Solas OLED Limited

Patent Trials and Appeals Board

Mar 25, 2021

IPR2019-01668 (P.T.A.B. Mar. 25, 2021)

Trials@uspto.gov
571-272-7822
Paper: 46
Entered: March 25, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
SAMSUNG DISPLAY CO., LTD.,
Petitioner,
v.
SOLAS OLED, LTD.,
Patent Owner.
IPR2019-01668
Patent 9,256,311 B2
Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
Administrative Patent Judges.
KAISER, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
35 U.S.C. § 318(a)
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2
I. INTRODUCTION
On September 30, 2019, Samsung Display Co., Ltd. (“Petitioner”)
filed a Petition requesting an inter partes review of claims 1–20 of U.S.
Patent No. 9,256,311 B2, issued on February 9, 2016 (Ex. 1001, “the ’311
patent”). Paper 1 (“Pet.”). Solas OLED Ltd. (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). Taking into account the
arguments presented in Patent Owner’s Preliminary Response, we
determined the information presented in the Petition established that there
was a reasonable likelihood that Petitioner would prevail in challenging at
least one of claims 1–20 of the ’311 patent, and we instituted this inter
partes review, as to all challenged claims, on April 1, 2020. Paper 7 (“Dec.
on Inst.”).
During the course of trial, Patent Owner filed a Patent Owner
Response (Paper 44, “PO Resp.”1); Petitioner filed a Reply to the Patent
Owner Response (Paper 27, “Pet. Reply”2); Patent Owner filed a Sur-reply
(Paper 33, “PO Sur-reply”); and Petitioner filed a Sur-sur-reply (Paper 35,
“Pet. Sur-sur-reply”). An oral hearing was held on February 4, 2021, and a
transcript of the hearing is included in the record. Paper 43 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of

1 Patent Owner initially filed the Response under seal, subject to the Board’s
ruling on Patent Owner’s Motion to Seal (Paper 18). Patent Owner,
however, later withdrew its redactions (see Ex. 3002), and filed its Response
publicly (Paper 44). In this decision, we cite only the public version of the
Patent Owner Response.
2 The parties initially filed confidential versions of the Petitioner Reply and
Patent Owner Sur-reply, but they later withdrew their redactions. The Board
thus changed the confidentiality designation of these filings to Public. See
Ex. 3003.
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claims 1–20 of the ’311 patent. For the reasons discussed below, we hold
that Petitioner has demonstrated by a preponderance of the evidence that
claims 1–20 are unpatentable under § 103.
II. BACKGROUND
A. The ’311 Patent (Ex. 1001)
The ’311 patent describes “an apparatus [that includes] a substantially
flexible substrate and a touch sensor disposed on the substantially flexible
substrate. The touch sensor compris[es] drive or sense electrodes made of
flexible conductive material configured to bend with the substantially
flexible substrate.” Ex. 1001, code (57). Figure 7 of the ’311 patent is
reproduced below.

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Figure 7 “illustrates an example mobile telephone that incorporates a
flexible touch-sensitive apparatus.” Id. at 7:37–38. In Figure 7, phone 600
includes touch-sensitive apparatus 612 wrapped around display 613. Id. at
7:39–41. Substrate 602 may include tracking areas with tracks providing
drive and sense connections to and from the drive and sense electrodes of
touch-sensitive apparatus 612. Id. at 7:41–44. The electrode pattern of
touch-sensitive apparatus 612 can be metal-mesh technology (e.g., “a
copper, silver, or other suitable metal mesh”). Id. at 7:44–47.
“Substrate 602 and the conductive material of the electrode pattern may be
flexible, enabling the conductive material to wrap around the left and right
edges of the surface,” and “[f]or sharper edges (e.g., with radii of less than
1 mm), the flexible conductive material of the electrode pattern may be
thicker or wider at the sharper edges than at the flat portions of [the]
surfaces.” Id. at 7:48–55.
B. Illustrative Claim
Of the challenged claims, claims 1 and 7 are independent. Claim 1 is
illustrative and is reproduced below.
1. An apparatus comprising:
a substantially flexible substrate; and
a touch sensor disposed on the substantially flexible
substrate, the touch sensor comprising drive or sense electrodes
made of flexible conductive material configured to bend with the
substantially flexible substrate, wherein:
the flexible conductive material of the drive or sense
electrodes comprises first and second conductive lines that
electrically contact one another at an intersection to form a mesh
grid; and
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the substantially flexible substrate and the touch sensor are
configured to wrap around one or more edges of a display.
Ex. 1001, 8:61–9:7.
C. Related Proceedings
Petitioner and Patent Owner identify a related litigation in the U.S.
District Court for the Eastern District of Texas asserting the ’311 patent,
titled Solas OLED Ltd. v. Samsung Display Co., Ltd., et al., Case No. 2:19-
cv-00152-JRG (E.D. Tex.). Pet. 3; Paper 4, 1. The parties have informed us
that there has been a jury verdict in the related district court proceeding. Ex.
1034, 5:11–6:16. In that verdict, the jury was not presented with the
unpatentability ground that we reach in this Decision. Id. Thus, we are
presented with different issues to resolve in this Decision than was the jury
in the related district court proceeding.
D. References
Petitioner relies on the following references:
1. “Kuriki” (US 8,722,314 B2; issued May 13, 2014) (Ex. 1003);
2. “Mikladal” (US 9,395,851 B2; issued July 19, 2016)
(Ex. 1004);
3. “Philipp” (US 2011/0102361 A1; published May 5, 2011)
(Ex. 1005);
4. “Rappoport” (US 2012/0218219 A1; published Aug. 30, 2012)
(Ex. 1006);
5. “Moran” (WO 2010/099132; published Sept. 2, 2010) (Ex.
1007); and
6. “Joo” (US 2008/0223708 A1; published Sept. 18, 2008) (Ex.
1008).
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E. Grounds Asserted
Petitioner challenges the patentability of the ʼ311 patent claims on the
following grounds:

Claims Challenged

35 U.S.C. §3

References/Basis
1–13, 15, 16, 18 103(a) Kuriki, Mikladal
14, 17 103(a) Kuriki, Mikladal, Philipp
19, 20 103(a) Kuriki, Mikladal, Rappoport
1–13, 15, 16, 18 103(a) Moran, Joo
14, 17 103(a) Moran, Joo, Philipp
19, 20 103(a) Moran, Joo, Rappoport
Petitioner also relies on testimony from Andrew Wolfe, Ph.D. (Ex.
1023). Patent Owner relies on testimony from Thomas L. Credelle (Ex.
2002).
III. ANALYSIS
A. Legal Principles
A claim is unpatentable under 35 U.S.C. § 103(a) if 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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
U.S.C. § 103 that became effective on March 16, 2013. Because the ’311
patent issued from an application filed before March 16, 2013, we apply the
pre-AIA version of § 103.
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(3) the level of ordinary skill in the art; and (4) when in the record, objective
evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966). In that regard, an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
B. Level of Ordinary Skill in the Art
In the Institution Decision, we adopted Petitioner’s formulation of the
level of ordinary skill in the art and determined that a person of ordinary
skill in the art “would have had a relevant technical degree in Electrical
Engineering, Computer Engineering, Computer Science, Materials Science,
or the like, and 2–3 years of experience in touch sensor design.” Dec. on
Inst. 6 (quoting Pet. 10–11) (adopting Petitioner’s formulation, which is
supported by Dr. Wolfe’s testimony, because it is consistent with the ’311
patent and the asserted prior art). In its Patent Owner Response, Patent
Owner adopts Petitioner’s definition of the level of ordinary skill in the art.
PO Resp. 8 (citing Ex. 1023 ¶ 78; Ex. 2002 ¶ 39). We maintain our
determination from the Institution Decision because that level of skill is
consistent with the ’311 patent and the asserted prior art.
C. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under that standard,
we construe claims “in accordance with the ordinary and customary meaning
of such claim as understood by one of ordinary skill in the art and the
prosecution history pertaining to the patent.” Id. Furthermore, we expressly
construe the claims only to the extent necessary to resolve the parties’
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dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
are in controversy, and only to the extent necessary to resolve the
controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))).
In our Institution Decision, we determined we did not need to
explicitly construe any claim terms at that stage of the proceeding. Dec. on
Inst. 7. During the trial, Patent Owner discusses claim construction for the
following claimed limitations: (1) “configured to wrap around one or more
edges of a display”; (2) “touch sensor . . . to wrap around [the] one or more
edges”; (3) “edges of a display”; and (4) “to form a mesh grid.” PO Resp.
3–8. Regarding these terms, Patent Owner points out the district court’s
construction of “configured to wrap around one or more edges of a display”
in a parallel proceeding4 (id. at 3–4 (citing Ex. 1025, 24–28)) and Patent
Owner’s disagreement with Petitioner’s characterization of a “touch sensor”
as encompassing tracks or tracking (id. at 4–6). Patent Owner ultimately
contends that none of these phrases need to be construed for purposes of this
proceeding. See id. at 3–8.
Petitioner discusses constructions for “configured to wrap around one
or more edges of a display” and “touch sensor . . . to wrap around [the] one
or more edges.” Pet. Reply. 1–2. Regarding the first phrase, Petitioner
contends its arguments are consistent with the district court construction. Id.
at 1 (citing Ex. 1025, 27–28). Petitioner offers no construction of the second
phrase. Id. at 2.

4 Solas OLED Ltd. v. Samsung Display Co., Ltd. et al., No. 2:19-cv-00152-
JRG (E.D. Tex.).
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We determine we need not explicitly construe any claim terms to
resolve the unpatentability issues before us. See Nidec, 868 F.3d at 1017.
D. Asserted Obviousness over Moran and Joo
1. Overview of Moran
Moran discloses “touch screen sensors and micropatterned substrates
that comprise a visible light transparent substrate and at least two electrically
conductive micropatterns disposed on or in the visible light transparent
substrate.” Ex. 1007, 4:18–20. Figure 2 of Moran is reproduced below.

Figure 2 illustrates “conductive visible light transparent region 101 that
would lie within a touch sensing area of a touch screen panel.” Id. at 7:16–
18. In Figure 2, electrically conductive micropattern 140 is disposed on
visible light transparent substrate 130. Id. at 7:18–20. Moran states that its
substrate and sensor “may be substantially planar and flexible.” Id. at 8:15–
16.
2. Overview of Joo
Joo discloses a “cover for a mobile device.” Ex. 1008, code (57). The
cover has a touch sensitive portion, which can be at least partially located on
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a side surface. Id. ¶¶ 16, 17. Joo discloses its “touch input portion . . . is
extendingly formed at the side surface portion of the cover as well as the
upper surface portion thereof,” and therefore “a separate side key is not
required to be mounted at the side surface of the terminal for generating
input, thereby simplifying the manufacturing process thus to reduce the
manufacturing cost and make the enhanced appearance of the terminal.” Id.
¶ 67.
3. Analysis
Petitioner contends claims 1–13, 15, 16, and 18 are unpatentable as
obvious over Moran and Joo. Pet. 61–75; Pet. Reply 21–26. We have
reviewed the evidence and arguments provided by the parties and are
persuaded that Petitioner has demonstrated by a preponderance of the
evidence that claims 1–13, 15, 16, and 18 are unpatentable as obvious over
Moran and Joo.
Claim 1 recites “a substantially flexible substrate.” Ex. 1001, 8:62.
Petitioner contends Moran teaches such a substrate because its “light
transparent substrate 130” is made of polyethylene terephthalate (“PET”)
and is “substantially planar and flexible.” Pet. 62 (quoting Ex. 1007, 7:16–
26, 8:13–16; Ex. 1023 ¶ 167).
We determine Petitioner has shown Moran teaches “a substantially
flexible substrate,” as recited in claim 1. Moran refers to its substrate as
being “visible light transparent” and provides PET as an example of a useful
polymer for that substrate. Ex. 1007, 7:16–26. Further, Moran states that its
substrate “may be substantially planar and flexible.” Id. at 8:15–16. Based
on these disclosures, we credit Dr. Wolfe’s testimony that a person of
ordinary skill in the art “would have recognized that Moran disclosed this
claim limitation.” Ex. 1023 ¶ 167. We thus find Petitioner has met its
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burden as to this limitation, and we note that Patent Owner does not
separately address this limitation (see generally PO Resp.; PO Sur-reply).
Claim 1 further recites “a touch sensor disposed on the substantially
flexible substrate, the touch sensor comprising drive or sense electrodes
made of flexible conductive material configured to bend with the
substantially flexible substrate.” Ex. 1001, 8:63–67. Petitioner contends
Moran discloses this limitation because it discloses “‘at least two electrically
conductive micropatterns disposed on or in the visible light transparent
substrate,’ which are connected to circuitry that ‘driv[es] the conductive
micropatterns with electrical signals for the purpose of capacitively detecting
the presence or location of a touch event to an information display.’” Pet. 62
(citing Ex. 1007, 4:18–26, 6:7–26; Ex. 1023 ¶ 168). Petitioner also contends
that a person of ordinary skill in the art would have understood that each pair
of Moran’s electrically conductive micropatterns comprise drive and sense
electrodes. Id. at 63 (citing Ex. 1007, 4:18–24, 6:15–26, 7:4–9, 9:6–7,
32:21–29; Ex. 1023 ¶ 170). Petitioner further contends that Moran’s
conductive micropattern is made from metal such as copper or silver and
that its sensor is “substantially planar and flexible”; thus Petitioner contends
a person of ordinary skill in the art would have understood Moran’s
electrodes are formed of flexible material configured to bend with the
substrate. Id. at 64 (citing Ex. 1007, 8:13–16, 22:13–15; Ex. 1023 ¶¶ 171–
72).
We determine Petitioner has shown Moran teaches this limitation of
claim 1. Moran discloses “at least two electrically conductive micropatterns
disposed on or in the visible light transparent substrate.” Ex. 1007, 4:18–20.
Moran also states:
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The sensor element has a sheet like form and includes at least
one electrically insulating visible light transparent substrate
layer that supports a conductive material (e.g., metal) that is
patterned onto the surface of the substrate in a mesh geometry
so as to generate a transparent conductive region that lies within
the touch sensing area of the sensor.
Id. at 6:11–15. Dr. Wolfe testifies that a person of ordinary skill in the art
“would have readily understood that each pair of conductive micropatterns
in Moran (Ex. 1007 at 6:27–26) consists of a drive electrode and sense
electrode that together form a capacitive node,” as recited in claim 1. Ex.
1023 ¶ 170. Dr. Wolfe also testifies that Moran’s conductive micropatterns
are configured to bend along with its PET substrate because the materials
Moran uses for its conductive micropatterns (copper or silver) are flexible,
and Dr. Wolfe cites evidence in support of his testimony as to material
flexibility when used as electrodes. Id. ¶¶ 171–72 (citing Ex. 1007, 22:13–
15; Ex. 1012 ¶¶ 8–9; Ex. 1018, 2955, 2962; Ex. 1019 ¶¶ 25, 33, 81; Ex.
1003, 21:8–12, 27:48–28:38, 29:55–30:33). Thus, we find Petitioner’s
contentions as to this limitation of claim 1 persuasive because those
contentions are supported by Moran’s disclosures as well as Dr. Wolfe’s
testimony about how a person of ordinary skill in the art would understand
those disclosures, given background knowledge of the art. We note that
Patent Owner does not separately address this limitation (see generally PO
Resp.; PO Sur-reply).
Claim 1 also recites “the flexible conductive material of the drive or
sense electrodes comprises first and second conductive lines that electrically
contact one another at an intersection to form a mesh grid.” Ex. 1001, 9:1–
4. For this limitation, Petitioner points to Moran’s Figure 2 reproduced
above. Pet. 64–65 (citing Ex. 1007, Fig. 2, 9:17–22; Ex. 1023 ¶ 173).
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We determine Petitioner has shown Moran teaches this limitation of
claim 1. As shown above, Figure 2 of Moran depicts intersecting conductive
lines. Ex. 1007, Fig. 2. Moran further states: “Preferred conductive
micropatterns include regions with two dimensional meshes (or simply,
meshes), where a plurality of linear micropattern features (often referred to
as conductor traces or metal traces) such as micropatterned lines define
enclosed open areas within the mesh.” Id. at 9:17–20. We find these
disclosures, cited by Petitioner, show that Moran discloses “the flexible
conductive material of the drive or sense electrodes comprises first and
second conductive lines that electrically contact one another at an
intersection to form a mesh grid,” as recited in claim 1. We note that Patent
Owner does not separately address this limitation (see generally PO Resp.;
PO Sur-reply).
Claim 1 further recites “the substantially flexible substrate and the
touch sensor are configured to wrap around one or more edges of a display.”
Ex. 1001, 9:5–7. For this limitation, Petitioner relies on Moran in
combination with Joo. Pet. 65; Pet. Reply 21–22. Petitioner contends that
Moran discloses its substrate and sensor as “substantially planar and
flexible,” and acknowledges that Moran does not expressly disclose
wrapping the substrate and sensor around a display edge. Pet. 65–66 (citing
Ex. 1007, 8:13–16; Ex. 1023 ¶ 174). For that requirement, Petitioner points
to Joo’s teaching that when
the touch input portion for generating input when being touched
is extendingly formed at the side surface portion of the cover as
well as the upper surface portion thereof . . . a separate side key
is not required to be mounted at the side surface of the terminal
for generating input, thereby simplifying the manufacturing
process thus to reduce the manufacturing cost and make the
enhanced appearance of the terminal.
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Id. at 66 (quoting Ex. 1008 ¶ 67; citing Ex. 1023 ¶ 176).5 Petitioner
contends Joo “provides an express teaching, suggestion, or motivation for a
[person of ordinary skill in the art] to wrap Moran’s flexible touch sensor
around the sides of the device to create additional touch-sensitive regions.”
Id. at 66–67 (citing Ex. 1023 ¶¶ 177–83). Petitioner further contends that
“[m]odifying Moran’s flexible touch sensor using these teachings from Joo
would have been well within the skill of a” person of ordinary skill in the
art. Id. at 67–68 (citing Ex. 1023 ¶¶ 180–83).
Petitioner further contends that this use of Joo’s teachings is “nothing
more than an ‘application of a known technique [Joo’s teaching of wrapping
a touch sensor around the edges of a touchscreen display] to a piece of prior
art ready for the improvement [Moran’s flexible capacitive touch sensor for
a touchscreen device].’” Id. at 67 (citing KSR, 550 U.S. at 417). Petitioner
explains that a person of ordinary skill would have had a reasonable
expectation of success in implementing the modification whereby the touch-
sensitive portions of Moran’s touch sensor are expanded and then wrapped
around the edges of Moran’s display. Id. Petitioner contends, and Dr.
Wolfe explains, that such modification would not have required changes to
the underlying structure of Moran’s flexible touch sensor, nor to the
materials used to construct its elements. Id. at 67–68 (citing Ex. 1007, 5:28–
6:6, 6:30–7:3; Ex. 1008 ¶¶ 60–62, Fig. 7; Ex. 1023 ¶¶ 181–82); see also Ex.
1023 ¶ 183 (discussing several prior art references that outline the flexible

5 Petitioner further contends that a number of prior art references expressly
teach “the advantages of wrapping a touch sensitive element around the side
of a display.” Pet. 66 (citing Ex. 1004, 7:31–44; Ex. 1015, 13:42–14:8; Ex.
1016, 22:16–23:12; Ex. 1023 ¶¶ 178–79).
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and malleable nature of the conductive line electrodes used in touch
screens).
In its Patent Owner Response, Patent Owner argues “Moran does not
teach a mesh grid configured to wrap around an edge.” PO Resp. 73–74.
Patent Owner further argues that “Petitioner has not sufficiently shown that a
[person having ordinary skill in the art] would be motivated to modify
Moran in view of Joo as suggested by Dr. Wolfe.” Id. at 73, 75 (citing Ex.
1023 ¶¶ 174–83). In particular, Patent Owner argues that Dr. Wolfe’s
analysis “glosses over the specific teachings of Joo in favor of a more
generalized ‘teaching’ of a touch sensor that follows a radius of curvature.”
Id. at 76.
Regarding Patent Owner’s argument that “Moran does not teach a
mesh grid configured to wrap around an edge,” Patent Owner notes that
while Moran discloses that the sensor “may be . . . flexible,” that sensor is
also “substantially planar.” Id. (citing Ex. 1007, 8:15–16). Patent Owner
argues that a substantially planar sensor is not wrapped around an edge, and
that just because that sensor can be flexible does not mean it can also be
wrapped around an edge. Id. Patent Owner then relies on the specification
of Moran to assert that Moran uses the term “flexible” to mean “‘sufficiently
flexible’ to wind onto a roll of unspecified diameter . . . during
processing.” Id. at 73–74 (citing Ex. 1007, 5:17–21, 25–27; Ex. 2002
¶ 152). Specifically, Patent Owner argues that the flexibility of the touch
sensor of Moran does not mean that such a sensor can be bent around the
small radius of curvature at the edge of a display without being
damaged. Id. at 74.
In its Reply, Petitioner contends that “[i]t is undisputed that Moran’s
sensor is flexible.” Pet. Reply 24. Petitioner notes that Moran’s disclosure
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teaches the sensor may be “substantially planar and flexible,” and may be
“processed in a roll-to-roll fashion.” Id. (citing Ex. 1007, 5:17–21, 8:13–
16). Petitioner further asserts that Patent Owner’s arguments about Moran’s
flexible touch sensor not being flexible enough to wrap around the small
radius of curvature of a display edge amount to unfounded speculation. Id.
(citing PO Resp. 74). In support, Petitioner asserts that neither Patent Owner
nor Patent Owner’s declarant Mr. Credelle “actually contend [] or identify
evidence” supporting a proposition that one of ordinary skill in the art would
expect bending damage or flexibility limitations if Moran’s touch sensor
were wrapped around a display edge. Id. Petitioner then identifies
similarities between the electrodes’ dimensions and materials of the ’311
patent and those disclosed in Moran. Id. at 24 n.4; compare Ex. 1001, 2:47–
54 (“fine lines of metal,” such as “copper” or “silver,” with a “width of
approximately 10 μm or less”), with Ex. 1007, 22:13–14 (“useful metals” for
the “micropatterns include gold, silver, . . . copper”), 12:9–12 ( “the width of
a line” may be “less than or equal to approximately 10 micrometers”).
Relying on Dr. Wolfe’s declaration discussing the various materials
and thicknesses disclosed in Moran, Petitioner further asserts that a person
of ordinary skill in the art would “readily understand that Moran’s sensor is
highly flexible.” Pet. Reply 25 (citing Ex. 1031, 118:3–25); see also Ex.
1007, 5:17–27, 7:21–25 (disclosing common visible light transparent
substrates as including polymeric films having thicknesses ranging in
general from about 5–1000 microns, and in many embodiments, from 25–
500 microns and such polymers including PET).
We find Petitioner’s argument and evidence, including Dr. Wolfe’s
testimony, discussed above on this point persuasive. See Pet. Reply 24–25;
Ex. 1023 ¶¶ 182–83; Ex. 1007, 8:13–16; Ex. 1031, 118:3–25. As discussed
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above, we determine Petitioner has shown Moran teaches “a substantially
flexible substrate” and a touch sensor “comprising drive or sense electrodes
made of flexible conductive material configured to bend with the
substantially flexible substrate,” as recited in claim 1. In the context of this
limitation, where the substrate and touch sensor “are configured to wrap
around one or more edges of a display,” we remain persuaded by Petitioner’s
showing. Dr. Wolfe testified at his deposition that when the materials and
the thickness of the substrate disclosed in Moran (5 microns) are considered
in context, “you understand that you’re talking about a highly flexible film
that -- that ranges in its flexibility to some -- from something like Saran
Wrap to something that’s – that’s heavier, that’s more of a -- of a -- of a
bendable plastic sheet.” Ex. 1031, 118:3–25. Moran discloses using a
visible light transparent substrate (Ex. 1007, 4:18–20), and that such
substrates include polymeric films as thin as 5 microns (id. at 5:17–25). As
discussed above, Dr. Wolfe also points to evidence showing the materials
used in Moran’s mesh electrodes (copper or silver) are sufficiently flexible
to wrap around the edge of a display. Ex. 1023 ¶¶ 182–183 (citing Ex. 1012
¶¶ 8–9; Ex. 1018, 2955, 2962; Ex. 1019 ¶¶ 25, 33, 81; Ex. 1003, 21:8–12,
27:48–28:38, 29:55–30:33). We determine this evidence persuasively shows
a person of ordinary skill in the art would have understood Moran’s
substrate and touch sensor to be flexible enough to wrap around an edge of a
display.
Patent Owner’s arguments focus on Moran’s disclosure that its sensor
is “substantially planar” and that Moran’s polymeric film substrate can be
processed in a roll-to-roll fashion. See PO Resp. 73–74. We find these
arguments do not undermine Petitioner’s persuasive showing because
Petitioner relies on other teachings in Moran (i.e., the thicknesses and
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specific materials disclosed in Moran as well as the background knowledge
of the skilled artisan about such materials, as discussed above) to show that a
person of ordinary skill in the art would have understood Moran’s substrate
and touch sensor to be flexible enough to wrap around an edge of a display.
Patent Owner further argues that Petitioner has failed to establish a
sufficient motivation to combine Moran and Joo to teach a “substantially
flexible substrate and touch sensor . . . configured to wrap around one or
more edges of a display.” PO Resp. 74–83. Patent Owner contends that
Petitioner has not shown why a person of ordinary skill in the art, starting
with Moran, would have looked to Joo’s teaching of an integrally molded
curved touch sensor, and modified Moran to extend Moran’s PET metal
mesh film and bend the film around an edge. Id. at 77. Specifically, Patent
Owner contends that Dr. Wolfe’s analysis of the combination of Moran and
Joo “glosses over the specific teachings of Joo in favor of a more
generalized ‘teaching’ of a touch sensor that follows a radius of
curvature.” Id. at 76 (citing Ex. 2002 ¶ 156).
In support, Patent Owner asserts that “Joo does not teach a mesh grid
configured to wrap around an edge” and Joo has no discussion of “materials,
structure, or operation of the touch input device.” Id. Patent Owner asserts
that Dr. Wolfe overlooks how the touch sensor of Joo is curved by injection
molding and not by wrapping around the edges of a display. Id. at 76–77
(citing Ex. 1008 ¶ 44; Ex. 2002 ¶ 157). Because the touch sensor of Joo is
integrally molded to achieve a curved configuration, Patent Owner contends
there is “no teaching or suggestion in Joo that Moran’s PET metal mesh
sensor could have been wrapped around the edge of a display.” Id. at 77
(citing Ex. 2002 ¶ 158). Patent Owner also argues that a person of ordinary
skill in the art would have understood that the sensor layer of Joo would be
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annealed during an in-mold injection process and would result in a rigid
cover layer that is not “configured to wrap” around a display edge “so much
as it is specifically manufactured . . . to fit over a curved surface.” Id. at 77–
78.
In addition, Patent Owner contends there is no specific teaching about
“how to modify Moran’s PET-based touch sensor film to be ‘configured’ to
wrap around the edge of a display.” Id. at 78. Specifically, Patent Owner
contends that Joo does not teach how a person having ordinary skill in the
art would modify the “conductive lines on the PET film in Moran” to wrap
around the edges of a display – whether the lines should be widened or
thickened in spots to prevent damage or fracture. Id. Thus, Patent Owner
contends that a person of ordinary skill in the art would not, starting with the
touch sensor of Moran, have been motivated to extend and wrap such a
touch sensor around the edges of a display, as taught by Joo. Id. at 79.
Furthermore, Patent Owner contends that “the method of
manufacturing the curved sensor expressly taught in Joo would, at
minimum, be ill-suited for use with the PET-based touch sensor of Moran
and thus would be unlikely to be modify Moran’s PET films using the
techniques taught in Joo.” Id. (citing Ex. 2002 ¶ 162). Patent Owner asserts
that the manufacturing techniques used for Joo’s touch sensor molding, e.g.,
high pressures and temperatures, would have negative effects, such as
warping, on the “fragile electric components” present in Moran’s PET touch
sensor and would reduce the reliability of those components. Id. at 79–80
(citing Ex. 2002 ¶ 163; Ex. 2019, 1).
In its Reply, Petitioner reiterates why it would have been obvious
“based upon the teaching of Joo, to modify Moran’s flexible capacitive
touch screen sensor to wrap it around the edges of an underlying
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display.” Pet. Reply. 22 (citing Pet. 65–68). Petitioner explains that Joo
teaches the advantages of a touch sensor “extendingly formed at the side
surface . . . as well as the upper surface,” because “it eliminates the need for
a ‘separate side key . . . for generating input,’ ‘enhance[s] the appearance,’
and ‘reduce[s] the manufacturing cost.’” Id. (citing Ex. 1008 ¶ 67; Ex. 1031,
106:7–10, 106:19–22). Petitioner further explains that such a modification
would have been implemented “by expanding the touch-sensitive portions of
Moran’s touch sensor . . . and wrapping those expanded touch sensitive
portions around the edges of Moran’s display.” Id. (citing Pet. 67).
Petitioner also again explains that a person having ordinary skill in the art
would have reasonably expected success in wrapping Moran’s flexible
sensor around the edges of a display, and Dr. Wolfe testifies that based upon
the “structural properties of the materials used to [create] Moran’s
touchscreen sensor,” such a modification would have been straightforward.
Id. at 23–24 (citing Ex. 1023 ¶¶ 182–83; Ex. 1012; Ex. 1018; Ex. 1019).
In its Sur-reply, Patent Owner contends this combination is “driven by
improper hindsight,” that Patent Owner’s arguments do not rely on Joo’s
manufacturing techniques, and that Petitioner overlooks differences between
Moran and Joo. PO Sur-reply 25. Patent Owner, however, continues to rely
on testimony6 about combining Joo’s manufacturing technique with Moran
to argue that a person of ordinary skill in the art would not have looked to
Joo when modifying Moran. Id. at 26. Thus, Patent Owner contends:

6 Petitioner’s Sur-sur-reply addresses only this testimony. See generally Pet.
Sur-sur-reply.
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the basic technologies discussed in Joo and Moran are too
different to conclude that Joo teaches or suggests to a POSITA
the precise modification to Moran that that arrives at the
challenged claims, especially where, as here, the record is
devoid of even a single reference that teaches the critical
elements of Limitation 1[e]/7[e] together: (1) a metal mesh
sensor that is (2) configured to wrap around one or more edges
of a display--which is a hallmark of nonobviousness.
Id. (citing PO Resp. 81).
We have considered the parties’ arguments and evidence on this issue
as detailed above, and we find Petitioner’s contentions persuasive. As
Patent Owner acknowledges (PO Sur-reply 26), Petitioner’s combination
does not rely on any manufacturing techniques in Joo. Rather, Petitioner
argues that a person of ordinary skill in the art would have found it obvious
to wrap Moran’s flexible substrate including its touch screen around the
sides of the device to create additional touch sensitive regions on the sides of
the device as taught in Joo. See Pet. 66–67. We agree with Petitioner that
the “benefits of extending a touch-sensitive region over the side of a
display,” such as eliminating a separate side key and thus reducing
manufacturing costs, are not wholly dependent upon the injection molding
technique of Joo. Id. In other words, Petitioner’s combination is based on
its contention that a person of ordinary skill in the art would have recognized
that Moran’s substrate and touch sensor could be extended and wrapped
around the edge of a display and would have been motivated to make that
modification because of the known benefits, as described in Joo, of having a
touch sensitive portion extend to the side of a display (e.g., replacing
mechanical elements on the side, such as a side key, with a touch sensitive
element). See id. We are persuaded that these benefits inure from having
the touch sensitive portion on the side of the display rather than the
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manufacturing technique that results in that touch sensitive portion (i.e.,
injection molding versus bending the touch sensitive portion to wrap it
around the edge of the display).
We also find that Petitioner has provided a persuasive rationale for
making this modification to Moran in light of Joo’s teachings, namely, to
replace separate side keys, to enhance the appearance of the touchscreen
device, and to reduce manufacturing cost. See Pet. 66 (quoting Ex. 1008
¶ 67; citing Ex. 1023 ¶ 176); Pet. Reply 22. We find this rationale
persuasive because it is reflected in the prior art itself (i.e., in Joo) and is
based on a rational underpinning of known benefits to extending the touch
portion to the side of the display.
Patent Owner’s arguments do not undermine Petitioner’s persuasive
showing on motivation to combine. To the extent Patent Owner argues Joo
itself lacks a teaching to modify Moran’s touch screen to wrap around the
edge of its display (PO Resp. 76–77), obviousness law does not require a
specific teaching, suggestion, or motivation in the prior art itself. See KSR,
550 U.S. at 418. Thus, we find it of no moment that Joo does not explicitly
speak to wrapping Moran’s PET metal mesh sensor around the edge of a
display. Instead, Petitioner points to a specific teaching in Joo of advantages
of having a touchscreen wrapped around the edge of a display. Pet. 66
(citing Ex. 1008 ¶ 67; Ex. 1023 ¶ 176). Dr. Wolfe testifies that a person of
ordinary skill in the art would have been motivated to modify Moran to
achieve the benefits taught in Joo. See Ex. 1023 ¶¶ 178–79. We credit this
testimony because it is supported by Joo’s teachings (i.e., Ex. 1008 ¶ 67 (By
“extendingly form[ing the touch input portion] at the side surface portion of
the cover,” “a separate side key is not required to be mounted at the side
surface of the terminal for generating input, thereby simplifying the
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manufacturing process thus to reduce the manufacturing cost and make the
enhanced appearance of the terminal.”), as well as other contemporaneous
references showing the background knowledge of a skilled artisan (Ex.
1004, 7:31–44 (“In a touch sensitive film covering different surfaces of a
three-dimensional device, there can be several touch sensing regions for
different purposes. . . . Other sensing regions e.g. at the sides of the device
can be configured to serve as touch sensitive element replacing the
conventional mechanical buttons, e.g. the power button.”); Ex. 1016, 23:3–8
(“Further, as can be seen from step c) of Fig. 6 the multilayered element
formed onto the structure, in this case on at least a part of a mobile phone,
also replaces the function of any mechanical buttons or switches used in
prior art mobile phones.”). See id. In other words, persuasive evidence of
record, as cited by Dr. Wolfe, supports that a person of ordinary skill in the
art would have been aware of and motivated by the known advantages of
extending the touch sensor to cover the side of a device.
Although Patent Owner identifies implementation details that would
need to be resolved in Petitioner’s proposed combination (PO Resp. 78), we
find Dr. Wolfe’s testimony (Ex. 1023 ¶¶ 178–83) credible and persuasive
that resolving these details would have been well within the skill of a person
of ordinary skill in the art. See KSR, 550 U.S. at 417. As discussed above,
we find persuasive Dr. Wolfe’s testimony about the properties of the
substrate and touch sensor materials disclosed in Moran, namely, the
flexibility of those materials. Given those properties and the persuasive
rationale for the modification discussed above, we are persuaded that
Petitioner’s proposed modification (i.e., extending Moran’s touch sensor and
wrapping it around the edge of the display) would have amounted to the
“application of a known technique [wrapping a touch sensor around the edge
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of a touchscreen device’s display] to a piece of prior art ready for the
improvement [Moran].” Pet. 68 (citing KSR, 500 U.S. at 417).
Further, Patent Owner acknowledges and does not appear to dispute to
our preliminary determination on institution that Petitioner’s combination
does not rely on Joo’s manufacturing techniques (Dec. 21; Pet. Reply 22).
PO Sur-reply 25. Patent Owner, however, continues to argue that Joo’s
manufacturing technique undermines Petitioner’s obviousness rationale. Id.
at 25–26. At oral hearing, Patent Owner’s counsel framed the issue as
whether a person of ordinary skill in the art “would have plucked one
reference out of the sea of prior art and combined it with the other
reference.” Tr. 33:13–14. In other words, according to Patent Owner,
Moran and Joo are simply too different to support Petitioner’s combination
because of Joo’s manufacturing process. See PO Sur-reply 25–26.
We do not agree. “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Here, the
person of ordinary skill “would have had a relevant technical degree in
Electrical Engineering, Computer Engineering, Computer Science, Materials
Science, or the like, and 2–3 years of experience in touch sensor design.”
Pet. 10–11 (citing Ex. 1023 ¶¶ 77–78); PO Resp. 8. In light of that skill
level and as discussed in further detail above, we find credible Dr. Wolfe’s
testimony that Joo’s teachings as to the benefits of wrapping a touchscreen
around an edge would have motivated a person of ordinary skill in the art to
modify Moran. Ex. 1023 ¶ 178. In particular, as we discuss above, we are
persuaded that a person of ordinary skill in the art would have understood
that these benefits do not depend on the method of manufacturing the touch
screen to extend around the edge of the display (i.e., the benefits, such as
elimination of mechanical buttons, derive from the existence of the touch
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sensitive portion on the side, rather than how the touch sensitive portion was
manufactured).
We also do not find that Petitioner’s rationale relies on hindsight as
Patent Owner contends (PO Sur-reply 25). In particular, Patent Owner faults
Petitioner’s articulation of the motivation as “wrap[ping] the flexible touch
sensor of Moran around the edges of a display,” as a near copy of the claim
language. Id. (citing Pet. Reply 23). We do not view Petitioner’s proposed
modification as evidencing hindsight. Petitioner states that the
“modification could be implemented, for example, by expanding the touch-
sensitive portions of Moran’s touch sensor (i.e., the portions containing the
mesh electrodes) and wrapping those expanded touch-sensitive portions
around the edges of Moran’s display.” Pet. 67. It is true that the claim
limitation at issue recites “the substantially flexible substrate and the touch
sensor are configured to wrap around one or more edges of a display,”
similar to the modification of Moran’s touch sensor that Petitioner proposes.
Nevertheless, given that the modification is relatively straightforward, we
see no reason that Petitioner must provide a complicated explanation.
Indeed, Dr. Wolfe explains why a person of ordinary skill would have
had a reasonable expectation of success in making this modification based
on the properties of the materials used in Moran. Ex. 1023 ¶¶ 182–83.
Specifically, as discussed above, Dr. Wolfe explains that a person of
ordinary skill in the art would have recognized that the substrate material
(PET) in the thicknesses disclosed in Moran (as thin as 5 microns) would
have been highly flexible. See Ex. 1031, 118:3–25 (testifying that such thin
films are like “cellophane” or “Saran Wrap”); see also Ex. 1007, 8:13–16
(describing the substrate as “flexible”). Dr. Wolfe also explains that a
person of ordinary skill in the art would have understood that the sensor
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materials disclosed in Moran would be flexible enough to bend around the
edge of a display along with the substrate material. Ex. 1023 ¶¶ 172, 182–
83. As discussed above, Dr. Wolfe supports his testimony with references
showing the background knowledge of an ordinary artisan that silver and
copper mesh electrodes are flexible. Id. ¶ 183; see also Pet. Reply 24 n.4
(noting that for its electrodes, Moran discloses the same materials (silver and
copper) in the same thicknesses (approximately 10 microns) as the ’311
patent) (citing Ex. 1001, 2:47–54; Ex. 1007, 22:13–14, 12:9–12).
For the reasons discussed above, we determine Petitioner has shown a
person of ordinary skill in the art would have been motivated to modify
Moran to extend its touchscreen and wrap it around the edge of a display in
light of Joo’s teachings. In sum, for the reasons discussed above, we
determine Petitioner has shown by a preponderance of the evidence that
claim 1 is unpatentable as obvious over Moran and Joo.
Petitioner relies on the same analysis as claim 1 for the similar
limitations of independent claim 7 and provides further analysis detailing
where it contends an additional limitation of claim 7 as well as each
additional limitation of claims 2–6, 8–13, 15, 16, and 18 are taught in
Moran. Pet. 69–75. Claim 7 includes substantially similar limitations to the
limitations of claim 1 discussed above. See Ex. 1001, 8:61–9:7, 9:33–46.
We find Petitioner has shown Moran or the combination of Moran and Joo
teach these limitations for the same reasons discussed above for the similar
limitations of claim 1. Claim 7 further recites “one or more computer-
readable non-transitory storage media embodying logic that is configured
when executed to control the touch sensor.” Ex. 1001, 9:47–49. Petitioner
argues that this limitation of claim 7 would have been obvious in view of
Moran’s disclosure. Pet. 69 (citing Ex. 1007, 6:7–26; Ex. 1023 ¶¶ 138, 184).
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We determine Petitioner has shown this limitation of claim 7 would have
been obvious in light of Moran’s teachings. Moran states:
It is within the scope of two conductive micropatterns that are
electrically isolated for the micropatterns both to be connected
to the same signal processing, logic, memory, or other circuitry
for the purpose of using the micropatterns as part of a system
(e.g., driving the conductive micropatterns with electrical
signals for the purpose of capacitively detecting the presence or
location of a touch event to an information display).
Ex. 1007, 6:19–24. Dr. Wolfe testifies that a person of ordinary skill in the
art would have understood “that at least the recited logic and memory are
non-transitory storage media embodying logic that is configured when
executed to control the touch sensor.” Ex. 1023 ¶ 184. We credit this
testimony because it is consistent with Moran’s disclosure above. We note
that Patent Owner does not separately address this limitation (see generally
PO Resp.; PO Sur-reply).
Petitioner also has shown the additional limitations of dependent
claims 2–6, 8–13, 15, 16, and 18 are taught in Moran or would have been
obvious in light of Moran’s teachings. Pet. 69–75. Claims 2 and 8 depend
from independent claims 1 and 7, respectively, and additionally recite
“wherein the touch sensor further comprises tracking disposed on the
substantially flexible substrate configured to provide drive or sense
connections to or from the drive or sense electrodes and configured to bend
with the substantially flexible substrate.” Ex. 1001, 9:8–12, 10:1–5.
Petitioner contends Moran teaches this limitation. Pet. 70–71 (citing Ex.
1007, Figs. 11–13, 6:19–24, 30:24–29, 31:9–12, 32:10–12; Ex. 1023 ¶ 185).
We determine Petitioner has shown Moran teaches this limitation. For
example, Figure 13 of Moran shows first and second conductive trace
regions 706 and 726, which allow electrical connection to the patterned
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substrates. Ex. 1007, Fig. 13, 32:10–12. Dr. Wolfe testifies that because
these traces are made from the same materials as the micropatterns (copper
and silver), formed on Moran’s substrate, they would bend with the
underlying substrate. Ex. 1023 ¶¶ 185–87. Based on this evidence, we find
Petitioner’s showing persuasive. We note that Patent Owner does not
separately address this limitation (see generally PO Resp.; PO Sur-reply).
Claims 3 and 9 depend from independent claims 1 and 7, respectively,
and additionally recite “wherein the first and second conductive lines are
made from one of carbon nanotubes, copper, silver, a copper-based material,
or a silver-based material.” Ex. 1001, 9:13–16, 10:6–9. Petitioner contends
Moran teaches the conductive lines of its mesh electrodes may be made from
silver or copper. Pet. 71. We are persuaded because Moran states:
“Examples of useful metals for forming the electrically conductive
micropattern include . . . silver . . . [and] copper.” Ex. 1007, 22:13–15. We
note that Patent Owner does not separately address this limitation (see
generally PO Resp.; PO Sur-reply).
Claims 4 and 10 depend from independent claims 1 and 7,
respectively, and additionally recite “wherein the touch sensor comprises: a
single-layer configuration with drive and sense electrodes disposed only on a
first surface of the substantially flexible substrate; or a two-layer
configuration with drive electrodes disposed on the first surface of the
substantially flexible substrate and sense electrodes disposed on a second
surface of the substrate opposite the first surface.” Ex. 1001, 9:17–25,
10:10–18. Petitioner contends Moran teaches the “single-layer
configuration” recited in these claims. Pet. 72. For example, Moran states:
“The second conductive micropattern may be disposed on the same substrate
as the first conductive micropattern.” Ex. 1007, 9:1–3; see also Ex. 1023
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¶ 189 (testifying that a person of ordinary skill in the art would have
understood from Moran’s disclosures that it discloses the recited single-layer
configuration) (citing Ex. 1007, 6:7–26, 8:29–9:5). We note that Patent
Owner does not separately address this limitation (see generally PO Resp.;
PO Sur-reply).
Claims 5 and 11 depend from independent claims 1 and 7,
respectively, and additionally recite “wherein the touch sensor is a mutual-
capacitance touch sensor or a self-capacitance touch sensor.” Ex. 1001,
9:26–28, 10:19–21. Petitioner contends Moran teaches a mutual-capacitance
sensor, as recited in these claims. Pet. 72. We agree because Moran teaches
“integrated circuits used to make mutual capacitance measurements of the
transparent sensor element.” Ex. 1007, 32:21–22. We note that Patent
Owner does not separately address this limitation (see generally PO Resp.;
PO Sur-reply).
Claims 6 and 12 depend from independent claims 1 and 7,
respectively, and additionally recite “wherein the touch sensor further
comprises electrically-isolated structures made of conductive material
comprising a conductive mesh.” Ex. 1001, 9:29–31, 10:22–24. Petitioner
contends Moran teaches this limitation. Pet. 72–73. We agree because, for
example, Figure 10 in Moran depicts “mesh bars 441 that are electrically
isolated from the electronic device” that “serve to maintain optical
uniformity across the sensor.” Ex. 1007, Fig. 10, 28:3–10. We note that
Patent Owner does not separately address this limitation (see generally PO
Resp.; PO Sur-reply).
Claims 13 and 16 depend from independent claims 1 and 7,
respectively, and additionally recite “wherein the first and second
conductive lines are substantially orthogonal to one another.” Ex. 1001,
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10:25–26, 33–34. Petitioner contends Moran teaches this limitation. Pet.
73–74. We agree because Figure 2 of Moran depicts substantially
orthogonal conductive trace lines. Ex. 1007, Fig. 2. We note that Patent
Owner does not separately address this limitation (see generally PO Resp.;
PO Sur-reply).
Claims 15 and 18 depend from independent claims 1 and 7,
respectively, and additionally recite “wherein the first and second
conductive lines are made of fine lines of metal having a thickness of
approximately 5 micrometers or less and a width of approximately 10
micrometers or less.” Ex. 1001, 10:29–32, 37–40. Petitioner contends
Moran teaches this limitation. Pet. 74–75. We are persuaded. As discussed
above, Moran teaches its conductive lines can be made from silver or copper
(i.e., metals). Ex. 1007, 22:13–15. Moran also teaches the recited
dimensions. Id. at 12:7–30 (teaching widths of between 0.5 and 5
micrometers), 22:27–28 (teaching micropatterns with thicknesses from 5
nanometers to 50 nanometers). We note that Patent Owner does not
separately address this limitation (see generally PO Resp.; PO Sur-reply).
For the reasons discussed above, we determine Petitioner has
demonstrated by a preponderance of the evidence that claims 1–13, 15, 16,
and 18 would have been obvious over Moran and Joo.
E. Asserted Obviousness over Moran, Joo, and Philipp
Petitioner contends claims 14 and 17 are unpatentable as obvious over
Moran, Joo, and Philipp. Pet. 75–76. Claims 14 and 17 depend from
independent claims 1 and 7, respectively, and additionally recite “the first
and second conductive lines are non-linear.” Ex. 1001, 10:26–27, 34–35.
Petitioner contends the combination of Moran and Philipp teaches this
limitation. Specifically, Petitioner relies on Moran as disclosing the “first
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and second conductive lines.” Pet. 64–65. Petitioner then relies on Philipp
to teach non-linear conductive lines and proposes incorporating that teaching
into Moran’s mesh electrodes. Id. at 75–76 (citing Ex. 1005 ¶¶ 6, 30–31,
Abstract). Further, Petitioner relies on Philipp as providing an express
motivation for the combination, namely, “to avoid creating moiré patterns
between the display and the touchscreen.” Id. at 75 (citing Ex. 1005,
Abstract, ¶¶ 6, 30–31, 42; Ex. 1023 ¶ 198); see also id. (noting that Moran
also notes a concern about “minimizing interference such as moire effects”)
(citing Ex. 1007, 12:15–18; Ex. 1023 ¶ 198).
We find Petitioner’s analysis about the references’ teachings and the
motivation to combine persuasive. As discussed above, Moran teaches first
and second conductive lines. See Ex. 1007, Fig. 2. In addition, Philipp
teaches using non-linear conductive lines to reduce interference, including
moiré patterns. Ex. 1005, code (57) (“The touchscreen electrode elements
are configured to avoid creating moiré patterns between the display and the
touchscreen, such as angled, wavy, zig-zag, or randomized lines.”), ¶¶ 6
(same), 30 (“At 202, wavy lines are used to avoid long linear stretches of
fine metal line, reducing the probability of causing interference patterns.
Similarly, the fine metal lines at 203 zig-zag, breaking up long linear
stretches of parallel lines.”), 31 (“[A]ngled and wavy lines are used here to
avoid creating moiré patterns . . . .”), 42 (“[T]he electrodes follow irregular
paths configured to avoid creating moiré patterns when overlaying a
display.”). Moran also indicates a desire to minimize interference including
moiré patterns. Ex. 1007, 12:15–18 (“In the design of one or more overlaid
conductive micropatterns, one may include concepts known in the art for
minimizing interference such as moire effects between the one or more
overlaid conductive micropatterns and the display pixels.”). We are
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persuaded that Petitioner has provided persuasive reasoning that a person of
ordinary skill in the art would have modified Moran’s mesh electrodes with
Philipp’s non-linear conductive lines because Moran itself suggests
implementing known concepts for minimizing interference (Ex. 1007,
12:15–18), and Philipp provides its non-linear conductive lines (e.g., wavy
and zig-zag) as a known way to reduce interference patterns including moiré
patterns.
For the reasons discussed above, we determine Petitioner has
demonstrated by a preponderance of the evidence that claims 14 and 17
would have been obvious over Moran, Joo, and Philip. We note that Patent
Owner does not separately address these dependent claims (see generally PO
Resp.; PO Sur-reply).
F. Asserted Obviousness over Moran, Joo, and Rappoport
Petitioner contends claims 19 and 20 are unpatentable as obvious over
Moran, Joo, and Rappoport. Pet. 76–77. Claims 14 and 17 depend from
independent claims 1 and 7, respectively, and additionally recite “the first
and second conductive lines of the flexible conductive material of the drive
or sense electrodes is wider at the one or more edges of the display.” Ex.
1001, 10:40–47. Petitioner relies on Moran, as modified by Joo, as teaching
the “first and second conductive lines of the flexible conductive materials of
the drive or sense electrodes . . . at the one or more edges of the display.”
Pet. 76. Petitioner relies on Rappoport to teach the technique of making
conductive metal lines wider at the edge of a display and incorporates that
teaching into the combination of Moran and Joo’s mesh electrodes at the
edge of a display. Id. (citing Ex. 1006). Petitioner also provides a rationale
for combining the teachings of Moran and Joo with Rappoport. Specifically,
Petitioner contends that using Rappoport’s teaching of making conductive
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metal lines wider at the edge of a display in the combination of Moran and
Joo would help ensure conductive lines are not cracked or otherwise
damaged when bent around the edge. Pet. 76–77.
We find Petitioner’s analysis about the references’ teachings and the
motivation to combine persuasive. We find Petitioner’s contentions about
the Moran-Joo combination persuasive for the reasons discussed above as to
claim 1. In addition, Rappoport’s Figures 7–9 show traces 62 with enlarged
width WD' in the vicinity of bend axis 56 (i.e., in the vicinity of the edge of
a display). Ex. 1006, Figs. 7–9, ¶¶ 42–43. Rappoport states: “The enlarged
dimensions of traces 62 in the segment of traces 62 that overlaps bend axis
56 may help ensure that traces 62 are not cracked or otherwise damaged
when inactive edge 58 of substrate 60 is bent downward away from active
region 54.” Id. ¶ 43. We find this teaching provides a persuasive motivation
for modifying Moran’s mesh electrodes to be wider at one or more edges of
the display to avoid cracking or other damage to the metal traces.
For the reasons discussed above, we determine Petitioner has
demonstrated by a preponderance of the evidence that claims 19 and 20
would have been obvious over Moran, Joo, and Rappoport. We note that
Patent Owner does not separately address these dependent claims (see
generally PO Resp.; PO Sur-reply).
G. Remaining Grounds Challenging Claims 1–20 of the ’311 Patent
For the reasons discussed above, Petitioner has shown, by a
preponderance of the evidence, that claims 1–20 of the ’311 patent are
unpatentable as obvious over Moran and Joo or over Moran and Joo in
combination with additional references. In addressing these grounds, we
have addressed all of the challenged claims. See 35 U.S.C. § 318(a)
(requiring the Board to “issue a final written decision with respect to the
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patentability of any patent claim challenged by the petitioner and any new
claim added under section 316(d)”); see also SAS Inst. Inc. v. Iancu, 138 S.
Ct. 1348, 1359 (2018) (holding that a petitioner “is entitled to a final written
decision addressing all of the claims it has challenged”). Accordingly, we
need not and do not decide whether Petitioner has shown by a
preponderance of the evidence that claims 1–20 are unpatentable as obvious
over Kuriki and Mikladal or Kuriki and Mikladal in combination with
additional references. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching other grounds of unpatentability after affirming the
anticipation ground); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (holding that once a dispositive issue is decided, there
is no need to decide other issues).
IV. CONCLUSION7
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–20 of the ’311 patent are
unpatentable, as summarized in the following table:

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).

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Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–13, 15,
16, 18

103(a)8
Kuriki,
Mikladal

14, 17
103(a)
Kuriki,
Mikladal,
Philipp

19, 20
103(a)
Kuriki,
Mikladal,
Rappoport

1–13, 15,
16, 18
103(a) Moran, Joo 1–13, 15, 16,
18

14, 17 103(a) Moran, Joo,
Philipp
14, 17
19, 20 103(a) Moran, Joo,
Rappoport
19, 20
Overall
Outcome
1–20

V. ORDER
Accordingly, it is:
ORDERED that claims 1–20 of the ’311 patent are held to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

8 As explained immediately above, we need not and do not decide whether
Petitioner has shown by a preponderance of the evidence that claims 1–20
also would have been obvious based on the remaining grounds not addressed
in this Decision.
IPR2019-01668
Patent 9,256,311 B2
36
For PETITIONER:
David Garr
Peter Chen
Grant Johnson
COVINGTON & BURLING LLP
dgarr@cov.com
pchen@cov.com
gjohnson@cov.com

For PATENT OWNER:
Neil Rubin
Kent Shum
Reza Mirzaie
RUSS AUGUST & KABAT
nrubin@raklaw.com
kshum@raklaw.com
rmirzaie@raklaw.com
IPR2019-01668
Patent 9,256,311 B2
37
rmirzaie@raklaw.com