`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 27
`
`
` Entered: April 30, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INNOLUX CORPORATION1
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00028
`Patent 6,404,480 B2(SCM)
`_______________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`
`37 C.F.R. § 42.71(d)
`
`
`1
` See Paper No. 26 (Petitioner‟s Mandatory Notice updating the Board as to
`its name change from “Chi Mei Innolux Corporation,” which Petitioner also
`refers to as “formerly Cheimei Innolux Corporation,” to “Innolux
`Corporation” as the real party-in-interest in this proceeding). The caption, as
`it appears above, will be employed in all future correspondence.
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`I. BACKGROUND
`
`Patent Owner, Semiconductor Energy Laboratory Co., Ltd. (“SEL”), in its
`
`Rehearing Request (“Rehearing Req.”), seeks reversal of the Board‟s Decision
`
`(“Decision”) to institute an inter partes review of claims 1, 2, 5-7, 10-12, and 15 of
`
`U.S. Patent 6,404,480 (See Rehearing Req. 32).2 For the reasons that follow, the
`
`Board denies the requested relief.
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`
`§ 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the decision.
`The request must specifically identify all matters the party believes the
`Board misapprehended or overlooked, and the place where each matter
`was previously addressed in a motion, opposition, or a reply.
`
`SEL disagrees with the Decision for failing to dismiss the Petition pursuant
`
`to 35 U.S.C. §§ 315(b) & 312(a)(2), as well as pursuant to 37 C.F.R. § 42(b)(2)
`
`and because of alleged errors in claim construction (Rehearing Req. 1).
`
`Specifically, SEL challenges the definition of privy applied in the Decision,
`
`arguing that patent owner Chimei Innolux Corporation (“CMI”)3 was a successor-
`
`in-interest to Chi Mei Optoelectronics Corp. (“CMO”), that they should be
`
`considered privies under 35 U.S.C. §§ 315(b), and that an earlier complaint for
`
`infringement of the instant patent should cause the Petition to be dismissed
`
`(Rehearing Req. 1-17). SEL also challenges the Board‟s determination that the
`
`
`2 A request for rehearing of a decision under 37 C.F.R. § 42.71(d) must be filed in
`the form of a motion, which is limited to 15 pages (see 37 C.F.R. § 42.24(a)(v)).
`SEL‟s request exceeds the page limit. In the future, defective motion exceeding
`the page limit may be dismissed without prejudice to refiling the motion.
`Alternatively, the Board may not consider any content beyond the 15 page limit.
`3 While we acknowledge the name change of Petitioner (see footnote 1), we
`continue to refer to that party as “CMI” for purposes of this Decision.
`
`
`
`2
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`Petition complied with the mandatory disclosure rules of 37 C.F.R. § 42(b)(2)
`
`because citations to a U.S. District Court‟s final order involving the same patent
`
`and the same principal expert witness were omitted from the Petition (Rehearing
`
`Req. 17-20). SEL also challenges the Board‟s determination under 35 U.S.C. §
`
`312(a)(2) that SEL failed to show that other co-defendants in related district court
`
`litigation should have been designated CMI as real parties-in-interest in this inter
`
`partes review proceeding (Rehearing Req. 20-25). Lastly, SEL argues that the
`
`Decision is incorrect in several of its claim construction determinations and also in
`
`findings related to the prior art (Rehearing Req. 25-32). For the reasons that
`
`follow, the board concludes that SEL has failed to show that the Board
`
`misapprehended or overlooked any material matters warranting a reversal of the
`
`Decision.
`
`
`
`
`
`II. DISCUSSION
`
`
`
`A. Prior Service of a Complaint for Infringement
`
`
`
`As discussed above, a request for rehearing is an opportunity to point out
`
`aspects of a decision that the Board overlooked or misapprehended, and point out
`
`where each matter was addressed previously, which in this case is SEL‟s
`
`Preliminary Response (Paper No. 11). It is not, however, appropriate to raise new
`
`arguments or evidence not previously raised.
`
`
`
`SEL now argues that “CMI is a successor-in-interest to the entire business of
`
`CMO” (Rehearing Req. 2), and taken with the prior service in the CMO Case,4 the
`
`petition is barred under 35 U.S.C. §§ 315(b) (Rehearing Req. 2). However, SEL
`
`did not discuss CMI being a successor-in-interest to CMO in its Preliminary
`
`
`4 The “CMO Case” constitutes a short-hand designation for Semiconductor Energy
`Laboratory Co., Ltd. v. Chi Mei Optoelectronics Corp., et al., Case No. C-04-
`04675-MHP (N.D. Cal.) (EX 2002).
`
`
`
`3
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`Response, but instead argued that CMI and CMO were the same party, i.e.,
`
`petitioner. (See, e.g., “CMO and CMI are the same entity” 1 n.1, “admitting that
`
`CMO and CMI are the same party” 7, “confirm that CMO and CMI are the same
`
`entity” 7, “CMO is the same party as CMI” 18, n.9). SEL discusses privies of CMI
`
`being CMO USA and Westinghouse (Prelim. Resp. 2) and also discusses privies in
`
`conjunction with CMI‟s real parties-in-interest. The issue of potential privity
`
`between CMI and CMO was first raised in our Decision, where we stated “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” (Decision 6). Thus, SEL‟s Request for Rehearing is a first instance
`
`asking us to consider CMI being a privy of or successor-in-interest to CMO. We
`
`could not have misapprehended or overlooked an argument that was not presented
`
`adequately in the briefing, nor could we have misapprehended or overlooked
`
`evidence that was not part of the record at the time of the Decision.
`
`
`
`Nonetheless, we reiterate our conclusion that the evidence and argument
`
`presented in the Preliminary Response was not sufficient to show that CMI and
`
`CMO are the same entity (Decision 6-9). Addressing any privity between CMO
`
`and CMI in an overabundance of caution, we concluded that they were not in
`
`privity “on the date of service of the complaint” (Decision 6). SEL argues that a
`
`privy includes successor-in-interest with non-concurrent interest in property
`
`(Rehearing Req. 4-8), but SEL has not demonstrated what property that would be
`
`in its Preliminary Response. We acknowledge the merger of CMO with Innolux
`
`Display Corp. and TPO Displays to form CMI (Decision 6), but no specific
`
`property has been discussed that would support a finding of privity. As provided
`
`in our Decision, “even if both [CMO] and CMI produce[d] the accused LCD
`
`
`
`4
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`modules, that does not require us to find privity between [CMO] and CMI for
`
`purposes of this proceeding” (id.).
`
`
`
`SEL also argues our citation of Int’l Nutrition (Decision 6-7) has “no
`
`bearing on the facts here, which are governed by Brunswick and similar decisions”
`
`(Rehearing Req. 8-9). However, the cases discussed by SEL (Rehearing Req. 10-
`
`13) all involve successive infringement suits where both cases involve the same
`
`allegedly infringing products. For example, Brunswick involves two patent
`
`infringement actions related to the same alleging infringing products. Bruswick
`
`Corp. v. Chrysler Corp., 408 F.2d 335, 336 (7th Cir. 1969). The first infringement
`
`action resulted in a consent decree, after which the alleged infringer was acquired
`
`by another company. Id. The Court held that for purposes of the second suit, the
`
`acquiring company was in privity with the previous defendant because that
`
`company “succeeded in interest to the subject matter of the prior decree.” Id. at
`
`338 (emphasis added). That is not the case here.
`
`
`
`Lastly, SEL argues that the Board disregarded the SEC filings stating that
`
`the entirety of the CMO business and litigation history now exists within CMI and
`
`CMI‟s admissions that it had litigated the instant patent before (Rehearing Req. 13-
`
`17). SEL takes issue with the Decision‟s analysis of the SEC filings, but does so
`
`with respect to privy between CMO and CMI (Rehearing Req. 13-15). Our
`
`analysis, however, addressed whether they were the same party (Decision 7),
`
`which was the precise issue addressed by SEL in its Preliminary Response, as
`
`discussed supra. The fact that the Board did not analyze those SEC filings for
`
`truths other than what they were asserted for is not an indication that the Board
`
`misapprehended or overlooked any material matters. SEL also argues that the
`
`Board disregarded statements from litigation that provide proof that CMO is a
`
`predecessor-in-interest to CMI, evidence of the merger, and that CMI is a
`
`
`
`5
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`manufacturer of the accused LCD modules (Rehearing Req. 16-17). We did not,
`
`however, overlook such statements; we merely did not rely on those statements in
`
`our analysis of whether SEL had established “that CMO (or Innolux) was a privy
`
`of the (eventual) Petitioner CMI on the date of service of the complaint” (Decision
`
`6, emphasis added). As such, we conclude that the Board neither misapprehended
`
`nor overlooked the statements supplied by SEL.
`
`We continue to hold that CMI and CMO are not the same entity, and that the
`
`earlier complaint for infringement of the instant patent against CMO does not bar
`
`CMI from the instant proceedings under 35 U.S.C. § 315(b).
`
`
`
`B. Compliance with Mandatory Disclosure
`
`
`
`SEL argues that our Decision (Decision 9) improperly indicated that CMI
`
`was not required to notify the Board of the prior litigations indicated in SEL‟s
`
`Preliminary Response and that the 2004 CMO case would have a foreseeable effect
`
`on a decision in the instant proceeding (Rehearing Req. 17-20). SEL argues that
`
`Judge Patel in the CMO case “considered and ruled on some of the same invalidity
`
`arguments based on the same prior art as CMI advances in its Petition” (Rehearing
`
`Req. 18-19) as evidenced by the Judge‟s Memorandum & Order (EX 2010).
`
`However, SEL has failed to show that the Board misapprehended or overlooked
`
`the CMO case.
`
`
`
`We note that CMI‟s Petition informed the Board of the ex parte
`
`reexamination of the instant patent (Control No. 90/007,985), which was filed after
`
`the CMO case (Pet. 11-12). Although CMI did not place the citation in the
`
`“Related Matters” section of its Petition (Pet. 1-4), we will not choose form over
`
`substance in saying that CMI did not cite and discuss that reexamination
`
`proceeding; we conclude that it did. The CMO case was cited on page 1 of that
`
`
`
`6
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`reexamination proceeding, and the arguments raised in the reexamination largely
`
`parallel those in the CMO case. In SEL‟s Preliminary Response, SEL discussed
`
`the arguments and prior art applied in that prior ex parte reexamination (Prelim.
`
`Resp. 17-20), and mentions the CMO case and the Judge‟s Order only with respect
`
`to claim construction of certain terms and that prior consideration was made of the
`
`prior art (Prelim. Resp. 18, 24, 29, 31, 36, 39, 42, 43, 46, 49, 56). If, as SEL now
`
`asserts, the arguments and expert testimony “in the CMO litigation have an „effect‟
`
`on this proceeding” (Rehearing Req. 19), outside of the reexamination arguments
`
`and evidence, the filing of the Rehearing Request is the first instance that this issue
`
`has been raised. As such, we do not find that the Board misapprehended or
`
`overlooked the CMO case.
`
`
`
`C. Real Party-In-Interest
`
`
`
`SEL maintains that “[t]he Decision gives little or no weight to the statements
`
`and admissions made by all Defendants in the CMI Case”5 (Rehearing Req. 22).
`
`SEL also maintains that the Board overlooks other evidence, including the fact that
`
`“CMI‟s backup counsel [in this proceeding], Mr. Cordrey, also represents CMO
`
`USA, Acer America, ViewSonic, and VIZIO [in the CMI Case, so that] these
`
`parties surely have an opportunity to exercise control of the instant Petition
`
`through Mr. Cordrey” (Id.).
`
`The Decision considers these and similar arguments and evidence and
`
`determines that “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” (Dec. 8).
`
`
`5 The “CMI Case” constitutes a short-hand designation for Semiconductor Energy
`Laboratory Co., Ltd. v. Chimei Innolux Corp., et al., SACV12-0021-JST (C.D.
`Cal.) (filed Jan. 5, 2012).
`
`
`
`7
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`SEL fails to show that the Board misapprehended a material consideration in
`
`determining that SEL‟s Preliminary Response merely shows that the other co-
`
`defendants in the CMI Case agreed to be bound to any decision in this inter partes
`
`review proceeding and effectively ceded control to CMI over this proceeding.
`
`Even though Mr. Cordrey is backup counsel in this proceeding and may represent
`
`some of the co-defendants in the CMI Case as SEL contends, SEL does not show
`
`persuasively that the other co-defendants hired Mr. Cordrey to control this
`
`proceeding. Additionally, while possible that “these parties surely have an
`
`opportunity to exercise control of the instant Petition through Mr. Cordrey”
`
`(Rehearing Req. 22), we cannot decide what party is a real party-in-interest
`
`through a mere possibility of control that may be exerted.
`
`SEL also asserts that “Defendants made admissions to the Court in the CMI
`
`case that the „Defendants have moved expeditiously to prepare and file a
`
`comprehensive petition for an IPR of the Asserted Patents.‟” (Rehearing Req. 21
`
`(quoting EX 2011 at 17) (emphasis omitted)). However, as the Decision explains,
`
`SEL fails to show that each of the co-defendants actually “exercised control or
`
`provided funding for the instant Petition” (Dec. 8). For example, even if the
`
`statements made constitute “admissions” (Rehearing Req. 22) and are “legally
`
`binding” (id. at 23) as SEL characterizes them (see id. at 4-5 (citing Federal Rules
`
`and cases)), the co-defendants in the CMI Case may have “moved expeditiously”
`
`to cede control of the Petition to CMI to allow CMI to “prepare and file” it on
`
`behalf of the co-defendants. Additionally, we do not disregard or give little or no
`
`weight to the statements and admissions submitted by SEL; we merely do not find
`
`them to be conclusive that the co-defendants are all real parties-in-interest. In
`
`other words, we do not doubt that the statements were made, but we doubt that
`
`they must be dispositive of the finding we must make under 35 U.S.C. § 312(a)(2).
`
`
`
`8
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`Therefore, SEL fails to show that the Board overlooked or misapprehended
`
`SEL‟s arguments and evidence related to alleged control and funding by the other
`
`CMI Case co-defendants in this proceeding.
`
`
`
`D. Allegedly Misconstrued Aspects of the Claims
`
`
`
`SEL argues that the Board incorrectly construed certain claim terms “by not
`
`giving them a reasonable construction in light of the specification of the patent”
`
`(Rehearing Req. 25). Specifically, SEL argues that the claim limitations “at least
`
`two openings” and “a plurality of conductive spacers,” in claim 1, have not been
`
`properly interpreted to be in the common contact portion of the active matrix
`
`display device (Rehearing Req. 28-32). We do not agree.
`
`
`
`SEL appears to argue that the claims must be directed to a structure of the
`
`common contact portion of an active matrix display device because portions of the
`
`Specification are directed to a contact structure used in common contacts of an
`
`electrooptical device. (See EX 1001, col. 1, ll. 10-15). However, much of the
`
`Specification is directed to contact structures for electrically connecting together
`
`conducting lines formed on two opposite substrates generally (id.). All of the
`
`claims of the '480 Patent are directed to an “active matrix display device,” which is
`
`disclosed to have pixel regions and common contact portions (EX 1001, Figs. 6-8).
`
`We continue to conclude that claim 1 does not require such an added limitation,
`
`i.e., that the contact structures must be in the common contact portion (Decision
`
`14-15). Although the disclosed embodiments provide contact structures in the
`
`common contact portion, the Specification does not indicate that that structure is
`
`necessary, or that there can be no contact in the pixel regions.
`
`[T]he PTO applies to the verbiage of the proposed claims the broadest
`reasonable meaning of the words in their ordinary usage as they
`would be understood by one of ordinary skill in the art, taking into
`
`
`
`9
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`account whatever enlightenment by way of definitions or otherwise
`that may be afforded by the written description contained in the
`applicant's specification.
`
`In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`
`The claims are not as limited as SEL suggests, and adding an extra limitation
`
`
`
`
`
`to the recitations of “at least two openings” and “a plurality of conductive spacers,”
`
`in claim 1, clearly would be importing limitations from the Specification into the
`
`claims. Any construction of claim 1 that does not specifically require the openings
`
`and spacer to be in the common contact portion still reads upon all of the
`
`embodiments disclosed in the Specification. We conclude that the Decision did
`
`not overlook or misapprehend aspects of the Specification that were required to be
`
`reflected in the interpretation of the claims.
`
`In addition, SEL argues that the court in the CMO case provided a different
`
`construction of “plurality” (Rehearing Req. 30-31) that took into consideration that
`
`they occur in the common contact portion. However, such a claim construction
`
`was performed under a different standard, with different considerations and
`
`constraints. Cf. In re Morris at 1054 (“It would be inconsistent with the role
`
`assigned to the PTO in issuing a patent to require it to interpret claims in the same
`
`manner as judges who, post-issuance, operate under the assumption the patent is
`
`valid.”). We attribute no error to applying the correct standard in construing the
`
`claims.
`
`
`
`III. CONCLUSION
`
`Based on the foregoing discussion, SEL‟s Rehearing Request is granted to
`
`the extent that the Board has reconsidered its Decision, but SEL‟s requested
`
`reversal of the Decision is denied because SEL has not shown that the Decision
`
`overlooks or misapprehends any material point.
`
`
`
`10
`
`

`

`Case IPR2013-00028
`Patent 6,404,480 B2
`
`For Petitioner:
`
`Scott A. McKeown
`Gregory S. Cordrey
`OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
`cpdocketmckeown@oblon.com
`gcordrey@jmbm.com
`
`For Patent Owner:
`
`Eric J. Robinson
`Sean C. Flood
`ROBINSON INTELLECTUAL PROPERTY LAW OFFICE, P.C.
`erobinson@riplo.com
`sflood@riplo.com
`
`Stanley A. Schlitter
`Douglas R. Peterson
`Steptoe & Johnson, LLP
`sschlitt@steptoe.com
`dpeterson@steptoe.com
`
`
`
`
`
`
`11
`
`