Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 17
`Date: September 14, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., MICROSOFT CORPORATION, DELL INC.,
`DELL PRODUCTS LP, LENOVO (UNITED STATES) INC.,
`and MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 17
`Date: September 14, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., MICROSOFT CORPORATION, DELL INC.,
`DELL PRODUCTS LP, LENOVO (UNITED STATES) INC.,
`and MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`INTRODUCTION
`A. Background and Summary
`HP Inc. (“HP”), Microsoft Corporation (“Microsoft”), Dell Inc. and
`Dell Products LP (collectively, “Dell”), Lenovo (United States) Inc.
`(“Lenovo”), and Motorola Mobility LLC. (“Motorola”), (collectively,
`“Petitioner”) filed a Petition to institute an inter partes review of claims 1–4,
`6–11, and 13–15 of U.S. Patent No. 8,946,574 B2 (Ex. 1001, “the ’574
`patent”). Paper 3 (“Pet.”). Neodron Ltd. (“Patent Owner”) filed a Patent
`Owner Preliminary Response. Paper 10 (“Prelim. Resp.”). Pursuant to our
`authorization (Paper 11), Petitioner filed a Reply to Patent Owner’s
`Preliminary Response (Paper 13, “Pet. Prelim. Reply”) and Patent Owner
`filed a Sur-Reply (Paper 14, “PO Prelim. Sur-reply”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“the information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a) (2018). A decision to
`institute under 35 U.S.C. § 314 may not institute on fewer than all claims
`challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018).
`For the reasons set forth below, upon considering the Petition and the
`evidence of record, we determine that the information presented in the
`Petition establishes a reasonable likelihood that Petitioner will prevail with
`respect to at least one of the challenged claims. Accordingly, we institute
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`Patent 8,946,574 B2
`inter partes review on all of the challenged claims based on all of the
`grounds identified in the Petition.
`B. Real Parties in Interest
`Petitioner identifies the following real parties in interest: HP Inc.,
`Microsoft Corporation, Dell Inc., Dell Products LP, Lenovo (United States)
`Inc., and Motorola Mobility LLC. Pet. 2. Additionally, Petitioner identifies
`Lenovo Group Ltd. “as a real party-in-interest without admitting that Lenovo
`Group Ltd. is in fact a real party-in-interest.” Id.
`Patent Owner identifies Neodron Ltd. as the real party in interest.
`Paper 7, 1 (Patent Owner’s Mandatory Notices).
`C. Related Matters
`The parties identify the following proceedings in which the ’574
`patent has been asserted: Neodron Ltd. v. HP Inc., No. 1:19-cv-00873-ADA
`(W.D. Tex.); Neodron Ltd. v. Microsoft Corp., No. 1:19-cv-00874-ADA
`(W.D. Tex.), Neodron Ltd. v. Dell Technologies, Inc., No. 1:19-cv-00819-
`ADA (W.D. Tex.) (collectively the “WD Texas Actions”), Neodron Ltd. v.
`Lenovo Group Ltd., No. 6:19-cv-00398 (W.D. Tex.), which was dismissed
`and refiled as Neodron Ltd. v. Lenovo Group Ltd.1, No. 3:19-cv-05644 (N.D.
`Cal.) (the “ND Cal. Action). Pet. 2; Paper 7, 2.
`D. The ’574 Patent
`The ’574 patent is titled “Two-Layer Sensor Stack.” Ex. 1001, code
`
`(54).
`
`According to the ’574 patent, “[a] position sensor can detect the
`presence and location of a touch by a finger or by an object, such as a stylus,
`
`
`1 This action names Lenovo (United States) Inc. and Motorola Mobility
`LLC as co-defendants.
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`Patent 8,946,574 B2
`within an area of an external interface of the position sensor” and may
`enable “direct interaction with information displayed on the screen, rather
`than indirectly via a mouse or touchpad.” Ex. 1001, 1:14–20. The ’574
`patent further states that “[t]here are a number of different types of position
`sensors” including a capacitive touch screen which “may include an
`insulator coated with a transparent conductor in a particular pattern.” Id. at
`1:27–32. “When an object . . . touches the surface of the screen there may
`be a change in capacitance [that] may be sent to a controller for processing
`to determine where the touch occurred on the touch screen.” Id. at 1:32–36.
`The ’574 patent further states that such capacitive touch screens may “an
`array of conductive drive electrodes or lines and conductive sense electrodes
`or lines can be used to form a touch screen having capacitive nodes.” Id. at
`1:37–40.
`Figure 1 of the ’574 patent is reproduced below.
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`Figure 1 “is a cross-sectional view of an exemplary touch sensitive panel
`[(1)] and a display [(2)].” Ex. 1001, 2:3–4; see also id. at 2:52–53. The
`panel includes an insulating substrate 3 having two opposing faces, 3a and
`3b. Id. at 2:53–61. Electrodes 4 (X) and 5 (Y), which may be arranged in
`different directions, are provided on faces 3b and 3a, respectively. Id. at
`2:59–64.
`The ’574 patent goes on to describe the layers shown in Figure 1:
`The substrate 3 may be provided adjacent to the display 2 such
`that electrodes 4 (X) are arranged between the display 2 and the
`substrate 3. An adhesive layer 6 of an optically clear adhesive
`may be between the electrodes 4 (X) and a transparent covering
`sheet 7. Another adhesive layer 8 of an optically clear adhesive
`may be between the electrodes 5 (Y) and a transparent covering
`
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`Patent 8,946,574 B2
`sheet 9. A gap may be formed between the display 2 and the
`transparent covering sheet 7.
`Ex. 1001, 3:1–8. According to the ’574 patent, “transparent covering sheet 7
`and the adhesive layer 6 of optically clear adhesive may encapsulate the
`electrodes 4 (X)” and “transparent covering sheet 9 and the adhesive layer 8
`of optically clear adhesive may encapsulate the electrodes 5 (Y).” Id. at 3:9–
`15. The ’574 patent further states that “[t]he encapsulation of the electrodes
`4 (X) and 5 (Y) . . . may provide protection from physical and environmental
`damage.” Id. at 3:15–17.
`Figure 2a is reproduced below.
`
`
`Figure 2a “illustrate[s a] schematically exemplary electrode pattern[] useable
`in the touch sensitive panel of FIG. 1.” Ex. 1001, 2:5–6. According to the
`’574 patent, the exemplary electrode shown in Figure 2a may be used for
`either electrode 4 (X) or 5 (Y) and “may be formed by a number of straight
`conductive lines 11 arranged to interconnect at connection points to define a
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`conductive grid or mesh pattern made up of an array of square shaped mesh
`cells 13 arranged in a layer.” Id. at 3:61–4:1.
`E. Illustrative Claims
`Claims 1, 8, and 15 are independent claims and claim 1, reproduced
`below, is illustrative of the subject matter of the challenged claims.
`1. An apparatus comprising:
`a first optically clear adhesive (OCA) layer between a first
`cover sheet and a substrate;
`the substrate, with drive or sense electrodes of a touch
`sensor disposed on a first surface and a second surface of the
`substrate, the first surface being opposite the second surface, the
`drive or sense electrodes being made of a conductive mesh
`conductive material comprising metal; and
`a display separated from the second surface of the
`substrate by a second OCA and a second cover sheet such that at
`least a portion of the second cover sheet is positioned between
`the second surface of the substrate and the display.
`Ex. 1001, 14:46–59.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–4, 6–11, and 13–15 would have been
`unpatentable on the following grounds:
`35 U.S.C. §2
`Claim(s) Challenged
`1–4, 6–11, 13–15
`103(a)
`
`Reference(s)/Basis
`Hsu,3 Mozdzyn4
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the
`’301 patent issued from an application filed before March 16, 2013, we
`apply the pre-AIA versions of the statutory bases for unpatentability.
`3 US 7,030,860 B1, issued Apr. 18, 2006 (Ex. 1004).
`4 US 2011/0007011 A1, published Jan. 13, 2011 (Ex. 1005).
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`Claim(s) Challenged
`1–4, 6–11, 13–15
`1–3, 7–10, 14, 15
`4, 6, 11, 13
`
`Petitioner relies on the Declaration of Vivek Subramanian, Ph.D.
`Ex. 1002.
`
`Reference(s)/Basis
`Hsu, Philipp5
`Hsu, Chang6
`Hsu, Chang, Frey7
`
`35 U.S.C. §2
`103(a)
`103(a)
`103(a)
`
`ANALYSIS
`
`A. Legal Standards
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`Supreme Court set out a framework for assessing obviousness under 35
`U.S.C. § 103 that requires consideration of four factors: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) “secondary considerations” of non-obviousness such as “commercial
`success, long-felt but unsolved needs, failure of others, etc.” Id. at 17–18.
`“While the sequence of these questions might be reordered in any particular
`case,” the U.S. Court of Appeals for Federal Circuit has “repeatedly
`emphasized that an obviousness inquiry requires examination of all four
`Graham factors and that an obviousness determination can be made only
`after consideration of each factor.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 407 (2007) (first quote); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335
`(Fed. Cir. 2016), overruled on other grounds by Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) (en banc) (second quote). We note that, with
`
`
`5 US 2010/0123670 A1, published May 20, 2010 (Ex. 1010).
`6 US 2009/0002337 A1, published Jan. 1, 2009 (Ex. 1011).
`7 US 2009/0219257 A1, published Sept. 3, 2009 (Ex. 1012).
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`respect to the fourth Graham factor, the parties have not presented argument
`or evidence directed to secondary considerations of nonobviousness. See
`generally Pet.; Prelim. Resp. The analysis below addresses the first three
`Graham factors.
`B. Level of Ordinary Skill in the Art
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983). “Not all
`such factors may be present in every case, and one or more of these or other
`factors may predominate in a particular case.” Id.
`Petitioner argues that a person having ordinary skill in the art
`would have had a bachelor’s degree in electrical engineering,
`computer engineering, computer science, or a related field, and
`at least two years of experience in the research, design,
`development and/or testing of touch sensors, human-machine
`interaction and interfaces, and/or graphical user interfaces, and
`related firmware or software, or the equivalent, with additional
`education substituting for experience and vice-versa.
`Pet. 10–11.
`Patent Owner does not address the level of ordinary skill in the art in
`the Preliminary Response. See generally Prelim. Resp.
`Accordingly, for purposes of institution, we adopt Petitioner’s
`proposed level of ordinary skill in the art, except that we delete the qualifier
`“at least” to eliminate vagueness as to the amount of practical experience.
`The qualifier expands the range indefinitely without an upper bound, and
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`thus precludes a meaningful indication of the level of ordinary skill in the
`art.8
`C. Claim Construction
`We construe claims “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2020). Specifically, we apply the
`principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
`Cir. 2005) (en banc). Under that standard, the words of a claim are generally
`given their “ordinary and customary meaning,” which is the meaning the
`term would have to a person of ordinary skill at the time of the invention, in
`the context of the entire patent including the specification. Phillips, 415
`F.3d at 1312–13.
`Petitioner requests that we construe two claim limitations: “cover
`sheet” and “mesh.” Pet. 15–16.
`Patent Owner proposes a construction of the term “cover sheet.” PO
`Resp. 13–14.
`Having considered the arguments of the parties, both those directed to
`claim constructions and the prior art analysis, we determine that for purposes
`of this Decision the only term in need of explicit construction is “cover
`sheet.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
`in controversy, and only to the extent necessary to resolve the controversy
`
`
`8 If Patent Owner proposes a different level of ordinary skill in the art in its
`Response, the parties are encouraged to address whether there are any
`material differences between the two proposals and what impact, if any, the
`different level has on the obviousness analysis.
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`. . . .’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999))).
`Petitioner argues that the term “cover sheet” as recited in the claims of
`the ’574 patent means a “sheet that covers something.” Pet. 15–16.
`According to Petitioner, the Specification does not recite the term “cover
`sheet” but uses a similar term—covering sheet—“where it is referred to as a
`‘transparent covering sheet’ with no further description.” Id. at 15 (citing
`Ex. 1001, 3:3–20). Petitioner further argues that “because limitations from
`the embodiments in the specification are not to be read into the claims,” it is
`improper to import the purpose of the cover sheet into the claim
`construction. Pet. Prelim. Reply 5 (citing Hill-Rom Servs. v. Stryker Corp.,
`755 F.3d 1367, 1371 (Fed. Cir. 2014)).
`Patent Owner argues the term “cover sheet” means “a sheet designed
`to serve a particular purpose, i.e., cover elements and provide protection.”
`Prelim. Resp. 14 (citing Ex. 1001, 3:12–17). According to Patent Owner,
`Petitioner’s proposed construction “plainly divorces the term from the field
`of the patented inventions and is uninformative about what a cover sheet is
`or does.” Id. at 13; see also PO Prelim. Sur-reply 6 (arguing Petitioner’s
`proposed construction is “overbroad”). Patent Owner further argues that
`Petitioner’s construction “leaves virtually no distinction between it and
`another claim term, ‘a substrate.’” Prelim. Resp. 13 (emphasis omitted).
`Both Petitioner and Patent Owner agree that “cover sheet,” at a
`minimum, is a sheet which covers something. Compare Pet. 14–15 (“sheet
`that covers something”), with Prelim. Resp. 14 (“a sheet designed to cover
`. . .”). Based on the current record, we agree with the parties that, at a
`minimum, the plain and ordinary meaning of “cover sheet” is a sheet that
`covers something.
`
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`Furthermore, based on the current record, we agree with Petitioner
`that it is improper to read the function of the cover sheet into the claim
`limitation. “While we read claims in view of the specification, of which
`they are a part, we do not read limitations from the embodiments in the
`specification into the claims.” Hill-Rom, 755 F.3d at 1371. “We depart
`from the plain and ordinary meaning of claim terms based on the
`specification in only two instances: lexicography and disavowal.” Id.
`The standards for finding lexicography and disavowal are exacting.
`“To act as its own lexicographer, a patentee must clearly set forth a
`definition of the disputed claim term other than its plain and ordinary
`meaning” and must “‘clearly express an intent’ to redefine the term.”
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
`1381 (Fed. Cir. 2008)). If an inventor acts as his or her own lexicographer,
`the definition must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per
`Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Disavowal requires that “the
`specification makes clear that the invention does not include a particular
`feature,” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems,
`Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001), or is clearly limited to a
`particular form of the invention, Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the preferred embodiment is
`described in the specification as the invention itself, the claims are not
`necessarily entitled to a scope broader than that embodiment.” (quoting
`Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1379 (Fed. Cir. 2005))).
`The section of the Specification Patent Owner directs us to is neither a
`disavowal nor the applicant acting as a lexicographer. Instead, the applicant
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`is simply describing what the covering sheet and adhesive layer—not the
`covering sheet alone—may do:
`The transparent covering sheet 9 and the adhesive layer 8 of
`optically clear adhesive may encapsulate the electrodes 5 (Y),
`and any other conductive tracks formed on face 3a of the
`substrate 3. The encapsulation of the electrodes 4 (X) and 5 (Y),
`and any other conductive tracks, may provide protection from
`physical and environmental damage.
`Ex. 1001, 3:12–17 (emphases added). Specifically, the ’574 patent does not
`state that transparent covering sheet 9 provides the benefits. Instead, the
`’574 patent states that it is the combination of “transparent cover sheet 9 and
`the adhesive layer 8” that may encapsulate and protect. Id. at 3:12–17.
`Where the written description states that the combination of two elements
`provides an advantage, the written description is not making clear and
`unambiguous disclaimer about one of the components.
`Moreover, as the emphasized language above makes clear, the ’574
`patent is describing an optional feature that may be present. Specifically, the
`’574 patent describes that the covering sheet and adhesive layer “may”
`encapsulate and, if they encapsulate, they “may” provide protection.
`Ex. 1001, 3:12–17. But neither encapsulation nor protection is required. Id.
`The use of the term “may” is not a clear disavowal of claim scope nor does it
`reflect the applicant being a lexicographer.9
`Accordingly, for the reasons given above and based on the current
`record, we construe the term “cover sheet” as “a sheet that covers
`something.”
`
`
`9 We address Patent Owner’s argument that Petitioner’s proposed
`construction eliminates the distinction between the terms “substrate” and
`“cover sheet” in the recited claims in subsection D.b.2, infra.
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`D. Hsu and Mozdzyn
`Petitioner argues that claims 1–4, 6–11, and 13–15 would have been
`obvious over Hsu and Mozdzyn. Based on the current record and for the
`reasons that follow, we are persuaded that Petitioner has established a
`reasonable likelihood of prevailing with respect to claims 1–4, 6–11, and
`13–15.
`1. Hsu
`Hsu is titled “Flexible Transparent Touch Sensing System for
`Electronic Devices” and is directed “to flexible and transparent object
`position recognition devices useful in applications such as cursor movement
`and user input for computing devices and other applications.” Ex. 1004,
`code (54), 1:9–12.
`Hsu Figure 7 is reproduced below.
`
`
`
`Hsu Figure 7 “is a cross sectional view of an . . . embodiment of the two-
`dimensional sensor transducer of the invention.” Ex. 1004, 3:56–58. More
`specifically, Hsu Figure 7
`shows a two-dimensional transparent capacitive sensor 36.
`Transparent substrate 84 is adhered using transparent insulator
`74 to transparent conductor layer 64. Transparent conductor 64
`contains the X trace pattern as shown in FIG. 5A and is coated
`onto transparent substrate 86. On the other surface of transparent
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`substrate 86, transparent conductor layer 70 contains Y trace
`array shown FIG. 5B. Finally, transparent substrate 88 is
`adhered to transparent conductor 70 with transparent insulator
`74. This particular embodiment, with substrate 86 coated on both
`sides with transparent conductor layers may allow for less error
`when aligning diamonds in the X trace array and the Y trace
`array.
`Id. at 8:1–13.
`Hsu Figures 5A and 5B are reproduced below.
`
`
`
`Hsu Figures 5A and 5B show, respectively, “a top view of the X sensor
`array” and “a top view of the Y sensor array.” Ex. 1004, 3:43–46.
`2. Mozdzyn
`Mozdzyn is titled “Capacitive Touch Screen with a Mesh Electrode”
`and is directed to “touch screens having low resistance mesh electrodes to
`improve the electrical characteristics of the touch screen without
`compromising the optical characteristics.” Ex. 1005, code (54), ¶ 2.
`According to Mozdzyn, “[t]he electrodes on the touch screen are made of a
`mesh of conductors to reduce the overall electrode resistance thereby
`increasing the electrical performance without sacrificing optical quality.” Id.
`¶ 6. Mozdzyn further states that “[t]he mesh electrodes comprise a mesh
`pattern of conductive material with each conductor comprising the mesh
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`having a very small width such that the conductors are essentially invisible
`to the user of the touch screen.” Id.
`Mozdzyn Figures 3 and 6 are reproduced below.
`
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`Mozdzyn Figure 3 “shows a top view of mesh electrodes on a portion of the
`bottom glass of the touch screen” and Mozdzyn Figure 6 shows “an example
`of mesh electrodes with a diamond shape pattern.” Ex. 1005 ¶¶ 12 (first
`quote), 15 (second quote).
`3. Analysis of Claim 1
`a) “An Apparatus”
`Petitioner argues Hsu teaches an “apparatus” as recited in claim 1.
`Pet. 19 (citing Ex. 1002 ¶ 45).
`After reviewing Petitioner’s arguments and evidence regarding the
`recitation identified above, including the Subramanian Declaration, which
`are not addressed by Patent Owner at this stage (see generally Prelim.
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`Resp.), we are persuaded that Petitioner sufficiently demonstrates, for
`purposes of this Decision, that Hsu teaches an apparatus.10
`b) “A First Optically Clear Adhesive (OCA) Layer Between a
`First Cover Sheet and a Substrate”
`(1) The Parties’ Arguments
`Petitioner argues that Hsu teaches “that the ‘transparent substrate 84
`[i.e., the top-most layer in Fig. 7,] is adhered using transparent insulator 74
`to transparent conductor layer 64.’” Pet. 21 (citing Ex. 1004, 8:2–4)
`(alteration in original). Petitioner further argues that insulator layer 74 acts
`both as an adhesive and an insulator. Id. (citing Ex. 1002 ¶ 47).
`Specifically, Petitioner argues that a person having ordinary skill in the art
`would have used 3M adhesive #8142—which is used in a different
`embodiment—for insulator layer 74. Id. at 21–22.
`A version of Hsu Figure 7, annotated by Petitioner, is reproduced
`below.
`
`
`Pet. 21. Hsu Figure 7 is a cross sectional view of a two-dimensional sensor
`transducer which has been annotated by Petitioner to show what Petitioner
`
`
`10 Neither Petitioner nor Patent Owner address whether the preamble is
`limiting. Because Petitioner has shown that the recitation in the preamble is
`satisfied by the prior art, there is no need to determine whether the preamble
`is limiting. See Nidec, 868 F.3d at 1017.
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`argues is the first cover sheet (transparent substrate 84), the first OCA
`(transparent insulator 74) and the substrate (transparent substrate 86). Id.;
`Ex. 1004, Fig. 7, 8:1–6.
`Patent Owner argues that substrate 84 is not a first cover sheet.
`Prelim. Resp. 14–15. Specifically, Patent Owner argues, “Hsu never
`characterizes the substrate 84 as a cover sheet or a sheet designed to cover or
`protect anything.” Id. at 14. According to Patent Owner, substrate 84 is
`made of the same material as substrate 86 and they both serve the same
`function—“to provide the surface upon which elements (such as conductors)
`are deposited.” Id. at 14–15. Patent Owner further argues that it is
`“insufficient” to map “one generic element to two different claim terms.”
`PO Prelim. Sur-reply 6.
`Patent Owner also argues that “Hsu’s covering sheet does not meet
`the correct construction because it is not a sheet ‘designed to’ cover
`elements and provide protection.” PO Prelim. Sur-reply 6. According to
`Patent Owner, a “cover sheet must be specifically designed to intend[] to
`provide cover and protection, not merely capable of” doing so. Id. (citing
`Aspex Eyewear v. Marchon Eyewear, 672 F.3d 1335, 1349 (Fed. Cir. 2012)).
`Patent Owner further argues that there is no need for protection because Hsu
`describes the electronics as “rugged.” Prelim. Resp. 15 (citing Ex. 1004,
`3:1–14, 8:42–57).
`(2) Our Analysis
`After reviewing Petitioner’s arguments and evidence regarding the
`“first optically clear adhesive (OCA) layer . . . and a substrate,” including
`the Subramanian Declaration, which are not addressed by Patent Owner at
`this stage (see generally Prelim. Resp.), we are persuaded that Petitioner
`sufficiently demonstrates, for purposes of this Decision, that Hsu teaches “a
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`first optically clear adhesive (OCA) layer between [Hsu’s transparent
`conductor 84] and a substrate” as recited in claim 1.
`Based on the current record, we further agree with Petitioner that
`Hsu’s transparent conductor 84 is a “first cover sheet” as that term is used in
`claim 1 of the ’574 patent. Specifically, Petitioner has sufficiently shown
`for purposes of institution that Hsu’s transparent conductor 84 covers
`substrate 86. See Ex. 1004, Fig. 7; Ex. 1002 ¶¶ 46–48.
`Patent Owner’s argument that Hsu’s transparent substrate 84 does not
`protect is premised on a claim construction that we have preliminarily
`rejected. Because the argument is not commensurate with the scope of the
`claim, it is unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
`We also do not agree with Patent Owner’s argument. Patent Owner’s
`argument is factually incorrect as Petitioner maps Hsu’s transparent
`substrate 86 to the “first cover sheet” recited in claim 1 while mapping the
`separate transparent substrate 84 to the “substrate” recited in claim 1. In this
`context, Patent Owner’s argument also ignores the ability of an item—such
`as a transparent substrate—to perform different functions depending on
`where it is placed in an apparatus. That is, a transparent substrate can cover
`when placed on the top of a structure while performing a different
`function—an item upon which electrodes are disposed—when placed in a
`different location. Therefore, it is unpersuasive to argue at this juncture that
`Hsu does not describe the “transparent substrate” as a “cover sheet.”
`Accordingly, based on the current record, Petitioner has sufficiently
`shown that Hsu teaches “a first optically clear adhesive (OCA) layer
`between a first cover sheet and a substrate” as recited in claim 1.
`c) “The Substrate, with Drive or Sense Electrodes of a Touch
`Sensor Disposed on a First Surface and a Second Surface of
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`Patent 8,946,574 B2
`the Substrate, the First Surface Being Opposite the Second
`Surface, the Drive or Sense Electrodes Being Made of a
`Conductive Mesh Conductive Material Comprising Metal”
`(1) The Parties’ Arguments
`Petitioner argues that the combination of Hsu and Mozdzyn teaches a
`“substrate, with drive or sense electrodes of a touch sensor disposed on a
`first surface and a second surface of the substrate, the first surface being
`opposite the second surface, the drive or sense electrodes being made of a
`conductive mesh conductive material comprising metal” as recited in
`claim 1. See Pet. 23–33. Specifically, Petitioner argues that Hsu teaches a
`transparent substrate (86) upon which transparent conducting layers of an X
`pattern (64) and a Y pattern (70) have been coated. Id. at 23 (citing
`Ex. 1004, 8:3–21, Fig. 7). According to Petitioner, the X and Y patterns are
`shown in Hsu’s Figure 5A and 5B, respectively, and are “formed using a
`photolithography process from indium tin oxide (ITO), gold or silver.” Id. at
`23–24 (citing Ex. 1004, 6:22–7:22, 8:3–21). Petitioner further argues that a
`person having ordinary skill in the art would have understood that conductor
`layers 64 and 70 include drive and sense electrodes. Id. at 24–29.
`Petitioner also argues that Mozdzyn teaches mesh electrodes. Pet. 30–
`31. Mozdzyn Figure 6 is reproduced below.
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`Mozdzyn Figure 6 “shows an example of mesh electrodes with a diamond
`shape pattern.” Ex. 1005 ¶ 15. According to Petitioner, “[i]n each of
`Mozdzyn’s electrodes 210, each square open space is surrounded by parts of
`4 wires are part of the network of wires that form the electrode as shown in
`the annotated portion of” Mozdzyn’s Figure 6, which is reproduced below.
`
`
`Pet. 30–31. The portion of Mozdzyn’s Figure 6 reproduced above has been
`annotated by Petitioner to identify “wires” and “open space.” Id. Petitioner
`argues “that the conductors may be formed from metals including nickel,
`copper, gold, silver, tin, aluminum and alloys and combinations of these
`materials,” and that the electrodes “can be dedicated drive electrodes and
`dedicated sense electrodes.” Id. at 31–32 (citing Ex. 1005 ¶¶ 21, 23;
`Ex. 1002 ¶ 60).
`Petitioner also argues that a person having ordinary skill in the art
`“would have been motivated to substitute the metal mesh electrodes with
`diamond shapes as taught by Mozdzyn for the ITO electrodes with diamond
`shapes as taught by Hsu . . . in order to obtain the benefit of improved
`electrical performance without sacrificing optical quality.” Pet. 32 (citing
`Ex. 1005 ¶¶ 2, 6; Ex. 1002 ¶ 62). Petitioner also argues that a person having
`ordinary skill in the art “would have had a reasonable expectation of success
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`in doing so given the similarities in the capacitive touch screens of Hsu and
`Mozdzyn and the express teachings of Mozdzyn regarding improved
`electrical performance without sacrifice of optical quality.” Id. at 32.
`Patent Owner argues that Hsu “encourages optimizing for maximum
`transparency and optical quality—not resistivity.” Prelim. Resp. 15. Patent
`Owner further argues that “[b]y disparaging approaches that potentially
`decrease transparency and optical quality, Hsu teaches away from”
`references such as Mozdzyn “which potentially compromise the
`transparency and optical quality that Hsu’s embodiments are designed to
`optimize, in the service of reduced resistivity.” Id.; see also PO Prelim. Sur-
`reply 7 (arguing “Hsu teaches maximized transparency (see EX1004 at 2:42–
`43), whereas Mozdzyn teaches that special care must be taken to reduce
`visibility of its metal mesh electrodes (EX1005 at [0023]).”).
`More specifically, Patent Owner argues that Hsu “discourages the use
`of opaque metal mesh electrodes.” Prelim. Resp. 16. According to Patent
`Owner, Hsu is designed to “maximize transparency” and teaches “that it is
`beneficial to increase the resistivity of the touch sensors, i.e. to degrade their
`electrical performance, in order to obtain better transparency.” Id. at 16–17
`(citing Ex. 1004, 2:42–53, 4:53–5:5). Patent Owner furt
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