ITO [indium tin oxide] conductive film.” (Id. at 5:48-52.)
`
`To electrically separate the first-axis and second-axis conductor assemblies,
`
`the surface of each of the first-axis conduction lines 132 is covered by a
`
`transparent insulation cover layer 17 made of silicon dioxide. (Id. at 5:14-17.)
`
`Each second-axis conductor line 142 then “extends over and across a surface of
`
`each insulation layer” 17 to electrically connect the second-axis conductor cells of
`
`the same second-conductor assembly. (Id. at 5:24-29.) This arrangement of
`
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`conduction lines is illustrated in figure 2 of the Patent:
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`Case IPR 2013-00568
`Patent Owner Preliminary Response
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`When a user places his or her finger on a contact area A on the panel, “the
`
`first-axis conductor cell 131 of the first-axis conductor assembly 13 and the
`
`second-axis conductor cell 141 of the second-axis conductor assembly 14, which
`
`are covered by the contact area A, induce a capacitor effect therebetween,”
`
`causing a signal to be transmitted to the control circuit indicating the location of
`
`the contact area. (Id. at 5:58-6:5 (emphasis added)).
`
`The ‘902 Patent further teaches various methods for manufacturing the
`
`preferred conductor pattern structure. In one method, transparent ITO conductive
`
`film is applied to the surface of the substrate and then etched and stripped to form
`
`the first-axis and second-axis conductor cells, as well as the first-axis conduction
`
`lines. (Id. at 6:34-52.) Insulation covering material then is applied to the first-axis
`
`conduction lines. (Id. at 6:53-55.) Finally, additional transparent conductive film
`
`is applied across the surface of the insulation cover to form the second-axis
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`conduction lines connecting the second-axis conductor cells. (Id. at 6:55-67.)
`
`The conductor pattern structure of the ‘902 Patent thus achieves multiple
`
`benefits over the prior art. The structure is thinner than prior art mutual-
`
`capacitance solutions because all conductor cells are formed on the same surface of
`
`the substrate (id. at 3:49-54) and touch position is detected by measuring the
`
`capacitance between adjoining conductor cells in a single layer, rather than
`
`overlapping conductor cells in two different layers. (Id. at 3:54-62.) The
`
`improved thinness of this structure also yields greater transparency, which is
`
`beneficial for a touch panel device. Finally, because the disclosed conductor
`
`assemblies “can be formed on only one surface of the substrate by [] general circuit
`
`laying techniques,” the conductor pattern structure can be manufactured using “a
`
`simple process with high passing rate and low costs.” (Id. at 3:63-67.)
`
`Petitioner has requested inter partes review of claims 1-68 of the ‘902 Patent,
`
`which include 13 independent claims: claims 1, 6, 17, 25, 46 and 53, which are
`
`directed at the conductor pattern structure apparatus disclosed in the patent; and
`
`claims 32, 35, 42, 44, 58, 66 and 68, which are directed at methods of constructing
`
`the disclosed conductor pattern structure. All claims require the same basic
`
`structure involving first-axis and second-axis conductor cells on the same surface
`
`of the substrate electrically connected by conduction lines. In addition,
`
`independent claims 17, 25, 35, 44 and 68 all claim measuring “a capacitance
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`between a first cell of the plurality of the first-axis conductor cells and a second
`
`cell of the plurality of second-axis conductor cells to detect a position of touch.”
`
`III. PETITIONER’S PROPOSED CONSTRUCTIONS FAIL TO
`COMPLY WITH 37 C.F.R. § 42.104(b)(3)
`
`As part of the determination whether to institute a trial, the Board must
`
`interpret the challenged claims, which may include determining a specific meaning
`
`for certain critical claim terms or phrases, by applying the “broadest reasonable
`
`interpretation” standard. 37 C.F.R. § 42.100(b); see also Synopsys, Inc. v. Mentor
`
`Graphics Corp., IPR2012-00041, Paper No. 16 at 5-7 (PTAB Feb. 22, 2013).
`
`Generally, claim terms should be given their ordinary and customary meaning as
`
`would be understood by one of ordinary skill in the art. Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`This standard, however, does not give the Board (or a petitioner) “an
`
`unfettered license to interpret claims to embrace anything remotely related to the
`
`claimed invention.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
`
`2010). Rather, it is well settled that the “broadest reasonable interpretation” must
`
`be applied in view of the specification as interpreted by one of ordinary skill in the
`
`art at the time of the invention. Thus, claim interpretations are only reasonable if
`
`they are consistent with the specification. Id.
`
`In a section entitled “Claim Construction,” Petitioner argues that the claim
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`term “in a substantially equally-spaced manner,” which appears in claims 1, 17, 25,
`
`32, 35, 42, 44, 46, 58, 66 and 68 of the ‘902 Patent, should be construed to mean
`
`“the distances between the centers of adjacent conductor cells or between the edges
`
`of adjacent conductor cells are substantially equal.” Petitioner’s proposed
`
`construction, while purporting to be the “broadest reasonable interpretation,” in
`
`fact imposes arbitrary constraints on the claim term that Petitioner concedes appear
`
`nowhere in the intrinsic record. Moreover, Petitioner does not even explain why
`
`such a construction is necessary, as Petitioner does not assert that any of the
`
`grounds raised in the Petition requires its proposed construction. See, e.g., Corning
`
`Inc. v. DSM IP Assets B.V, IPR2013-00045, Paper No. 11 at 6-7 (PTAB May 13,
`
`2013) (agreeing that claim construction is “unnecessary” and that “the limitations
`
`discussed need not be construed in a manner that departs from their ordinary and
`
`customary meanings for purposes of this decision”). Accordingly, Petitioner’s
`
`unsupported and unnecessary construction should be rejected, and the term “in a
`
`substantially equally-spaced manner” should simply be given its ordinary meaning.
`
`Moreover, while not raised in its “Claim Construction” section, Petitioner
`
`appears to take the position that the limitation “wherein a capacitance between a
`
`first cell of a plurality of first-axis conductor cells and a second cell of the plurality
`
`of second-axis conductor cells is measured,” which appears in claims 17-19, 21, 22,
`
`25-27, 29, 35, 44 and 68 of the ‘902 Patent, may be satisfied by “the measurement
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`Case IPR 2013-00568
`Patent Owner Preliminary Response
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`of capacitance induced between the conductor element being sampled and the
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`object touching the conductor pattern structure and the capacitance induced
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`between the object and a conductor element not being sampled.” (Petition at 23-
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`24.) Patent Owner disagrees with Petitioner’s apparent construction of this
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`limitation, which is contrary to its plain and ordinary meaning. The claims
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`specifically require measuring a capacitance between two conductor cells, not
`
`measuring two capacitances, one between a conductor cell and a foreign object and
`
`one between another conductor cell and that object. Patent Owner therefore
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`respectfully requests that Petitioner’s apparent construction of this term be rejected.
`
`IV. NONE OF THE PROPOSED GROUNDS SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING ON THE CHALLENGED CLAIMS
`
`The nine proposed Grounds raised in the Petition suffer from numerous
`
`deficiencies, each of which demonstrates that there is no reasonable likelihood the
`
`Petitioner will prevail with respect to any of the challenged claims. Patent Owner
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`provides herein preliminary examples of why the proposed Grounds fail to render
`
`the challenged claims unpatentable, and expressly reserves the right to provide
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`additional reasons should the Board institute trial on any Ground.
`
`A.
`
`Ground 1: Fujitsu Does Not Disclose the Limitations of the
`Challenged Claims
`Proposed Ground 1 alleges that Fujitsu (Ex. 1005) discloses all the
`
`limitations of claims 1-15, 24, 32, 34, 36-40, 42, 43, 46-58, and 60-67.
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`Patent Owner Preliminary Response
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`Fujitsu is directed to a touch panel that measures input as a function of
`
`capacitance between an electrode and a user’s finger. (See Ex. 1006 at 1 and 4-6.)1
`
`The touch panel includes a plurality of X electrodes connected to an X driver
`
`circuit and an X adder circuit, as well as a plurality of Y electrodes connected to a
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`Y driver circuit and a Y adder circuit. (Id.) In operation, the X driver circuit
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`sequentially “drives” the X electrodes by applying an input signal at a first end of
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`each electrode. (Ex. 1006 at 6-7.) The X adder circuit then measures an output
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`signal at the other end of each electrode. (Id.) When a user is touching the panel,
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`the X adder circuit detects an increase in the output signal resulting from a
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`capacitance formed between the user’s finger and the X electrode he has touched.
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`(Id. at Abstract (“In this case, the electrostatic capacity is applied to the conductor
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`line at a position on the panel 10 where a finger, etc. has touch[ed].”).) The same
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`process is performed for the Y electrodes, and then a position detecting circuit
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`combines the X and Y coordinates to determine the location of touch. (Id.)
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`As set forth below, Fujitsu fails to disclose at least one material claim
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`limitation in each of the challenged claims. Likewise, Petitioner’s conclusory
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`claim charts fail to establish a basis for alleging that Fujitsu satisfies the limitations
`
`1 References to page numbers in Ex. 1006 refer to Petitioner’s marking in
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`the bottom left-hand corner of the exhibit (e.g., “Page 1 of 15”).
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`of the challenged claims. In many places, Petitioner quotes or cites text and
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`figures in Fujitsu without an explanation as to how the quoted or cited material
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`align with the claim language. This is improper. See, e.g., Denso Corporation and
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`Clarion Co. Ltd. v. Beacon Navigation GmbH, IPR2013-00026, Paper No. 12 at 18
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`(PTAB March 18, 2013) (“Petitioners substantially rely on claim charts to establish
`
`their anticipation contentions without significant explanation apart from the chart
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`… Relying on claim charts with little or no supporting discussion or explanation
`
`assumes that the anticipation contentions are self-evident from them. That is
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`usually not the case”); Tasco, Inc. v. David Pagnani, IPR2013-00103, Paper No. 6
`
`at 11 (“Rather than providing specificity, Petitioner merely identifies structures in
`
`Blades, without explaining why or how the identified structures allegedly meet the
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`requirements of the claim”); Norman Noble, Inc. v. NUTech Ventures, IPR2013-
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`00101, Paper No. 14 (PTAB June 20, 2013) at 10; see also 77 Fed. Reg. 48763.
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`Petitioner’s expert declaration submitted in support of this Ground is also deficient
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`as it merely parrots the analysis in the Petition without providing factual support
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`for its conclusion that Fujitsu anticipates the challenged claims. This does nothing
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`to remedy the deficiencies in the Petition. See, e.g., Monsanto, IPR2013-00022,
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`Paper No. 43 at 7-8; Wowza, IPR2013-00054, Paper No. 12 at 12. Accordingly,
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`Petitioner has not demonstrated a reasonable likelihood of success for Ground 1
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`with respect to any of the challenged claims.
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`Patent Owner Preliminary Response
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`1.
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`Fujitsu Does Not Disclose The “Conductor Assemblies” or
`“Conductor Cells” of the Independent Claims
`
`Every independent claim of the ‘902 Patent discloses a conductor pattern
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`structure or method of constructing a conductor pattern structure comprising
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`“conductor cells” that are connected by “conduction lines.” Independent claims 1,
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`32, 42, 46, 58, and 66 challenged under Ground 1 further disclose that these
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`structures comprise “conductor assemblies.”
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`Petitioner cites Figure 7 of Fujitsu as disclosing the “conductor assembly,”
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`“conductor cell” and “conduction line” limitations. (See, e.g., Petition at 11.)
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`Specifically, Petitioner identifies electrodes 101 as “conductor assemblies” and the
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`widened portions W1 of each electrode as “conductor cells.” (Id.) This is an
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`incorrect interpretation of Fujitsu. The electrodes 101 of Fujitsu are not
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`“conductor assemblies” comprising distinct cells and lines; they are simply
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`“electrodes” as described in the Fujitsu specification and claims. (Ex. 1006 at 6
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`(“[A] number m of X side transparent conductive lines (hereafter referred to as X
`
`electrodes) 101a-101m is arranged in parallel with one another, and a number n of
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`Y side transparent conductive lines (hereafter referred to as Y electrodes) 102a-
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`102n is arranged in parallel with one another to cross a group of the X electrodes
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`101a-101m.”).) The portions W1 that Petitioner erroneously identifies as
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`“conductor cells” are simply a wider section of the same electrodes. (Id. at 8-9
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`Patent Owner Preliminary Response
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`(“Accordingly, the width of the electrode other than in the intersection portion is
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`configured to be as large as represented by W1 in FIG. 7-(A.).”).) The Board
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`should reject Petitioner’s improper attempt to rely on the same structure in Fujitsu
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`– electrodes – as disclosing three different elements of the claim – “conductor
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`assemblies,” “conductive lines,” and “conductor cells.” See Lantech Inc. v. Keip
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`Machine Co., 32 F.3d 542, 547 (Fed. Cir. 1994) (“When a claim requires two
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`separate elements, one element construed as having two separate functions will not
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`suffice to meet the terms of the claim.”); Ex Parte Konstant, Appeal No. 2009-
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`001901, Decision on Appeal at 7 (PTAB August 20, 2009) (“Consistent with the
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`principle that all limitations in a claim must be considered to be meaningful, it is
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`improper to rely on the
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