DCT
1:18-cv-00011
3M Co v. Elo Touch Solutions Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 3M Company and 3M Innovative Properties Company (Delaware/Minnesota)
- Defendant: Elo Touch Solutions, Inc. (Delaware/California)
- Plaintiff’s Counsel: RatnerPrestia; McDonnell Boehnen Hulbert & Berghoff LLP
- Case Identification: 1:18-cv-00011, D. Del., 03/19/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is a Delaware corporation and therefore "resides" in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s metal mesh touch screen products, including its Pro-M series, infringe four patents related to the design and construction of transparent touch screen sensors.
- Technical Context: The dispute centers on the technology of creating nearly invisible, electrically conductive micropatterns on transparent substrates, which are fundamental components of modern capacitive touch screens.
- Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or other significant procedural events involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-28 | Earliest Priority Date for ’381, ’494, ’799, and ’786 Patents |
| 2012-05-15 | U.S. Patent No. 8,179,381 Issued |
| 2012-09-25 | U.S. Patent No. 8,274,494 Issued |
| 2014-04-22 | U.S. Patent No. 8,704,799 Issued |
| 2017-08-01 | Alleged date by which Defendant knew of ’381, ’494, and ’799 Patents |
| 2017-11-21 | U.S. Patent No. 9,823,786 Issued |
| 2017-11-21 | Alleged date by which Defendant knew of ’786 Patent |
| 2018-03-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,179,381 - TOUCH SCREEN SENSOR
The Invention Explained
- Problem Addressed: The patent’s background section describes a need for improved control over the electrical properties of transparent touch screen sensors without compromising their optical quality (e.g., transparency and low haze), noting that traditional materials like indium tin oxide (ITO) impose design constraints (’381 Patent, col. 1:31-48).
- The Patented Solution: The invention uses an electrically conductive micropattern, typically made of metal, deposited on a transparent substrate. By carefully defining the geometry of this micropattern—such as the width of its conductive traces and the density of its lines—it is possible to achieve desired electrical performance while making the pattern nearly invisible to the human eye, thus maintaining high optical quality (’381 Patent, col. 1:57-col. 2:4). Figure 2 of the patent illustrates an exemplary micropattern (140) of conductive traces on a transparent substrate (130) (’381 Patent, Fig. 2).
- Technical Importance: This approach allows for the creation of high-performance touch sensors using materials other than ITO, potentially improving resource efficiency and enabling more flexible sensor designs (’381 Patent, col. 6:18-21).
Key Claims at a Glance
- The complaint asserts independent Claim 14 (Compl. ¶22).
- The essential elements of Claim 14 are:
- A touch screen sensor comprising a visible light transparent substrate and an electrically conductive micropattern disposed on the substrate.
- The micropattern comprises a first region micropattern within a touch sensing area.
- The first region micropattern includes conductive traces with a width between about 0.5 and 10 micrometers.
- The first region micropattern is visible light transparent and has between 90% and 99.9% open area.
- Within 5 millimeter by 5 millimeter square regions of the micropattern, the shadowed area fraction of any single region does not differ by more than about 75% from the average for all regions, a limitation related to optical uniformity.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,274,494 - TOUCH SCREEN SENSOR HAVING VARYING SHEET RESISTANCE
The Invention Explained
- Problem Addressed: The patent identifies a constraint in touch sensor design caused by the use of transparent conductors like ITO, which have a single, isotropic value of sheet resistance. This makes it difficult to control electrical potential gradients across a sensor, which is critical for accuracy (’494 Patent, col. 1:45-54).
- The Patented Solution: The invention discloses a touch sensor with a micropattern comprising at least two distinct regions, each engineered to have a different sheet resistance value. This is achieved by creating different micropattern geometries (e.g., different trace widths or mesh patterns) in the different regions, allowing a designer to precisely control the flow of electricity and shape the electrical field across the sensor surface (’494 Patent, col. 2:10-22; Abstract).
- Technical Importance: This technology provides a method to create customized, non-uniform electrical properties on a single conductive layer, enabling more sophisticated and accurate sensor designs without requiring additional electrodes or more complex signal processing electronics (’494 Patent, col. 5:41-50).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶26).
- The essential elements of Claim 1 are:
- A touch screen sensor comprising a visible light transparent substrate and an electrically conductive micropattern with a first and a second region.
- The first and second regions comprise metal traces of uniform thickness and composition.
- The first region comprises a first mesh with a first sheet resistance value, is visible light transparent, and has at least 90% open area.
- The second region comprises a second mesh, different from the first, with a second sheet resistance value.
- The first sheet resistance value is different from the second sheet resistance value.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,704,799 - TOUCH SCREEN SENSOR HAVING VARYING SHEET RESISTANCE
- Technology Synopsis: Continuing the technology of the ’494 Patent, this patent describes a touch screen sensor with an electrically conductive micropattern having at least two regions with different mesh structures. These different structures result in different sheet resistance values in the two regions, allowing for engineered control over electrical potential gradients to enhance sensor performance (Compl. ¶13).
- Asserted Claims: Independent Claim 10 (Compl. ¶30).
- Accused Features: The complaint alleges that the "inner mesh" of the accused Elo Display has a first region and a second region with different mesh properties (e.g., trace widths and shadowed area percentages), which allegedly results in different sheet resistance values between the regions (Compl. ¶32).
U.S. Patent No. 9,823,786 - TOUCH SCREEN SENSOR
- Technology Synopsis: This patent describes a touch screen sensor having a micropattern that includes two distinct types of features made of the same metal at approximately the same thickness. The first feature is a transparent conductive mesh region with traces defining open areas, while the second is a non-transparent region with a larger feature (Compl. ¶14).
- Asserted Claims: Independent Claim 1 (Compl. ¶34).
- Accused Features: The complaint alleges the accused Elo Display's inner mesh includes a region with silver traces defining enclosed open areas (the mesh region) as well as a region with a larger, non-transparent feature composed of vertical traces (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The complaint accuses Elo's "Pro-M series metal mesh products" and other related sensors and displays. The specifically identified exemplary product is the "Elo Interactive 46" Digital Signage Display 4602L" (referred to as the "Elo Display") (Compl. ¶17).
Functionality and Market Context
- The Elo Display is described as a "professional-grade large format touchscreen" (Compl. ¶24). Its sensor technology is alleged to utilize an "electrically conductive metal mesh micropattern" on a transparent substrate. This micropattern is alleged to include a first, transparent region composed of very fine conductive traces (0.5 to 10 micrometers wide) with a high open area (90-99%), and a second region with a larger, non-transparent feature. The complaint alleges that Plaintiff and Defendant are direct competitors in the touch screen product market (Compl. ¶5, ¶18).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,179,381 Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a visible light transparent substrate | The Elo Display includes a "visible light transparent polymer film substrate." | ¶24 | col. 7:19-24 |
| an electrically conductive micropattern disposed on or in the visible light transparent substrate, the micropattern comprising a first region micropattern within a touch sensing area | The Elo Display's sensor has a "silver inner mesh and outer mesh disposed on or in the visible light transparent substrate," and the "inner mesh includes a first region micropattern within a touch sensing area." | ¶24 | col. 7:11-14 |
| wherein the first region micropattern includes conductive traces with width between about 0.5 and 10 micrometers | The inner mesh includes "conductive traces with a mean trace width of about 8 micrometers." | ¶24 | col. 12:5-14 |
| wherein the first region micropattern is visible light transparent and having between 90% and 99.9% open area | The inner mesh is "visible light transparent and has a mean open area percentage of about 96%." | ¶24 | col. 11:51-54 |
| wherein for the first region micropattern having 5 millimeter by 5 millimeter square regions, none of the square regions have a shadowed area fraction that differs by greater than about 75% from the average for all of the square regions. | The inner mesh has a "maximum difference in shadowed area fraction of less than 25%." | ¶24 | col. 14:13-22 |
U.S. Patent No. 8,274,494 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a visible light transparent substrate | The Elo Display's sensor includes a "visible light transparent polymer film substrate." | ¶28 | col. 6:13-19 |
| an electrically conductive micropattern ... comprising a first region micropattern ... and a second region micropattern | The Elo Display's "inner mesh has a first region in the touch sensing area as well as a second region." | ¶28 | col. 2:10-12 |
| wherein each of the first region micropattern and the second region micropattern comprise metal traces having a uniform thickness and composition | The first and second regions include "silver traces that have a uniform thickness of about 5 micrometers." | ¶28 | col. 2:12-14 |
| the first region micropattern comprising a first mesh ... being visible light transparent, and having at least 90% open area | The "first region of the Elo Display's inner mesh is visible light transparent and has a mean open area percentage of about 96%." | ¶28 | col. 2:15-17 |
| the second region micropattern comprising a second mesh different from the first mesh, and having a second sheet resistance value in the first direction | The "second region of the Elo Display's inner mesh has different trace widths, different shadowed area percentages." | ¶28 | col. 2:18-19 |
| wherein, the first sheet resistance value is different from the second sheet resistance value | The second region has "a different sheet resistance value from the first region." | ¶28 | col. 2:20-22 |
Identified Points of Contention
- Scope Questions: A potential point of dispute may arise from the construction of the term "about" in the claims' dimensional limitations (e.g., ’381 Claim 14, "about 0.5 and 10 micrometers"). The infringement analysis may depend on whether the measured "mean trace width of about 8 micrometers" of the accused product falls within the scope afforded to this term.
- Technical Questions: The infringement theories for all asserted patents rely on specific, microscopic physical and electrical characterizations of the accused product. A central technical question will be what evidence supports the complaint's factual allegations regarding trace width, open area percentage, uniformity of shadowed area (’381 Patent), and differing sheet resistances (’494 Patent). These allegations, while pleaded, may require substantiation through expert testing and analysis.
V. Key Claim Terms for Construction
Term: "conductive traces" (’381 Patent, Claim 14)
- Context and Importance: This term defines the fundamental building block of the claimed micropattern. The infringement allegation relies on characterizing parts of the accused product's "silver inner mesh" as "conductive traces." The construction of this term will be critical to determining whether the accused mesh structure meets this claim limitation.
- Evidence for a Broader Interpretation: The specification describes "conductor traces" as "lines" and "linear metallic features," which may support an interpretation that includes any elongated conductive element within a micropattern (’381 Patent, col. 2:1, col. 7:27-28).
- Evidence for a Narrower Interpretation: The patent’s figures predominantly depict traces as components of highly regular grids (e.g., square or rectangular) (’381 Patent, Fig. 2; Fig. 26). This could support an argument that the term is limited to elements forming such regular, grid-like geometries, potentially excluding less regular mesh structures.
Term: "sheet resistance value is different" (’494 Patent, Claim 1)
- Context and Importance: The novelty of Claim 1 of the ’494 Patent rests on the creation of two regions with different sheet resistance values. The interpretation of "different" and the methodology for measuring "sheet resistance value" for a micropattern are central to the infringement analysis, which alleges the accused product has regions with different trace widths and thus different resistance.
- Evidence for a Broader Interpretation: The claim language only requires that the values be "different," without specifying a magnitude or threshold. The specification suggests that this difference can be achieved through various geometric changes in the micropattern, supporting a broad reading of how the difference can be created (’494 Patent, col. 9:15-26).
- Evidence for a Narrower Interpretation: The patent explains that the scale of measurement is important and should be larger than the individual cells of the mesh (’494 Patent, col. 9:59-col. 10:3). A dispute could arise over the proper methodology for measuring this effective property on an accused product, and whether any measured variation is significant enough to legally constitute a "different" value.
VI. Other Allegations
Willful Infringement
- The complaint alleges willful infringement based on pre-suit knowledge (Compl. ¶41-42). It asserts that Defendant "knew or should have known" of the ’381, ’494, and ’799 patents no later than August 1, 2017, and of the ’786 patent no later than its issue date of November 21, 2017. The complaint alleges that by continuing to sell the accused products despite this knowledge, Defendant "recklessly disregarded" Plaintiff's patent rights (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: what empirical evidence will be presented to substantiate the complaint’s detailed allegations regarding the microscopic physical dimensions (e.g., trace width, shadowed area uniformity) and electrical properties (e.g., differing sheet resistance) of the accused metal mesh sensors? The outcome will likely depend heavily on expert testimony and technical testing.
- A key legal question will be one of claim construction: how broadly will the court interpret claim terms such as "about" preceding a numerical range and "different" in the context of an electrical property? The construction of these terms will define the boundaries of the patent claims and will be critical in determining whether the accused products infringe.
- A central question for damages will turn on scienter: what specific facts support the allegation that the defendant had pre-suit knowledge of the asserted patents, and whether its subsequent actions rose to the level of "reckless disregard" required to sustain a finding of willful infringement.