Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper No. 13
`Entered: June 17, 2014
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`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
`Patent 8,217,902 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS and RICHARD E. RICE, Administrative Patent
`Judges.
`
`PER CURIAM.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2014-00541
`Patent 8,217,902 B2
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`I. BACKGROUND
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`Pursuant to 35 U.S.C. § 311, Wintek Corporation (“Wintek”) filed a Petition
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`(Paper 2, “Pet.”) to institute an inter partes review of claims 20, 23, 28, and 30 (the
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`“challenged claims”) of US Patent No. 8,217,902 B2, issued July 10, 2012
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`(Ex. 1001, “the ’902 patent”). TPK Touch Solutions, Inc. (“TPK”) timely filed a
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`Preliminary Response (Paper 12, “Prelim. Resp.”) contending that the Petition
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`should be denied as to all challenged claims.
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`The ’902 patent is involved in an ongoing district court litigation, TPK
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`Touch Solutions, Inc. v. Wintek Electro-Optics Corp., No.3:13-cv-02218 (N.D.
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`Cal. 2013). Pet. 3. In addition, Wintek filed an ex parte reexamination request
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`(Control No. 90/012,869) for the ’902 patent, which was granted on June 20, 2013.
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`Id. at 2. Lastly, Wintek filed two Petitions to institute inter partes reviews of all
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`claims of the ’902 patent, IPR2013-00567 and 568. Id. at 2-3. In the two cases,
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`the Board instituted inter partes reviews on all claims of the ’902 patent, with the
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`exception of dependent claims 23 and 30. Id.
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`We conclude that Wintek has shown, under 35 U.S.C. § 314(a), a reasonable
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`likelihood that it would prevail with respect to claims 20, 23, 28, and 30.
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`
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`A. The ’902 Patent
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`The ’902 patent relates to a conductor pattern for a capacitive touch panel.
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`Ex. 1001, col. 1, ll. 6-8. Prior to the ’902 patent, capacitive touch panels were
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`utilized on personal digital assistants (“PDAs”), electrical appliances, and game
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`machines. Id. at col. 1, ll. 12-21. Conventional touch panels consisted of an array
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`of electrodes often arranged in orthogonal rows and columns formed on a substrate
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`(e.g., glass). Id. at col. 1, ll. 24-31, col. 1, l. 42–col. 3, l. 3. The rows of electrodes
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`were separated from the columns of electrodes by a sheet of insulating material.
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`Id. at col. 2, ll. 57-63. The inventors of the ’902 patent found this mode of
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`separation undesirable as it resulted in a thick panel (id. at col. 2, ll. 63-64) and
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`required a complicated manufacturing process to provide holes through the
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`substrate and circuit layering (id. at col. 2, l. 64–col. 3, l. 4).
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`The ’902 patent discloses a capacitive touch panel wherein the electrode
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`array is formed on the same surface of the substrate. Id. at col. 3, ll. 20-31.
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`Figure 1 of the ’902 patent is reproduced below.
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`Figure 1 of the ’902 patent (colors added).
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`
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`More specifically, the ’902 patent discloses in Figure 1 (a colorized version of
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`which is included above) capacitive touch panel 12. Id. at col. 4, ll. 41-48. Two
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`orthogonal arrays of conductor assemblies 13, 14, each comprised of a row or
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`column of cells (i.e., 131, 141), are formed on top surface 11 of substrate 1. Id. at
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`col. 4, ll. 45-58. Rows of cells 131, depicted in orange, are arranged in parallel to a
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`first or X-axis, whereas columns of cells 141, depicted in purple, are parallel to a
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`second or Y-axis. Id. at col. 4, ll. 49-58. Within each row of first-axis cells 131,
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`cells 131 are electrically connected to one another with one first-axis conduction
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`line 132. Id. at col. 5, ll. 3-13. The rows are further connected to signal
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`transmission lines 16a. Id. Similarly, within each column of second-axis cells
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`141, the cells are electrically connected by second-axis conduction line 142, and
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`each column is further connected to signal transmission line 16b. Id. at col. 5,
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`ll. 24-34. At the intersections of first-axis conduction lines 132 and second-axis
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`conduction lines 142, lays an insulation layer, not depicted in Figure 1. Id. at
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`col. 5, ll. 14-23. The portion of substrate surface 11 delimited between adjacent
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`first-axis assemblies 13 and adjacent first-axis conductor cells 131 is disposition
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`zone 15. Id. at col. 4, l. 67–col. 5, l. 2. Thus, second-axis assemblies 14 are set in
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`disposition zone 15. Id. at col. 5, ll. 22-23.
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`In operation, touch panel 12 functions in the following manner. Assume
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`something (e.g., a user’s finger) touches panel 12 in contact area A. See id. at
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`Fig. 5. First-axis conductor cell 131 and second-axis conductor cell 141, which are
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`covered by contact area A, induce a capacitor effect there between, and a signal is
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`transmitted through the signal transmission lines 16a, 16b to a control circuit,
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`which performs the necessary computation to determine the point of contact A. Id.
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`at col. 5, l. 62–col. 6, l. 5.
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`Insulation layer 17, which is not depicted in Figure 1, may be seen in the
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`partial cross-section depicted in Figure 3, shown in colorized form below.
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`Patent 8,217,902 B2
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`Figure 3 of the ’902 patent (colors added).
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`
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`Insulation layer 17 (depicted in green) is shown between upper surface 133 of first-
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`axis conduction line 132 (depicted in orange) and the lower surface of second-axis
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`conduction line 142 (depicted in purple). Id. at col. 5, ll. 41-47. Thus, unlike the
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`prior art described in the Background section of the ’902 patent, the rows and
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`columns of electrodes are not separated by a sheet of insulation; only the
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`intersections of the rows and columns are separated by insulation.
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`The ’902 patent also relates to a method for constructing a conductor pattern
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`of a capacitive touch panel. First-axis conductor cells 131, second-axis conductor
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`cells 141, first-axis conduction lines 132, and signal transmission lines 16a, 16b are
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`formed together on surface 11 of substrate 1. Id. at col. 6, ll. 20-23; see Fig. 7.
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`Next, insulating layer 17 is applied to cover top surfaces 133 of first-axis
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`conduction lines 132, which intersect with second-axis conduction lines 142. Id. at
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`col. 6, ll. 24-27; see Fig. 8. Lastly, second-axis conduction lines 142 are formed.
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`Id. at col. 6, ll. 27-33; see Fig. 9. Standard methods (e.g., etching, sputtering,
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`screen printing) are employed for carrying out the three construction steps. Id. at
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`col. 6, ll. 34-41.
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`Patent 8,217,902 B2
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`B. Illustrative Claim
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`Claims 20 and 23 are dependent claims stemming from claim 17. Claims 28
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`and 30 are identical to claims 20 and 23, but depend from claim 25. Claim 20 is
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`illustrative of the claims and in conjunction with claim 17 recites:
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`17. A conductor pattern structure of a capacitive touch panel
`formed on a surface of a substrate, the conductor pattern structure
`comprising:
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`a plurality of first-axis conductor assemblies, each first-axis conductor
`assembly comprising a plurality of first-axis conductor cells
`arranged on the surface of the substrate along a first axis in a
`substantially equally-spaced manner, a disposition zone being
`delimited between adjacent ones of the first-axis conductor
`assemblies and between adjacent ones of the first-axis conductor
`cells;
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`a plurality of first-axis conduction lines respectively connecting
`between adjacent ones of the first-axis conductor cells of each
`first-axis conductor assembly so that the first-axis conductor cells
`of each respective first-axis conductor assembly are electrically
`connected together;
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`a plurality of insulation layers, each insulation layer of the plurality of
`insulation layers covering a surface of each first-axis conduction
`line without encompassing the adjacent first-axis conductor cells;
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`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 along a
`second axis in a substantially equally-spaced manner, each second-
`axis conductor cell being set in each disposition zone;
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`a plurality of second-axis conduction lines respectively connecting
`between adjacent ones of the second-axis conductor cells of each
`second-axis conductor assembly so that the second-axis conductor
`cells of each respective second-axis conductor assembly are
`electrically connected together, the second-axis conduction line
`being extended across a surface of the insulation layer of the
`respective first-axis conduction line; and
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`a plurality of signal transmission lines formed on the surface of the
`substrate, each signa1 transmission line respectively connecting
`each first-axis conductor assembly and each second-axis conductor
`assembly,
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`wherein first-axis conductor cells and the second-axis conductor cells
`consist of a transparent conductive material, and
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`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.
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`20. The conductor pattern structure as claimed in claim 17, wherein
`the insulation layer consists of a transparent insulation material.
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`C. The Prior Art
`
`Wintek relies upon the following prior art references:
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`US 6,137,427, issued October 24, 2000 (Ex. 1005) (“Binstead”);
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`Japanese Patent Application 60-75927, published April 30, 1985
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`(Ex. 1006)—translation Ex. 1007 (“Fujitsu”);
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`US 5,374,787, issued December 20, 1994 (Ex. 1008) (“Miller”);
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`US 2007/0229469 A1, published October 4, 2007 (Ex. 1009) (“Seguine”);
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`and
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`Japanese Patent Application 61-84729, published April 30, 1986
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`(Ex. 1010)—translation Ex. 1011 (“Honeywell”).
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`
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`D. Evidence
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`Additionally, Wintek relies upon the Declaration of Dr. Vivek Subramanian
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`(Ex. 1013) (“Subramanian Decl.”).
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`Patent 8,217,902 B2
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`E. The Asserted Grounds
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`Wintek contends that the challenged claims are unpatentable under
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`35 U.S.C. § 103 based on the following specific grounds (Pet. 5):
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`References
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`Basis Claims challenged
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`§ 103
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`23 and 30
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`§ 103
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`20, 23, 28, and 30
`
`§ 103
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`23 and 30
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`§ 103
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`23 and 30
`
`Binstead, Miller, and
`Seguine
`Binstead, Miller, and
`Honeywell
`Fujitsu, Miller, and
`Seguine
`Fujitsu, Miller, and
`Honeywell
`
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`F. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given their
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`broadest reasonable construction in light of their Specification. 37 C.F.R.
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`§ 42.100(b). Under the broadest reasonable construction standard, claim terms are
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`given their ordinary and customary meaning, as would be understood by one of
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`ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not receive its
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`ordinary meaning if the patentee acted as his own lexicographer and clearly set
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`forth a definition of the disputed claim term in either the Specification or
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`prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002) (internal citations omitted).
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`Here, neither Wintek nor TPK contends that the inventors of the ’902 patent
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`acted as their own lexicographer for any claim terms. Indeed, both parties urge
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`that all claim terms should be given their broadest reasonable construction.
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`1. “substantially equally-spaced manner”
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`Wintek seeks construction of the phrase “substantially equally-spaced
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`manner,” in connection with the arrangement of conductor cells along an axis. The
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`feature is recited similarly in each of independent claims including claims 17 and
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`25 from which the challenged claims depend. Pet. 11-12. Wintek submits that the
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`term, in conjunction with conductor cells along an axis, means “the distances
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`between the centers of adjacent conductor cells or between the edges of adjacent
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`conductor cells are substantially equal.” Id. at 11. TPK challenges the
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`construction offered by Wintek, but contends that none of the grounds raised in the
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`Petition turn on the phrase being construed. Prelim. Resp. 14-15. In other words,
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`TPK is not asserting that the prior art fails to disclose the “substantially equally-
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`spaced” limitation. Consequently, we do not need to resolve the dispute between
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`Wintek and TPK with regard to the meaning of that claim term.
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`2. “conductor assemblies,” “conductor cells,” and “conduction
`lines”
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`While neither party proposes that the claim phrases “conductor assemblies,”
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`“conductor cells,” and “conduction lines” be construed expressly, such
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`construction is necessary in this case because TPK attempts to distinguish Binstead
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`and Fujitsu on the basis that they fail to disclose these claim limitations, which are
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`present in claims 17 and 25 from which the challenged claims depend. Prelim.
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`Resp. 17-18, 40-42. The language of the claims makes clear that the “conductor
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`assemblies” are comprised of a “plurality of conductor cells” joined together via
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`“conduction lines.” Thus, “conductor cells” and “conduction lines” are two
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`different structures. While some of the claims require the “conductor cells” be
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`hexagonal in shape, the claims are mostly silent on the geometry of the “conductor
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`cells” and “conduction lines.”
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`Turning to the Specification, it contains no definitions for “conductor,”
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`“assemblies,” “cells,” “conduction,” and “lines,” singularly or in combination. The
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`embodiments of the ’902 patent all contain hexagonally-shaped conductor cells
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`131, 141 connected by thin conduction lines 132, 142. See e.g., Ex. 1001, figs. 1
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`and 2. The Specification states that the conductor cells “can be of shapes of other
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`geometry contours to effect an optimum distribution of effective conductor
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`surface.” Id. at col. 5, ll. 55-57. Moreover, the Specification does not suggest that
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`the “conduction lines” must be narrower than the “conductor cells,” or that the
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`“conductor cells” must be hexagonal or polygonal in shape.
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`For the purposes of this Decision, we determine that the broadest reasonable
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`interpretation of these claim phrases, in view of the Specification, but without
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`importing limitations from the Specification, requires that the “conduction line” be
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`distinct geometrically from the “conductor cells.” However, the “conduction line”
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`need not be narrower than the “conductor cells,” nor do the structures need to be
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`formed separately. Hence, an electrode of uniform width may not constitute both a
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`“conduction line” and “conductor cells.”
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`3. “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”
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`The phrase “wherein a capacitance between a first cell of the plurality of
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`first-axis conductor cells and a second cell of the plurality of second-axis cells is
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`measured” appearing in claims 17 and 25 from which the challenged claims
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`depend, needs to be construed because TPK relies upon a construction of the
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`phrase to distinguish over Binstead and Miller. Prelim. Resp. 21-24, 26-27.
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`Although Wintek did not propose a construction of this phrase, in its
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`analysis of Binstead, Wintek asserts that the claim phrase encompasses measuring
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`capacitance between a first-axis conduct cell and a user’s finger, and the
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`capacitance between a second-axis conductor cell and a user’s finger. See e.g.,
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`Pet. 20-21; see also Ex. 1013, 33-35. TPK asserts that the explicit language of the
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`claims requires measuring a capacitance between two conductor cells. Prelim.
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`Resp. 15-16.
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`The plain and ordinary meaning of the claim language requires measuring “a
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`capacitance between a first cell . . . and second cell.” The Specification supports
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`this understanding. In describing commonly-known capacitive panels, the
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`Specification reads, “[t]he capacitive touch panel employs a change in capacitance
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`caused between a transparent electrode and the electrostatics of human body to
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`induce [a] current based on which the touch location can be identified.” Ex. 1001,
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`col. 1, ll. 34-38. In contrast, in describing “the present invention,” the
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`Specification reads, “[w]hen the conductor cells of the first-axis conductor
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`assemblies and . . . of the second-axis conductor assemblies that are adjacent to
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`each other are touched by a user’s finger, a capacitance variation signal is induced .
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`. . .” Id. at col. 3, ll. 54-59. Thus, the Specification appears to differentiate
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`measuring capacitance between two conductor cells in response to touch (as recited
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`in the claims), and measuring capacitance between a conductor and a finger
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`touching the screen.
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`Thus, for the purposes of this decision, we construe “wherein a capacitance
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`between a first cell of a plurality of first-axis conductor cells and second cell of the
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`plurality of second-axis cells is measured” to require measuring capacitance
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`between a first-axis conductor cell and a second-axis conductor cell.
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`We also determine that, while no other terms need be construed expressly,
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`all remaining terms are given their ordinary and customary meaning in light of the
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`Specification of the ’902 patent.
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`Patent 8,217,902 B2
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`II. ANALYSIS
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`We now turn to Wintek’s asserted grounds of unpatentability and TPK’s
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`arguments in its Preliminary Response to determine whether Wintek has met the
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`threshold standard of 35 U.S.C. § 314(a).
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`A. Prior Art Relied Upon
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`1. Binstead (Ex. 1005)
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`Binstead is a US patent issued on October 24, 2000, relating to a touchpad
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`using the capacitive effect on multiple conductor elements to determine the
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`location of a finger touching the pad. Ex. 1005, col. 1, ll. 45-59. More
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`specifically, as depicted in Figure 1 (a colorized version of which is included
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`below), Binstead discloses dielectric film 10 with two orthogonal arrays of
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`conductor elements 12, 14 formed on the top surface of film 10. Id. at col. 3,
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`ll. 43-56.
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`Figure 1 of Binstead (colors added).
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`At the intersections of conductor elements 12 (depicted in orange) and
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`conductor elements 14 (depicted in purple), lays an insulating layer 13 (depicted in
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`green), visible in cross-section in Figure 2c (a colorized version of which is
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`included below).1
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`Figure 2c of Binstead (colors added).
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`The conductor elements 12, 14 may be of a uniform width or may neck
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`down at the intersections, as depicted in Figure 3a (a colorized version of which is
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`included below, showing narrower width 24 at an intersection).
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`Figure 3a of Binstead (colors added).
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`2. Fujitsu (Ex. 1007)
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`Fujitsu is a translation of a Japanese patent application published on
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`April 30, 1985. Fujitsu discloses sensor panel 10 comprised of X-conductor lines
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`1 Note that the numerals contained in Figure 2c have been rotated 90 degrees for
`convenience.
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`101 and Y-conductor lines 102 orthogonal to one another. See e.g., Ex. 1007,2
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`Fig. 5. At their intersections, conductor lines 101, 102 are separated by insulation,
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`as depicted in Figure 5B reproduced below.
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`Figure 5B of Fujitsu (Ex. 1006, colors added).
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`When a finger touches sensor panel 10, its position may be determined by
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`the change of capacitance in X-conductor lines 101 and Y-conductor lines 102.
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`Ex. 1007, 2, ll. 6-9. In one embodiment, to reduce crosstalk (i.e., trans-
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`capacitance)3, the width of conductor electrodes 101, 102 is narrowed at their
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`intersections as depicted in Figure 7A reproduced below. Id. 7, ll. 24-36.
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`2 The figures are not included in the translation of the Fujitsu reference (i.e.,
`Ex. 1007), but may be found in the original, un-translated version (i.e., Ex. 1006).
`3 The prior art references use the terms “mutual capacitance” and “trans-
`capacitance” to refer to the capacitance between adjacent conductor cells. For
`clarity, we simply use the term “trans-capacitance.”
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`Figure 7A of Fujitsu (Ex. 1006, colors added).
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`3. Miller (Ex. 1008)
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`Miller is a US patent issued on December 20, 1994, relating to position-
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`sensing technology useful for identifying the position of a finger. Ex. 1008, col. 4,
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`ll. 46-54. Miller discloses a touch-sensitive surface disposed on substrate 12,
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`comprised of a matrix of conductive traces 14, 18, having sense pads 22, arranged
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`orthogonal to one another, and covered by insulating layer 24. Id. at col. 4, ll. 55-
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`68; see Fig. 1C.
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`The position of a finger on the touchpad may be determined from measuring
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`trans-capacitance and/or self-capacitance of all the rows or columns in parallel.
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`Id. at col. 4, ll. 37-40, col. 9, ll. 3-11. Miller explains that trans-capacitance is
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`coupling between sense pads 22, and self-capacitance is coupling to a virtual
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`ground. Id. at col. 9, l. 1-3. According to Miller, the advantage of being able to
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`detect both trans-capacitance and self-capacitance is versatility, as the relative size
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`of the two capacitances changes greatly, depending upon the user environment. Id.
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`at col. 9, ll. 1-11. Miller states that measuring capacitance in parallel is
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`advantageous because input samples are taken simultaneously and, therefore, all
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`channels are affected similarly by interference, thus, simplifying noise filtering.
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`Id. at col. 5, ll. 7-12. Miller distinguishes this parallel approach from prior art
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`approaches that scan individual inputs. Id. at col. 10, ll. 28-45. The prior art
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`approaches, Miller states, are susceptible to noise distortion because of noise
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`appearing in a later scan cycle but not an earlier one, due to change in noise level.
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`Id. Miller’s invention purportedly “overcomes this problem by taking a snapshot
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`of all inputs simultaneously.” Id. at col. 10, ll. 39-41.
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`4. Seguine (Ex. 1009)
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`Seguine is a US patent application published on October 4, 2007, relating to
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`a capacitive touch sense device. Ex. 1009 ¶ 0003. More particularly, Seguine
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`discloses conductor cells of various shapes for use with a touch pad. Seguine
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`teaches that a polygonally-shaped conductor cell having five or more sides yields
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`greater packing efficiency and greater proportional capacitance, and specifically
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`discloses hexagonally-shaped cells. Id. ¶ 0022; Fig. 4A.
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`5. Honeywell (Ex. 1011)
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`Honeywell is a translation of a Japanese patent application published on
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`April 30, 1986. Honeywell discloses a transparent, touch-sensitive screen for use
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`with a cathode ray tube (“CRT”) computer display. Ex. 1011, 1; Abs. The screen
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`is comprised with orthogonally-arranged, conductive electrodes X, Y, the
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`intersections of which are separated by conductive material 2. Id. at Abs., Fig. 1.
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`Honeywell discloses that conductive electrodes X, Y may be formed from indium
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`tin oxide (“ITO”).
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`B. Asserted Ground of Unpatentability Based on Binstead, Miller, and
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`Honeywell—Claims 20, 23, 28, and 30
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`Wintek contends that all limitations of independent claims 17 and 25, from
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`which claims 20, 23, 28, and 30 depend, are disclosed by Binstead in combination
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`with Miller. Pet. 14-24. We begin by analyzing non-challenged claims 17 and 25
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`in view of Binstead and Miller and then move to challenged claims 20, 23, 28, and
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`30 in further view of Honeywell.
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`1. Binstead’s disclosure of “conductor cells” and “conduction lines”
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`TPK asserts that Binstead fails to disclose “conductor cells” and “conduction
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`lines,” as required by claims 17 and 25. Prelim. Resp. 17-18. Specifically, TPK
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`asserts that the continuous, conductor elements 12 and 14, while narrowing at their
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`intersections, do not have “distinct” conductor cells and conduction lines. Id. As
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`the conductor cells of Binstead are “distinct,” geometrically, from its conduction
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`lines, TPK’s assertion is unclear.
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`What is clear, however, is that nothing in the claims requires the conductor
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`cells and conduction lines to be distinct, other than in a geometric sense. Indeed,
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`the method for manufacturing the conductor pattern of the ’902 patent involves
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`forming first-axis conductor cells 131 with first-axis conduction lines 132,
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`simultaneously. Ex. 1001, col. 6, ll. 20-23; Fig. 7. Likewise, conductor cells 131
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`and 141 and conduction lines 132 and 142 of the ’902 appear to be continuous
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`elements, quite similar to those of Binstead. Compare Ex. 1001, Figs. 1 and 3 with
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`Ex. 1005, Figs. 2c and 3a. Thus, TPK’s arguments are not persuasive. That is to
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`say, on the current record, we agree with Wintek that Binstead discloses
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`“conduction lines” of width 24 that “terminate on the edge of” hexagonal
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`“conductor cells.”
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`2. Binstead’s disclosure of “transmission lines formed on the surface
`of the substrate”
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`TPK asserts that Binstead does not disclose the forming “first-axis conductor
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`assemblies,” “second-axis conductor assemblies,” and “signal transmission lines”
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`on the same surface of the substrate, as required by claims 17 and 25. Prelim.
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`Resp. 18-21. Specifically, TPK focuses on one embodiment of Figure 1 in which
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`conductor elements 12 and 14 are formed on opposite sides of the thin dielectric
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`film 10. Id. at 19-20.
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`TPK ignores the embodiment depicted in Figure 2b which depicts conductor
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`elements 12 and 14 being formed on the same side of the dielectric film. Ex. 1005,
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`Fig. 2b; col. 4, ll. 4-21; see also Ex. 1013, 23. As “conducting elements 32, 34
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`[are] respectively deposited and/or defined in [a] similar manner to conductor
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`elements 12, 14,” it would follow that they are also deposited on the same side of
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`the dielectric film. Id. at col. 4, ll. 22-25; see also Fig. 2c, unlabeled conducting
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`element far left. Thus, TPK’s arguments are not persuasive.
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`3. Binstead’s disclosure of measuring “capacitance between a first
`cell . . . and a second cell”
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`TPK also asserts that Binstead fails to disclose “a capacitance between a . . .
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`first-axis conductor cell[] . . . and a . . . second-axis conductor cell[] . . . to detect a
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`position of touch,” as required by claims 17 and 25. Prelim. Resp. 21-24. Both
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`parties, as well as Wintek’s expert, Dr. Subramanian, appear to agree that Binstead
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`discloses measuring capacitances between single conductor elements and the
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`object touching the screen, and utilizing those measurements to ascertain the
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`position of touch. See, e.g., Pet. 20-21; Ex. 1013, 34 (“Binstead discloses
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`measurement of the capacitance induced between the conductor element being
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`sampled and the object touching the conductor pattern structure and the
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`capacitance induced between the object and a conductor element not being
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`sampled.”) (emphasis added); Prelim. Resp. 22-23; see also Ex. 1005, col. 1, ll. 48-
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`55. Thus, the disagreement turns on the construction of the claim phrase “a
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`capacitance between a first cell of the plurality of first-axis conductor cells and a
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`second cell of the plurality of second-axis conductor cells is measured to detect a
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`position of touch.” For the reasons discussed above, we construe this phrase to
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`require measuring the capacitance between a first-axis conductor cell and a second-
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`axis conductor cell. In Binstead, the measurement of capacitance does not occur
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`between any first-axis and second-axis conductor cells, but rather, as noted above,
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`occurs between single conductor elements and the object touching the screen.
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`Therefore, we agree with TPK that Binstead fails to disclose this limitation.
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`4. Miller’s disclosure of measuring “capacitance between a first cell
`. . . and a second cell”
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`Wintek argues in the alternative that Miller discloses “a capacitance between
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`a . . . first-axis conductor cell[] . . . and a . . . second-axis conductor cell[] . . . to
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`detect a position of touch,” as required by claims 17 and 25. Pet. 21-24 (citing
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`Ex. 1008, Fig. 1C; col. 8, ll. 8-36; col. 8, l. 67-col. 9, l. 1; Ex. 1013 ¶ 31). TPK
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`does not contest that Miller discloses the limitation per se. Prelim. Resp. 24-34.
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`However, TPK asserts that Miller only discloses a two-layer structure using trans-
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`capacitance, and thus, when combined with Binstead would not have disclosed or
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`suggested a single-layer touch sensor that operates through trans-capacitance. Id.
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`at 25. TPK further asserts that Wintek failed to account for the structural
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`differences in Miller and Binstead, and thus, failed to explain how to combine the
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`two references. Id. at 27-30. TPK asserts that Wintek’s combination of Miller and
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`Binstead is the result of hindsight reconstruction. Id. at 30-33. Lastly, TPK asserts
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`that Binstead teaches away from Wintek’s proposed combination with Miller. Id.
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`at 33-34.
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`In IPR2013-00567 and 568, the Board, relying upon column 8, lines 52-57
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`of Miller, found that Miller disclosed an embodiment in which the rows and
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`columns of sense pads 22, along with their respective conductive traces 14 and 18,
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`were formed on the same side of the substrate. IPR2013-00567, Paper 10, 15;
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`IPR2013-00568, Paper 10, 16. TPK takes issue with the Board’s interpretation of
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`Miller, arguing that Miller only discloses two-layer structures. Prelim. Resp. 26.
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`Specifically, TPK argues that the text cited by the Board states that if the substrate
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`were sufficiently thin, the sense pads (or “diamonds on the top surface”) of Miller
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`could be removed entirely, also removing the need for through holes to connect
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`those pads to the traces on the opposite side of the substrate. Id. (citing Ex. 1008,
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`col. 8, ll. 55-58). In view of TPK’s argument and considering the record before us,
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`we are persuaded that Miller only discloses two-layer structures. Thus, we
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`consider the parties’ assertions regarding the combination of Miller’s two-layer
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`trans-capacitance and self-capacitance touch panel and Binstead’s single-layer self-
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`capacitance touch panel.
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`We find persuasive Wintek’s assertion that one of skill in the art would have
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`been motivated to measure both trans-capacitance and self-capacitance as disclosed
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`in Miller in the context of Binstead’s single-layer touch panel because Miller
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`discloses doing so would result in a “very versatile system having a wide range of
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`applications.” Pet. 23 (quoting Ex. 1008, col. 8, l. 67–col.9, l. 11). Wintek further
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`asserts that the proposed combination of Miller and Binstead would result in a
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`conductor pattern structure with a predictable mechanism for detecting a position
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`of touch and that the combination is one of familiar elements according to known
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`methods. Id. at 24 (citing Ex. 1013 ¶¶ 33-35). More specifically, Wintek contends
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`that both Binstead and Miller are directed to the same problem of providing a
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`capacitance touch panel and that both are formed with multiple axis conductor
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`cells and conduction lines configured in a similar fashion. Id.; see also Ex. 1013
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`¶ 33.
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`TPK’s assertion that Wintek has failed to explain how one of ordinary skill
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`in the art would combine the teachings is unavailing. The test for obviousness is
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`not whether Miller’s method of simultaneously measuring capacitance in parallel
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`may be bodily incorporated into Binstead’s system. See In re Young, 927 F.2d
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`588, 591 (Fed. Cir. 1991). Rather, the test is what the combined teachings of the
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`references would have suggested to those of ordinary skill in the art. Id. While
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`there are differences in the structures of Miller and Binstead, the fact remains the
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`two structures are similar and directed to the same p