Microsoft v. Neodron Ltd

1. Case Identification

• Case #: IPR2020-00469
• Patent #: 10,088,960
• Filed: February 25, 2020
• Petitioner(s): Microsoft Corporation, HP Inc., Dell Inc., Dell Products L.P., and Lenovo (United States) Inc.
• Patent Owner(s): Neodron Ltd.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Capacitive Position Sensor with Mesh Electrodes
• Brief Description: The ’960 patent relates to capacitive position sensors for touch panels. The technology focuses on constructing sense and drive electrodes from a conductive mesh of fine wires, rather than from a continuous layer of conductive material like indium tin oxide (ITO).

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang and Hotelling167 - Claims 1-2, 5, 7, 9-10, 13, 15, and 17 are obvious over Chang in view of Hotelling167.

• Prior Art Relied Upon: Chang (Application # 2009/0002337) and Hotelling167 (Application # 2008/0158167).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chang disclosed all key structural elements of the independent claims, including an apparatus with first and second substrates having electrodes made of a fine-line conductive mesh. However, Chang did not explicitly designate its electrodes as "sense" and "drive" electrodes. Hotelling167 remedied this by teaching the well-known mutual capacitance configuration where electrodes on one substrate act as drive lines and electrodes on a second substrate act as sense lines. The "one or more of the following being true" limitation of the independent claims was met because Chang's disclosure of mesh-based electrodes satisfied the first indented clause related to sense electrodes.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hotelling167's mutual capacitance scheme with Chang's mesh-electrode structure to gain the known benefits of mutual capacitance, such as the ability to detect multiple simultaneous touches without the "ghosting" artifacts common in self-capacitance systems.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success as implementing mutual capacitance configurations in touch screens with transparent electrodes on separate substrates was a well-established and effective practice.

Ground 2: Obviousness over Frey, Lyon, and Greanias - Claims 1-17 are obvious over Frey in view of Lyon and Greanias.

• Prior Art Relied Upon: Frey (Patent 8,179,381), Lyon (Patent 8,816,967), and Greanias (Patent 5,386,219).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Frey taught a multi-layer touch sensor with sense and drive electrodes made from a conductive hexagonal mesh on separate substrates. Lyon taught that in a mutual capacitance system, the electrodes closest to the touch surface should be designated as the sense electrodes for optimal performance. Greanias taught alternative sensor arrangements, including a "face-in" configuration where two substrates are positioned with their electrode-bearing surfaces facing each other, separated by an insulating layer.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to apply Lyon's teachings to Frey's sensor to optimize its electrode configuration. Further, a POSITA would modify Frey's default "face-up" sensor to the "face-in" arrangement taught by Greanias, as Greanias identified this configuration as suitable for the finger-touch operations for which Frey's sensor was designed.
  • Expectation of Success (for §103 grounds): Success was predictable because the combination involved applying a known electrode assignment principle (Lyon) and selecting between well-known, alternative physical arrangements (Greanias) for a sensor system (Frey).

• Additional Grounds: Petitioner asserted additional obviousness challenges. Ground 2 (claims 3-4, 8, 11-12, 16) added Hotelling623 (Application # 2008/0309623) and Hsu (Patent 7,030,860) to the Ground 1 combination to teach adding a cover panel, adhesive layer, and display. Ground 3 (claims 1-2, 5-7, 9-10, 13-15, 17) asserted obviousness over Hotelling183 (Application # 2008/0158183), Chang, and Snyder (Application # 2007/0229470) to show an alternative electrode pattern and control logic.

4. Key Claim Construction Positions

• "one or more of the following being true" (claims 1, 9, 17): Petitioner argued this phrase created a disjunctive "OR" condition between two subsequent indented clauses: one describing the sense electrodes and one describing the drive electrodes. Therefore, to prove invalidity, the prior art only needed to satisfy the limitations of one of these two clauses, not both. Petitioner contended the Examiner erred during prosecution by requiring limitations specific to the second (drive electrode) clause to be overcome, even when the prior art met the first (sense electrode) clause.
• "a first mesh segment ... forms a perimeter that defines a shape of one of the sense electrodes" (claims 1, 9, 17): Petitioner argued this was an apparent scrivener's error and that a POSITA would understand the claim intended to recite drive electrodes. This interpretation was based on the claim's structure, where this limitation is indented under the clause defining the drive electrodes' "second conductive mesh," and on the patent's specification, which only describes a perimeter of wire defining the shape of the drive electrodes.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) or §314(a) was inappropriate for two primary reasons. First, the petition relied on key prior art, namely Chang and Frey, which disclose electrodes formed from a true mesh structure. This art was not before the examiner during prosecution and was materially different from the prior art of record (e.g., Marten and Hotelling276), which Petitioner argued did not disclose a proper mesh. Second, Petitioner asserted that the examiner committed a clear and dispositive legal error by misinterpreting the "one or more of the following being true" limitation, which led to an improper allowance of the claims. This alleged error warranted institution to correct the mistake.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-17 of the ’960 patent as unpatentable.