PTAB

IPR2016-01745

Aevoe Corp v. Racing Optics Inc

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1. Case Identification

2. Patent Overview

  • Title: Touch Screen Shield
  • Brief Description: The ’620 patent discloses a transparent protective film for touch screens designed to prevent optical artifacts like air bubbles. The invention achieves this by using a peripheral spacer, such as an adhesive, to create a continuous air gap between the central portion of the film and the touch screen surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kitaguchi and Murakami - Claims 1, 3, 7-10, 13, and 14 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: Petitioner argued that Kitaguchi taught the core concept of the ’620 patent. Kitaguchi described a protective cover sheet for display screens that addresses the known problem of air bubbles by using a weak adhesive layer formed only along the periphery of the film. This peripheral adhesive was explicitly taught to create a uniform, predetermined gap between the film and the display screen, thereby preventing optical distortions like Newton rings. Petitioner asserted this structure met the key limitations of independent claims 1, 10, 13, and 14, including a film with a peripheral spacer that traps air to form a space. To the extent Kitaguchi might be seen as not specifying a sufficient adhesive thickness, Murakami was introduced. Murakami taught a multi-layer adhesive element for display films, including an adhesive base layer with a specific thickness (16-25 µm) sufficient to create a space between the film and the display. Murakami also disclosed using differential adhesion, with a stronger adhesive to join the spacer to the film and a weaker, removable adhesive to attach to the display.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Kitaguchi and Murakami to solve the known problem of optical distortions from direct-adhesion screen protectors. A POSITA would have used Murakami’s teaching of a sufficiently thick adhesive layer to implement Kitaguchi’s peripheral spacer concept, thereby ensuring the creation of a predictable and effective air gap. The combination represented a simple application of known techniques to achieve a predictable result.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved using known adhesive spacer technology (Murakami) within a known protector configuration (Kitaguchi) to achieve the well-understood goal of preventing air bubbles and optical distortion.

Ground 2: Obviousness over Kitaguchi, Murakami, and Gustafson - Claim 2 is obvious over Kitaguchi in view of Murakami, and additionally in view of Gustafson.

  • Prior Art Relied Upon: Kitaguchi (Japanese Application No. JP 2002-328613), Murakami (Patent 6,250,765), and Gustafson (Patent 5,364,671).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Kitaguchi and Murakami to address the limitations of dependent claim 2, which added an "opaque band about its periphery that receives the spacer." While the base combination taught the gapped protector with a peripheral spacer, it did not explicitly teach an opaque band. Gustafson was cited for its disclosure of a transparent polymeric cover sheet for photographs that included an opaque frame portion, which could be created by printing ink on the sheet's surface. This opaque border in Gustafson was located in the same peripheral area where adhesive was applied.
    • Motivation to Combine: A POSITA would combine Gustafson's teaching with the Kitaguchi/Murakami protector for purely aesthetic reasons. Adding an opaque border would be an obvious design choice to obscure the underlying peripheral adhesive, hide any trapped dust, and provide a clean, framed appearance for the display. The motivation was to improve the product's cosmetic look, a common goal in consumer electronics.
    • Expectation of Success: The process of printing an opaque ink border onto a plastic film was a simple and well-known technique, ensuring a high expectation of success in applying this feature to the base screen protector design.

Ground 3: Obviousness over Kitaguchi, Murakami, and Chipping - Claim 5 is obvious over Kitaguchi in view of Murakami, and additionally in view of Chipping.

  • Prior Art Relied Upon: Kitaguchi (Japanese Application No. JP 2002-328613), Murakami (Patent 6,250,765), and Chipping (Patent 7,957,524).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claim 5, which required "providing one or more alignment holes that match one or more buttons on the electronic device." The base combination of Kitaguchi and Murakami did not teach such cutouts. Chipping was cited for teaching that protective body covers made of single films may have "cutout areas" to ensure the film does not impede device functionality, such as access to a user interface like a physical button.
    • Motivation to Combine: A POSITA would combine Chipping's teaching with the Kitaguchi/Murakami protector to solve a clear and common design need. When applying a protective film to a device with physical buttons (e.g., a "home" button), it would be an obvious and necessary modification to create a cutout to allow user access to those buttons. This represented a predictable solution to a known compatibility problem.
    • Expectation of Success: Creating cutouts in a plastic film was a routine manufacturing step. A POSITA would have had a high expectation of success in incorporating this feature without altering the fundamental function of the screen protector.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 4, 6, and 11 based on Kitaguchi and Murakami in further view of Draheim (Patent 7,351,470). Draheim was cited for teaching well-known features such as providing a protective backing liner for an adhesive film prior to use and making a screen protector substantially rectangular to match the shape of the device's display.

4. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11, 13, and 14 of the ’620 patent as unpatentable.