Apple Inc v. Neodron Ltd

1. Case Identification

• Case #: IPR2020-001229
• Patent #: 9,823,784
• Filed: July 29, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Neodron, Ltd.
• Challenged Claims: 1-3

2. Patent Overview

• Title: Capacitive Touch Sensor Panel
• Brief Description: The ’784 patent discloses a capacitive touch sensor panel featuring a two-layer electrode pattern designed for enhanced noise reduction and optical uniformity. The system comprises a first layer of "substantially area filling" drive electrodes on one side of a substrate for shielding and a second layer of sense electrodes on the opposite side, where the gaps between the sense electrodes are filled with isolated conductive elements to make the pattern less visible.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are obvious over Hotelling in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Hotelling (Application # 2008/0158183).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hotelling, which was not considered during prosecution, discloses all elements of the challenged claims. Hotelling teaches a two-layer multi-touch sensor with drive (row) and sense (column) traces on opposite sides of a substrate. Petitioner argued that Hotelling’s embodiment with "widened" row traces (Fig. 9), leaving only a 30-micron gap, meets the "substantially area filling" limitation for the drive electrodes. For the sense layer, Hotelling (Fig. 7) teaches adding "small isolated squares of ITO" between sense traces to create a uniform appearance, which Petitioner equated to the claimed "isolated conductive elements." Furthermore, Petitioner mapped the dimensions in Hotelling's Fig. 7 (1mm sense traces with a 4mm pitch, creating a 3mm gap) to show a gap-to-pitch ratio of 3/4, which satisfies the claimed ratio of "at least three-fifths."
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would be motivated to combine the widened drive electrodes of Hotelling's Fig. 9 with the sense electrode configuration of Fig. 7. The motivation arises from Hotelling's own text, which describes these features to solve the same problems addressed by the ’784 patent: shielding from noise and improving visual uniformity. Applying isolated filler elements was a well-known technique for improving touch sensor appearance.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in combining these features, as they were known solutions used for their predictable benefits in the field of capacitive touch sensors.

Ground 2: Claims 1-3 are obvious over Ligtenberg in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Ligtenberg (WO 2008/030563).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ligtenberg, also not considered during prosecution, teaches a capacitive trackpad that renders the challenged claims obvious. Ligtenberg discloses drive lines with a 5mm width and a ~5mm pitch, which Petitioner contended would be understood by a POSITA as substantially filling the first layer. In contrast, Ligtenberg’s sense lines have a 1mm width and 5mm pitch, creating a large gap and satisfying the "relative to the plurality of sense electrodes" limitation. To improve appearance, Ligtenberg teaches subdividing areas between traces into "unconnected electrically floating ITO pads," which corresponds to the claimed isolated conductive elements. The resulting 4mm gap and 5mm pitch for the sense lines yield a gap-to-pitch ratio of 4/5, satisfying the claim requirement.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to apply the electrode dimensions and filler pad configurations described in Ligtenberg to achieve the known benefits of noise shielding and improved visual uniformity, as these were common design goals in the art. The benefits of using wide drive electrodes and narrow sense electrodes were well-understood.
  • Expectation of Success (for §103 grounds): A POSITA would expect that implementing floating ITO pads between sense lines would predictably result in a more uniform appearance without negatively impacting sensor functionality, as this was a common and well-understood technique.

4. Key Claim Construction Positions

• "substantially area filling... relative to the plurality of sense electrodes": Petitioner proposed adopting the Patent Owner's own construction from parallel litigation. This construction requires two components: (1) an "absolute limitation" where the electrodes fill approximately the entire area of the sensing element, and (2) a "relative limitation" requiring a difference in area coverage between the drive lines and the sense lines. Petitioner argued that its asserted prior art meets both prongs of this construction.
• "together, the plurality of sense electrodes and the plurality of isolated conductive elements are substantially area filling...": For this nearly identical phrase, Petitioner again proposed adopting the Patent Owner's interpretation from parallel litigation. Petitioner asserted this construction requires the sense electrodes combined with the filler elements to be substantially area filling, which it argued was explicitly taught by the prior art for the purpose of creating a uniform, "solid sheet" appearance.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors. The core arguments were that the parallel district court litigation was in its infancy, with minimal investment by the parties and the court, and no trial date had been set. Petitioner contended that the earliest possible trial date was uncertain and could be delayed beyond the statutory deadline for a Final Written Decision (FWD) in the inter partes review (IPR). To prevent overlap, Petitioner stipulated that, if the IPR is instituted, it would not pursue the same invalidity grounds in the district court action. Finally, Petitioner asserted that the strength of the invalidity challenges presented in the petition weighed heavily in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of Patent 9,823,784 as unpatentable under 35 U.S.C. §103.