DCT

2:18-cv-01563

3M Co v. Tovis North America

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01563, D. Nev., 01/02/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Nevada based on Defendants Scientific Games Corporation and Tovis North America being incorporated in Nevada, and all Defendants having allegedly committed acts of infringement and conducted regular business within the district.
  • Core Dispute: Plaintiff alleges that touch screen displays manufactured by Tovis and incorporated into gaming cabinets sold by Scientific Games Corporation infringe eight patents related to metal mesh touch screen sensor technology.
  • Technical Context: The lawsuit concerns the design of transparent conductive micropatterns used in touch screens, a technology critical for balancing electrical performance with optical clarity in displays for consumer, commercial, and gaming applications.
  • Key Procedural History: The complaint alleges that Defendant Scientific Games Corporation (SGC) had knowledge of the asserted '381' Patent since at least the summer of 2015. It further alleges that in April 2018, Plaintiff 3M provided SGC with an overview of four of the patents-in-suit and test results demonstrating infringement by the accused products, which may support the allegations of willful infringement.

Case Timeline

Date Event
2008-02-28 Earliest Priority Date for all Patents-in-Suit
2012-05-15 U.S. Patent No. 8,179,381 Issues
2012-09-25 U.S. Patent No. 8,274,494 Issues
2014-04-22 U.S. Patent No. 8,704,799 Issues
2015-06-01 (approx.) SGC allegedly becomes aware of '381 Patent subject matter
2017-11-21 U.S. Patent No. 9,823,786 Issues
2018-04-01 (approx.) 3M allegedly provides SGC with overview of '381, '494', '799', '786' Patents and infringement analysis
2018-09-18 U.S. Patent No. 10,078,408 Issues
2018-10-16 U.S. Patent No. 10,101,868 Issues
2018-10-30 U.S. Patent No. 10,114,516 Issues
2018-11-13 U.S. Patent No. 10,126,901 Issues
2019-01-02 Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,179,381 - TOUCH SCREEN SENSOR

  • Patent Identification: 8,179,381, TOUCH SCREEN SENSOR, issued May 15, 2012.

The Invention Explained

  • Problem Addressed: The patent describes a need to improve control over the electrical properties of transparent touch screen sensors without compromising the optical quality of the display, a common challenge when using materials like indium tin oxide (ITO) (Compl. Ex. A, '381 Patent, col. 1:17-24).
  • The Patented Solution: The invention uses an electrically conductive "micropattern" on a transparent substrate. By carefully controlling the geometry of this micropattern—for example, by ensuring a "substantially uniform shadowed area fraction"—the sensor can achieve desired electrical performance while maintaining high optical uniformity and transparency, making the conductive pattern less visible to the user ('381 Patent, col. 12:2-12; Abstract).
  • Technical Importance: This approach allows for the use of opaque conductive materials like metal in a transparent sensor, potentially offering better conductivity and durability than traditional transparent conductive oxides (Compl. Ex. A, '381 Patent, col. 13:11-15).

Key Claims at a Glance

  • The complaint asserts independent claims 14 and 22 (Compl. ¶30).
  • Claim 14 (Independent): A touch screen sensor comprising:
    • a visible light transparent substrate; and
    • an electrically conductive micropattern on the substrate, comprising a first region micropattern within a touch sensing area;
    • wherein the first region micropattern includes conductive traces with a width between about 0.5 and 10 micrometers;
    • wherein the first region micropattern is visible light transparent and has between 90% and 99.9% open area; and
    • wherein for 5x5 millimeter square regions of the micropattern, none of the regions have a shadowed area fraction differing by more than about 75% from the average for all square regions.
  • Claim 22 (Independent): A touch screen sensor with similar elements to claim 14, but requiring "metallic linear electrically conductive features" and "selective breaks in conductive traces within an otherwise continuous and uniform mesh" (Compl. ¶33).

U.S. Patent No. 8,274,494 - TOUCH SCREEN SENSOR HAVING VARYING SHEET RESISTANCE

  • Patent Identification: 8,274,494, TOUCH SCREEN SENSOR HAVING VARYING SHEET RESISTANCE, issued September 25, 2012.

The Invention Explained

  • Problem Addressed: The patent addresses the need for greater flexibility in the design of electrically conductive elements in touch sensors. Traditional transparent conductors with a single, uniform sheet resistance value constrain sensor design and can necessitate complex electronics to modify electrical potential gradients (Compl. Ex. B, '494 Patent, col. 1:35-43).
  • The Patented Solution: The invention provides a touch screen sensor with an electrically conductive micropattern that comprises at least a first region and a second region, where the two regions are designed to have different sheet resistance values. This allows engineers to create non-uniform electrical properties across the sensor surface to control potential gradients and simplify sensor design ('494 Patent, Abstract; col. 3:51-54).
  • Technical Importance: By enabling different sheet resistances on a single substrate, the invention allows for more sophisticated and tailored electrical field control, which can improve sensor performance and reduce reliance on external electronics ('494 Patent, col. 4:32-40).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶36).
  • Claim 1 (Independent): A touch screen sensor comprising:
    • a visible light transparent substrate;
    • an electrically conductive micropattern on the substrate with a first and a second region micropattern, where each comprises metal traces of uniform thickness and composition;
    • the first region comprising a first mesh with a first sheet resistance value and at least 90% open area;
    • the second region comprising a second mesh, different from the first, with a second sheet resistance value;
    • wherein the first sheet resistance value is different from the second sheet resistance value.

Additional Patents-in-Suit

  • U.S. Patent No. 8,704,799: TOUCH SCREEN SENSOR HAVING VARYING SHEET RESISTANCE, issued April 22, 2014. This patent is a continuation of the '494 Patent and similarly discloses a touch screen sensor with a micropattern having at least two regions with different meshes, resulting in different sheet resistances (Compl. ¶18). Asserted claims include at least Claim 10 (Compl. ¶40). The accused functionality involves the different mesh properties in the Tovis displays creating different sheet resistances (Compl. ¶42).

  • U.S. Patent No. 9,823,786: TOUCH SCREEN SENSOR, issued November 21, 2017. This patent discloses a touch screen sensor comprising a transparent conductive mesh region and a larger, non-transparent feature, where both are made of the same metal at approximately the same thickness (Compl. ¶19). Asserted claims include at least Claim 1 (Compl. ¶44). The accused functionality is the presence of transparent mesh regions and non-transparent larger features (e.g., for connections) made of silver at the same thickness in the Tovis displays (Compl. ¶46).

  • U.S. Patent No. 10,078,408: TOUCH SCREEN SENSOR, issued September 18, 2018. This patent relates to a patterned substrate with a first metal mesh in a touch-sensing area and a second metal mesh in a separate area for connection to electronics, where both meshes comprise metal traces of approximately the same composition and thickness (Compl. ¶20; Compl. ¶49). Asserted claims include at least Claims 1 and 11 (Compl. ¶48). The accused Tovis displays allegedly have first and second metal meshes made of silver with a uniform composition and thickness (Compl. ¶50; Compl. ¶52).

  • U.S. Patent No. 10,101,868: TOUCH SCREEN SENSOR, issued October 16, 2018. This patent discloses a sensor with substantially parallel conductive mesh bars, where each bar connects to a wider second trace for making electronic contact (Compl. ¶21). Asserted claims include at least Claim 1 (Compl. ¶54). The accused displays allegedly have parallel conductive mesh bars made of fine traces that are electrically connected to a wider conductive trace (Compl. ¶56).

  • U.S. Patent No. 10,114,516: TOUCH SCREEN SENSOR, issued October 30, 2018. This patent discloses a substrate with alternating first and second regions. The first regions contain a mesh bar that is electrically connected to a pad, while the second regions contain a mesh bar with selective breaks that is not electrically connected (Compl. ¶22). Asserted claims include at least Claim 1 (Compl. ¶58). The accused displays allegedly have alternating regions with connected and non-connected mesh bars (Compl. ¶60).

  • U.S. Patent No. 10,126,901: TOUCH SCREEN SENSOR, issued November 13, 2018. This patent discloses a sensor with a conductive mesh, a wider second trace in contact with the mesh, and a conductive pad, where all three components are made of the same metal at approximately the same thickness (Compl. ¶23). Asserted claims include at least Claim 1 (Compl. ¶62). The accused functionality is that the mesh, traces, and pads in the Tovis displays are all made of a uniform composition of silver at approximately the same thickness (Compl. ¶64).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "metal mesh touch screen products" manufactured and sold by Tovis, specifically the Tovis L24 Display (Model No. L24C5LT1BY-BKL) and the Tovis L43 Display (Model No. L43E5LT1BYVJH) (Compl. ¶¶9, 26). These displays are allegedly incorporated into and sold within gaming cabinets by SGC, including the TwinStar Cabinet and the TwinStar J43 Cabinet (Compl. ¶28). The complaint provides an image of the Tovis labeling on the accused L24 Display to identify the product (Compl. p. 7, Ex. I).
  • Functionality and Market Context: The accused products are touch screen displays that use a micropattern of silver traces to form a conductive mesh for touch sensing (Compl. ¶¶32, 38). These displays are key components in SGC's gaming cabinets, providing the user interface for casino gaming machines (Compl. ¶¶28, 35). The complaint alleges that SGC markets, offers for sale, and sells these gaming cabinets to customers in the district (Compl. ¶28).

IV. Analysis of Infringement Allegations

'381 Patent Infringement Allegations

Claim Element (from Independent Claim 14) Alleged Infringing Functionality Complaint Citation Patent Citation
A touch screen sensor, comprising: a visible light transparent substrate; and 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 Tovis L24 Display is a touch screen sensor with a silver micropattern on a visible light transparent substrate. ¶32 col. 15:15-18
wherein the first region micropattern includes conductive traces with width between about 0.5 and 10 micrometers; The L24 Display's micropattern includes conductive traces with a mean trace width of about 6 micrometers. ¶32, p. 9 col. 15:18-20
wherein the first region micropattern is visible light transparent and having between 90% and 99.9% open area; The L24 Display's first region micropattern is visible light transparent and has a mean open area of about 97%. ¶32, p. 9 col. 15:21-23
and 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 L24 Display's micropattern has a maximum difference in shadowed area fraction of less than about 25% from the mean. ¶32, p. 9 col. 16:25-30
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint provides specific quantitative values for trace width, open area, and shadowed area fraction variation (e.g., "about 6 micrometers," "about 97%," "less than about 25%"). A central issue will be the evidentiary basis for these measurements and whether discovery confirms that the accused products meet these specific numerical limitations of the claims.
    • Scope Questions: The claims use the term "about" for several numerical limitations (e.g., "about 0.5 and 10 micrometers"). The construction of "about" could be a point of contention, determining whether the accused product's measured values fall within the scope of the claims.

'494 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A touch screen sensor, comprising: a visible light transparent substrate; an electrically conductive micropattern...comprising a first region micropattern...and a second region micropattern... The L24 and L43 Displays are touch screen sensors with a silver micropattern having first and second micropattern regions. ¶38 col. 15:15-18
wherein each of the first region micropattern and the second region micropattern comprise metal traces having a uniform thickness and composition; The displays' micropatterns include a uniform composition of silver traces with a uniform thickness. ¶38, p. 11 col. 10:14-17
the first region micropattern comprising a first mesh having a first sheet resistance value in a first direction, being visible light transparent, and having at least 90% open area; The first micropattern region of the L24 Display has a mean open area of about 97%; the L43 Display's is about 93%. ¶38, p. 11 col. 10:18-21
the second region micropattern comprising a second mesh different from the first mesh, and having a second sheet resistance value in the first direction, wherein, the first sheet resistance value is different from the second sheet resistance value. The second micropattern regions include second meshes with different trace widths and open area percentages, resulting in different sheet resistance values than the first meshes. ¶38, p. 11 col. 10:22-26
  • Identified Points of Contention:
    • Technical Questions: Claim 1 requires that the first and second sheet resistance values be "different." The complaint alleges this difference results from "different trace widths and open area percentages." A key technical question will be whether these alleged physical differences necessarily and demonstrably result in a legally significant difference in sheet resistance value.
    • Scope Questions: The claim requires a "second mesh different from the first mesh." The parties may dispute how much variation in properties like trace width or open area is required to satisfy this "different" limitation.

V. Key Claim Terms for Construction

  • The Term: "shadowed area fraction" (from '381 Patent)

  • Context and Importance: This term is central to the '381 Patent's claim of improved optical uniformity. Infringement hinges on measuring this value across the accused sensor and comparing its variation to the claimed threshold (differing by no "greater than about 75%"). Practitioners may focus on this term because the method of calculation and the meaning of "average for all of the square regions" will determine the outcome of the infringement analysis.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification does not limit the method of calculating the average, which could allow for various statistical methods that might favor a finding of uniformity.
    • Evidence for a Narrower Interpretation: The specification provides a detailed example of how isolated conductor deposits can be added to a pattern to make the average light transmission uniform, suggesting that "shadowed area fraction" is a direct measure tied to the physical conductor layout that must be precisely controlled ('381 Patent, col. 11:53-67).

  • The Term: "sheet resistance value" (from '494 Patent)

  • Context and Importance: The novelty of the '494 Patent's invention rests on creating two regions with different sheet resistance values. The entire infringement case for this patent turns on whether the accused products meet this limitation. The definition of "sheet resistance value" and the accepted methodology for its measurement will be dispositive.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent states that different sheet resistances can be achieved through various means, including different mesh geometries or selective breaks, suggesting the "value" is a functional property that can arise from any number of physical differences ('494 Patent, col. 14:38-51).
    • Evidence for a Narrower Interpretation: The specification details how sheet resistance can be calculated or modeled using methods like four-point probes and notes that the relevant scale for measurement must be larger than the individual cells of the mesh, implying a specific, rigorous standard for determining the value that must be met ('494 Patent, col. 7:36-67).

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain a formal count for indirect infringement. It makes a passing allegation that Tovis Company Limited induced infringement in Nevada (Compl. ¶11), but provides no specific facts regarding intent, such as knowledge of the patents combined with actions encouraging infringement by others.
  • Willful Infringement: The complaint alleges willful infringement against SGC (Compl. ¶¶69-71). The basis for this allegation is two-fold: (1) SGC's alleged general awareness of 3M's "pioneering" role and specific knowledge of the '381 Patent's subject matter since at least the summer of 2015; and (2) 3M's alleged act of providing SGC with specific notice of four asserted patents and test results demonstrating infringement in April 2018, more than eight months before the amended complaint was filed (Compl. ¶¶69-70).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of quantitative proof: The infringement allegations for multiple patents depend on the accused products meeting specific, numerical limitations (e.g., trace widths, open area percentages, shadowed area fraction uniformity, differences in sheet resistance). The case will likely turn on detailed expert analysis and measurement of the accused products to determine if these quantitative thresholds are actually met.
  • A second central question will be one of willfulness and damages: Given the specific allegations of pre-suit notice, including the provision of test results to SGC in April 2018, a key focus for the court will be whether SGC's continued sales of the accused products constituted objective recklessness, which could expose SGC to the risk of enhanced damages if found liable for infringement.
  • Finally, with eight patents from the same family asserted, many containing similar technological disclosures, a significant issue will be claim differentiation and redundancy: The defendants may argue that many of the asserted claims are duplicative or obvious in light of one another, which could become a central theme in claim construction, validity challenges, and the overall litigation strategy.