In the Matter of
`Certain Mobile Devices, and
`Related Software Thereof
`
`Investigation No. 337-TA-750
`
`Publication 4385
`March 2013
`U.S. International Trade Commission
`
`Washington, DC 20436
`
`

`
`U.S. International Trade Commission
`
`COMMISSIONERS
`
`Deanna Tanner Okun, Chairman
`Irving A. Williamson, Vice Chairman
`Daniel R. Pearson, Commissioner
`Shara L. Aranoff, Commissioner
`Dean A. Pinkert, Commissioner
`David S. Johanson, Commissioner
`
`Address all communications to
`Secretary to the Commission
`United States International Trade Commission
`Washington, DC 20436
`
`

`
`U.S. International Trade Commission
`
`Washington, DC 20436
`www.usitc.gov
`
`In the Matter of
`Certain Mobile Devices, and
`Related Software Thereof
`
`Investigation No. 337-TA-750
`
`Publication 4385
`
`March 2013
`
`

`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES, AND
`RELATED SOFTWARE THEREOF
`
`
`
`Inv. No. 337-TA-750
`
`NOTICE OF COMMISSION DECISION TO REVIEW IN PART AND ON REVIEW TO
`
`AFFIRM A FINAL DETERMINATION FINDING NO VIOLATION OF SECTION 337;
`TERMINATION OF INVESTIGATION
`
`AGENCY:
`
`U.S. International Trade Commission.
`
`ACTION:
`
`Notice.
`
`SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
`determined to review in part the presiding administrative law judge's (“ALJ”) final initial
`determination (“ID”) issued on January 13, 2012, finding no violation of section 337 of the
`Tariff Act of 1930, 19 U.S.C. § 1337 in the above-captioned investigation, and on review, to
`affirm the ID’s finding of no violation. The investigation is hereby terminated.
`
`FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the General
`Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,
`telephone (202) 708-2301. Copies of non-confidential documents filed in connection with this
`investigation are or will be available for inspection during official business hours (8:45 a.m. to
`5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street,
`S.W., Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the
`Commission may also be obtained by accessing its Internet server at hing.‘//www.usirc. gav. The
`public record for this investigation may be viewed on the Commission's electronic docket (EDIS)
`at hrfgg.‘//ed1's. usfrc. gov. Hearing-impaired persons are advised that information on this matter can
`be obtained by contacting the Commission's TDD terminal on (202) 205-1810.
`
`SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
`November 30, 2010, based on a complaint filed by Apple Inc., fikfa Apple Computer, Inc., of
`Cupertino, California. 75 Fed. Reg. "£4081-S2. The complaint alleges violations of section 337 of
`the Tariff Act of 1930, as amended, 19 U.S.C- § 1337, in the importation into the United States,
`the sale for importation, and the sale within the United States after importation of certain mobile
`devices and related software by reason of infringement of certain claims of U.S. Patent Nos.
`7,812,828 (“the ‘828 Patent”); 7,663,607 (“the ‘60’? Patent”); and 5,3 79,430 (“the ‘430 Patent”).
`The Commission’s notice of investigation named Motorola, Inc. nfk/a Motorola Solutions of
`Schaumburg, Illinois (“Motorola Solutions”) and Motorola Mobility, Inc. (“Motorola”) of
`
`

`
`Libertyville, Illinois as respondents. The Office of Unfair Import Investigation was named as a
`participating party. The Commission subsequently terminated Motorola Solutions as a
`respondent based on withdrawal of allegations pursuant to Commission Rule 21 0.21 (a)(1) (19
`C.F.R. § 2l0.21(a)(1))- Notice (Aug. 31, 2011).
`
`On January 13, 2012, the ALJ issued his final ID, finding no violation of Section 337.
`Specifically, the AL] determined that accused products do not infringe the asserted claims of the
`‘828 Patent either literally or under the doctrine of equivalents (“DOE”). The ALJ also found that
`the asserted claims of the ‘828 Patent are not invalid. The ALJ further found that the accused
`
`products literally infringe the asserted claims of the ‘43O and ‘607 patents, but do not infringe
`under DOE. The ALJ also found that the asserted claims of the ‘430 Patent are invalid under 35
`
`U.S-C. § 102 for anticipation, and that the asserted claims of the ‘607 Patent are invalid under 35
`U.S-C- § 102 for anticipation and under 35 U.S.C. § 103 for obviousness. The ALJ fiirther found
`that Apple has standing to assert the ‘430 Patent, and that Motorola is not licensed to practice the
`‘43O Patent. The ID also includes the ALJ’s recommended determination on remedy and bonding
`in the event that the Commission reversed his finding of no violation of Section 337.
`
`On January 30, 2012, Apple filed a petition for review ofcertain aspects oftlie lD’s
`findings concerning claim construction infringement, and validity. Also on January 30, 2012,
`Motorola filed a contingent petition for review of certain aspects of the ID’s findings concerning
`claim construction infringement, validity, domestic industry, standing, and licensing. On
`February 7, 2012, Motorola filed a response to Apple’s petition for review. Also on February 7,
`2012, Apple filed a response to Motorola’s contingent petition for review. Further on February 7,
`2012, the Commission investigative attorney filed ajoint response to both Apple’s and
`Motorola’s petitions.
`
`On February 22, 2012, non-party Google Inc. filed a public interest statement in response
`to the post-RD Commission Notice issued on January 25, 2012. See Corrected Notice of Request
`for Statements on the Public Interest (Jan. 25, 2012). On February 23, Apple filed a post-RD
`statement on the public interest pursuant to section 201 .50(a)(4) of the Commission's Rules of
`Practice and Procedure (19 C.F.R. § 201 .50(a)(4)), along with a motion for leave to file the
`statement out of time.
`
`Having examined the record of this investigation, including the ALJ’s final ID, the
`petitions for review, and the responses thereto, the Commission has determined to review the final
`ID in part.
`
`Specifically, the Commission determines to review the ID for the limited purpose of
`clarifying that the ALJ also found claims 24-26, and 29 of the ‘S28 Patent not infringed, and on
`review, to affirm this finding. We note that the ID does not explicitly address the issue of
`infringement of claims 24-26 and 29 of the ‘S28 Patent, but finds no violation of Section 337 by
`reason of infringement of claims 1, 2, 10, 11, 24-26, and 29 of the ‘S28 Patent. See ID at 205.
`We find, however, that the ALJ’s analysis of the claim limitations “mathematically fitting an
`ellipse” and “mathematically fit an ellipse” with respect to claims I and 10, respectively, of the
`‘S28 Patent reflects the arguments and evidence adduced by Apple with respect to infringement of
`
`2
`
`

`
`claims 24-26 and 29. Apple presented no argument or evidence concerning infringement of the
`limitation “means for fitting an ellipse to at least one of the pixel groups” in claim 24 and, by
`dependency, claims 25-26 and 29 of the ‘828 Patent separate from its infringement arguments
`concerning claims 1 and 10. Accordingly, Apple has failed to meet its burden to demonstrate
`infringement of claims 25-26 and 29 of the ‘828 Patent.
`
`The Commission also determines to review the lD’s finding that the asserted claims of the
`‘60? Patent are obvious under 35 U.S.C. § 103 in View of the reference “SrnartSkin: An
`Infrastructure for Freehand Manipulation on Interactive Surfaces” by Jun Rekimoto either alone
`or in combination with Japan Unexamined Patent Application Publication No. 2002-342033A to
`Jun Rekimoto, and on review, modify the ID but affirm the finding that Motorola has
`demonstrated by clear and convincing evidence that the asserted claims of the ‘607 Patent are
`invalid under 35 U.S.C. § 103. The Commission’s reasoning will be set forth in an opinion to be
`issued shortly.
`
`The Commission also determines to review the ID’s finding that the accused products
`infringe claims 1, 3 and 5 of the ‘430 Patent, and on review, affirm the ID’s finding of direct
`infringement, but find that the analysis of infringement is incomplete in the ID because the ID’s
`analysis does not address the Commission’s decision in Certain Electronic Devices with Image
`Processing Systems, C0mponem‘s Thereof And Assoc-iaied Software, 337-TA-724, Comm. Op. at
`10-20 (Dec. 21, 2011).
`
`The Commission has determined not to review the remaining issues decided in the ID.
`Apple’s motion for leave to file its public interest comments out of time is denied as moot.
`
`The authority for the Commission's determination is contained in section 33'? of the
`Tariff Act of 1930, as amended (19 U.S.C. § 1337), and in sections 210.42-46 and 210.50 ofthe
`Commission's Rules of Practice and Procedure (19 C.F.R. § 210.42-46 and 210.50).
`
`ByorderoftheCommission.
`
`g g K
`
`
`
`James R. Holbein
`
`Secretary to the Commission
`
`Issued: March 16, 2012
`
`

`
`CERTAIN MOBILE DEVICES AND RELATED SOFTWARE
`
`Inv. No. 337-TA—'?50
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, James R. I-Iolbein, hereby certify that the attached NOTICE has been served by hand
`upon the Commission Investigative Attorney, Lisa M. Kattan, Esq., and the following parties as
`indicated on March 19, 2012.
`
`
`
`
`
`James R. Holbein Secretary
`US. International Trade Commission
`
`500 E Street, SW, Room 112
`
`Washington, DC 20436
`
`On Behalf of Comglainant Apple Inc.:
`
`Mark G. Davis, Esq.
`WEIL, GOTSHALL & MANGES LLP
`1300 Eye Street, NW, Suite 900
`Washington, DC 20005
`
`On Behalf of Respondent Motorola Mobiligg, lnc.:
`
`Charles F. Schill, Esq.
`STEPTOE & JOHNSON LLP
`
`1330 Connecticut Avenue, NW
`
`Washington, DC 20036
`
`(
`(
`(
`(
`
`) Via Hand Delivery
`) V" - Overnight Delivery
`ia First Class Mail
`) Other:
`
`(
`(
`
`) Via Hand Delivery
`)
`'a Overnight Delivery
`
`( I/)%ia First Class Mail
`
`(
`
`) Other:
`
`

`
`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES, AND
`RELATED SOFTWARE THEREOF
`
`
`
`Inv. No. 337-TA-750
`
`COMMISSION OPINION
`
`I.
`
`BACKGROUND
`
`A.
`
`Procedural History‘
`
`The Commission instituted this investigation on November 30, 2010, based on a
`
`complaint filed by Apple lnc., ffkfa Apple Computer, lnc., of Cupertino, California (“Apple”). 75
`
`Fed. Reg. 74081-82. The complaint alleges violations of section 337 of the Tariff Act of 1930,
`
`as amended, 19 U.S.C. § 133? (“Section 337”)-, in the importation into the United States, the sale
`
`for importation, and the sale within the United States after importation of certain mobile devices
`
`and related software by reason of infringement of certain claims of U-S. Patent Nos. 7,312,828;
`
`7,663,607 (“the ‘607 Patent”); and 5,379,430 . The Commission’s notice of investigation named
`
`Motorola, lnc. nfkfa Motorola Solutions of Schaumburg, Illinois (“Motoro la, lnc.”) and Motorola
`
`Mobility, Inc. of Libeityville, Illinois (“Motorola”) as respondents. The Office of Unfair Import
`
`Investigation (“IA”) was named as a participating party. On August 16, 201 1, the presiding
`
`administrative law judge (“ALJ”) issued an initial determination (“ID”) granting a joint
`
`I The procedural history of the investigation prior to the issuance of the final ID is fully set forth
`in that document. See Final ID at 1-2.
`
`

`
`PUBLIC VERSION
`
`unopposed motion to terminate the investigation as to Motorola, Inc. See Order No. 10 (Aug. 16,
`
`201 1). The Commission determined not to review Order No. 10. See Notice (Aug. 31, 2011).
`
`On January 13, 2012, the ALJ issued his final ID (“Final ID”), finding no violation of
`
`Section 337.
`
`In particular, as is relevant to this opinion, the ALJ found that the asserted claims
`
`of the ‘607 Patent are invalid for anticipation under 35 U.S.C. § 102 and invalid for obviousness
`
`under 35 U.S.C. § 103. On January 30, 2012, Apple filed a petition for review of certain aspects
`
`of the final ID. In particular, Apple requested that the Commission review the ID’s findings that
`
`the asserted claims of the ‘607 Patent are invalid? On February 2, 2012, Motorola and the IA
`
`filed responses to Apple’s petition for review}
`
`On March 16, 2012, the Commission determined to review the final ID in part, and on
`
`review, to affirm the ID’s finding of no violation of Section 33? and to terminate the
`
`investigation. See Notice of Commission Decision to Review In Part And On Review To Affirm
`
`a Final Determination Finding No Violation of Section 337; Termination of Investigation (March
`
`16, 2012). In particular, the Commission determined to review the ID’s finding that the asserted
`
`claims of the ‘607 Patent are obvious under 35 U.S.C. § 103 in view of the reference “S1nartSkin:
`
`An Infrastructure for Freehand Manipulation on Interactive Surfaces” by Jun Rekimoto
`
`(“Smartskin”), either alone or in combination with Japan Unexamined Patent Application
`
`Publication No. 2002-342033A to Jun Rekimoto (“Rekimoto ‘033”). As discussed below, on
`
`review, the Commission affirms the ID’s finding of obviousness in view of the SmartSkin
`
`2 Also on January 30, 2012, Motorola filed a contingent petition for review of certain aspects of
`the final ID.
`
`3 The lA’s February 7, 2012, filing included her response to Motorola’s contingent petition.
`Apple also filed a response to Motorola’s contingent petition on February 7, 2012.
`
`

`
`PUBLIC VERSION
`
`reference in combination with Rekimoto ‘033 and finds that Motorola has demonstrated by clear
`
`and convincing evidence that the asserted claims of the ‘607 Patent are invalid under 35 U.S.C. §
`
`103 based on modified reasoning.
`
`B.
`
`Patent at Issue
`
`The ‘607 Patent is entitled “Multipoint Touchscreen” and is directed to a touch panel that
`
`has a transparent capacitive sensing medium configured to detect multiple touches or near
`
`touches that occur simultaneously and at different locations on the touch panel.
`
`In response to
`
`the multiple touches, the sensing medium produces distinct signals representative of the location
`
`of the touches. The inventors of the ‘607 Patent are Steve Hotelling, Joshua A. Strickon, and
`
`Brian Q. Huppi. The patent is assigned to Apple. The ‘607 Patent has 11 claims, of which
`
`claims 1-7 and 10 were asserted against Motorola.
`
`Asserted claim 1 of the ‘607 Patent and its dependent asserted claims 2-?‘ are directed
`
`generally to a touch panel having a transparent capacitive sensing medium configured to detect
`
`multiple, co-occurring touches at different locations on the touch panel and to produce signals
`
`representative of the location of the touches. The touch panel comprises two layers of transparent
`
`electrical ly-isolated conductive lines where the two layers are spatially separated from each other
`
`and where the conductive lines in one layer are positioned transverse to the conductive lines in
`
`the other layer, creating an array of intersection points. Capacitive monitoring circuitry is
`
`configured to detect changes in the capacitance between the two layers of conductive lines,
`
`indicating the location of the multiple touches on the touch panel. Asserted claim 10 of the ‘607
`
`Patent is directed generally to a display arrangement comprising a display for a graphical user
`
`interface and a transparent touch panel, which has a multipoint sensing arrangement configured
`
`

`
`PUBLIC VERSION
`
`to recognize multiple, co-occurring touches at different locations on the touch panel by sensing a
`
`resulting change in capacitive coupling associated with the touches and is capable of outputting
`
`this information to a host device to form a pixilated image. The touch panel has three glass
`
`plates separating two transparent conductive layers. Each conductive layer contains a plurality
`
`of spaced parallel lines having the same pitch and Iinewidths, where the lines in one of the layers
`
`are perpendicular to the lines in the other layer.
`
`II.
`
`STANDARD OF REVIEW
`
`Once the Commission determines to review an initial determination, its review is
`
`conducted de novo. Certain Poiyethyiene Terephihaiate Yarn and Prods. Containing Same, Inv.
`
`No. 337-TA-457, CoInrn'n Op. at 9 (June 18, 2002). Upon review, the "Commission has ‘all the
`
`powers which it would have in making the initial determination,’ except where the issues are
`
`limited on notice or by rule." Certain Flash Memory Circuits and Prods. Containing Same, Inv.
`
`No. 337-TA-3 82, USITC Pub. 3046, Comm’n Op. at 9-10 (July 1997) (quoting Certain Ac1'd~
`
`Washed Denim Garments and Accessories, Inv. No. 337-TA-324, Comm'n Op. at 5 (Nov. 1992)).
`
`Commission practice in this regard is consistent with the Administrative Procedure Act. Certain
`
`EPROM, EEPR OM, Flash Memory, and Flash Microconrroller Semiconductor Devices and
`
`Prods. Coniaining Same, Inv. No. 337-TA-395, Comm'n Op. at 6 (Dec. 11, 2000) (“EPROM”);
`
`See aiso 5 U.S.C. § 557(b).
`
`Upon review, “the Commission may affirm, reverse, modify, set aside or remand for
`
`further proceedings, in whole or in part, the initial determination of the administrative law
`
`judge.” 19 C.F.R. § 210.-45(0). “The Commission also may make any findings or conclusions
`
`that in its judgment are proper based on the record in the proceeding.”
`
`Id. This rule reflects the
`
`

`
`PUBLIC VERSION
`
`fact that the Commission is not an appellate court, but is the body responsible for making the
`
`final agency decision. On appeal, only the Commission’s final decision is at issue. See EPROM
`
`at 6 (citing Fischer & Porter Co. v. U.S. Int? Trade Comm h, 831 F.2d 1574, 157647’? (Fed. Cir.
`
`1987)).
`
`III.
`
`OBVIOUSNESS OF THE ‘607 PATENT
`
`Under 35 U.S.C. § 103(a), a patent is valid unless “the differences between the subject
`
`matter sought to be patented and the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made to a person having ordinary skill in the art
`
`to which said subject matter pertains.” 35 U.S.C. § 103(a). The ultimate question of
`
`obviousness is a question of law, but “it is well understood that there are factual issues
`
`underlying the ultimate obviousness decision.” Richaralson-Vicks Inc. v. Upjohn Co. , 122 F.3d
`
`1476, 1479 (Fed. Cir. 1997).
`
`Once claims have been properly construed, “[t]he second step in an obviousness inquiry
`
`is to determine whether the claimed invention would have been obvious as a legal matter, based
`
`on underlying factual inquiries including: (1) the scope and content of the prior art, (2) the level
`
`of ordinary skill in the art, (3) the differences between the claimed invention and the prior art;
`
`and (4) secondary considerations of non-obviousness.” Smiths Indus. Med. Sys., Inc. v. Vital
`
`Signs, Inc., 183 F.3d 1347, 1354 (Fed. Cir. 1999) (citing Graham 12. John Deere Ca, 383 U.S. 1,
`
`17 (1966)). The Federal Circuit previously required that, in order to prove obviousness, the
`
`patent challenger must demonstrate, by clear and convincing evidence, that there is a “teaching,
`
`suggestion, or motivation to combine.” The Supreme Court, however, rejected this “rigid
`
`approach” in KSR 1nr’I Co. v. Tefeflex Ina:
`
`

`
`PUBLIC VERSION
`
`The obviousness analysis cannot be confined by a formalistic conception
`of the words teaching, suggestion, and motivation, or by overemphasis on
`the importance of published articles and the explicit content of issued
`patents. The diversity of inventive pursuits and of modern technology
`counsels against limiting the analysis in this way. In many fields it may
`be that there is little discussion of obvious techniques or combinations,
`and it often may be the case that market demand, rather than scientific
`literature, will drive design trends. Granting patent protection to advances
`that would occur in the ordinary course without real innovation retards
`progress and may, in the case of patents combining previously known
`elements, deprive prior inventions of their value or utility.
`
`550 U.S. 398, 419 (2007).
`
`In determining that the SmartS kin reference (RX-367) does not anticipate the asserted
`
`claims of the ‘607 Patent, the ALJ concluded that the only limitation SmartSl<in does not disclose
`
`is “the use of transparent conductive lines using [indium tin oxide] ITO.” Final ID at 148.
`
`Specifically, the ALJ found that the inclusion of the discussion concerning transparent ITO
`
`electrodes in the section entitled “Conclusion and Directions for Future Work” “indicates that it
`
`likely was not contemplated for that specific reference.” 153.; see RX-367 (SmartSkin) at 7.
`
`Motorola argued before the AL] that Smartskin in combination with Rekimoto ‘O33
`
`renders the claim limitations concerning the use of transparent electrodes, separate layers, and
`
`the use of glass members recited in the ‘607 Patent obvious, while the IA additionally argued
`
`that Srnartskin alone “would make it obvious to try to use transparent electrodes.” Id. at 172.
`
`Apple argued that SmartSkin does not disclose the transparent electrode limitations for the same
`
`reasons that the ALJ found SmartSkin does not anticipate the asserted claims of the ‘607 Patent.
`
`See id. Apple also argued that the combination of SmartSkin and Rekimoto ‘033 does not
`
`disclose the layer and glass limitations. Id. Specifically, Apple asserted that, because, Rekimoto
`
`‘033 and SmartSkin disclose different sensors, there is no motivation to combine the references
`
`

`
`PUBLIC VERSION
`
`without “improper hindsight bias." Id. Apple further argued that “Rekimoto ‘033 discloses only
`
`a single glass substrate and not the second and third glass member” recited in the asserted claims
`
`of the ‘607 Patent. Id.
`
`The ID finds that “SmartSkin alone would render the use of transparent electrodes
`
`obvious.” Id. In particular, the ALJ concluded that “[SmartSkin] 1'rse.fdiscloses using
`
`transparent electrodes[,]” and, therefore, SmartSkin provides the motivation to do so. Id. at 172-
`
`173. The ALJ also found that “ITO was well known at the time.” Id. The ALJ, therefore, found
`
`that “SmartSkin would motivate one of ordinary skill in the art to use transparent electrodes and
`
`that the use of materials, such as ITO, in creating the transparent electrodes was well known at
`
`the time [of the invention of the ‘607 Patent]” and as such “would have been obvious to one of
`
`ordinary skill in the art.” Id.” The ID also finds that “SmartSkin, in combination with Rekimoto
`
`‘O33, renders the asserted claims of the ‘607 Patent obvious.” Id. Noting Apple’s arguments
`
`concerning why SmartSkin does not anticipate the ‘607’ Patent, the ALJ found that SmartSkin
`
`discloses the “glass member” limitations and that Sma1tSkin in combination with Rekimoto ‘033,
`
`which was published within months of the publication of the SmartS kin reference, disclose the
`
`“glass member" and “layer” limitations. Id. at 176 (citing JX-367 (SmartSkin) at 4 and Fig. 9;
`
`RX—1888 (Rekimoto ’O33) at Fig. 9).5
`
`The Commission concurs with the ALJ ’s conclusion that SmartSkin provides the reason
`
`4 The ID finds that, with respect to the ‘607 Patent, one of ordinary skill in the art “would have a
`bachelor’s degree in electrical engineering, physics, computer engineering, or a related field and
`[two to three] years of work experience with input devices.” ID at 17.
`
`5 The ID construes the claim limitation “glass member” to mean “a glass or plastic element-” ID
`at 53. The parties do not contest this construction.
`
`

`
`PUBLIC VERSION
`
`to combine the use of transparent electrodes made of materials such as ITO with the mutual-
`
`capacitance sensor for detecting multiple touches on the sensor surface disclosed in SmartSkin.
`
`See RX-1885C (Wolfe Direct Witness Statement) at Q. 321. We also agree with the ALJ that
`
`SmartSkin in combination with Rekimoto ‘033 discloses the transparent electrode limitations, the
`
`layer limitations, and the glass member limitations recited in the asserted claims of the ‘607
`
`Patent, with Rekimoto ‘O33 disclosing the layer and glass member limitations.6 The
`
`Commission, however, finds that SmartSkin provides “one of ordinary skill .
`
`.
`
`. [with] a
`
`reasonable expectation of success” that the combination of transparent ITO electrodes with the
`
`mutual~capacitance touch screen disclosed in SmartSkin would be operable for different reasons
`
`than those articulated in the final ID. See Vehmder v. Garner, 348 F.3d 1359, 1363 (Fed. Cir.
`
`2003)?
`
`The claim limitations in dispute, which are referred to as the “transparent lirnitations,” are
`
`highlighted below:
`
`1. A touch panel comprising a transparent capacitive
`sensing medium configured to detect multiple touches or near
`touches that occur at a same time and at distinct locations in a
`
`plane of the touch panel and to produce distinct signals
`representative of a location of the touches on the plane of the touch
`panel for each of the multiple touches, wherein the transparent
`capacitive sensing medium comprises:
`
`a first layer having a plurality of transparent first conductive
`lines that are electrically isolated from one another;
`
`6 We disagree with the ALJ’s conclusion that Rekimoto ‘O33 teaches the use of transparent
`electrodes. See id. at 174.
`
`7 We do not review, and therefore do not address, the lD’s findings concerning secondary
`considerations. ID at 176-177.
`
`

`
`PUBLIC VERSION
`
`a second layer spatially separated from the first layer and
`having a plurality of transparent second conductive lines that are
`electrically isolated from one another, the second conductive lines
`being positioned transverse to the first conductive lines, the
`intersection of transverse lines being positioned at different
`locations in the plane of the touch panel, each of the second
`conductive lines being operatively coupled to capacitive
`monitoring circuitry;
`
`wherein the capacitive monitoring circuitry is conti gured to
`detect changes in charge coupling between the first conductive
`lines and the second conductive lines.
`
`4. The touch panel as recited in claim 1 wherein the
`transparent first conductive lines of the first layer are disposed
`on a first glass member, and wherein the transparent second
`conductive lines of the second layer are disposed on a second
`glass member, the first glass member being disposed over the
`second glass member.
`
`6. The touch panel as recited in claim 1 wherein the
`conductive lines are formed from indium tin oxide (ITO).
`
`‘60'? Patent at 21 :35—22:13.
`
`Apple contends that SmartSkin discloses the use of only opaque, rather than transparent,
`
`sensors and that Sn1artSkin’s purported disclosure of transparent ITO represents only speculative,
`
`future possibilities. The ID finds, and Apple does not dispute, that the use of ITO in creating
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`transparent conductive lines or electrodes was well known at the time of the invention of the
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`‘607 Patent. See Final ID at 173. The evidence supports this conclusion. In particular, the
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`SmartSkin reference, which is prior art to the ‘607 Patent, states that “most of today’s flat panel
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`displays rely on active-matrix and transparent electrodes[.]” JX-367 (SmartSkin) at 7.
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`Motorola’s expert, Dr. Wolfe, likewise testified that “two-layer sensors with rows and columns
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`of ITO [are] standard products” (Wolfe, Tr. at 1391211-22) and that “the use of transparent
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`electrodes .
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`.
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`. has been known in the art for twenty years” ('RX—1885C (Wolfe Direct Witness
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`Statement) at Q. 326).
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`In KSR, the Supreme Court stressed that, “[t]he combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than yield predictable
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`results.” KSR In! 7 C0,, 550 U.S. at 416. Here, the use of transparent ITO in combination with
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`the mesh grid touch sensor of SrnartSkin is just the type of “combination of familiar elements”
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`that KSR discusses. See JX-367 at 7 and Fig. 2. Motorola’s expert, Dr. Wolfe, who has over
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`twenty years of experience making capacitive touch overlay sensors using ITO, testified at the
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`hearing precisely on this point as follows:
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`Q. Figure 2 [of SmartSkin] doesn’t Show a transparent sensor, does it?
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`A. It is the same kind of drawing that’s in the ‘607 [Patent]. To a
`person who understands the technology, it doesn’t matter whether
`that sensor is transparent or opaque.
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`Q. But there is nothing in figure 2 that is a transparent sensor. In fact,
`if you read the whole thing, you know that the sensor that they are
`talking about in figure 2 is a non-transparent sensor, opaque, right?
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`A. No, you know that they describe how to build a sensor with rows
`and columns of conductors, and then they talk about a particular
`first embodiment they made that was opaque, and then how you
`could build a transparent one as well.
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`Wolfe, Tr. 1309:l4-1310:S; see also id. at 1391211-22 (“[t]wo-layer sensors with rows and
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`columns of ITO were standard products, and I think that a person of ordinary skill, who we agree
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`is a touchscreen engineer .
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`.
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`. would just read this to say this is an ordinary row and column ITO
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`touch overlay that’s being used in a unique way in the SmaItSkin product”); id. 1392120-139328
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`(stating that he has been making ITO touch screen products since 1983).
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`Apple’s expert, Dr. Subramanian, disputed this conclusion, testifying that SmartSkin
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`“provide[s] no instructions for how to ‘obtain’ a transparent sensor using ITO and .
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`.
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`. even the
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`researchers working on the [SmartSkin] system who authored the article believed that such a
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`transparent sensor was merely a future possibi1ity[.]” CX—5 69C (Subramanian Rebuttal Witness
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`Statement) at Q. 1 17. But the evidence supports the conclusion that using transparent ITO for
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`the “transparent conductive lines” claimed in the ‘607 Patent and discussed in SmartSkin would
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`have been within the ability of one of ordinary skill in the art. In particular, Dr. Wolfe testified
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`as follows:
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`The ‘ISO’? patent does not disclose any special characteristics ofthe
`ITO that make it suitable for use in the ‘607 patent; not its resistivity,
`capacitance, uniformity, thickness, or thermal characteristics. In any
`case, none of these need be disclosed since normal, commercially
`available and well known ITO materials are suitable for both
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`SmartSkin and the ‘607 Patent.
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`RX-1885C at Q. 326; see also Wolfe, Tr. at 1390119-1397216 (discussing that one of ordinary
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`skill in the art would know how to implement the SmartSkin sensor using transparent ITO
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`electrodes).
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`Apple further contends that SmartSkin does not enable the use of a transparent ITO
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`sensor with the multi~touch mutual-capacitance system disclosed in that reference because
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`substituting transparent ITO conductive lines for the opaque copper lines used with one
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`embodiment of the voltage-based sensing system of SmartSkin would require a complete
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`redesign. See Subramanian, Tr. at 1533-34, 1536-39, l574~84, 1585-97.8 Specifically, Apple's
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`3 Motorola argued that Apple waived any argument concerning the different types of sensors
`used in the Sma11Skin system and the system disclosed in the ‘607 Patent because Dr.
`Subramanian did not mention the issue in his witness statements and because Apple failed to
`raise the issue in its pre-hearing statement. During the hearing, Motorola belatedly objected to
`Dr. Subramanian’s testimony during his re~direct examination, but the ALJ ruled that the
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`expert, Dr. Subrarnanian, testified under cross-examination that, because the voltage-sensor used
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`in the SmartSkin system receives very low strength signals, it is very sensitive to the resistance
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`of the material used to conduct the current from the signal source to the receiver, hence the use
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`of low resistance copper conductors in the Smartskin system. Subramanian, Tr. at 1537:17-
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`1538117. Dr. Subramanian further explained that transparent ITO has such a high resistance and
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`thus a lower conductivity — approximately 100 times less than copper — that ITO cannot be used
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`successfully in a voltage-sensing system. 1d.; see also JX-367 (SrnartSkin) at Fig. 2; ‘607 Patent
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`at Figs. 12, 13, 17:12-61. Dr. Subramanian compared the system disclosed in SmartSkin to the
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`multi-touch system disclosed in the ‘607 Patent, which he explained uses a detector that counts
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`charge in lieu of sensing voltage to account for the low conductivity of transparent ITO.
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`Subramanian, Tr. 15:32:11-158417. Apple contends that, because of the different types of sensors
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`used to implement the SmartSkin system and the system disclosed in the ‘607 Patent, it would
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`not have been obvious to combine the two systems. Id. (citing Subramanian, Tr. at 1537:2-
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`1539: 10).
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`It is axiomatic that, in evaluating an assertion of obviousness, the correct comparison is
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`between the prior art and the claims. See Procter & Gambia Co. v. Teva Pharm. USA, Inc., 566
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`F.3d 989, 994 (Fed. Cir. 2009) (“A party seeking to invalidate a patent based on obviousness
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`must prove by clear and convincing eviden