Filed on behalf of TPK Touch Solutions Inc.
`
`Case IPR 2014-00541
`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 IPR2014-00541
`U.S. Patent No. 8,217,902
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`Case IPR 2014-00541
`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 IPR2014-00541
`U.S. Patent No. 8,217,902
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`A.
`
`B.
`
`Procedural Background.........................................................................1
`
`Summary of Patent Owner’s Response.................................................5
`
`II.
`
`OVERVIEW OF THE ‘902 PATENT AND CHALLENGED
`CLAIMS ..........................................................................................................8
`
`III. CLAIM CONSTRUCTION ..........................................................................13
`
`IV. NONE OF THE PROPOSED GROUNDS SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING ON THE CHALLENGED
`CLAIMS ........................................................................................................16
`
`A.
`
`Grounds 1 and 2: Combinations Based On Binstead and Miller.......16
`
`1.
`
`Binstead Does Not Disclose All of the Limitations of
`Independent Claims 17 and 25..................................................16
`
`(a)
`
`(b)
`
`(c)
`
`Binstead Does Not Disclose “Conductor
`Assemblies,” “Conductor Cells” or “Conduction
`Lines”..............................................................................17
`
`Binstead Does Not Disclose “A Plurality of
`Second-Axis Conductor Assemblies, Each Second-
`Axis Conductor Assembly Comprising a Plurality
`of Second-Axis Conductor Cells Arranged on the
`Surface of the Substrate…” or “a Plurality of
`Signal Transmission Lines Formed on the Surface
`of he Substrate”...............................................................18
`
`Binstead Does Not Disclose Measuring 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 to
`Detect a Position of Touch”............................................21
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`U.S. Patent No. 8,217,902
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`2.
`
`3.
`
`4.
`
`The Combination of Binstead and Miller Does Not
`Render Obvious the Mutual Capacitance Limitations of
`Claims 17 and 25.......................................................................24
`
`Petitioner’s Proposed Three-Reference Combinations
`Based on Seguine and Honeywell Fail to Raise a Prima
`Facie Case that Claims 23 and 30 are Obvious........................34
`
`Petitioner’s Proposed Combination in Ground 2 Is
`Cumulative and Redundant with Respect to Claims 20
`and 28........................................................................................39
`
`B.
`
`Grounds 3 and 4: Combinations Based On Fujitsu and Miller..........39
`
`1.
`
`Petitioner’s Proposed Combination of Fujitsu with Miller
`Fails to Teach or Suggest All of the Limitations of
`Independent Claims 17 and 25..................................................39
`
`(a)
`
`(b)
`
`The Combination of Fujitsu and Miller Does Not
`Disclose “Conductor Assemblies” or “Conductor
`Cells” ..............................................................................40
`
`The Combination of Fujitsu and Miller Does Not
`Disclose “A Plurality of Signal Transmission Lines
`Formed on the Surface of the Substrate”........................42
`
`The Combination of Fujitsu and Miller Does Not Render
`Obvious the Mutual Capacitance Limitations of Claims
`17 and 25...................................................................................47
`
`Petitioner’s Proposed Three-Reference Combinations
`Based on Seguine and Honeywell Fail to Raise a Prima
`Facie Case that Claims 23 and 30 are Obvious........................56
`
`2.
`
`3.
`
`V.
`
`CONCLUSION..............................................................................................60
`
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`TABLE OF AUTHORITIES
`
`CASES
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010)........................................................................41
`Berk-Tek, LLC v. Belden, Inc.,
`IPR2013-00057, Paper No. 46 (PTAB Nov. 19, 2012) ............................ 27, 50
`Cimline, Inc. v. Crafco, Inc.,
`672 F. Supp. 2d 916 (D. Minnesota 2009).......................................... 38, 52, 59
`Cont’l Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991)........................................................................23
`Corning Inc. v. DSM IP Assets B.V,
`IPR2013-00045, Paper No. 11 (PTAB May 13, 2013)....................................15
`Cyanotech Corp. v. The Board of Trustees of the University of Illinois,
`IPR2013-00401, Paper No. 17 (PTAB Jun. 28, 2013) ............................. 28, 50
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009)................................................................. 29, 51
`Engel Indus., Inc. v. Lockformer Co.,
`96 F.3d 1398 (Fed. Cir. 1996)............................................................. 41, 46, 47
`Ex Parte Konstant,
`Appeal No. 2009-001901, Decision on Appeal (BPAI Aug. 20, 2009) ... 42, 46
`Ex Parte Koutsky,
`Appeal No. 2008-0557, Decision on Appeal (BPAI Sep. 23, 2008)...............42
`Ex Parte Weideman,
`Appeal No. 2008-3454, Decision on Appeal (BPAI Jan. 27, 2009)... 42, 46, 47
`Excelsior Med. Corp. v. Robert Lake,
`IPR2013-00494, Paper No. 10 (PTAB Aug. 6, 2013) .............................. 27, 50
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004)........................................................................41
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988)..................................................... 32, 38, 54, 60
`In re Fitch,
`972 F.2d 1260 (Fed. Cir. 1992)..................................................... 30, 35, 53, 57
`
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`U.S. Patent No. 8,217,902
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`In re Gordon,
`733 F.2d 900 USPQ 1125 (Fed. Cir. 1984) .....................................................29
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994)..................................................................... 34, 55
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986)........................................................................31
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011)................................................................. 32, 54
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) .....................................14
`In re Wesslau,
`353 F.2d 238, 147 U.S.P.Q. 391 (CCPA 1965)........................................ 31, 53
`In re Young, 927 F.2d 588 (Fed. Cir. 1991)...................................................... 25, 48
`Lantech Inc. v. Keip Machine Co.,
`32 F.3d 542 (Fed. Cir. 1994)............................................................................41
`Leo Pharmaceutical Products Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. Aug. 12, 2013)............................................ 38, 52, 59
`Medien Patent Verwaltung AG v. Warner Bros. Entm’t,
`2014 U.S. Dist. LEXIS 12360 (S.D.N.Y. Jan 29, 2014) .......................... 30, 52
`Monsanto Company v. Pioneer Hi-Bred International, Inc.,
`IPR2013-00022, Paper No. 43 (PTAB April 11, 2013)........................ 8, 30, 52
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................14
`Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005)................................................................ passim
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041 (PTAB Feb. 22, 2013) ...........................................................14
`Transclean Corp. v. Bridgewood Servs., Inc.,
`290 F.3d 1364 (Fed. Cir. 2002)........................................................................24
`Wowza Media Systems v. Adobe Systems Inc.,
`IPR2013-00054, Paper No. 12 (PTAB Nov. 17, 2012) ........................ 8, 30, 52
`
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`STATUTES
`35 U.S.C. § 314..........................................................................................................8
`37 C.F.R. § 42.100 ...............................................................................................1, 14
`MPEP § 2143.01 ............................................................................................... 33, 55
`
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`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`TPK 2001
`
`TPK 2002
`
`TPK 2003
`
`TPK 2004
`
`TPK 2005
`
`TPK 2006
`
`G. Barrett & R. Omote, “Projected-Capacitive Touch
`Technology,”
`
`Testimony of Dr. Subramanian in U.S.I.T.C. Inv. No. 337-TA-
`750
`
`Medien Patent Verwaltung AG v. Warner Bros. Entm’t, 2014
`U.S. Dist. LEXIS 12360, 44-45 (S.D.N.Y. Jan 29, 2014)
`
`Ex Parte Konstant, Appeal No. 2009-001901, Decision on
`Appeal at 7 (BPAI Aug. 20, 2009)
`
`Ex Parte Weideman, Appeal No. 2008-3454, Decision on
`Appeal at 7 (BPAI Jan. 27, 2009)
`
`Ex Parte Koutsky, Appeal No. 2008-0557, Decision on Appeal
`at 4 (BPAI Sep. 23, 2008)
`
`vi
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`Case IPR 2014-00541
`U.S. Patent No. 8,217,902
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`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 March 26, 2014, which seeks inter partes review of
`
`claims 20, 23, 28, and 30 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 of these challenged claims.
`
`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
`
`A.
`
`Procedural Background
`
`On September 4, 2013, Petitioner filed two petitions under 37 C.F.R. §
`
`42.100 et seq., both of which sought inter partes review of all claims (1-68) of the
`
`‘902 Patent. IPR2013-00567, Paper 2 (“the ‘567 IPR”); IPR2013-00568, Paper 2
`
`(“the ‘568 IPR”). In particular, Petitioner raised nine proposed grounds in the ‘567
`
`IPR, challenging the claims based on the Binstead, Miller, Bolender, Seguine, and
`
`Lambert references. ‘567 IPR, Paper 2 at 4. In the ‘568 IPR, Petitioner raised nine
`
`additional proposed grounds, challenging the claims based on the Fujitsu,
`
`Honeywell, Binstead, Bolender, and Seguine references. ‘568 IPR, Paper 2 at 4.
`
`On December 11, 2013, Patent Owner filed preliminary responses to the two
`
`petitions pursuant to 37 C.F.R. § 42.107, presenting various arguments as to why
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`none of these proposed grounds rendered any of the challenged claims
`
`unpatentable, and requesting that inter partes review not be instituted. ‘567 IPR,
`
`Paper 7; ‘568 IPR, Paper 7. On February 27, 2014, the Board issued institution
`
`decisions in the ‘567 and ‘568 IPRs, granting both petitions in-part, and instituting
`
`inter partes review for certain claims based on certain of the proposed grounds
`
`raised in the two petitions. ‘567 IPR, Paper 10 (“‘567 Decision”) at 29; ‘568 IPR,
`
`Paper 10 (“‘568 Decision”) at 30.
`
`Specifically, in the ‘567 IPR, the Board granted the petition only as to the
`
`following proposed grounds and challenged claims:
`
`
`
`Claims 1-3, 5-8, 10-13, 15, 24, 32, 34, 36, 37, 39, 40, 42, 43, 46-48,
`50-55, 57, 58, 60-62, and 64-67 as anticipated under § 102 by
`Binstead;
`Claims 4, 9, 14, 16, 31, 38, 41, 45, 49, 56, and 63 as unpatentable
`under § 103 over Binstead and Honeywell;
`Claims 33 and 59 as unpatentable under § 103 over Binstead and
`Bolender; and
`Claims 17-19, 21, 22, 25-27, 29, 35, 44, and 68 as unpatentable under
`§ 103 over Binstead and Miller.
`(‘567 Decision at 29). The Board explicitly denied the petition as to all other
`
`
`
`
`
`
`
`grounds proposed by Petitioner. (Id. at 21). Thus, the Board confirmed the
`
`patentability of claims 20, 23, 28, and 30 of the ‘902 Patent over all of the grounds
`
`asserted in the petition against these claims. In particular, the Board determined
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`that Petitioner had not even shown a reasonable likelihood of prevailing with
`
`respect to any of these four claims based on its asserted combinations of: (i)
`
`Binstead and Honeywell; (ii) Lambert and Miller; and/or (iii) Lambert and Seguine.
`
`In the ‘568 IPR, the Board granted the petition only as to the following
`
`proposed grounds and challenged claims:
`
`
`
`
`
`Claims 1-15, 24, 32, 34, 36-40, 42, 43, 46-58, and 60-67 as
`anticipated under § 102 by Fujitsu;
`Claims 11-15, 34, 43, 51, 60, and 67 as unpatentable under § 103 over
`Fujitsu and Binstead;
`Claims 17-22, 25-29, 35, 44, and 68 as unpatentable under § 103 over
`Fujitsu and Miller;
`Claims 5, 10, 15, 16, 31, 39, 41, 45, 50, 57, and 64 as unpatentable
`under § 103 over Fujitsu and Seguine;
`Claims 33 and 59 as unpatentable under § 103 over Fujitsu and
`Bolender.
`(‘568 Decision at 31). The Board explicitly denied the petition as to all other
`
`
`
`
`
`
`
`grounds proposed by Petitioner. (Id. at 21). Accordingly, like the ‘567 IPR, the
`
`Board confirmed the patentability of claims 23 and 30 of the ‘902 Patent over all of
`
`the grounds asserted in the petition against these two claims. In particular, the
`
`Board determined that Petitioner had not even shown a reasonable likelihood of
`
`prevailing with respect to either of these claims based on its asserted combinations
`
`of (i) Fujitsu and Seguine, (iv) Honeywell and Binstead, and/or (v) Honeywell and
`
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`Seguine. With respect to claims 20 and 28, however, the Board instituted trial in
`
`the 568 IPR for these claims based on the proposed combination of Fujitsu with
`
`Miller.
`
`Petitioner filed a Request for Rehearing in the ‘568 IPR on March 10, 2014,
`
`requesting that the Board reconsider its denial of proposed ground 4 based on
`
`Fujitsu and Seguine (which included claims 20, 23, 28 and 30). Petitioner argued
`
`that Board incorrectly determined that Seguine only discloses measuring
`
`capacitance between an object and a conductive element (i.e., self-capacitance) and
`
`fails to disclose measuring capacitance between two conductor cells to determine a
`
`position of touch (i.e., trans-capacitance), as required by claims 17 and 25. ‘568
`
`Decision at 24-25; ‘568 IPR, Request for Rehearing, Paper 12.
`
`On March 25, 2014, the Board denied the request, finding Petitioner’s
`
`arguments unpersuasive and confirming its previous determinations regarding the
`
`Seguine reference. Order, Paper 14 at 5.
`
`After failing to persuade the Board that it had demonstrated a reasonable
`
`likelihood of prevailing with respect to these claims in the ‘567 and ‘568 IPRs,
`
`Petitioner then filed a third Petition on March 26, 2014, challenging claims 20, 23,
`
`28, and 30 of the ‘902 Patent. In this latest challenge, Petitioner relies on the same
`
`asserted references (i.e., Binstead, Fujitsu, Miller, Honeywell and Seguine) and
`
`proposes four new grounds each of which is based on a three-reference
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`obviousness combination. Specifically, Petitioner, asserts the following new
`
`grounds:
`
`
`
`
`
`
`
`
`
`B.
`
`Ground 1: Claims 23 and 30 under 35 U.S.C. § 103 based on
`Binstead, Miller, and Seguine;
`Ground 2: Claims 20, 23, 28, and 30 under 35 U.S.C. § 103 based on
`Binstead, Miller, and Honeywell;
`Ground 3: Claims 23 and 30 under 35 U.S.C. § 103 based on Fujitsu,
`Miller, and Seguine;
`Ground 4: Claims 23 and 30 under 35 U.S.C. § 103 based on Fujitsu,
`Miller, and Honeywell.
`Summary of Patent Owner’s Response
`
`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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`This third petition seeks inter partes review of dependent claims 20, 23, 28,
`
`and 30 of the ‘902 Patent. However, once again, Petitioner does not raise a
`
`meaningful challenge with respect to the patentability of any of these four
`
`challenged claims. First, in all four of Petitioner’s proposed obviousness grounds,
`
`the primary references relied on to show the independent claims (i.e., Binstead and
`
`Fujitsu) are missing critical limitations recited in these base claims (i.e., claims 17
`
`and 25). In particular, neither reference teaches or suggests 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 both independent claims. Indeed,
`
`in the ‘567 and ‘568 IPRs, the Board agreed that neither Binstead nor Fujitsu,
`
`teaches this limitation.
`
`Second, the combinations of Binstead with Miller and Fujitsu with Miller,
`
`relied upon in all four grounds, fail to raise a prima facie case of obviousness with
`
`respect to these independent base claims. 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,
`
`the references Petitioner seeks to combine expressly teach away from the
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`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.
`
`Third, Petitioner’s sole ground for claims 20 and 28 is redundant in light of
`
`the Board’s Decision in the ‘568 IPR. As acknowledged in the Petition, the Board
`
`has already instituted trial for these two claims in the ‘568 IPR based on the
`
`proposed ground of Fujitsu and Miller. Thus, the new ground proposed in the
`
`instant proceeding, i.e., based on Binstead, Miller, and Honeywell, is cumulative, at
`
`best.
`
`Additionally, 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
`
`5-8, 15-43, with Ex. 1013 at ¶¶ 18-25, 30-68). 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 v. Adobe Systems
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`Inc., IPR2013-00054, Paper No. 12 at 12 (PTAB Nov. 17, 2012).
`
`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
`
`instituted.
`
`II. OVERVIEW OF THE ‘902 PATENT AND CHALLENGED CLAIMS
`
`The ‘902 Patent is directed at an improved transparent “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 (TPK Ex. 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.,
`
`TPK 2001 at 17 (noting that “[i]n a mutual-capacitance touch screen, transparent
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`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). Because the two sensing layers are generally
`
`formed on opposite sides of an insulating substrate, manufacturing such a panel
`
`may be “complicate[d]” by the need to form connecting “through holes” in the
`
`substrate and to adopt “circuit layering” to connect the 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-
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`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
`
`delimited between adjacent first-axis conductor assemblies 13 and adjacent first-
`
`axis conductor cells.” (Id. at 4:67-5:2). 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 5:17-22). 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). The conductor cells and conductive lines
`
`that together form the conductor assemblies may be made of “transparent
`
`conductive film, such as an ITO [indium tin oxide] conductive film.” (Id. at 5:48-
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`52).
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`To electrically separate the first-axis and second-axis conductor assemblies,
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`the surface of each of the first-axis conduction lines 132 is covered by a
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`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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`The first-axis and second-axis conductor assemblies are further connected to
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`signal transmission lines 16a and 16b that can transmit signals to a control circuit.
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`(Id. at 5:10-13, 5:32-34). Keeping with the ‘902 Patent’s disclosure of a single-
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`layer solution, the signal transmission lines are formed on the same surface of the
`
`substrate as the “conductor assemblies.” (Id. at Fig. 1).
`
`The structure of the ‘902 Patent detects a location of touch input through the
`
`principle of mutual capacitance. When a user places his or her finger on a contact
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`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 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
`
`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
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`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 of the ‘902 Patent 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 20, 23, 28, and 30 of
`
`the ‘902 Patent, each of which depends from either independent claim 17 or 25.
`
`Both independent claims require the same structure comprising first-axis and
`
`second-axis conductor cells on the same surface of the substrate electrically
`
`connected by conduction lines, where the cells consist of a transparent conductive
`
`material. In addition, these independent claims also require measuring “a
`
`capacitance 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.” Claims 23 and 30, which depend from claims 17 and 25 respectively,
`
`further require that the transparent conductive material for the first- and second-
`
`axis conductor cells be indium tin oxide (ITO). Similarly, claims 20 and 28, which
`
`depend from claims 17 and 25, require that the insulation layer of the of the first-
`
`axis conduction lines consists of a transparent insulation material.
`
`III. CLAIM CONSTRUCTION
`
`As part of the determination whether to institute a trial, the Board must
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`interpret the challenged claims, which may include determining a specific meaning
`
`for certain critical claim terms or phrases, by applying the “broadest reasonable
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`interpretation” standard. 37 C.F.R. § 42.100(b); see also Synopsys, Inc. v. Mentor
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`Graphics Corp., IPR2012-00041 (PTAB Feb. 22, 2013), Paper No. 16 at 5-7.
`
`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.,
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`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. (“claims should always be read in
`
`light of the specification and teachings in the underlying patent.”).
`
`In a section entitled “Claim Construction,” Petitioner argues that the claim
`
`term “in a substantially equally-spaced manner,” which appears in independent
`
`claims 17 and 25 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 raised this very same proposed
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`construction in both the ‘567 and ‘568 IPRs. The Board rejected Petitioner’s
`
`construction, agreeing with Patent Owner that this term does not need to be
`
`specifically construed and, instead, should be given its plain and ordinary meaning.
`
`As Patent Owner previously explained, 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. In turn, 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).
`
`Accordingly, Petitioner’s attempt to reargue its unsupported and unnecessary
`
`construction should be rejected, and the term “in a substantially equally-spaced
`
`manner” should simply be given its plain and ordinary meaning.
`
`Petitioner also argues that all remaining terms in claims 20, 23, 28, and 30
`
`should be given their plain and ordinary meaning under the broadest reasonable
`
`interpretation standard. (Petition at 12). To the extent Petitioner interprets the
`
`plain and ordinary meaning of the term “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 cells is measured” differently from the Board’s interpretation of the
`
`term in its ‘567 and ‘568 Decisions (see Petition at 21 n.6), Patent Owner
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`respectfully disagrees. As acknowledged by Petitioner, in its Decisions, the Board
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`construed this term to “require measuring capacitance between a first-axis
`
`conductor cell and a second-axis conductor cell.” See ‘567 Decision at 11.
`
`IV. NONE OF THE PROPOSED GROUNDS SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING ON THE CHALLENGED CLAIMS
`
`The four proposed Grounds raised in the Petition suffer from a number of
`
`deficiencies, each of which demonstrates that there is no reasonable likelihood the
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`Petitioner will prevail with respect to any of the challenged claims. Patent Owner
`
`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.
`
`Grounds 1 and 2: Combinations Based On Binstead and Miller
`A.
`Proposed Ground 1 alleges that Binstead in view of Miller, and further in
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`view of Seguine renders obvious claims 23 and 30 of the ‘902 Patent. Proposed
`
`Ground 2 alleges that Binstead in view of Miller, and further in view of Honey
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