By Eric Schweibenz
Further to our March 20, 2012 post, on April 10, 2012, the International Trade Commission (the “Commission”) issued the public version of its opinion reviewing-in-part and affirming the initial determination of no violation of Section 337 in Certain Mobile Devices, and Related Software Thereof (Inv. No. 337-TA-750).

By way of background, the Complainant in this investigation is Apple Inc., f/k/a Apple Computer, Inc. (“Apple”) and the remaining Respondent is Motorola Mobility, Inc. (“Motorola”).  The asserted patents are U.S. Patent Nos. 7,812,828, 7,663,607 (the ‘607 patent), and 5,379,430.  On January 13, 2012, ALJ Theodore R. Essex issued an Initial Determination (“ID”) finding no violation of Section 337 by Motorola.  Specifically, ALJ Essex determined, inter alia, that the asserted claims of the ‘607 patent are invalid for anticipation under 35 U.S.C. § 102 and invalid for obviousness under 35 U.S.C. § 103.

On March 16, 2012, the Commission issued a notice determining to review the ID in part, and on review, to affirm the ID’s finding of no violation of Section 337 and to terminate the investigation.  In particular, the Commission determined to review the ID’s finding that the asserted claims of the ‘607 patent are obvious under 35 U.S.C. § 103 in view of the reference “SmartSkin:  An Infrastructure for Freehand Manipulation on Interactive Surfaces” by Jun Rekimoto (“SmartSkin”), either alone or in combination with Japan Unexamined Patent Application Publication No. 2002-342033A to Jun Rekimoto (“Rekimoto ‘033”).  On review, the Commission affirmed ALJ Essex’s finding of obviousness in view of the SmartSkin reference in combination with Rekimoto ‘033 and found that Motorola had demonstrated by clear and convincing evidence that the asserted claims of the ‘607 patent are invalid under 35 U.S.C. § 103 based on modified reasoning.

According to the opinion, the ‘607 patent is directed to a touch panel that has a transparent capacitive sensing medium configured to detect multiple touches or near touches that occur simultaneously and at different locations on the touch panel.  In response to the multiple touches, the sensing medium produces distinct signals representative of the location of the touches.  Asserted claim 1 and its dependent asserted claims 2-7 call for a touch panel that comprises two layers of transparent electrically-isolated conductive lines where the two layers are spatially separated from each other and where the conductive lines in one layer are positioned transverse to the conductive lines in the other layer, creating an array of intersection points.  Capacitive monitoring circuitry is configured to detect changes in the capacitance between the two layers of conductive lines, thereby indicating the location of the multiple touches on the touch panel.

In the ID, ALJ Essex had found that the SmartSkin reference does not anticipate the asserted claims of the ‘607 patent because SmartSkin does not disclose “the use of transparent conductive lines using [indium tin oxide] ITO.”  However, the ALJ also found that “SmartSkin alone would render the use of transparent electrodes obvious.”  In particular, he found that “SmartSkin would motivate one of ordinary skill in the art to use transparent electrodes and that the use of materials, such as ITO, in creating the transparent electrodes was well known at the time.”  ALJ Essex also found that SmartSkin in combination with Rekimoto ‘033 would have rendered the asserted claims obvious.

In the opinion, the Commission agreed with ALJ Essex’s conclusion that SmartSkin provides the reason to combine the use of transparent electrodes made of materials such as ITO with the mutual-capacitance sensor for detecting multiple touches on the sensor surface disclosed in SmartSkin.  The Commission also agreed that SmartSkin in combination with Rekimoto ‘033 discloses the transparent electrode limitations, the layer limitations, and the glass member limitations recited in the asserted claims of the ‘607 patent, with Rekimoto ‘033 disclosing the layer and glass member limitations. 

However, the Commission determined that SmartSkin provides one of ordinary skill with a reasonable expectation of success in combining the mutual-capacitance touch screen disclosed in SmartSkin with transparent ITO electrodes for different reasons than those articulated in the ID.  Citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Commission determined that “the use of transparent ITO in combination with the mesh grid touch sensor of SmartSkin is just the type of ‘combination of familiar elements’ that KSR discussed.”  According to the opinion, “the evidence supports the conclusion that using transparent ITO for the ‘transparent conductive lines’ claimed in the ‘607 patent and discussed in SmartSkin would have been within the ability of one of ordinary skill in the art.”  In coming to this conclusion, the Commission cited testimony from Motorola’s expert, Dr. Wolfe, and discounted testimony from Apple’s expert, Dr. Subramanian.

The Commission also considered but ultimately rejected an argument by Apple that SmartSkin does not enable the use of a transparent ITO sensor with the multi-touch mutual-capacitance system disclosed in that reference because substituting transparent ITO conductive lines for the opaque copper lines used with one embodiment of the voltage-based sensing system of SmartSkin would require a complete redesign.  According to the opinion, “Apple’s arguments concerning the difficulty of implementing a transparent ITO sensor with a voltage-sensing system are irrelevant since the claimed invention is not drawn to a particular sensing arrangement.”  In any event, the Commission found that the concept of using a voltage-sensing system with high-resistance transparent electrodes was known in the art at the time of the ‘607 patent.

In view of the above, the Commission found that the asserted claims of the ‘607 patent are obvious in view of SmartSkin in combination with Rekimoto ‘033.