TRADEMARK
`
`'
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`. ACTION REGARDING A PATENT OR
`
`Mail Stop 3
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Western District of Texas , @ rsimC'ruir il'ln’
`on the following
`
`I] Trademarks or MPatents.
`
`( D the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`1:19—CV—874.—ADA
`PLAINTIFF
`
`DATE FILED
`09/09/2019
`
`
`
`U.S. DISTRICT COURT
`Western District ofTexas, (in rsmCtutlinrr
`
`DEFENDANT
`
`
`
`
`
`NEODRON LTD.,
`MICROSOFT CORPORATION,
`
`
`
`PATENT OR
`DATE OF PATENT
`
`TRADEMARK N0.
`0R TRADELMRK
`
`
`
`HOLDER OF PATENT 0R TRADEMARK
`
`1 8 102,286
`
`112412012
`
`Neodron Ltd.
`
`2 9,086,770
`
`3 8,946 574
`
`7/21I2015
`
`Neodron Ltd.
`
`213/2015
`
`Neodron Ltd.
`
`4 8.502 54?
`
`.
`
`816/2013
`
`Neodron Ltd.
`
`-
`
`5 10,088,960
`
`10/212018
`
`Neodron Ltd
`
`
`
`
`
`
`DATE INCLUDED
`
`PATENT 0R
`TRADEMARK NO.
`
`In die above—entitled case, the following patent(s}/ trademark(s) have been included:
`INCLUDED BY
`
`I:I Answer
`I] Cross Bill
`I] Other Pleading
`
`
`
`El Amendment
`DATE OF PATENT
`0R TRADEMARK
`
`HOLDER OF PATENT 0R TRADEMARK
`—
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Attached is the Order of Dismissal with Prejudice signed by Judge Alan D. Albright on January 7, 2021.
`
`
`
`
`CLERK
`BY) DEP 3" W:\
`Jeannette J. Clack «O
`_. AAL‘IIE‘XAv
`n—K
`
`term
`Copy l—Upon initiation ofaction, mail this copy tow” 3— .
`-.
`'-
`tion‘ofaction, mail this cop
`
`
`'15 copy to Director Copy -
`Case file copy
`
`
`
` ——
`
`In the above—- entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`Copy Z—Upon filing document adding patent(s), mai
`
`
`
`
`u Director
`
`
`
`PANASONIC EX1003, page 001
`IPR2021-01115
`
`PANASONIC EX1003, page 001
` IPR2021-01115
`
`

`

`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`C.A. No. 1:19-cv-00874-ADA
`
`NEODRON LTD"
`
`Plaintiff,
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`
`
`ORDER OF DISMISSAL WITH PREJUDICE
`
`On this day, Plaintiff Neodron Ltd., (“Plaintiff”) and Microsoft Corporation (“Defendant”)
`
`announced to the Court that they have resolved Plaintiff‘s claims for relief against Defendant asserted
`
`in this case and Defendants’ claims and defenses for relief against Plaintiff asserted in this. case.
`
`Plaintiff and Defendant have therefore requested that the Court dismiss Plaintiff‘s claims for relief
`
`against Defendant with prejudice and Defendants’ claims and defenses for relief against Plaintiff with
`
`prejudice, and with all attorneys’ fees, costs and expenses taxed against the party incurring same. The
`Court, having considered this request,
`is of the opinion that their request for dismissal should be
`
`granted.
`
`IT IS THEREFORE ORDERED that Plaintiff’s claims for relief against Defendant are
`
`dismissed with prejudice and Defendants’ claims and defenses for relief against Plaintiff are dismissed
`
`with prejudice. IT IS FURTHER ORDERED that all attorneys’ fees, costs of court and expenses shall
`
`be borne by each party incurring the same.
`
`Dated;
`
`“7’21
`
`@531 E930?
`
`ALAN D ALBRIGHT
`
`United States District Judge
`Atrue copy of the original, I certify._
`, erk. Us. trict' Court
`
`
`
`PANASONIC EX1003, page 002
`IPR2021-01115
`
`PANASONIC EX1003, page 002
` IPR2021-01115
`
`

`

`I l
`
`W Case 1:19—cv-00819-ADA Document 108 Filed 01107/21 Page 1 of 1
`A0 I20 Rev. 08!“)
`
`TRADEMARK
`
`TO'
`'
`
`Mail Stop 8
`_
`Director of the US. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 andlor 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the us. District Court
`Western District of Texas
`on the following
`
`( [I the patent action involves 35 U.S.C. § 292.):
`MPatents.
`I] Trademarks or
`
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`.
`
`
`1 :19—cv—00819-ADA
`8/28/2019
`'
`Western District of Texas
`
`
`
`DEFENDANT
`PLAINTIFF
`
`DELL TECHNOLOGIES, INC.
`NEODRON LTD.,
`
`
`
`PATENT 0R
`DATE OF PATENT
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`
`
`”llADEMARK NO.
`OR TRADEMARK _
`
`1/2412012
`Neodron Ltd.
`1 8,102,286
`
`———
`
`
`
`_-_
`
`
`—_—
`
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)f trademark(s) have been included:
`INCLUDED BY
`
`I
`
`PATENT OR
`TRADEMARK NOD
`
`[2f Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`[I Answer
`
`[I Cross Bill
`
`[I Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 8,946,574
`
`21312015
`
`Neodron Ltd.
`
`2 10,088,960
`
`3 7,821,502
`
`1012/2018
`
`Neodron Ltd.
`
`10I26l20‘10
`
`Neodron Ltd.
`1/7/21
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECI SIGN/JUDGEMENT
`
`Order of dismissal attached.
`
`DATE
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3-—Upon termination of action, mail this copy to Director
`Copy Z—Upon filing document adding patent(s), mail this copy to Director Copy 4——Case file copy
`
`PANASONIC EX1003, page 003
`IPR2021-01115
`
`PANASONIC EX1003, page 003
` IPR2021-01115
`
`

`

`g N
`
`.
`3* Case 1:19-cv—00819-ADA Document 107 Filed 01/07/21 Page 1 of 1
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`NEODRON LTD.,
`
`Case No. 1:19-cv-00819-ADA
`
`Plaintiff,
`
`V.
`
`DELL TECHNOLOGIES INC.,
`
` Defendant.
`
`ORDER OF DISMISSAL WITH PREJUDICE
`
`On this day, Plaintiff Neodron Ltd., (“Plaintiff’) and Dell Technologies Inc., (“Defendant”)
`
`announced to the Court that they have resolved Plaintiff‘s claims for relief against Defendant asserted
`
`in this case and Defendant’s claims, defenses and/or'counterclaims for relief against Plaintiff asserted
`
`in this case. Plaintiff and Defendant have therefore requested that the Court dismiss Plaintiff‘s claims
`
`for relief against Defendant with prejudice and Defendant’s claims, defenses and/or counterclaims for
`
`relief against Plaintiff with prejudice, and with all attorneys” fees, costs and expenses taxed against the
`
`party incurring same. The Court, having considered this request, is-of the opinion that their request for
`
`dismissal should be granted.
`
`IT__ IS THEREFORE ORDERED that Plaintiff’s claimsfor relief against Defendantare
`
`dismissed with prejudice and Defendant’s claims, defenses and/or counterclaims for relief against
`
`Plaintiff are dismissed with prejudice. IT IS FURTHER ORDERED that all attorneys’ fees, costs of
`
`court and expenses shall be borne by each party incurring the same.
`
`Dated:
`
`7, 2021
`
`J
`
`anuary
`
`i
`
`CEWV‘3
`
`United States District Judge
`
`2 g
`
`ALAN Di ALBRIGHT
`
`M-
`\XQC‘LS
`.
`
`PANASONIC EX1003, page 004
`IPR2021-01115
`
`PANASONIC EX1003, page 004
` IPR2021-01115
`
`

`

`Trials@uspto. gov
`571-272-7822
`
`Paper 26
`Entered: February 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., NHCROSOFT 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.
`
`TERMINATION
`
`Due to Settlement After Institution of Trial and
`
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`
`35 USC. § 317; 37 CFR. § 42.74
`
`PANASONIC EX1003, page 005
`IPR2021-01115
`
`PANASONIC EX1003, page 005
` IPR2021-01115
`
`

`

`IPR2020-00459
`
`Patent 8,946,574 B2
`
`1.
`
`INTRODUCTION
`
`HP Inc., Microsoft Corporation, Dell Inc., Dell Products LP, Lenovo
`
`(United States) Inc., and Motorola Mobility LLC., (collectively,
`
`“Petitioner”) and Neodron Ltd. (“Patent Owner”), (collectively “the
`
`Parties”), request that the above-identified inter partes review proceeding be
`
`terminated pursuant to a settlement. With our authorization, the Parties filed
`
`a Joint Motion to Terminate the above—identified proceeding (“Joint
`
`Motion”). Paper 24.
`
`The Parties also filed Settlement and License Agreements (Ex. 2011;
`
`Ex. 2012; Ex. 2013; Ex. 2014; Ex. 2015, collectively “Settlement
`
`Agreements”) and a Joint Request to Keep Separate (Paper 25, “Joint
`
`Request”).
`
`II.
`
`DISCUSSION
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.” It is
`
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`
`partes review, the Office may terminate the review.
`
`In the Joint Motion, the Parties represent that they have reached an
`
`agreement to jointly seek termination of this inter partes review proceeding,
`
`that the filed copies of the Settlement Agreements are true copies, and there
`
`are no other collateral agreements. Joint Motion 1—3. Further, the
`
`Settlement Agreements indicate they are complete agreements. Ex. 2011, 9—
`
`10; Ex. 2012, 7; Ex. 2013, 7; Ex. 2014, 9—10; Ex. 2015, 7. The Parties also
`
`represent that their Settlement Agreements resolve all currently pending
`
`PANASONIC EX1003, page 006
`IPR2021-01115
`
`PANASONIC EX1003, page 006
` IPR2021-01115
`
`

`

`IPR2020-00459
`
`Patent 8,946,574 B2
`
`Patent Office and District Court proceedings between the Parties involving
`
`US. Patent No. 8,946,574 B2 (“the ’574 patent”). Joint Motion 1—3.
`
`We instituted a trial on the above-identified proceeding on September
`
`14, 2020. Paper 17. We have not yet decided the merits of the proceeding,
`
`and a final written decision has not been entered. Notwithstanding that the
`
`proceeding has moved beyond the preliminary stage, the Parties have
`
`adequately shown that the termination of the proceeding is appropriate.
`
`Under these circumstances, we determine that good cause exists to terminate
`
`the proceeding with respect to the Parties.
`
`The Parties also requested that the Settlement Agreements be treated
`
`as business confidential information and be kept separate from the file of the ‘
`
`’574 patent. Joint Request 1—2. After reviewing the Settlement Agreements
`
`between the Parties, we find that the Settlement Agreements contain
`
`confidential business information regarding the terms of settlement. We
`
`determine that good cause exists to treat the Settlement Agreements as
`
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`
`CPR § 42.74(c).
`
`‘
`
`This Order does not constitute a final written decision pursuant to 35
`
`U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that the Joint Motion is granted, and IPR2020—00459 is
`
`terminated with respect to Petitioner and Patent Owner, pursuant to
`
`35 U.S.C. § 317(a) and 37 CPR. § 42.72; and
`
`FURTHER ORDERED that the Joint Request is granted, and the
`
`Settlement Agreements shall be kept separate from the file of the ’574
`
`PANASONIC EX1003, page 007
`IPR2021-01115
`
`PANASONIC EX1003, page 007
` IPR2021-01115
`
`

`

`IPR2020-00459
`
`Patent 8,946,574 B2
`
`patent, and made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause, pursuant to 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`PANASONIC EX1003, page 008
`IPR2021-01115
`
`PANASONIC EX1003, page 008
` IPR2021-01115
`
`

`

`IPR2020-00459
`
`Patent 8,946,574 B2
`
`For PETITIONER:
`
`James Heintz
`
`Robert Buergi
`DLA PIPER (US) LLP
`Jim.heintz@dlapiper.com
`Robert.buergi@dlapiper.com
`
`Robert High
`Philip Eklem
`Aliza Carrano
`
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER LLP
`Robert.high@finnegan.com
`Philip.eklem@finnegan.cbm
`Aliza.carrano@finnegan.com
`
`Christopher Douglas
`Caleb Bean
`
`ALSTON & BIRD LLP
`
`Christopher.douglas@alston.com
`Caleb.bean@alston.com
`
`For PATENT OWNER:
`
`Kent Shum
`
`Neil Rubin
`
`RUSS AUGUST & KABAT
`kshum@raklaw.com '
`nrubin@raklaw.com
`
`PANASONIC EX1003, page 009
`IPR2021-01115
`
`PANASONIC EX1003, page 009
` IPR2021-01115
`
`

`

`Case 2:20vcv—00229 JRG— REP Document 2 Filed 03’f15f20 Page 1 cf 1 Pagan?) #: 144
`
`A0 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the US. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`in Compliance with 35 U.S.Ct § 290 and/or 15 USC § I I 16 you are hereby advised that a court action has been
`
`filed in the US. District Court
`Eastern District of Texas
`on the following
`
`D Trademarks or
`DOCKET NO.
`2:20-cv—2 39
`PLAINTIFF
`
`NEODRON LTD.
`
`( D the patent action involves 35 USC § 292‘):
`EPatents.
`DATE FILED
`Us DISTRICT COURT
`7/15/2020
`
`DEFEND ANT
`
`Eastern District of Texas
`
`FUJITSU LIMITED; FUJITSU AMERICA, INC.; FUJITSU
`COMPONENTS AMERICA, INC.
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`111 the above—entitled case, the following patent(s)/ tradeniark(s) have been included:
`LN CLUDED BY
`
`PATENT OR
`TRADEMARK NO
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`D Answei
`
`B Cross Bill
`
`D Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/TUD GET/TENT
`
`
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`
`
`PANASONIC EX1003, page 010
`IPR2021-01115
`
`PANASONIC EX1003, page 010
` IPR2021-01115
`
`

`

`Trials@uspto. gov
`571-272-7822
`
`Paper No. 17
`Date: September 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`PANASONIC EX1003, page 011
`IPR2021-01115
`
`PANASONIC EX1003, page 011
` IPR2021-01115
`
`

`

`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—1 1, and 13—15 ofU.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 CPR. § 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
`
`PANASONIC EX1003, page 012
`IPR2021-01115
`
`PANASONIC EX1003, page 012
` IPR2021-01115
`
`

`

`IPR2020—00459
`
`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.); Neodrorz Ltd. v. Microsoft Corp, No. 1:19—cv—00874—ADA
`
`(W.D. Tex.), Neodrorz 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 (ND.
`
`Cal.) (the “ND Cal. Action). Pet. 2; Paper 7, 2.
`
`D. The ’5 74 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.
`
`PANASONIC EX1003, page 013
`IPR2021-01115
`
`PANASONIC EX1003, page 013
` IPR2021-01115
`
`

`

`IPR2020-00459
`
`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.
`
`PANASONIC EX1003, page 014
`IPR2021-01115
`
`PANASONIC EX1003, page 014
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`
`

`

`IPR2020-00459
`
`Patent 8,946,574 B2
`
`FIG. 1
`
`3b dJ//
`
`3.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figure 1 “is a cross-sectional view of an exemplary touch sensitive panel
`
`[(1)] and a display [(2)].” Ex. 1001, 2:34; see also id. at 2:52—53. The
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`panel includes an insulating substrate 3 having two opposing faces, 3a and
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`3b. Id. at 2:53—61. Electrodes 4 (X) and 5 (Y), which may be arranged in
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`different directions, are provided on faces 3b and 3a, respectively. 1d. at
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`2:59—64.
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`The ’574 patent goes on to describe the layers shown in Figure 1:
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`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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`5
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`sheet 9. A gap may be formed between the display 2 and the
`transparent covering sheet 7.
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`EX. 1001, 321—8. According to the ’574 patent, “transparent covering sheet 7
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`and the adhesive layer 6 of optically clear adhesive may encapsulate the
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`electrodes 4 (X)” and “transparent covering sheet 9 and the adhesive layer 8
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`of optically clear adhesive may encapsulate the electrodes 5 (Y).” Id. at 3:9—
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`15. The ’574 patent further states that “[t]he encapsulation of the electrodes
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`4 (X) and 5 (Y) .
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`.
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`. may provide protection from physical and environmental
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`damage.” Id. at 3:15—17.
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`Figure 2a is reproduced below.
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`FIG. 2a
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`1
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`.
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`11
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`‘2
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`IK/
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`10
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`
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`Figure 2a “illustrate[s a] schematically exemplary electrode pattem[] useable
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`in the touch sensitive panel of FIG. 1.” EX. 1001 , 2:5—6. According to the
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`’574 patent, the exemplary electrode shown in Figure 2a may be used for
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`either electrode 4 (X) or 5 (Y) and “may be formed by a number of straight
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`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
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`cells 13 arranged in a layer.” Id. at 3:61—4:1.
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`E.
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`Illustrative Claims
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`Claims 1, 8, and 15 are independent claims and claim 1, reproduced
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`below, is illustrative of the subject matter of the challenged claims.
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`1. An apparatus comprising:
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`a first optically clear adhesive (OCA) layer between a first
`cover sheet and a substrate;
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`the substrate, with drive or sense electrodes of a touch
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`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
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`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.
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`Ex. 1001, 14:46—59.
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`F. Prior Art and Asserted Grounds
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`Petitioner asserts that claims 1—4, 6-11, and 13—15 would have been
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`unpatentable on the following grounds:
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`Claim(s) Challenged
`1—4, 6-11, 13—15
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`35 U.S.C. §2
`103(a)
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`Reference(s)/Basis
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`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.
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`3 US 7,030,860 B1, issued Apr. 18, 2006 (Ex. 1004).
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`4 US 2011/0007011 A1, published Jan. 13, 2011 (Ex. 1005).
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`Claims) Challenged
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`
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`14.6—11.13—15
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`1—3, 7—10, 14, 15
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`
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`4, 6, 11, 13
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`Petitioner relies on the Declaration of Vivek Subramanian, Ph.D.
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`Ex. 1002.
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`A. Legal Standards
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`ANALYSIS
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`In Graham v. John Deere C0. ofKansas City, 383 U.S. 1 (1966), the
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`Supreme Court set out a framework for assessing obviousness under 35
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`U.S.C. § 103 that requires consideration of four factors: (1) the “level of
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`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
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`art,” (3) the “differences between the prior art and the claims at issue,” and
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`(4) “secondary considerations” of non-obviousness such as “commercial
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`success, long-felt but unsolved needs, failure of others, etc.” Id. at 17—18.
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`“While the sequence of these questions might be reordered in any particular
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`case,” the U.S. Court of Appeals for Federal Circuit has “repeatedly
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`emphasized that an obviousness inquiry requires examination of all four
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`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.
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`398, 407 (2007) (first quote); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335
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`(Fed. Cir. 2016), overruled on other grounds by Aqua Prods, Inc. v. Mata],
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`872 F.3d 1290 (Fed. Cir. 2017) (en banc) (second quote). We note that, with
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`5 US 2010/0123670 A1, published May 20, 2010 (EX. 1010).
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`6 US 2009/0002337 A1, published Jan. 1, 2009 (Ex. 1011).
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`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
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`or evidence directed to secondary considerations of nonobviousness. See
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`generally Pet.; Prelim. Resp. The analysis below addresses the first three
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`Graham factors.
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`B. Level of Ordinary Skill in the Art
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`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
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`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
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`with which innovations are made; (5) sophistication of the technology; and
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`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
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`Union Oil Co. 0fCal., 713 F.2d 693, 696—697 (Fed. Cir. 1983). “Not all
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`such factors may be present in every case, and one or more of these or other
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`factors may predominate in a particular case.” Id.
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`Petitioner argues that a person having ordinary skill in the art
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`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.
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`Pet. 10—11.
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`Patent Owner does not address the level of ordinary skill in the art in
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`the Preliminary Response. See generally Prelim. Resp.
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`Accordingly, for purposes of institution, we adopt Petitioner’s
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`proposed level of ordinary skill in the art, except that we delete the qualifier
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`“at least” to eliminate vagueness as to the amount of practical experience.
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`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
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`art.3
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`C. Claim Construction
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`We construe claims “using the same claim construction standard that
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`would be used to construe the claim in a civil action under 35 U.S.C.
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`282(b).” 37 C.F.R. § 42.100(b) (2020). Specifically, we apply the
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`principles set forth in Phillips v. AWH Corp, 415 F.3d 1303, 1312—17 (Fed.
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`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
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`term would have to a person of ordinary skill at the time of the invention, in
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`the context of the entire patent including the specification. Phillips, 415
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`F.3d at 1312—13.
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`Petitioner requests that we construe two claim limitations: “cover
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`sheet” and “mesh.” Pet. 15—16.
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`Patent Owner proposes a construction of the term “cover sheet.” PO
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`Resp. 13—14.
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`Having considered the arguments of the parties, both those directed to
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`claim constructions and the prior art analysis, we determine that for purposes
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`of this Decision the only term in need of explicit construction is “cover
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`sheet.” See Nz'dec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
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`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
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`in controversy, and only to the extent necessary to resolve the controversy
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`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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`10
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`.
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`.
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`. .’” (quoting Vivid Techs, Inc. v. Am. Sci. & Eng ’g, Inc, 200 F.3d 795,
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`803 (Fed. Cir. 1999))).
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`Petitioner argues that the term “cover sheet” as recited in the claims of
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`the ’574 patent means a “sheet that covers something.” Pet. 15—16.
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`According to Petitioner, the Specification does not recite the term “cover
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`sheet” but uses a similar term—covering sheet—“where it is referred to as a
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`‘transparent covering sheet’ with no further description.” Id. at 15 (citing
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`Ex. 1001, 33—20). Petitioner further argues that “because limitations from
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`the embodiments in the specification are not to be read into the claims,” it is
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`improper to import the purpose of the cover sheet into the claim
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`construction. Pet. Prelim. Reply 5 (citing Hill-Rom Servs. v. Stryker Corp,
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`755 F.3d 1367, 1371 (Fed. Cir. 2014)).
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`Patent Owner argues the term “cover sheet” means “a sheet designed
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`to serve a particular purpose, i.e., cover elements and provide protection.”
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`Prelim. Resp. 14 (citing Ex. 1001, 3:12—17). According to Patent Owner,
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`Petitioner’s proposed construction “plainly divorces the term from the field
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`of the patented inventions and is uninformative about what a cover sheet is
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`or does.” Id. at 13; see also PO Prelim. Sur—reply 6 (arguing Petitioner’s
`
`proposed construction is “overbroad”). Patent Owner further argues that
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`Petitioner’s construction “leaves Virtually no distinction between it and
`another claim term, ‘a substrate.”’ Prelim. Resp. 13 (emphasis omitted).
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`Both Petitioner and Patent Owner agree that “cover sheet,” at a
`
`minimum, is a sheet which covers something. Compare Pet. 14—15 (“sheet
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`that covers something”), with Prelim. Resp. 14 (“a sheet designed to cover
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`.
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`. .”). Based on the current record, we agree with the parties that, at a
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`minimum, the plain and ordinary meaning of “cover sheet” is a sheet that
`
`covers something.
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`11
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`Furthermore, based on the current record, we agree with Petitioner
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`that it is improper to read the function of the cover sheet into the claim
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`limitation. “While we read claims in View of the specification, of which
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`they are a part, we do not read limitations from the embodiments in the
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`specification into the claims.” Hill—Rom, 755 F.3d at 1371. “We depart
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`from the plain and ordinary meaning of claim terms based on the
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`specification in only two instances:
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`lexicography and disavowal.” Id.
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`The standards for finding lexicography and disavowal are exacting.
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`“To act as its own lexicographer, a patentee must clearly set forth a
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`definition of the disputed claim term other than its plain and ordinary
`
`meaning” and must “‘clearly express an intent’ to redefine the term.”
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`Thorner v. Sony Computer Entm ’1 Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
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`2012) (citing Helmsderfer v. Bobrick Washroom Equip, Inc, 527 F.3d 1379,
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`1381 (Fed. Cir. 2008)). If an inventor acts as his or her own lexicographer,
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`the definition must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. Renz’shaw PLC v. Marposs Societa ’ per
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`Azionz‘, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Disavowal requires that “the
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`specification makes clear that the invention does not include a particular
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`feature,” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems,
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`Inc, 242 F.3d 1337, 1341 (Fed. Cir. 2001), or is clearly limited to a
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`particular form of the invention, Edwards Lz'fescz'ences LLC v. Cook Inc,
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`582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the preferred embodiment is
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`described in the specification as the invention itself, the claims are not
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`necessarily entitled to a scope broader than that embodiment.” (quoting
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`Chimie v. PPG Indus. Inc, 402 F.3d 1371, 1379 (Fed. Cir. 2005))).
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`The section of the Specification Patent Owner directs us to is neither a
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`disavowal nor the applicant acting as a lexicographer. Instead, the applicant
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`12
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`is simply describing what the covering sheet and adhesive layer—not the
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`covering sheet alone—may do:
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`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
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`’574 patent states that it is the combination of “transparent cover sheet 9 and
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`the adhesive layer 8