PTAB

IPR2016-01165

Aevoe Corp v. Racing Optics Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Touch Screen Shield
  • Brief Description: The ’545 patent relates to transparent protective shields for touch-sensitive screens. The invention purports to solve the problem of entrapped air bubbles by using an adhesive layer applied only to the periphery of the shield, which creates a continuous air gap between the central portion of the shield and the display surface while maintaining touch sensitivity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wilson/Draheim - Claims 1 and 5 are obvious over Wilson in view of Draheim.

  • Prior Art Relied Upon: Wilson (Patent 6,536,045) and Draheim (Patent 7,351,470).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wilson, which shares the same inventors and assignee as the ’545 patent, discloses the identical multi-layer "sandwich" structure for a protective film. This structure includes a base layer, a second layer attached centrally, and a peripheral adhesive that, when applied, creates tension to lift the film and form an air gap. Wilson taught this structure for solving the same air bubble problem on face shields and explicitly mentioned its applicability to "video displays." Draheim was cited to establish that applying protective films to touch-sensitive screens to prevent scratches and smudges was well-known and desirable in the art.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would be motivated to apply the protective film structure from Wilson to a touch-sensitive screen as taught by Draheim. This combination was presented as a simple substitution of one known element (a generic video display) with another (a touch-sensitive display) to obtain predictable results. The explicit mention of "video displays" in Wilson provided a direct reason to consider its application to the touch screens discussed in Draheim.
    • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success in combining these known elements, as it involved applying a known solution (Wilson's shield) to a known problem (protecting touch screens) using conventional methods.

Ground 2: Anticipation by Kitaguchi - Claims 1 and 5 are anticipated by Kitaguchi.

  • Prior Art Relied Upon: Kitaguchi (Japanese Application No. JP 2002-328613).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kitaguchi discloses every limitation of independent claims 1 and 5. Kitaguchi teaches a cover sheet for liquid crystal displays with pen-input capability, which directly addresses the same air bubble problem as the ’545 patent. It describes a transparent plastic film with a weak adhesive layer formed only on the periphery of the surface facing the display. This peripheral adhesive, along with disclosed spacers, is used to create a uniform, predetermined gap between the shield and the screen. This structure directly corresponds to the second embodiment described in the ’545 patent, which uses a thick peripheral adhesive to form the air gap.
    • Key Aspects: The argument focused on the direct structural and functional overlap, asserting that Kitaguchi's disclosure of a peripherally-adhered protective sheet creating an air gap on a touch-enabled display was sufficient to render the independent claims anticipated under 35 U.S.C. §102.

Ground 3: Obviousness over Kitaguchi/Murakami - Claims 3, 4, and 7-9 are 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 addressed dependent claims requiring the adhesive layer to be "sufficiently thick" to lift the shield off the display and, in one claim, for the trapped air to form a "planar air bearing." Petitioner argued that Kitaguchi provides the foundational device—a protective shield with a peripheral adhesive creating an air gap. To the extent Kitaguchi does not explicitly quantify the adhesive thickness, Murakami was introduced. Murakami teaches that known optical distortions, such as Newton rings, can be avoided by ensuring the air layer thickness is sufficiently large, and it explicitly discloses using a thick adhesive element (e.g., 16-25 µm) to create such a space between a film and a display.
    • Motivation to Combine: A POSITA, starting with the shield design in Kitaguchi, would be motivated to consult a reference like Murakami to optimize the air gap. To solve the known problem of optical distortion, a POSITA would combine Kitaguchi's peripheral adhesive design with Murakami's teaching of using a specific adhesive thickness to ensure a sufficient gap. This combination was argued to be an obvious design choice to improve a known device.
    • Expectation of Success: Applying Murakami's known technique of using a thick adhesive to achieve a desired air gap in Kitaguchi's system would have been a straightforward implementation with a high expectation of success.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-5, and 7-9 of Patent 9,128,545 as unpatentable.