Wilson et al.v.Leonhard et al.

Patent Trial and Appeal Board

Sep 25, 2018

13160404 (P.T.A.B. Sep. 25, 2018)

BoxInterferences@uspto.gov Entered: September 25, 2018
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

AEVOE Corp.,
Junior Party
(Patent 8,044,942,
Inventors: Michael Leonhard, Jonathan Lin, and Steven Huang),

v.

Racing Optics, Inc.,
Senior Party
(Application 14/794,156
Inventors: Stephen S. Wilson, Bart Wilson, and Seth Wilson).

Patent Interference No. 106,074 (JTM)
(Technology Center 1700)

Before JAMES T. MOORE, JEFFREY B. ROBERTSON, and DEBORAH KATZ
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

JUDGMENT
37 C.F.R. § 41.127

Interference 106074 – Judgment

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We have granted the Joint Miscellaneous Motion to designate claim 5 of 1
U.S. Patent 8,044,942, assigned to Junior Party Aevoe Corp., as not corresponding 2
to the count. See Second Decision on Motions, Paper 66. 3
Junior Party Aevoe states that “[i]n the event the Board finds that claim 5 is 4
not obvious over the Count, the Parties contingently move this Board to accept a 5
concession from Aevoe of priority of the Count.” Joint Miscellaneous Motion, 6
Paper 58, 1:11–12. We also have granted the contingent motion to concede 7
priority. 8
In view of the foregoing, it is— 9
ORDERED that judgment be entered against Junior Party AEVOE for count 10
1 (Paper 1); 11
FURTHER ORDERED that claims 1-4, 7, 10, 11, and 13–14 of Junior Party 12
AEVOE’s involved US Patent 8,044,942 be CANCELED, 35 U.S.C. § 135(a); 13
FURTHER ORDERED that a copy of this judgment be entered in the 14
administrative records of the involved patent and application; and 15
FURTHER ORDERED that a party seeking judicial review timely serve 16
notice on the Director of the United States Patent and Trademark Office. 37 C.F.R. 17
§§ 90.1 and 104.2. 18
19

NOTICE: "Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in connection with or
in contemplation of the termination of the interference, shall be in writing and a
true copy thereof filed in the Patent and Trademark Office before the termination
of the interference as between the said parties to the agreement or understanding."
35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements).
Interference 106074 – Judgment

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cc (via electronic mail):

AEVOE Corp:

Thomas C. Wolski
Paul M. Reznick
The Webb Law Firm
twolski@webblaw.com
preznick@webblaw.com
litigation@webblaw.com

Racing Optics, Inc:

Leonard R. Svensson
Birch, Stewart, Kolasch & Birch, LLP
mailroom@bskb.com

Kit M. Stetina
Stetina Brunda Garred & Brucker
kstetina@stetinalaw.com

BoxInterferences@uspto.gov Entered: September 25, 2018
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

AEVOE Corp.,
Junior Party
(Patent 8,044,942,
Inventors: Michael Leonhard, Jonathan Lin, and Steven Huang),

v.

Racing Optics, Inc.,
Senior Party
(Application 14/794,156
Inventors: Stephen S. Wilson, Bart Wilson, and Seth Wilson).

Patent Interference No. 106,074 (JTM)
(Technology Center 1700)

Before JAMES T. MOORE, JEFFREY B. ROBERTSON,
and DEBORAH KATZ, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

SECOND DECISION ON MOTIONS
37 C.F.R. § 41.125

Interference 106,074 Second Decision on Motions

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I. Background 1
An interference was declared by the Board under 35 U.S.C. § 135(a) on 2
February 27, 2017. Paper 1. Aevoe Corp. (“Aevoe”) was assigned the status of 3
junior party with an initial application filing date of January 18, 2011. Id., 2–3. 4
Racing Optics, Inc. (“Racing Optics”) was assigned the status of senior party with 5
an initial application filing date of May 14, 2010. Id., 3–4. 6
The subject matter of this interference is that of screen protective shields 7
which attach to touch-sensitive electronic devices such as handheld telephone 8
devices. 9
The interference count, which defines the scope of this proceeding, is claim 10
17 of U.S. Application 14/794,156 (Ex. 1002) or Claim 1 of U.S. Patent 8,044,942 11
(Ex. 1001). Paper 1, 3. Each (with any intervening claims) reads as follows. 12
Claim 16. A transparent shield for a touch sensitive screen of a device, the 13
shield comprising: 14
a transparent layer defining opposed first and second sides, the 15
transparent layer defining a transparent central portion and an outer 16
periphery; 17
a layer of pressure sensitive adhesive disposed about an outer 18
peripheral portion of the second side of the transparent layer; 19
wherein the outer peripheral portion of the transparent layer is 20
attachable to the device so that the central portion of the second side of the 21
transparent layer is positioned on top of the touch sensitive screen of the 22
device to form an air gap between the central portion of the transparent layer 23
and the touch sensitive screen of the device. 24
25
17. The shield of Claim 16 further comprising an annular layer interposed 26
between the transparent layer and the layer of pressure sensitive adhesive to 27
facilitate formation of the air gap between the central portion of the 28
transparent layer and the touch sensitive screen of the device. 29
30
Paper 12, 3. 31
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1
Claim 1. A touch screen protector for a hand held electronic device having a 2
front face that includes a touch screen portion and an outer perimeter 3
comprising: 4
a plastic film having front and back sides, an outer perimeter that 5
corresponds to that of the device, and a transparent window that corresponds 6
in size to the touch screen portion; and 7
a spacer provided along the outer perimeter of the plastic film 8
continuously surrounding the transparent window, having a thickness 9
sufficient to space the plastic film near but not in contact with the touch 10
screen portion, and an exposed adhesive for removably mounting the 11
protector upon the outer perimeter of the front face to form an enclosed air 12
space between the transparent window of the plastic film, the spacer and the 13
touch screen portion of the device; 14
wherein the window can be pressed against the touch screen portion 15
for operation of the electronic device while preventing direct contact of a 16
user's fingers with the touch screen portion and without producing visible 17
interference patterns during use. 18
19
Paper 7, 1. 20
Figure 3 of the ’156 application is reproduced below, illustrating the air gap 21
16: 22
23
Figure 3 is a partial cross sectional view of a shield mounted to a device 24
(Ex. 1002, ¶ 25) 25
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Figure 3 of the ’942 patent is reproduced below, illustrating a spacer 1
component 40 of the protector: 2
3
4
Figure 3 is an expanded partial sectional view of the protector 5
(Ex. 1001, 3:3–4). 6
7
Following a conference call on April 21, 2017, the following motions were 8
authorized by the Board. Paper 22. 9
1. Aevoe Motion 1 – No Interference in Fact. 10
2. Aevoe Motion 2 – Claim Correspondence. 11
3. Aevoe Contingent Motion 3 – To Redefine the Interfering Subject 12
Matter. 13
Motions 1 and 2 were denied in a Decision on Motions March 27, 14
2018. Paper 54. Motion 3 was not filed. 15
Following a number of conference calls, the parties were permitted to 16
file a joint Miscellaneous Motion, which Motion is the subject of the instant 17
decision. Paper 57, 2. The time for filing priority motions was extended. 18
Paper 65. The Board sua sponte subsequently suspended the deadline for 19
filing priority motions pending decision of the joint Miscellaneous Motion. 20
The Joint Miscellaneous Motion was filed May 25, 2018, and this 21
proceeding is now ready for disposition. 22
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1
II. The Joint Miscellaneous Motion - 2
Motion to Designate Claim 5 as not corresponding to the count; 3
Contingent Concession of Priority 4
5
A. Background 6
7
On May 25, 2018 the parties jointly filed a Miscellaneous Motion to have 8
claim 5 of Aevoe’s ’942 patent designated as patentably distinct, and not 9
corresponding to the count. Paper 58. This unusual motion was authorized in the 10
hope of avoiding the expense of putting the parties through a priority contest. The 11
parties have also contingently moved the Board to accept a concession of priority 12
from Aevoe if claim 5 and its further dependent claims are deemed separately 13
patentable over the count. Id. 1. 14
B. Legal Standard 15
In order to show that a claim should be designated as not corresponding to a 16
Count, it must be shown why the subject matter of the Count, if treated as prior art, 17
would not have anticipated or rendered obvious the subject matter of the claim. 37 18
C.F.R. § 41.207(b)(2); Standing Order (“SO”) § 208.3.2. A movant must provide 19
some sufficient evidentiary basis for consideration of the motion on the merits. 37 20
C.F.R. § 41.208(b). 21
For example, for anticipation a movant must provide evidence that that each 22
limitation of a claim is not found in a single reference, either expressly or 23
inherently. A movant must also provide evidence of the nonobviousness of the 24
invention in light of the scope and content of the prior art and the level of ordinary 25
skill in the art. This might be done by testimony of a person skilled in the 26
particular art (such as an inventor) that the inventor is unaware of any prior art or 27
Interference 106,074 Second Decision on Motions

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other reasons that would teach or suggest modifying the subject matter of the 1
opponent’s claims to account for the differences. The “other reasons” would 2
include knowledge that any modifications necessary to the opponent’s claims do 3
not reflect conventional or routine practices or other matters well known in the art. 4
This standard applies to both opposed and unopposed motions. 5
In our prior decision on Aevoe Motion 2 for no interference in fact, 6
specifically as regards claim 5, we determined that Dr. Cairns’ testimony was 7
insufficient to meet that burden. Specifically, he testified that one of ordinary skill 8
in the art would not turn to Satake for the description of micro particles to reduce 9
the effects of static electricity on protective films. He testified that he understood 10
the scope and content of the prior art, the level of skill in the art, and discussed the 11
most pertinent references in that art. He further testified that he believed, even in 12
view of the references, that the claims were nonobvious over the count. Ex. 1018, 13
passim. We determined that (even though the motion was unopposed) the 14
description in the references of the use of microparticles in films to reduce static 15
electricity effects outweighed that testimony. Paper 54, 18. We now revisit that 16
issue in light of the additional evidence, including new experimental evidence, now 17
before us. 18
C. The Technology of the ’942 Patent 19
According to the parties, the ’942 patent of the Junior Party provides for a 20
touch screen protector that is easily applied to an electronic handheld device, such 21
as an iPad, without the formation of interference patterns during use. Ex. 1018, 22
¶¶ 32-34. The claims of the ’942 patent recite a “spacer” that has a thickness 23
sufficient to space the protective film near, but not in contact with, the touch screen 24
of the device on which it is applied. Ex. 1018, ¶¶ 36-37. The ’942 patent is said to 25
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avoid interference patterns, for example, by providing microparticles to the back 1
side of the film. Ex. 1018, ¶¶ 40-41; 56. Paper 58, 1–2. 2
Dr. Darren Cairns, the Junior Party’s witness,1 asserts that the touch screen 3
protectors claimed in claim 5 of the ’942 patent minimize interference patterns “in 4
both an elevated, unactuated configuration and an actuated configuration, where 5
the protective screen is pressed against a touch screen. In the unactuated 6
configuration, interference patterns are avoided due to the formation of an air gap 7
between the protective film and the touch screen. In the actuated configuration, or 8
the ‘during use’ configuration, interference patterns are avoided, for instance, due 9
to the inclusion of microparticles on the underside of the film.” Ex. 1018, ¶ 56. 10
The specification puts it thusly: 11
In one embodiment, the plastic film is coated to have a “matte” or anti-glare 12
effect. Surface treatment such as EZ-GLIDE™ top layer treatment further 13
allows better touch screen portion maneuverability and effectively reduces 14
finger glide friction on the touch screen portion of the band held device. EZ-15
GLIDE™ treatment is a technology in which the outer side of the screen 16
protector, i.e., the side that contacts the hand, has micro-particles that reduce 17
static effects, which allows the hand to move smoothly on the screen 18
protector. While prior film products that were to be handled by users may 19
have been considered to require a treatment to reduce electrostatic charges 20
due to rubbing contact, the present invention is at least partly based on the 21
discovery that the provision of an EZ-GLIDETM microparticle treatment on 22
the inner side of the plastic film, i.e., the side of the film facing the touch 23
screen portion, prevents or avoids the generation of interference fringes 24
when the protector is pressed against the touch screen portion. This result is 25
achieved because the treatment prevents or avoids producing static 26
electricity effects between the screen protector and the touch screen portion. 27
28

1 The parties again rely upon the testimony of Dr. Darren Cairns in support of its
motion. As found previously, Dr. Cairns appears to be qualified to testify to the
subject matter of this proceeding. Ex. 1018 ¶¶ 4–11 and Ex. 1017.
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Ex. 1001, 4:16–36. 1
As to the microparticles themselves, their method of operation is indicated to 2
be as follows: 3
The micro-particles are not in physical contact with the touch screen portion 4
unless the screen protector is pressed against the touch screen portion. As a 5
result of the anti-static effects of the micro-particles, the screen protector 6
will quickly bounce back or pull away from the touch screen portion once it 7
is no longer pressed against it. The micro-particles on the inner side of film 8
can be of various shapes, such as the column shape and the wave shape. The 9
density of micro-particles are optimized such that they are high enough for 10
providing anti-static effects but not too high as to adversely affect the quality 11
of images that are viewed through the window. 12
13
Ex. 1001, 4:37–48. 14
D. The Asserted Distinction 15
The parties jointly assert that there are two limitations that differentiate 16
claim 5 of the ’942 patent from the count (Claim 17 of U.S. Application 17
14/794,156 or Claim 1 of U.S. Patent 8,044,942) such that they neither anticipate 18
not render obvious one another. 19
Claim 5 of the ’942 patent recites as follows: 20
5. The touch screen protector of claim 1, wherein microparticles are present 21
on the back side of the plastic film at a density which is sufficiently high to provide 22
an anti-static effect without adversely affecting quality of images viewed through 23
the window. 24
More specifically, the limitations of claim 5 that are urged by the parties to 25
define over the count are: 26
Incorporated from claim 1 of the ’156 application: “wherein the window can 27
be pressed against the touch screen portion for operation of the electronic device 28
Interference 106,074 Second Decision on Motions

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while preventing direct contact of a user's fingers with the touch screen portion and 1
without producing visible interference patterns during use.” 2
Directly from claim 5 of ’942 patent: “wherein micro-particles are present 3
on the back side of the plastic film at a density which is sufficiently high to provide 4
an anti-static effect without adversely affecting quality of images viewed through 5
the window.” Paper 58, 4. 6
In sum, claim 5 and its dependent claims require that the microparticles must 7
be present and prevent interference patterns. 8
E. The Art 9
The parties reference the art provided in several post-issuance proceedings. 10
Paper 58, 2–4. This art includes: 11
U.S. Application Publication 2011/0279383 to Wilson et al., Ex. 10072 12
U.S. Application Publication 2004/0209007 Al to Satake et al., Ex. 10143 13
US Patent 6,667,738 B2 to Murphy, Ex. 10064 14
U.S. Application Publication 2004/0109096 Al to Andersen, Ex. 1015.5 15
JP2002-328613A to Kitaguchi, Ex. 2012.6 16
U.S. Application Publication 2003/0012936 to Draheim, Ex. 1016.7 17

2 Cited in Inter Partes Reexamination Proceeding 95/002,073. Wilson was sworn
behind by a 37 C.F.R. § 131 Declaration from each of the inventors was filed on
May 5, 2017.
3 Cited in Inter Partes Review proceeding IPR2016-00231.
4 Cited in Inter Partes Review proceeding IPR2016-00231.
5 Cited in Inter Partes Reexamination proceeding 95/002,073.
6 Cited in an examination support document and discussed in the ’942 patent
background. Paper 28, 6.
7 Cited in Inter Partes Reexamination proceeding 95/002,073.
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According to Dr. Cairns, the prior art with respect to avoiding interference 1
patterns falls into two categories in this field – elevating the protective screen, and 2
overlaying an uneven underside surface. Ex. 1018, ¶ 55. He discussed the most 3
pertinent references from the various proceedings, and his knowledge of the art. 4
Id., ¶ 77. 5
As noted previously, in the unique circumstances of this case, we shall 6
regard these references as sufficient evidentiary basis in establishing the known art. 7
Dr. Cairns again testifies that in his opinion, claim 5 is patentable over the known 8
references discussed in the motion. Ex. 1021, ¶ 56. 9
Wilson 10
Wilson, US. Application Publication 2011/0279383 describes a shield that is 11
attachable to a touch sensitive screen. The shield may be attached to the touch 12
sensitive screen only at its outer peripheral portion. An air gap is enclosed 13
between the shield and the touch sensitive screen to form a planar air bearing. The 14
shield preferably does not touch the active area of the touch sensitive screen when 15
the user is not touching the shield but only viewing the touch sensitive screen 16
through the shield. This mitigates unwanted optical artifacts such as trapped air 17
bubbles, Newton rings and chromatic interference while maintaining the sensitivity 18
of the touch sensitive screen. Ex. 1007, Abstract. We have not found any 19
reference to microparticles in this description, regardless of whether it is prior art. 20
Satake 21
Of particular relevance to this decision is the prior art reference Satake (Ex. 22
1014). Satake describes “[a]n antistatic optical film comprising an antistatic layer 23
laminated on at least one side of an optical film, wherein the antistatic layer 24
comprises a water soluble or a water dispersible conductive polymer, has excellent 25
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antistatic effect, optical characteristics and appearance. Id., Abstract. Satake 1
further observes that the water dispersible conductive polymer “is dispersed in a 2
shape of micro-particles. The aqueous dispersion has a low liquid viscosity, and 3
enables thin film coating and furthermore it gives a uniform coated layer. In 4
consideration of uniformity of an antistatic layer, a size of the micro-particle is 5
preferably l µm or less.” Id., ¶ 17. In Figures 1–4 it is clear that the antistatic 6
optical film includes a pressure sensitive adhesive layer 3 on a side of the antistatic 7
layer 2. Ex. 1014, ¶ 37. Satake, therefore teaches microparticles in conjunction 8
with a protective optical film. Combined with the subject matter of the count, it 9
establishes a motivation to use microparticles in a protective shield in a hand held 10
device, to reduce electrostatic effects. Accordingly, the parties have the burden to 11
establish that one of ordinary skill in the art would not utilize the Satake particles 12
in a touch screen protector. 13
Murphy 14
Murphy, US 6,667,738 B2, describes a touch screen overlay for use in 15
association with a touch screen having a rigid contact surface. The touch screen 16
overlay has a flexible membrane that covers at least a portion of the rigid contact 17
surface of the touch screen. The membrane is said to be removably maintained in 18
a predetermined position over the rigid contact surface and to provide tactile 19
landmarks for a user. Ex. 1011, Abstract. We have not found a description of 20
microparticles in this reference. 21
Andersen 22
Andersen, U.S. Application Publication 2004/0109096 Al, describes an 23
optically transparent adhesive article for fastening the rear face of a display overlay 24
to the front face of a display. The article includes first and second adhesive layers 25
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and an optional intervening backing layer. The first adhesive layer has sufficiently 1
low tack so that the article is repositionable on the display of the display. The 2
second adhesive layer has sufficient lack and the article as sufficient cohesive 3
strength such that the article is stretch-releasable from the display overlay. 4
Ex. 1015, Abstract. We have not found a description of microparticles in this 5
reference. 6
Kitaguchi 7
Kitaguchi, JP 2002-328613, describes a cover sheet for a display screen of a 8
display device. It includes a transparent plastic film that serves to protect a display 9
screen, wherein the surface facing the display screen has a spacer comprised of a 10
plurality of dots. The spacer is described as preventing the occurrence of a Newton 11
ring between the cover sheet and the display screen. Under normal usage 12
conditions, it is stated that the pattern provided on the spacer does not affect the 13
visibility of the display screen, but that in the dark or under black light, it emits 14
fluorescent light or phosphorescent light that makes the pattern become visible. 15
Ex. 2012, 2. We have not found a description of microparticles in this reference. 16
Draheim 17
Draheim, U.S. Application Publication 2004/0109096 Al (Exhibit 1016) 18
describes an antireflection film that includes a substrate having a first surface and a 19
second surface, an inorganic layer deposited on the first surface of the substrate, 20
and an optically active polymer layer formed by curing a curable composition in 21
situ on the inorganic layer, the polymer layer having a specific refractive index and 22
thickness. The film also has an adhesive layer deposited on the second surface of 23
the substrate. Ex. 1016, Abstract. Draheim does describe the use of particles in 24
creating a hardcoat. Id., ¶ 34. More specifically, the hardcoat layer “preferably 25
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contains nanometer-sized inorganic oxide particles dispersed in a binder matrix, 1
also referred to as ‘ceramers.’” Id. The particles also “preferably are substantially 2
spherical in shape and relatively uniform in size. The particles can have a 3
substantially monodisperse size distribution or a polymodal distribution obtained 4
by blending two or more substantially monodisperse distributions. Id., ¶ 35. The 5
hardcoat, however, is found on the upper surface or between layers. Id., ¶ 27, Fig. 6
4; claim 19. We therefore agree that Draheim fails to describe microparticles on 7
the backside of a film. Ex. 1018, ¶ 163. 8
Of the known art, we therefore find only Satake to have relevance to the 9
separate patentability issues raised by this motion vis-à-vis claim 5 and the count. 10
F. The Parties’ Argument 11
The parties jointly assert that, even with the description of Satake, claim 5 is 12
not rendered obvious over the count or the ’156 application, because the Satake 13
film would create visible interference patterns, and eliminate the use of an air 14
space due to the use of an adhesive. Paper 58, 4–5. Moreover, it is asserted that 15
the amount of light transmitted would be reduced and tinted if the film of Satake 16
was used. Id., 6. 17
Dr. Cairns testifies that the films of Satake are passive films that are not 18
meant to be touched or actuated, and there is no teaching in Satake that is directed 19
to “without producing visible interference patterns during use.” Ex. 1021, ¶ 32. 20
Dr. Cairns prepared an anti-static layer according to Satake, and applied it to a 21
touch screen in a manner to create an air-gap, and testifies that visible interference 22
patterns are formed when the touch screen is actuated. Id., ¶¶ 33-35, and 37. 23
As part of the preparation of his Second Declaration, Dr. Cairns testified that 24
he prepared an anti-static layer according to Example 2 of Satake. Ex. 1021, ¶ 34. 25
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The layer included a sheet of polyethylene terephthalate (PET), which had been 1
coated with a continuous layer of PEDOT:PSS from a microparticle dispersion of 2
PEDOT:PSS, with adhesive around the periphery. Id. We are informed that 3
PEDOT:PSS corresponds to the polythiophene based conductive polymer 4
manufactured by Nagase Chemtech Co. under the tradename Denatron P502RG, as 5
used in Satake’s Example 2. Id.; see also Ex. 1014, ¶ 107. 6
The adhesive around the periphery was said to be consistent with the spacer 7
of claims 1 and 5 of the ’942 patent, and established an air space over the screen as 8
recited in claims 1 and 5 thereof. Ex. 1021, ¶ 34 and FIG. A. The layer was 9
positioned over an iPhone. Id. 10
Dr. Cairns testifies that FIG. A of his Second Declaration illustrates that 11
interference patterns are visible where the adhesive is positioned over the screen. 12
Id., ¶ 35 and FIG. A. To wit, Figure A is reproduced below: 13
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1
2
Figure A is a photographic image of an iPhone illustrating an interference pattern. 3
4
Dr. Cairns also testifies that in use the claimed particles on the film impart a 5
particular property – the refraction of light by the non-uniform particles impedes 6
interference patterns from being created. Ex. 1021, ¶ 36. In support of that 7
assertion, he directs us to Figs. B1 and B2. 8
9
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1
2
Figure B1 Figure B2 3
4
Figure B1 is said to be a reflection off the Satake film, and Figure B2 a 5
reflection off the microparticles of a film said to be according to claim 5. We are 6
persuaded that there is an optical difference between the claim 5 microparticles and 7
the particles in the layer created by the Satake dispersion. Dr. Cairns testifies that 8
Sataki’s particles are uniformly coated and therefore do not reduce interference 9
patterns. Id., ¶¶ 37– 38. 10
We are particularly persuaded by Figure C contained in Dr. Cairns’ 11
testimony, reproduced below: 12
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1
2
Figure C is a photographic image of interference patterns 3
Dr. Cairns testifies that he fabricated a screen protector according to Satake. 4
The screen protector produced visible interference fringes when mounted on a 5
tablet screen and backlit. Ex. 1021, ¶ 37. In Figure C, Dr. Cairns testifies that the 6
top dark portion of the image is the adhesive area. A blue background was used in 7
the photograph to help see the interference fringes (black lines) while the stylus 8
was being pressed over the air-gap at approximately the location identified in 9
Figure C. Id. 10
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Importantly, Dr. Cairns testifies that the interference fringes do not occur 1
with the example of the claimed invention. Id. 2
We find this evidence of interference patterns in the Satake film, and the 3
absence of such patterns in the claimed microparticle coated film, to be highly 4
persuasive. 5
The parties next assert that the Satake film would adversely affect the 6
quality of images viewed through the window, contrary also to claim 5. Paper 58, 7
9. The parties urge that a person of ordinary skill in the art would understand that 8
discoloration of an image viewed through the window due to coloration of the 9
window and the reduction in transmission would constitute “adversely affecting 10
quality of the image” which is an undesirable effect that is avoided according to 11
the invention recited in claim 5 of the ’942 patent. Id., citing Ex. 1021, ¶ 40. 12
Among those affects to be avoided are discoloration and light transmission 13
losses. Paper 58, 10. Dr. Cairns testifies that Satake’s coatings of either 14
polythiophene-based conductive polymer or polyaniline sulfonic acid coatings of 15
reduce transmission significantly when coated on a substrate, and affect the color 16
by providing either a blue (polythiophene based conductive polymer) or green 17
(polyaniline sulfonic acid) tint. Ex. 1021, ¶ 42. 18
We agree that a person of ordinary skill in the art would understand that this 19
discoloration would adversely affect the quality of images viewed through the 20
coated film. This argument is also persuasive. 21
Finally, the parties urge that Satake expressly teaches away from the screen 22
protectors as instantly claimed. Paper 58, 11. Dr. Cairns specifically testifies that 23
Satake is designed to eliminate air spaces through the use of an adhesive. 24
Ex. 1021, ¶ 52. Dr. Cairns observes that the antistatic layer designated (2) is 25
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covered by an adhesive, and accordingly there can be no air spaces and thus no air 1
bearing. Id. We agree that Satake describes an adhesive layer in its embodiments. 2
For example, Figure 1 of Satake is reproduced below: 3
4
Figure 1 is a cross sectional view of a Satake film including an antistatic 5
layer 2 on an optical film 1. There is a pressure sensitive adhesive layer 3 6
laminated on another surface side of the antistatic layer. A releasing sheet 4 may 7
be present. Ex. 1014, ¶ 37. 8
Given the use of an adhesive layer in Satake, we find the parties’ argument 9
that Satake teaches away from the claims requiring an air space or gap to also have 10
some persuasive merit. 11
On balance, we find that the evidence of record supports a conclusion that 12
claim 5, and the claims which depend therefrom (claims 6, 8, 9, and 12), are 13
patentably distinct from the count. 14
Accordingly, we grant the Joint Miscellaneous Motion. 15

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IV. Priority 1
Aevoe has contingently moved for the Board to accept concession of priority 2
of the count. Paper 58, 15. The contingency is the grant of the Joint 3
Miscellaneous Motion. As the Joint Miscellaneous Motion has been granted, we 4
accept the concession of priority as to Count 1. Judgment shall be entered in a 5
separate paper. 6

Interference 106,074 Second Decision on Motions

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cc (via electronic mail):

AEVOE Corp:

Thomas C. Wolski
Paul M. Reznick
The Webb Law Firm
twolski@webblaw.com
preznick@webblaw.com
litigation@webblaw.com

Racing Optics, Inc:

Leonard R. Svensson
Birch, Stewart, Kolasch & Birch, LLP
mailroom@bskb.com

Kit M. Stetina
Stetina Brunda Garred & Brucker
kstetina@stetinalaw.com