I BlaSon LLC v. Aevoe Corp

1. Case Identification

• Case #: IPR2016-00231
• Patent #: 8,044,942
• Filed: November 23, 2015
• Petitioner(s): I-Blason LLC
• Patent Owner(s): Aevoe Inc., and Aevoe Corp.
• Challenged Claims: 1, 2, 5, 7, 11-14

2. Patent Overview

• Title: Bubble-Free Touch Screen Protector
• Brief Description: The ’942 patent discloses a touch screen protector designed to prevent air bubbles upon application. The invention uses a "spacer" along the perimeter of a plastic film to create an enclosed air gap, suspending the film near, but not in contact with, the device's touch screen.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 7, and 14 under 35 U.S.C. §102

• Prior Art Relied Upon: Murphy (Patent 6,667,738).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Murphy, which was not cited during the original prosecution of the ’942 patent, discloses every element of the challenged claims. Murphy teaches a touch screen overlay using a "flexible membrane" (the claimed plastic film) that is suspended "above the touch screen." This suspension is achieved by either a peripheral "band of adhesive" or a "frame," both of which Petitioner contended meet the "spacer" limitation and inherently create the claimed "enclosed air space." Murphy also explicitly teaches that its membrane can be pressed against the touch screen for device operation, meeting the final limitation of independent claim 1.
  • Key Aspects: Petitioner highlighted that an examiner in a related patent application found a claim identical to claim 1 of the ’942 patent to be anticipated by Murphy.

Ground 2: Obviousness of Claims 1, 2, 7, 13, and 14 under §103

• Prior Art Relied Upon: iVisor (a 2009 Amazon.com product review webpage) in view of Murphy (Patent 6,667,738).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that iVisor discloses a screen protector for a non-touch screen (a MacBook) that is structurally identical to the claimed invention, featuring a perimeter adhesive that prevents air bubbles. While iVisor does not explicitly teach application to a touch screen or an enclosed air gap, Petitioner argued Murphy supplies these missing elements. Murphy teaches the fundamental principles of a suspended screen protector for touch-enabled devices, including the use of a spacer (frame or adhesive) to create a necessary air gap for actuation.
  • Motivation to Combine: A POSITA, seeking to develop a bubble-free protector for the then-newly-released iPad, would look to successful existing products for non-touch screens, like the iVisor. To adapt the iVisor design for a touch screen, a POSITA would naturally consult prior art for touch screen protectors, like Murphy, to understand the requirements for actuation, such as incorporating a spacer to create an air gap. The combination was presented as a predictable adaptation driven by market demand.
  • Expectation of Success: Petitioner contended success would be expected, as the combination merely involved applying a known protector design (iVisor) to a different, but well-understood, application (a touch screen) using conventional principles (Murphy).

Ground 3: Obviousness of Claim 5 under §103

• Prior Art Relied Upon: Murphy (Patent 6,667,738) in view of Satake (Application # 2004/0209007).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claim 5, which adds "micro-particles" on the back side of the film to provide an anti-static effect. Petitioner argued that while Murphy teaches the base screen protector of claim 1, it is silent on anti-static properties. Satake explicitly discloses an "antistatic optical film" that uses "micro-particles" of a conductive polymer dispersed on the film to achieve an anti-static effect without adversely affecting image quality.
  • Motivation to Combine: A POSITA would combine these references to improve the base Murphy protector with a desirable, known feature. Static attraction of dust is a known problem for screen protectors. Faced with this problem, a POSITA would look to known solutions in the field of optical films and find Satake's teaching of using micro-particles for an anti-static effect. Applying this known anti-static technology to Murphy's screen protector was argued to be an obvious design choice.
  • Expectation of Success: The integration was asserted to be predictable, as Satake demonstrates that anti-static micro-particle coatings can be applied to optical films without degrading visual quality.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 11 and 12 based on the combination of iVisor, Murphy, and Heinecke (Patent 5,160,315). Heinecke was cited for its teaching of using a removable backing member with a tab to protect an adhesive prior to application, a concept Petitioner argued was common knowledge and obvious to add to the base invention.

4. Key Claim Construction Positions

• "spacer": Petitioner proposed this term be construed as "a structure that creates a space or gap." This construction was central to its argument that the adhesive band or frame taught in the Murphy reference met the claim limitation, as both structures would necessarily have a thickness that creates a gap between the protector film and the screen.
• "micro-particles": Petitioner proposed this term be construed as "particles that are part of the plastic film and are small enough to not contact the touch screen unless the screen protector is pressed." This construction was important for mapping the teachings of the Satake reference, which describes a conductive polymer "dispersed in a shape of micro-particles" for an anti-static effect, to the language of claim 5.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 5, 7, and 11-14 of the ’942 patent as unpatentable.