TRADEMARK
`
`,
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`: ACTION REGARDING A PATENT OR
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`(
`
`
`
`Western District of Texas , G@ rdmClhuh inn
`
`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 , @rsmCtuitiny
`onthe following
`Cl Trademarks or
` [WfPatents.
`[1] the patent action involves 35 U.S.C. § 292.):
`MICROSOFT CORPORATION,
`
`
` U.S, DISTRICT COURT
`09/09/2019
`1:19-CV-874-ADA|
`PLAINTIFF
`DEFENDANT
`
`
`NEODRON LTD.,
`
`
`
`
`
`
`aR
`
`
`
`
`
`
`
`
`
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`
`
`C) Amendment
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`po
`po
`Bo
`
`4
`
`(J Answer
`
`OD Cross Bill
`
`CO OtherPleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`
`
`
`
`
`Attached is the Order of Dismissal with Prejudice signed by Judge Alan D. Albright on January 7, 2021.
`
`In the above— entitled case, the following decision has been rendered or judgementissued:
`DECISIONSJUDGEMENT
`
` BY) DERE CAS~)
`
`\pirectorLory3—Upe AN ationofaction, mailthiscop
`
`Titis copy to Director
`Copy 2—Uponfiling document adding patent(s), mail
`
`
`
`‘ ARSON Dems
`
`Copy 44Casefile copy
`
`fo 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 Lid., (‘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 Plaintiffs claims for relief
`
`against Defendant with prejudice and Defendants’ claims and defenses forrelief 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 ORDEREDthat Plaintiffs 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 ORDEREDthatall attorneys’ fees, costs of court and expensesshall
`
`be bornc by each party incurring the same.
`
`5
`
`
`
`ALAN D ALBRIGHT
`United States District Judge
`Atrue copy of the original, | certify.
`
`4.8. District Court
`
`PANASONIC EX1003, page 002
`IPR2021-01115
`
`PANASONIC EX1003, page 002
` IPR2021-01115
`
`

`

`“omg Case 1:19-cv-00819-ADA Document 108 Filed 01/07/21 Page 1 of1
`AO 120 (Rev. 08/10
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O, Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`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
`on the following
`Ci Trademarks or
`[yf Patents.
`( () the patent action involves 35 U.S.C, § 292.):
`
`US. DISTRICT COURT
`DATE FILED
`DOCKET NO.
`‘
`8/28/2019
`1:19-cv-00819-ADA
`
`PLAINTIFF
`DEFENDANT
`
`NEODRON LTD.,
`
`.
`WesternDistrict of Texas
`
`DELL TECHNOLOGIES, INC.
`
`
`DATE OF PATENT
`PATENT OR
` HOLDER OF PATENT OR TRADEMARK
`
`
`
`OR TRADEMARK _
`TRADEMARK NO,
`
`
`1 8,102,286
`
`
`
`
`
`
`
`
`2 8,451,237
`
`3 8,502,547
`
`1/24/2012
`
`5/28/2013
`
`Neodron Ltd.
`
`Neodron Ltd.
`
`8/6/2013 -
`
`Neodron Ltd.
`
`DATE INCLUDED
`
`PATENT OR
`
`In the above—entitled case, the following patent(s)/ trademark({s) have been included:
`INCLUDED BY
`
`[{ Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`C Answer
`
`CL CrossBill
`
`(1 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`8,946,574
`
`2/3/2015
`
`Neodron Ltd.
`
`2 10,088,960
`
`10/2/2018
`
`Neodron Ltd.
`
`NeodronLtd.
`1/7/21
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/TUDGEMENT
`
`Orderof dismissal attached.
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, maij this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy te Director Copy 4—Case file copy
`
`PANASONIC EX1003, page 003
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`
`PANASONIC EX1003, page 003
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`
`

`

`b.
`
`;
`wagl Case 1:19-cv-00819-ADA Document 107 Filed 01/07/21 Page lofi
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`Case No. 1:19-cv-00819-ADA
`
`NEODRONLTD.,
`
`Plaintiff,
`
`Vv.
`
`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 claimsfor relief against Defendantasserted
`
`in this case and Defendant's claims, defenses and/orcounterclaimsfor relief against Plaintiff asserted
`
`in this case. Plaintiff and Defendant have thercfore requested that the Court dismiss Plaintiffs 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 expensestaxed against the
`
`party incurring samc. The Court, having consideredthis 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 Defendant’s claims, defenses and/or counterclaims for relief against
`
`Plaintiff are dismissed with prejudice. IT IS FURTHER ORDEREDthatall attorneys’ fees, costs of
`
`court and expenses shal! be borne by each party incurring the same.
`
`J
`
`7, 2021
`
`|
`
`7
`
`Ak
`
`ALAN D. ALBRIGHT
`United States District Judge
`
`PANASONIC EX1003, page 004
`IPR2021-01115
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`PANASONIC EX1003, page 004
` IPR2021-01115
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`

`

`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., MICROSOFT CORPORATION, DELL INC.,
`DELL PRODUCTSLP, LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC.,
`Petitioner,
`
`Vv.
`
`NEQODRON 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
`Dueto Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreementas
`Business Confidential Information
`35 US.C. $ 317; 37 CFR. § 42.74
`
`PANASONIC EX1003, page 005
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`
`

`

`IPR2020-00459
`Patent 8,946,574 B2
`
`L
`
`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 pursuantto a settlement. With our authorization,the Partiesfiled
`
`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”).
`
`Tl.
`
`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 thejoint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for terminationis filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remainsin the inter
`
`partes review, the Office may terminate the review.
`In the Joint Motion,the Parties represent that they have reached an
`
`agreementto jointly seek termination ofthis 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 Agreementsindicate they are complete agreements. Ex. 2011, 9-
`10; Ex. 2012, 7; Ex. 2013, 7; Ex. 2014, 9-10; Ex. 2015, 7. The Partiesalso
`
`represent that their Settlement Agreements resolveall currently pending
`
`PANASONIC EX1003, page 006
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`
`PANASONIC EX1003, page 006
` IPR2021-01115
`
`

`

`IPR2020-00459
`Patent 8,946,574 B2
`
`Patent Office and District Court proceedings betweenthe Parties involving
`
`U.S. Patent No. 8,946,574 B2 (“the ’574 patent”). Joint Motion 1-3.
`
`Weinstitutedatrial 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 beyondthe preliminary stage, the Parties have
`adequately shownthat the termination of the proceeding is appropriate.
`Underthese circumstances, we determine that good cause exists to terminate
`
`the proceeding with respectto 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 causeexists to treat the Settlement Agreements as
`
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`CER. § 42.74(c).
`|
`This Order does not constitute a final written decision pursuant to 35
`
`U.S.C. § 318(a).
`
`UI. ORDER
`
`Accordingly, for the reasons discussed above,itis:
`
`ORDEREDthatthe 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 C.F.R. § 42.72; and
`
`FURTHER ORDEREDthat the Joint Request is granted, and the
`
`Settlement Agreements shall be kept separate from thefile 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 CER. § 42.74(c).
`
`PANASONIC EX1003, page 008
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`PANASONIC EX1003, page 008
` IPR2021-01115
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`

`

`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.com
`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 2:20-cv-00239-3RG-RSP Document? Filed 07/15/20 Page lofiPagelb#: 144
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Directorof the U.S. 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.C. § 290 and/or 15 U.S.C. § 1116 youare hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas
`onthe following
`L] Trademarks or
`[WfPatents.
`( [J the patent action involves 35 U.S.C. § 292):
`DOCKETNO.
`DATE FILED
`U.S. DISTRICT COURT
`2:20-cv-239
`7/15/2020
`PLAINTIFF
`
`Eastern District of Texas
`
`DEFENDANT
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`NEODRON LTD.
`
`FUJITSU LIMITED; FUJITSU AMERICA,INC.; FUJITSU
`COMPONENTSAMERICA, INC.
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`(] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`(] Answer
`
`C1 Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upontermination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile 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 PRODUCTSLP, LENOVO (UNITED STATES)INC.,
`and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`Vv.
`
`NEODRONLTD.,
`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 US.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,
`
`6-11, and 13-15 of U.S. Patent No. 8,946,574 B2 (Ex. 1001, “the 7574
`
`patent”). Paper 3 (“Pet.”). Neodron Ltd. (“Patent Owner”) filed a Patent
`
`OwnerPreliminary 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”’).
`
`Wehaveauthority, acting on the designation of the Director, to
`
`determine whetherto institute an inter partes review under 35 U.S.C. § 314
`
`and 37 C.F.R. § 42.4(a). Inter partes review may notbe instituted unless
`
`“the information presented in the petition filed under section 311 and any
`
`responsefiled under section 313 showsthat 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 maynotinstitute on fewer than all claims
`
`challenged in the Petition. SAS Inst., Inc. v. lancu, 138 S. Ct. 1348, 1359-60
`
`(2018).
`
`For the reasonsset 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, weinstitute
`
`PANASONIC EX1003, page 012
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`

`

`IPR2020-00459
`Patent 8,946,574 B2
`
`inter partes review onall of the challenged claims based onall of the
`
`groundsidentified 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.” Jd.
`
`Patent Owneridentifies 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. vy. Dell Technologies, Inc., No. 1:19-cv-00819-
`
`ADA (W.D. Tex.) (collectively the “WD Texas Actions”), Neodron Lid. v.
`
`Lenovo Group Ltd., No. 6:19-cv-00398 (W.D. Tex.), which was dismissed
`and refiled as Neodron Ltd. v. Lenovo Group Ltd.', No. 3:19-cv-05644 (N.D.
`
`Cal.) (the “ND Cal. Action). Pet. 2; Paper 7, 2.
`
`D. The ’574 Patent
`
`The °574 patentis titled “Two-Layer Sensor Stack.” Ex. 1001, code
`
`(54).
`
`According to the ’574 patent, “[a] position sensor can detect the
`
`presence andlocation of a touch by a finger or by an object, such as a stylus,
`
`' This action names Lenovo (United States) Inc. and Motorola Mobility
`LLC as co-defendants.
`
`PANASONIC EX1003, page 013
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`

`

`IPR2020-00459
`Patent 8,946,574 B2
`
`within an area of an externalinterface 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 numberofdifferent types of position
`
`sensors” including a capacitive touch screen which “may include an
`
`insulator coated with a transparent conductorin a particular pattern.” Jd. 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.” Jd. 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.” Jd. at
`
`1:37-40.
`
`Figure 1 of the ’574 patent is reproduced below.
`
`PANASONIC EX1003, page 014
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`
`

`

`IPR2020-00459
`Patent 8,946,574 B2
`
`FIG.1
`
`Ld
`
`
`
`
`
`Display
`
`2
`
`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. Jd. 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 betweenthe electrodes 4 (X) and a transparent covering
`sheet 7. Another adhesive layer 8 of an optically clear adhesive
`may be betweenthe electrodes 5 (Y) and a transparent covering
`
`5
`
`PANASONIC EX1003, page 015
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`
`

`

`IPR2020-00459
`Patent 8,946,574 B2
`
`sheet 9. A gap may be formed between the display 2 and the
`transparent covering sheet7.
`
`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).” Jd. 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.” /d. at 3:15-—17.
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`Figure 2a is reproduced below.
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`FIG. 2a
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`4
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`12
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`Le
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`10
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`Figure 2a “illustrate[s a] schematically exemplary electrode pattern[] 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 numberofstraight
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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.” /d. 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 betweena first
`cover sheet and a substrate;
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`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
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`a display separated from the second surface of the
`substrate by a second OCA and a second coversheet 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|35 U.S.C. §? Reference(s)/Basis
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`1-4, 6-11, 13-15|103¢a)
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that becameeffective 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 Al, published Jan. 13, 2011 (Ex. 1005).
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`
`
`
`
`Hsu, Chang,Frey’
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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 Co. 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 pertinentart,” (2) the “scope and content of the prior
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`art,” (3) the “differences between the prior art and the claimsat 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.” Jd. 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 ofall four
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`Graham factors and that an obviousness determination can be made only
`
`after consideration of each factor.” KSR Int’] 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. Matal,
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`872 F.3d 1290 (Fed. Cir. 2017) (en banc) (second quote). We note that, with
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`> US 2010/0123670 Al, published May 20, 2010 (Ex. 1010).
`® 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
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`or evidence directed to secondary considerations of nonobviousness. See
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`generally Pet.; Prelim. Resp. The analysis below addressesthefirst 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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`encounteredin theart; (3) prior art solutions to those problems; (4) rapidity
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`with which innovations are made; (5) sophistication of the technology; and
`
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
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`Union Oil Co. of Cal., 713 F.2d 693, 696-697 (Fed. Cir. 1983). “Not all
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`such factors may bepresent in every case, and one or more ofthese or other
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`factors may predominatein a particular case.” /d.
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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 doesnot addressthe 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 purposesofinstitution, we adopt Petitioner’s
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`proposedlevel 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.®
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`C. Claim Construction
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`Weconstrue 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). Underthat 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 haveto 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 proposesa construction of the term “cover sheet.” PO
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`Resp. 13-14.
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`Having considered the arguments ofthe parties, both those directed to
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`claim constructions andtheprior art analysis, we determine that for purposes
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`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
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`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
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`8 If Patent Ownerproposes 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 obviousnessanalysis.
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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))).
`
`Petitioner argues that the term “cover sheet” as recited in the claims of
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`the °574 patent meansa “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—‘whereit is referred to as a
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`‘transparent covering sheet’ with no further description.” /d. at 15 (citing
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`Ex. 1001, 3:3-20). 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 Hil/-Rom Servs. v. Stryker Corp.,
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`755 F.3d 1367, 1371 (Fed. Cir. 2014)).
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`Patent Ownerarguesthe 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 thefield
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`of the patented inventions and is uninformative about what a cover sheetis
`
`or does.” Jd. at 13; see also PO Prelim. Sur-reply 6 (arguing Petitioner’s
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`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).
`Both Petitioner and Patent Owneragree 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
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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 improperto read the function of the cover sheet into the claim
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`limitation. “While we read claims in view ofthe 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 disavowalare exacting.
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`“To act as its own lexicographer, a patentee mustclearly set forth a
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`definition of the disputed claim term otherthan its plain and ordinary
`
`meaning” and must “‘clearly express an intent’ to redefine the term.”
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`Thorner v. Sony Computer Entm’t 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,
`
`the definition must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per
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`Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Disavowal requires that “‘the
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`specification makesclear that the invention does not include a particular
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`feature,” SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems,
`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 Lifesciences LLC v. Cook Inc.,
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`582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the preferred embodimentis
`
`described in the specification as the inventionitself, the claims are not
`
`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))).
`
`The section of the Specification Patent Ownerdirects us to is neither a
`
`disavowalnorthe applicant acting as a lexicographer. Instead, the applicant
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`is simply describing what the covering sheet and adhesive layer—notthe
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`covering sheet alone—maydo:
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`The transparent covering sheet 9 and the adhesive layer § 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” that may encapsulate and protect. Jd. at 3:12-17.
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`Wherethe written description states that the combination of two elements
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`provides an advantage, the written description is not making clear and
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`unambiguousdisclaimer about one of the components.
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`Moreover, as the emphasized language above makesclear, the 7574
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`patent is describing an optional feature that may be present. Specifically, the
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`’574 patent describes that the covering sheet and adhesive layer “may”
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`encapsulate and, if they encapsulate, they “may” provide protection.
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`Ex. 1001, 3:12-17. But neither encapsulation nor protection is required. Jd.
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`The use of the term “may”is not a clear disavowal of claim scope nordoesit
`reflect the applicant being a lexicographer.?
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`Accordingly, for the reas