Paper No. 14
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: 21 March 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CHI MEI INNOLUX CORP.
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`____________
`
`Case IPR2013-00028
`Patent 6,404,480 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`

`IPR2013-00028
`Patent 6,404,480 B2
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`
`I. BACKGROUND
`
`Petitioner Chi Mei Innolux Corp. (“CMI”) requests inter partes review of
`
`claims 1, 2, 5-7, 10-12, and 15 of U.S. Patent No. 6,404,480 B2 (the '480 Patent).
`
`(Paper No. 2; “Pet.”). The Patent Owner, Semiconductor Energy Laboratory Co.,
`
`Ltd. (“SEL”), submitted a preliminary response under 37 C.F.R. § 42.107(b) on
`
`January 25, 2013. (Paper No. 11; “Prelim. Resp.”). We have jurisdiction under 35
`
`U.S.C. §§ 6(b) and 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a) which provides as follows:
`
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`We determine that the petition demonstrates that there is a reasonable
`
`likelihood that CMI would prevail with respect to at least one challenged claim.
`
`Therefore, we authorize an inter partes review to be instituted as to claims 1, 2, 5-
`
`7, 10-12, and 15 of the '480 Patent.
`
`
`
`A. The '480 Patent (EX 1001)
`
`The ’480 patent is in general related to contact structures used in
`
`electrooptical devices, such as liquid crystal displays (LCDs) (col. 1, ll. 10-15). In
`
`particular, the '480 Patent is directed to configurations of the conducting lines on
`
`the substrates which form the LCD such that the cell gap between the substrates
`
`depends only on the size of conductive spacers used to maintain the cell gap (Abs).
`
`The '480 Patent asserts that this alleviates problems of non-uniformity of spacing
`
`between opposing substrates in the prior art (col. 2, l. 60 – col. 3, l. 6).
`
`2
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`IPR2013-00028
`Patent 6,404,480 B2
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`
`Figure 6 is a cross-sectional view of portions of an LCD according to an
`
`embodiment of the '480 Patent:
`
`Fig. 6 shows cross-sectional view of portions of an LCD in accordance with
`Example 1 of the claimed invention.
`
`
`
`
`
`
`
`B. Illustrative Claim
`
`Claim 1 of the '480 Patent illustrates the claimed subject matter:
`
`1. An active matrix display device comprising:
`
`a first substrate;
`
`a first interlayer insulating film provided over said first substrate;
`
`a first conductive film provided on said first interlayer insulating film;
`
`a second interlayer insulating film provided on said first conductive film,
`
`said second interlayer insulating film having at least two openings;
`
`a second conductive film provided on said second interlayer insulating
`
`film and in said openings;
`
`a second substrate opposed to said first substrate;
`
`a third conductive film provided on said second substrate; and
`
`3
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`IPR2013-00028
`Patent 6,404,480 B2
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`a plurality of conductive spacers held between said first substrate and
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`said second substrate;
`
`wherein said first conductive film is connected with said second
`
`conductive film in said openings;
`
`wherein at least one of said conductive spacers is held over said second
`
`interlayer insulating film and in contact with both said second conductive
`
`film and said third conductive film.
`
`
`
`C. Prior Proceedings
`
`1. On November 3, 2004, SEL filed an action for infringement of the
`
`'480 patent against Chi Mei Optoelectronics Corp., International Display
`
`Technology Co., Ltd., International Display Technology USA, Inc., Westinghouse
`
`Digital Electronics, LLC., and CTX Technology Corp., in the Northern District of
`
`California. Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei
`
`Optoelectronics Corp., et al., Case No. C-04-04675-MHP (N.D. Cal)
`
`(EX 2002)(“CMO case”). In July 2007, SEL settled this lawsuit with the
`
`defendants (EX 2007, p.5).
`
`2. CMI notes (Pet. 11-12) that the '480 Patent was previously the subject of a
`
`request for ex parte reexamination, filed March 24, 2006 (EX 1003), the Patent
`
`being reexamined as Ex Parte Reexamination Control Number 90/007,985 (id.).
`
`SEL acknowledges the same (Prelim. Resp. 1). On December 30, 2008, the
`
`USPTO issued an Ex Parte Reexamination Certificate confirming the patentability
`
`of claims 1-30 of the '480 Patent.
`
`3. On January 5, 2012, SEL filed an action for infringement of the
`
`'480 Patent against CMI, Chi Mei Optoelectronics USA, Inc., Acer America Corp.,
`
`Viewsonic Corp., VIZIO, Inc., and Westinghouse Digital, LLC., in the Central
`
`4
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`IPR2013-00028
`Patent 6,404,480 B2
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`District of California. Semiconductor Energy Laboratory Co., Ltd. v. Chimei
`
`Innolux Corp., et al., Case No. 12-0021-JST (C.D. Cal)(EX 2001)(“CMI case”).
`
`Defendants in that case filed a motion on October 22, 2012 to stay that litigation
`
`pending the outcome of this instant proceeding (EX 2011), where that request for a
`
`stay was granted on December 19, 2012.
`
`
`
`D. Prior Art Relied Upon
`
`CMI relies upon the following prior art references:
`
`U.S. Patent 4,600,273
`JP Patent Pub. 05-243333
`JP Patent Pub. 06-289415
`
`Jul. 15, 1986
`Sep. 21, 1993
`Oct. 18, 1994
`
`Ohno
`Moriyama
`Kitawada
`
`Admitted Art – the Background of the Invention section of the '480 Patent
`(e.g., col. 1, l. 48 - col. 3, l. 18; Figs. 12-14) (EX 1001).
`
`
`(EX 1005)
`(EX 1004)
`(EX 1006)
`
`CMI challenges the patentability of claims 1, 2, 5-7, 10-12, and 15 of the
`
`E. The Asserted Grounds
`
`'480 Patent on the following grounds (Pet. 7):
`
`1. Claims 1, 5, 6, 10, 11, and 15 are unpatentable under 35 U.S.C. § 103(a)
`
`over the Admitted Art in view of Moriyama;
`
`2. Claims 2, 7, and 12 are unpatentable under 35 U.S.C. § 103(a) over the
`
`Admitted Art in view of Moriyama and Ohno;
`
`3. Claims 1, 5, 6, 10, 11, and 15 are unpatentable under 35 U.S.C. § 103(a)
`
`over Kitawada in view of Moriyama;
`
`4. Claims 2, 7, and 12 are unpatentable under 35 U.S.C. § 103(a) over
`
`Kitawada in view of Moriyama and Ohno;
`
`5
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`IPR2013-00028
`Patent 6,404,480 B2
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`II. ANALYSIS
`
`A. Statutory Threshold Issues
`
`1. Prior Service of a Complaint for Infringement of the '480 Patent
`
`35 U.S.C. § 315(b) provides that “[a]n inter partes review may not be
`
`instituted if the petition requesting the proceeding is filed more than 1 year after
`
`the date on which the petitioner, real party in interest, or privy of the petitioner is
`
`served with a complaint alleging infringement of the patent.” SEL contends that
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`this review cannot be instituted because of the filing of the CMO case, discussed
`
`supra (Prelim. Resp. 4).
`
`In fact, SEL argues that Petitioner, CMI, already was served more than one
`
`year prior to the filing of this Petition (Prelim. Resp. 6), even though SEL
`
`acknowledges that CMI was formed from the merger of Chi Mei Optoelectronics,
`
`TPO Displays, and Innolux Display Corp. in March of 2010 (id.). However, SEL
`
`does not show that CMI and Chi Mei Optoelectronics were the same entity when
`
`the CMO case was filed in November of 2004. Further, SEL does not provide
`
`persuasive evidence or explanation establishing that CMO (or Innolux) was a privy
`
`of the (eventual) Petitioner CMI on the date of service of the complaint. See 35
`
`U.S.C. § 315(b). As such, the service of a complaint against Chi Mei
`
`Optoelectronics more than a year before the filing of the instant Petition by CMI
`
`has not been demonstrated to run afoul of 35 U.S.C. § 315(b).
`
`SEL also argues that “the Petitioner admits, ‘[a]s with the [CMO case], CMI
`
`is a principle defendant because it is the manufacturer of the accused LCD
`
`modules’ and that ‘just as in [the CMO case], SEL’s ‘480 patent is asserted.’”
`
`(Prelim. Resp. 6). However, even if both Chi Mei Optoelectronics and CMI
`
`produce the accused LCD modules, that does not require us to find privity between
`
`Chi Mei Optoelectronics and CMI for purposes of this proceeding. See Int’l
`
`6
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`IPR2013-00028
`Patent 6,404,480 B2
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`Nutrition Co. v. Horphag Research, Ltd., 220 F.3d 1325, 1329 (Fed. Cir. 2000)
`
`(“[W]hen one party is a successor in interest to another with respect to a particular
`
`property, the parties are in privity only with respect to an adjudication of rights in
`
`the property that was transferred; they are not in privity for other purposes, such as
`
`an adjudication of rights in other property that was never transferred between the
`
`two…. Put another way, the transfer of a particular piece of property does not
`
`have the effect of limiting rights of the transferee that are unrelated to the
`
`transferred property.”); see also Shamrock Techs., Inc. v. Medical Sterilization,
`
`Inc., 903 F.2d 789, 793 (Fed. Cir. 1990) (“What constitutes ‘privity’ varies,
`
`depending on the purpose for which privity is asserted.”).
`
`SEL also points to documents where CMI has referred to itself “admitting
`
`that CMO and CMI are the same party” (Prelim. Resp. 7). In the court documents
`
`(Ex. 2007-2008) and the administrative filing submitted to the Securities and
`
`Exchange Commission (Ex. 2005), CMI refers to prior litigation against Chi Mei
`
`Optoelectronics and “the Company’s patents,” but we do not find this to be
`
`sufficient evidence to show that the parties are one and the same. We discuss the
`
`collective language of the court filings below, and we find the SEC filings
`
`insufficient to show that the Chi Mei Optoelectronics and CMI are the same party.
`
`With respect to service being initiated against parties that were or are real
`
`parties-in-interest of CMI, SEL argues that CMO USA, Acer America, ViewSonic,
`
`VIZIO, and Westinghouse are necessarily real parties-in-interest to CMI in this
`
`instant proceeding, some of which were served in the CMO case (Prelim. Resp. 8,
`
`13). SEL argues that all of those parties joined with CMI to file a motion to stay
`
`the more recent litigation (Ex. 2011), and that suggests that they are all real parties-
`
`in-interest (Prelim. Resp. 13). SEL also argues that, in statements to the district
`
`court, because the defendants refer to themselves collectively and collectively
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`7
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`IPR2013-00028
`Patent 6,404,480 B2
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`agree to be bound by the estoppel provisions of the IPR proceedings, they are real
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`parties-in-interest because they also allegedly all had opportunity to control the
`
`content of the Petition (Prelim. Resp. 13-15). We cannot agree.
`
`Simply because parties have been accused together of separate infringements
`
`of a single patent, this does not instantly join such parties together as real parties-
`
`in-interest. The Trial Practice Guide provides guidance regarding factors to
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`consider in determining whether a party is a real party-in-interest. Considerations
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`may include whether a non-party exercises control over a petitioner’s participation
`
`in a proceeding. Other considerations may include whether a non-party, in
`
`conjunction with control, is funding the proceeding and directing the proceeding.
`
`77 Fed. Reg. 48759-60 (August 14, 2012). SEL has failed to provide persuasive
`
`evidence that other parties in the CMO or CMI cases exercised control or provided
`
`funding for the instant Petition, let alone exercised control and funding.
`
`The statements that SEL refer to are just that. SEL has not shown
`
`persuasively that the statements mean what SEL suggests they mean. For example,
`
`the statements made in connection with the joint motion to stay may have been a
`
`short-hand explanation or joint litigation approach (e.g., speaking as one unified
`
`voice as opposed to explaining in great length who filed the Petition, etc.) to the
`
`district court of the events leading up to the filing of the instant Petition. The
`
`collective filing of a motion to stay, where the defendants collectively refer to the
`
`instant Petition, need not indicate control, without more proof. It is likely that no
`
`such stay would have been granted without all defendants agreeing to the estoppel
`
`provision. Without additional evidence, we cannot take this to establish control
`
`and/or funding.
`
`Moreover, SEL has not shown, for example, that the co-defendants CMO
`
`USA, Acer America, ViewSonic, VIZIO, and Westinghouse necessarily co-
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`8
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`IPR2013-00028
`Patent 6,404,480 B2
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`authored the Petition or exerted control over its contents, or will exert any control
`
`over the remaining portions of this proceeding. As such, the prior service of a
`
`complaint for infringement of the '480 Patent against Chi Mei Optoelectronics and
`
`the other defendants in the CMO case is not a bar against the instant Petition under
`
`35 U.S.C. § 315(b).
`
`
`
`2. Identification of All Real Parties-In-Interest
`
`SEL also contends that this review should be denied or dismissed because
`
`the Petition fails to identify all of the real parties-in-interest (Prelim. Resp. 11-16).
`
`However, as we have discussed supra, SEL has not shown that CMO USA, Acer
`
`America, ViewSonic, VIZIO, and Westinghouse are necessarily real parties-in-
`
`interest to CMI in this instant proceeding. As such, the Petition satisfies the
`
`requirement of § 312(a)(2) to identify all real parties-in-interest.
`
`
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`3. Identification of All Related Matters
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`In addition, SEL argues that the instant Petition should be denied because it
`
`fails to identify all related matters as required under 37 C.F.R. § 42(a)(1) and (b)(2)
`
`(Prelim. Resp. 16-17). SEL argues that CMI failed to cite the CMO case, as well
`
`as a separate case against Acer America of the '480 Patent (id.). As discussed
`
`supra, SEL has not shown that CMO and Acer America are necessarily real
`
`parties-in-interest with CMI, and that the services against both for alleging
`
`infringement do not bar the instant Petition under 35 U.S.C. § 315(b). As such, we
`
`disagree that CMI necessarily was required to notify the Board of the prior
`
`litigations.
`
`
`
`
`
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`9
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`IPR2013-00028
`Patent 6,404,480 B2
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`4. Prior Ex Parte Reexamination
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`SEL contends that the Petition relies on the same arguments and prior art
`
`that the PTO previously considered in the above-cited reexamination and should be
`
`denied for this reason, among others (Prelim. Resp. 17-20). In support of this
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`Patent Owner relies on 35 U.S.C. § 325(d), specifically: “In determining whether
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`to institute or order a proceeding under … chapter 31 [Inter Partes Review] … the
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`Director may take into account whether, and reject the petition or request because,
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`the same or substantially the same prior art or arguments previously were
`
`presented to the Office.” (Id. at 17; emphasis added).
`
`CMI acknowledges the prior reexamination (Pet. 11-12), and acknowledges
`
`that the Examiner declined to adopt a rejection of claims 1, 5, 11, and 15 because
`
`“it is unclear that the ‘480 patent (patent under reexamination) admits that it is
`
`known to place a first interlayer insulating film between the substrate and the first
`
`conductive film” (Pet. 11, Ex. 1003). CMI submits Declaration evidence
`
`(Ex. 1007) that was not before the Office previously (Pet. 12).
`
`We are not required by statute to reject a Petition based upon the fact that
`
`certain arguments or art were previously considered by the Office, and we decline
`
`to do so in this case. See 35 U.S.C. § 325(d) (quoted supra). The rationale for
`
`non-adoption of the ground in the reexamination was that there was no explicit
`
`recitation in the '480 Patent of the layer between the substrate and the first
`
`conductive film being insulating. This is clearly contradicted by the testimony of
`
`Dr. Hatalis (Ex. 1007 ¶33), which we find persuasive.
`
`As such, we do not determine the instant Petition to be barred under 35
`
`U.S.C. § 325(d), even if some of the potential grounds of unpatentability have been
`
`presented before to the Office.
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`
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`10
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`IPR2013-00028
`Patent 6,404,480 B2
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`B. Claim Construction
`
`The Board interprets a claim in an inter partes review using the “broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b). See also Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim Construction). “Generally
`
`speaking, we indulge a ‘heavy presumption’ that a claim term carries its ordinary
`
`and customary meaning.” See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
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`1359, 1366 (Fed. Cir. 2002). Tempering the presumption, claims “must be read in
`
`view of the specification. . . . [T]he specification is always highly relevant to the
`
`claim construction analysis. Usually, it is dispositive; it is the single best guide to
`
`the meaning of a disputed term.” See Phillips v. AWH Corp., 415 F.3d, 1303, 1317
`
`(Fed. Circ. 2005) (en banc).
`
`Based on the arguments and evidence raised in the Petition and the
`
`Preliminary Response, we conclude that all terms are given their ordinary and
`
`customary meaning that those terms would have to a person of ordinary skill in the
`
`art in light of the '480 Patent’s specification. CMI relies principally on the claim
`
`charts provided with the Petition to provide the required construction of the claim
`
`language. (“[C]laim terms take on their ordinary and customary meaning that the
`
`terms would have to one of ordinary skill in the art.”) (Pet. 8). The claim charts,
`
`in a separate column, purport to provide a “construction” for each claim element.
`
`However, in all cases the construction is merely a paraphrase of the claim language
`
`itself, such that Petitioner has provided no basis for a construction other than plain
`
`and ordinary meaning. SEL has provided arguments that would require certain
`
`claim terms to have slightly different requirements, based on the disclosure of the
`
`'480 Patent, which we address in the sections that follow.
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`11
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`Patent 6,404,480 B2
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`C. Asserted Grounds of Unpatentability
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains. KSR
`
`Int'l Co. v. Teleflex. Inc., 550 U.S. 398, 406 (2007). The question of obviousness
`
`is resolved on the basis of underlying factual determinations including: (1) the
`
`scope and content of the prior art, (2) any differences between the claimed subject
`
`matter and the prior art, (3) the level of skill in the art, and (4) where in evidence,
`
`so-called secondary considerations. Graham v. John Deere Co. of Kansas City,
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`383 U.S. 1, 17-18 (1966).
`
`In making the threshold determination under 35 U.S.C. § 314(a), the Board
`
`considers CMI’s Petition and SEL’s Preliminary Response.
`
`
`
`1. Admitted Art and Moriyama (Ex. 1001, 1004)
`
`Relying on the declaration of Dr. Hatalis (“Hatalis Decl.”) (Ex. 1007), CMI
`
`reproduces figures from the '480 Patent and Moriyama (Ex. 1004) and explains
`
`how features from different figures render obvious claims 1, 5, 6, 10, 11, and 15.
`
`(See Pet. 14-15, 18-33)
`
`Figs. 12 and 13, of the '480 Patent, depicting an LCD device, appear next:
`
`12
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`IPR2013-00028
`Patent 6,404,480 B2
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`Per claim 1 and CMI’s claim charts (Pet. 18-33), the acknowledged prior art
`
`
`
`
`
`figures illustrate an active matrix display device, having a first substrate (11), a
`
`first interlayer insulating film (between 11 & 21) thereon, and with a first
`
`conductive film (21) on the first interlayer insulating film.
`
`
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`SEL argues that the Admitted Art does not disclose the first conductive film
`
`provided on said first interlayer insulating film because the Petition highlights both
`
`the layer (21), as well as the source/drain electrodes, as being that conductive film
`
`(Prelim. Resp. 25-26). SEL argues that in view of the specification of the '480
`
`Patent, the first conductive film must be in the common contact portion and the
`
`layer and the electrodes cannot be the same conductive film without causing a
`
`short-circuit of the device (id.). However, we cannot construe claim 1 to require
`
`that the first conductive film be formed only in the common contact portion, and
`
`will not interpret claim 1 by importing non-recited aspects from the specification
`
`into that claim. In addition, the claim chart only discusses the layer (21), with the
`
`source/drain electrodes only highlighted in the figure therein. Because claim 1
`
`requires only “a first conductive film,” we conclude that the layer (21) illustrated
`
`in Fig. 13 satisfies the claim language.
`
`13
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`IPR2013-00028
`Patent 6,404,480 B2
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`With respect to the second interlayer insulating film, CMI points to
`
`layer (18), and points out that the layer (18) has at least two openings, one below
`
`layer (22) and another above the source/drain electrode, to allow for a connection
`
`between that electrode and the pixel electrode (19). CMI also points out, per
`
`Fig. 12, that common contact portions (16a-16d) correspond to openings in the
`
`second interlayer insulating layer (Pet. 20-21). A conducting pad (22) is formed in
`
`the openings and on portions of the second interlayer insulating layer (18) to
`
`facilitate contact with a counter electrode (24) of the counter substrate (23) using
`
`spherical conducting spacers (26).
`
`
`
`SEL argues that the Admitted Art does not disclose “at least two openings”
`
`because the contact hole, making a connection to the source/drain electrode, is not
`
`an opening, as described in the Specification (Prelim. Resp. 27-28). However, as
`
`discussed supra, we do not agree that the openings, per claim 1, must be in the
`
`common contact portion. While SEL points to Figs. 1 and 2A of the '480 Patent as
`
`showing the placement of the two openings, such limitations are not present in
`
`claim 1 itself. SEL also directs us to claim construction by the district court in the
`
`CMO case in relation to another claim term (Prelim. Resp. 29), but the district
`
`court’s claim construction is not dispositive given the differences in claim
`
`interpretation standards and the differences in the claim terms.
`
`
`
`In addition, SEL takes issue with CMI’s claim chart as apparently indicating
`
`that the pixel electrode (19) and the conducting pad (22) constitute the claimed
`
`“second conductive film,” arguing that the specification makes clear they are
`
`separate and if they were connected, they would result in a short-circuit (Prelim.
`
`Resp. 29-31). However, as discussed above, CMI’s analysis rests not on the pixel
`
`electrode (19) and the conducting pad (22) being the same layer; the multiple
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`IPR2013-00028
`Patent 6,404,480 B2
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`contact pads, corresponding to areas 16a-16d, are equivalent to the claimed
`
`“second conductive film” and result in no shorting.
`
`
`
`SEL also argues that the Admitted Art lacks a disclosure of a plurality of
`
`conductive spacers because only one (26) is illustrated and the spacers positioned
`
`in the four common contact portions (16a-16d) are not equivalent because the
`
`district court in the CMO case stated that each common contact portion must
`
`contain more than one conductive spacer (Prelim. Resp. 31). However, as noted
`
`supra, claim 1 does not require such an added limitation.
`
`CMI acknowledges that the Admitted Art does not disclose holding one of
`
`the conductive spacers over the second interlayer insulating layer expressly, and
`
`also cites Moriyama. Fig. 7(a) of Moriyama depicts a section of an LCD device:
`
`
`
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`CMI asserts (Pet. 23-27) that Moriyama discloses an LCD device with a
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`glass substrate (14) having an underlying metal layer (1) thereon, with an
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`insulating layer (5) over that layer. Contact holes (2) are formed in the insulating
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`layer (5), with an overlay metal layer (3) and a transparent metal layer (4) formed
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`on top and in the contact holes, such that the overlay metal layer (3) and the
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`transparent metal layer (4) make electrical contact with the underlying metal
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`layer (1). Metal particles (16) form an electrical connection between the overlay
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`metal layer (3) and the opposing electrode (17) of the opposing base film (20).
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`CMI asserts (Pet. 26-27) that combining the teachings of the Admitted Art
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`and Moriyama, such that the conductive spacers are held over the second interlayer
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`insulating film, would have been well recognized in the semiconductor art to
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`achieve good electrical contact between the opposing substrates through the
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`spacers. CMI also cites the Declaration of Dr. Hatalis as supporting the
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`combination (Hatalis Decl. ¶46). CMI has shown that the combination would have
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`been desired by one of ordinary skill in the art for the reasons provided.
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`SEL renews its argument about the number of openings and the use of the
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`contact hole, illustrated in Fig. 13, as an opening, as well as the opening being
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`required to be in the common contact portion, per the specification (Prelim. Resp.
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`31-33); however, these arguments are still not persuasive.
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`SEL also argues that Moriyama fails to cure the acknowledged deficiencies
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`of the Admitted Art because the transparent metal layer (4) and the underlying
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`metal layer (1) are not connected within the contact holes of the insulating layer
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`(5), and those metal layers cannot be equivalent to the claimed first and second
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`conductive films (Prelim. Resp. 34). SEL points out that Moriyama’s overlay
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`metal layer (3), which does make contact with underlying metal layer (1) through
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`contact holes, does not contact the metal particles (16) (id.). SEL also argues that a
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`combination of the transparent metal layer (4) and the underlying metal layer (1)
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`cannot be equivalent to the claimed second conductive film because Moriyama
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`makes clear that the metal layers are formed of distinct materials and have separate
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`layouts and functions (Prelim. Resp. 35). Based on the discussion in the Petition,
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`we do not agree.
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`While SEL emphasizes how the layers in Moriyama are formed (Prelim.
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`Resp. 36), we note that claim 1, as well as claims 6 and 11, are device claims, and
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`not method claims, such that they cover the structures of devices, not how they are
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`made. In addition, in the semiconductor device arts, it is understood that
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`conductive layers can be formed from multiple materials, so that durable and/or
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`suitable contacts can be formed. That is, skilled artisans would recognize that the
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`deposition of two conductive materials, one on top of the other, without an
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`intervening layer or barrier, would result in, or render obvious, a single conductive
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`film.1 Also, we are mindful that one of ordinary skill in the art is not an
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`automaton, such that Moriyama, in view of the Admitted Art, could have been
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`modified to emulate the structure in the Admitted Art, rather than that in
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`Moriyama. As such, SEL’s arguments are not persuasive.
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`SEL also argues that there is no reason to combine the Admitted Art and
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`Moriyama (Prelim. Resp. 39-42). SEL argues that Dr. Hatalis’s statements
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`(Hatalis Decl. Ex. 1007) are not supported by any evidence (Prelim. Resp. 40).
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`We do not agree. As discussed supra, we determine the motivation provided in the
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`Petition to be sufficient, and supported by the Hatalis Declaration. Likewise, SEL
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`has not provided persuasive evidence that Dr. Hatalis’s statements are incorrect.
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`SEL also argues that Moriyama appears to teach away from the formation of
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`openings underlying an ITO layer (Prelim. Resp. 41). SEL argues that Moriyama
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`describes that pixel electrodes become discontinuous at the step height part of the
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`drain electrode terminal in the thin-film field-effect transistor part shown in Fig.
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`7(b), making connections unreliable, and would teach away from the structure
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`employed in the Admitted Art (id.). We do not agree.
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`SEL has ignored other portions of Moriyama, which detail that the
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`embodiment illustrated in Fig. 7 provides for excellent connections (Ex. 2004
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`¶ [0007]). Rather than a teaching away from the use of the disclosed prior art
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`structure, we find Moriyama to provide good faith benefits and disadvantages of
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`those embodiments, prior to the discussion of Moriyama’s invention. We do not
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`1 See generally Stanley Wolf Ph.D., Silicon Processing for the VLSI Era, Vol. 2:
`Process Integration 131-134 (Lattice Press 1990)(EX 3001).
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`find Moriyama to be disparaging of those prior art embodiments, such that one of
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`ordinary skill in the art would be dissuaded from utilizing those structures. As
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`such, we do not determine SEL’s arguments to be persuasive.
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`With respect to independent claims 6 and 11, CMI argues that the additional
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`limitations in those claims, namely “wherein said conductive spacers are dispersed
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`into a sealing material” and “wherein each of said openings occupies an area larger
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`than the area occupied by each of said conductive spacers,” are taught or suggested
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`by the disclosures of the Admitted Art and Moriyama (Pet. 29, 32-33). CMI
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`asserts that thermal resin (22) in Moriyama contains metal particles (16), and that
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`the area of the contact hole (22) is larger than the conductive spacer (26) in the
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`Admitted Art, and contact hole (2) in Moriyama is larger than the metal particles
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`(16). CMI has made a threshold showing that the additional limitations of claims 6
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`and 7 would have been obvious over the disclosures of the Admitted Art and
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`Moriyama.
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`With respect to independent claim 6, SEL argues that one of ordinary skill in
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`the art would not have recognized that the metal particles (16) in the thermal
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`resin (22) in Moriyama were equivalent to the claimed “wherein said conductive
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`spacers are dispersed into a sealing material,” because the thermal resin would not
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`be viewed as a sealing material (Prelim. Resp. 37-38). SEL points to the
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`specification of the '480 Patent as providing that a sealing material is a material
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`used to seal/fix liquid crystal material (id., Ex. 1001, col. 11, ll. 1-37). We do not
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`agree.
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`The specification of the '480 Patent provides that “[a] UV-curable and
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`thermalsetting resin was used as the sealing material.” (Ex. 1001, col. 11, ll. 4-5).
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`We also do not find that the section cited by SEL provides a definition of “a
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`sealing material,” merely an example. While the example discusses the sealing
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`and fixing of liquid crystal material, we do not extrapolate that example into a
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`definition of the subject claim term. As such, we do not see why the thermal
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`resin (22) of Moriyama cannot be equivalent to the “sealing material” of claim 6.
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`With respect to independent claim 11, SEL argues that claim 11 requires that
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`each of the openings occupies an area larger than the area occupied by each of the
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`conductive spacers, and such a relationship cannot be determined merely from
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`Fig. 7(a) of Moriyama (Prelim. Resp. 38). While we agree that non-scaled
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`drawings should not be relied upon to show particular sizes, the relative sizes of
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`elements can be discerned from the drawings. If claim 11 recited a certain
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`diameter of the conductive spacers, we would agree that ascertaining the size of the
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`equivalent in the prior art solely from the drawings would be problematic; but here
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`claim 11 provides relative sizes, such that one of ordinary skill in the art could
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`reliably look to the drawings to suggest such sizes. As such, we do not determine
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`SEL’s arguments to be persuasive.
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`2. Admitted Art, Moriyama, and Ohno (Ex. 1001, 1004, 1005)
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`With respect to claims 2, 7, and 12, all of those claims recite, in pa