PTAB

IPR2016-01164

Aevoe Corp v. Racing Optics Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Touch Screen Shield
  • Brief Description: The ’256 patent discloses transparent protective films for touch-sensitive screens designed to prevent "unsightly air bubbles" that occur with conventional protectors. The invention creates an air gap between the film and the screen, achieved either by using a multi-layer shield with peripheral adhesive that creates a step to tension the film away from the screen, or by using a thick peripheral adhesive layer that acts as a spacer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wilson '045 and Draheim - Claims 2, 12-15, and 17 are obvious over Wilson '045 in view of Draheim.

  • Prior Art Relied Upon: Wilson '045 (Patent 6,536,045) and Draheim (Patent 7,351,470).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wilson '045, which shares inventors with the ’256 patent, discloses the multi-layer shield structure with peripheral-only adhesive (corresponding to "Configuration No. 1" of the ’256 patent). Wilson '045 was created to solve the exact same air bubble problem by creating an air-tight seal at the periphery, leaving the central viewing area free of adhesive. Draheim teaches the conventional application of protective films to various electronic devices, including touch screens on personal digital assistants (PDAs) and cell phones.
    • Motivation to Combine: A POSITA would combine the protective shield of Wilson '045 with the touch screen application of Draheim because Wilson '045 itself suggests its utility for "video displays." Petitioner contended that market pressure to protect commercially available touch screen devices provided a strong reason to apply Wilson '045's known solution to the well-known devices described in Draheim.
    • Expectation of Success: The combination was presented as a simple application of a known protective film (Wilson '045) to a known device (Draheim) for its intended purpose, which would have yielded predictable results without requiring any innovation.

Ground 2: Obviousness over Wilson '045, Draheim, and Murakami - Claims 3, 4, 16, 19, and 20 are obvious over Wilson '045 in view of Draheim and Murakami.

  • Prior Art Relied Upon: Wilson '045 (Patent 6,536,045), Draheim (Patent 7,351,470), and Murakami (Patent 6,250,765).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination of Wilson '045 and Draheim to address claims requiring an adhesive layer with sufficient thickness to lift the shield off the screen (corresponding to "Configuration No. 2" of the ’256 patent). Petitioner asserted that Murakami explicitly teaches using a thick adhesive element applied to the periphery of a film to create a defined air gap between the film and a display. Murakami employed this structure to solve the same problems of bubble entry and optical distortion that the ’256 patent purports to solve.
    • Motivation to Combine: A POSITA seeking to create the air gap described in Wilson '045 would have been motivated to use the thick adhesive taught by Murakami as a known, simple, and predictable method for achieving the required spacing. This was a common design choice for solving a known problem in the art.
    • Expectation of Success: Petitioner argued that using a thick adhesive spacer was a well-understood technique. A POSITA would have reasonably expected that incorporating Murakami's thick adhesive into the Wilson '045/Draheim combination would successfully create the desired air gap and prevent bubbles.

Ground 3: Obviousness over Kitaguchi and Murakami - Claim 1 is obvious over Kitaguchi in view of Murakami.

  • Prior Art Relied Upon: Kitaguchi (Japanese Application No. JP 2002-328613) and Murakami (Patent 6,250,765).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presents an alternative combination for the thick-adhesive embodiment. Petitioner argued that Kitaguchi teaches a protective cover sheet for LCDs that solves the air bubble problem by placing adhesive only on the periphery of the shield. Kitaguchi discloses a double-sided tape that acts as a spacer to generate an even gap, preventing Newton's rings. The combination with Murakami was introduced to explicitly teach an adhesive of sufficient thickness to create the claimed air gap, thereby preempting any argument that Kitaguchi's disclosure of thickness was insufficient.
    • Motivation to Combine: A POSITA would have been motivated to configure the peripheral spacer of Kitaguchi with the specific thick adhesive taught by Murakami to ensure the air gap was sufficient to avoid known optical distortions. This combination merely applies a known technique (Murakami) to improve a known system (Kitaguchi).
    • Expectation of Success: The combination of known elements from Kitaguchi and Murakami, each performing its known function, would predictably result in a screen protector with a peripheral adhesive that creates an air gap over the display.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Wilson '045/Draheim with Gustafson (for an opaque border), Chipping (for a physical button cutout), and Kusuda (for defining active/inactive areas), but relied on similar design modification theories.

4. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-4, 6-7, 9-17, and 19-23 as unpatentable.