PTAB

IPR2016-01166

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 ’625 patent discloses a transparent protective shield for touch-sensitive screens designed to prevent unsightly air bubbles. The invention creates a continuous air gap between the shield and the screen by either using a multi-layer structure with peripheral-only adhesive to create a tensioning "step" or by using a sufficiently thick adhesive layer applied only to the shield's periphery.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wilson ’045, Draheim, and Gustafson - Claims 1, 2, 4, 5, 18, 22, and 25 are obvious over Wilson ’045 in view of Draheim and Gustafson.

  • Prior Art Relied Upon: Wilson ’045 (Patent 6,536,045), Draheim (Patent 7,351,470), and Gustafson (Patent 5,364,671).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Wilson ’045, which shares inventors and an assignee with the ’625 patent, discloses the core structure of the challenged claims. Specifically, Wilson ’045 teaches a multi-layer protective film for face shields and video displays that solves the same air bubble problem by applying adhesive only on the periphery, creating an air gap identical to the ’625 patent’s first configuration. Draheim was cited for its explicit teaching of applying such protective films to touch screens and shaping them to correspond to the device’s display and inactive areas. Gustafson was introduced for its disclosure of adding an opaque border (e.g., ink) to a transparent cover sheet to hide the peripheral adhesive and any trapped bubbles, improving aesthetics.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Wilson ’045 with Draheim to apply a known, effective solution for preventing air bubbles (from Wilson ’045) to the specific, known application of touch screens (from Draheim). Market pressure for better screen protectors provided this motivation. Further, a POSITA would incorporate Gustafson’s opaque border to achieve the predictable benefit of obscuring the peripheral adhesive for a more commercially appealing product.
    • Expectation of Success: The combination involved applying known elements for their established purposes—a bubble-free shield structure, application to touch screens, and an aesthetic opaque border—which would have yielded predictable results with a high expectation of success.

Ground 2: Obviousness over Kitaguchi and Murakami - Claims 9, 16, and 26-28 are obvious over Kitaguchi in view of Murakami.

  • Prior Art Relied Upon: Kitaguchi (Japanese Application JP 2002-328613) and Murakami (Patent 6,250,765).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted claims related to the ’625 patent’s second configuration, which uses a thick adhesive to create an air gap. Petitioner asserted that Kitaguchi teaches the essential elements: a transparent cover sheet for displays with an adhesive layer applied only along the periphery to create a gap between the film and the screen. Kitaguchi explicitly states this gap is for suppressing optical distortions like Newton's rings. Petitioner introduced Murakami to address any potential argument that Kitaguchi’s adhesive layer was not explicitly disclosed as being sufficiently thick. Murakami teaches a multi-layer adhesive element with a specified thickness (e.g., 16-25 µm) for the express purpose of creating a space to lift a protective film off a display.
    • Motivation to Combine: Petitioner argued that Kitaguchi alone renders the claims obvious. However, if a POSITA considered Kitaguchi’s adhesive layer potentially too thin, they would be motivated to look for known methods to ensure a sufficient gap. Murakami provides this solution, teaching a thick adhesive base layer to create a reliable space. A POSITA would combine Murakami’s teaching with Kitaguchi’s peripheral adhesive design to predictably achieve the desired air gap and prevent optical distortions.
    • Expectation of Success: A POSITA would have expected success in combining these references, as it involved using a known method for creating a sufficiently thick spacer (Murakami) to implement a known design for a gapped screen protector (Kitaguchi), achieving the predictable goal of preventing optical issues.

  • Additional Grounds: Petitioner asserted numerous other obviousness grounds. These included combining the Wilson ’045 combination with Murakami to add a thick annular film layer (for claims 6-7, 19-21) or with Chipping (Patent 7,957,524) to add cutouts for physical buttons (for claims 8 and 24). Similarly, the Kitaguchi combination was further combined with Gustafson to add an opaque layer (for claims 10, 11, and 29) and with Chipping to add cutouts (for claims 17 and 30).

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4-11, 16-22, and 24-30 of the ’625 patent as unpatentable.