UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`
`
`
`
`
`
`CASE IPR2013-00028
`PATENT 6,404,480
`
`
`
`
`
`
`
`RESPONSE OF THE PATENT OWNER
`
`

`

`TABLE OF CONTENTS
`I. BACKGROUND ................................................................................................. 1
`II. SUMMARY OF ARGUMENTS ........................................................................ 2
`A. CLAIMS 1, 5, 6, 10, 11, AND 15 OF THE ‘480 PATENT ARE NOT OBVIOUS OVER
`THE ADMITTED PRIOR ART AND MORIYAMA ........................................................... 2
`B. CLAIMS 2, 7, AND 12 OF THE ‘480 PATENT ARE NOT OBVIOUS OVER THE
`ADMITTED PRIOR ART, MORIYAMA, AND OHNO ..................................................... 5
`III. THE ‘480 PATENT ............................................................................................ 6
`A. CLAIMS OF THE ‘480 PATENT ............................................................................ 6
`B. CLAIMS OF THE ‘480 PATENT ARE DIRECTED TO A COMMON CONTACT PORTION
`
`7
`C. THE INVENTION OF THE ‘480 PATENT .............................................................. 10
`IV. THE APA .......................................................................................................... 15
`A. THE APA DISCLOSES AN INTERNAL CONDUCTING LINE 21 .............................. 15
`B. THE APA DISCLOSES A CONDUCTING PAD 22 .................................................. 16
`C. THE STRUCTURE OF THE APA IS DESIGNED TO PLACE A CONDUCTING SPACER IN
`THE OPENING OF THE INTERLAYER DIELECTRIC FILM 18 IN THE COMMON CONTACT
`PORTION ................................................................................................................. 17
`V. MORIYAMA .................................................................................................... 23
`A. MORIYAMA DISCLOSES ONLY ONE INTERLAYER INSULATING FILM ................. 23
`B. MORIYAMA DOES NOT DISCLOSE “A SECOND CONDUCTIVE FILM” AS CLAIMED
`
`25
`C. MORIYAMA DOES NOT DISCLOSE METAL PARTICLES DISPOSED IN A SEALING
`MATERIAL FOR SEALING LIQUID CRYSTAL .............................................................. 35
`VI. CLAIMS 1, 5, 6, 10, 11, AND 15 ARE PATENTABLE OVER THE APA IN
`VIEW OF MORIYAMA. ........................................................................................ 36
`A. THE PRIOR ART REFERENCES DO NOT DISCLOSE A “SECOND INTERLAYER
`INSULATING FILM HAVING AT LEAST TWO OPENINGS” AS CLAIMED ........................ 36
`1. As recited in the claims, “at least two openings” must be in each common
`contact portion .................................................................................................. 36
`2. The APA and Moriyama do not disclose a “second interlayer insulating
`film having at least two openings” ................................................................... 39
`B. THE PRIOR ART REFERENCES DO NOT DISCLOSE “WHEREIN AT LEAST ONE OF
`SAID CONDUCTIVE SPACERS IS HELD OVER SAID SECOND INTERLAYER INSULATING
`FILM” ..................................................................................................................... 43
`
`
`
`i
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`

`

`1. The claims require at least one conductive spacer to be held over the
`second interlayer insulating film in a common contact portion ....................... 43
`2. The APA and Moriyama do not disclose “at least one conductive spacer is
`held over said second interlayer insulating film” as properly construed ........ 44
`3.
`It is not obvious to place conducting spacers on the highest surface ........ 51
`C. THE PRIOR ART REFERENCES DO NOT DISCLOSE “WHEREIN SAID CONDUCTIVE
`SPACERS ARE DISPERSED INTO A SEALING MATERIAL” ........................................... 54
`1. As recited in the claim 6, “sealing material” seals liquid crystal material
`
`54
`2. The APA and Moriyama do not disclose “conductive spacers are
`dispersed into a sealing material” as claimed ................................................. 55
`VII. CLAIMS 2, 7, AND 12 ARE PATENTABLE OVER THE APA IN VIEW
`OF MORIYAMA AND OHNO............................................................................... 57
`VIII. DECISION INSTITUTING TRIAL SHOULD BE VACATED .................. 58
`A. THE PETITION IS BARRED BY THE STATUTE OF LIMITATIONS IN 35 U.S.C.
`§315(B) .................................................................................................................. 58
`B. THE PETITION IS BARRED FOR NONCOMPLIANCE WITH THE MANDATORY
`DISCLOSURE RULES OF 37 C.F.R. §42.8(B)(2) ...................................................... 59
`C. THE PETITION IS BARRED BECAUSE IT FAILED TO IDENTIFY ALL REAL-
`PARTIES-IN-INTEREST ............................................................................................ 60
`IX. CONCLUSION ................................................................................................. 60
`
`
`
`ii
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`
`
`EXHIBIT LIST
`
`Previously filed
`Exhibit 2001 – Complaint, Semiconductor Energy Laboratory Co., Ltd. v. Chimei
`Innolux Corp., et al., Case No. SACV 12-0021-JST (C.D. Cal) .
`
`Exhibit 2002 – Complaint, Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei
`Optoelectronics Corp., et al., Case No. C-04-04675-MHP (N.D. Cal).
`
`Exhibit 2003 – Waiver of Service, Semiconductor Energy Laboratory Co., Ltd. v.
`Chi Mei Optoelectronics Corp., et al.
`
`Exhibit 2004 – Certificate of Service, Semiconductor Energy Laboratory Co., Ltd.
`v. Chi Mei Optoelectronics Corp., et al.
`
`Exhibit 2005 – Chimei Innolux Corp. Prospectus, filed with Securities and
`Exchange Commission on September 4, 2012 (retrieved via the SEC’s EDGAR
`system).
`
`Exhibit 2006 – Complaint, Semiconductor Energy Laboratory Co., Ltd. v. Acer
`Inc., et al., Case No. C-02-02800-WHA (N.D Cal).
`
`Exhibit 2007 – Defendants’ Motion to Transfer Venue, Semiconductor Energy
`Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.
`
`Exhibit 2008 – Defendants’ Reply to Opposition to Motion to Transfer Venue,
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.
`
`Exhibit 2009 – Docket Sheet, Semiconductor Energy Laboratory Co., Ltd. v. Acer
`Inc., et al.
`
`Exhibit 2010 – Memorandum and Order, Semiconductor Energy Laboratory Co.,
`Ltd. v. Chi Mei Optoelectronics Corp., et al.
`
`Exhibit 2011 – Defendants’ Motion to Stay Litigation Pending Outcome of Inter
`Partes Review, Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux
`Corp., et al.
`
`Exhibit 2012 – Supplemental Declaration of Gregory S. Cordrey in Support of
`Defendants' Motion for Stay, Semiconductor Energy Laboratory Co., Ltd. v.
`Chimei Innolux Corp., et al.
`
`
`
`iii
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`

`

`to Stay,
`their Motion
`in Support of
`Exhibit 2013 – Defendants’ Reply
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.
`
`Exhibit 2014 – Request for Ex Parte Reexamination (No. 90/007985)
`
`Exhibit 2015 – Office Action in Ex Parte Reexamination, dated July 10, 2007,
`Reexamination No. 90/007985
`
`Exhibit 2016 – Patent Owner’s Statement of the Interview (37 CFR § 1.560) and
`Supplemental Response, Reexamination No. 90/007985
`
`Exhibit 2017 – Notice of Intent to Issue Ex Parte Reexamination Certificate,
`Reexamination No. 90/007985
`
`Exhibit 2018 – Ex Parte Reexamination Certificate, Reexamination No. 90/007985
`
`Joinder,
`of
`Exhibit 2019 – Defendant Westinghouse Digital's Notice
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.
`
`Exhibit 2020 – Chi Mei Optoelectronics News Release, dated Nov. 20, 2009
`
`Exhibit 2021 – [Proposed] Patent Owner’s Requests for Production To
`
`Petitioner
`
`Exhibit 2022 – [Proposed] Patent Owner’s Interrogatories To Petitioner
`
`Exhibit 2023 – [Proposed] Patent Owner’s Requests for Admission To
`
`Petitioner
`
`Currently filed
`
`Exhibit 2024 – PCT Application No. WO97/10530 to Yanagawa et al. (including
`translation)
`
`Exhibit 2025 – U.S. Patent No. 5,636,329 to Sukegawa et al.
`
`Exhibit 2026 – Declaration of Paul A. Kohl, Ph.D.
`
`Exhibit 2027 – Stanley Wolf Ph.D., Silicon Processing for the VLSI Era, Vol. 2:
`Process Integration, pp. 124-126 (Lattice Press 1990).
`
`Exhibit 2028 – U.S. Patent No. 6,219,124 to Lee et al.
`iv
`
`
`
`

`

`Exhibit 2029 – Japanese Patent No. 9-33933 to Kaneshiro et al. (including
`translation)
`
`Exhibit 2030 – U.S. Patent No. 6,392,735 to Tani
`
`Exhibit 2031 – Mentor Graphics Corp. v. Rea, case no. 1:2013cv00518 (E.D. Va.
`June 7, 2013), Dkt. 43, Reply Memorandum Of Law In Support Of Defendant’s
`Motion To Dismiss Or, In The Alternative, For Summary Judgment
`
`Exhibit 2032 – Deposition transcript of Miltiadis Hatalis, Ph.D dated May 19,
`2013
`
`Exhibit 2033 – Declaration of Miltiadis Hatalis, Ph.D Exhibit 1005 in IPR2013-
`00066
`
`Exhibit 2034 – U.S. Patent No. 7,436,480 to Kang et al.
`
`
`
`
`
`
`
`v
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`

`

`Semiconductor Energy Laboratory Co., Ltd. (the “Patent Owner”) hereby
`
`responds to the Decision to Initiate Trial for Inter Partes Review of claims 1, 2, 5-
`
`7, 10-12 and 15 of United States Patent No. 6,404,480 (“the ‘480 patent”).
`
`I.
`
`BACKGROUND
`
`Petitioner Innolux Corporation requested inter partes review of claims 1, 2,
`
`5-7, 10-12, and 15 of the ‘480 patent. Paper No. 2 (“Petition” or “Pet.”). The
`
`Patent Owner submitted a preliminary response under 37 C.F.R. § 42.107(b) on
`
`January 25, 2013. Paper No. 11 (“Preliminary Response” or “Preliminary Resp.”).
`
`On March 21, 2013, the Patent Trial and Appeal Board (the “Board”) issued a
`
`Decision to Initiate Trial for Inter Partes Review as to claims 1, 2, 5-7, 10-12 and
`
`15 of the ‘480 patent for obviousness over the Admitted Prior Art (“APA”), JP
`
`Patent Publication 05-243333 (“Moriyama”), and U.S. Patent No. 4,600,273
`
`(“Ohno”). Paper No. 14 (“Decision” or “Dec.”). The Board denied the Petition as
`
`to all other grounds of unpatentability set forth in the Petition.
`
`The Patent Owner filed a Request for Rehearing, Paper No. 18 (“Reh.
`
`Request”), seeking reversal of the Board’s Decision to institute an inter partes
`
`review of claims 1, 2, 5-7, 10-12, and 15 of the ‘480 patent. On April 30, 2013, the
`
`Board issued a Decision denying the Patent Owner’s Request for Rehearing. Paper
`
`No. 27 (“Rehearing Decision” or “Reh. Dec.”).
`
`
`
`
`
`1
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`

`

`II.
`
`Summary of Arguments
`A. Claims 1, 5, 6, 10, 11, and 15 of the ‘480 Patent Are Not Obvious
`Over the Admitted Prior Art and Moriyama
`
`Claims 1, 5, 6, 10, 11, and 15 of the ‘480 patent are not obvious over the
`
`APA and Moriyama, even if they could be properly combined, because all of the
`
`claim elements are not disclosed in these references. More specifically, the APA
`
`and Moriyama do not disclose a “second interlayer insulating film having at
`
`least two openings,” as recited by independent claims 1, 6, and 11. Patent
`
`Owner’s expert, Dr. Kohl, states that when reading the claims in light of the
`
`specification, a person of ordinary skill in the art would understand that the “at
`
`least two openings” recited in the claims are formed at each common contact
`
`portion. See Ex. 2026, Declaration of Paul A. Kohl (“Kohl Decl.”), at ¶ 58. The
`
`invention of the ‘480 patent is directed to a common contact portion, and the
`
`conductive spacers can only be positioned in the common contact portion and not
`
`in the pixel region. Id. at ¶¶ 39 and 66. Thus, one of ordinary skill in the art would
`
`construe the claim phrase “second interlayer insulating film having at least two
`
`openings” to mean that the two openings are formed in the common contact
`
`portion.
`
` The APA does not disclose this limitation. Instead, Fig. 2A (reproduced
`
`below) illustrates an important difference between the invention of the ‘480 patent
`
`and the APA because the APA has only a single opening 110 that covers nearly the
`
`
`
`2
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`

`

`entire common contact portion where the
`
`dielectric film 104 has been fully removed.
`
`Ex. 1001, the ‘480 patent, col. 6, ll. 12-18. Fig.
`
`13 of the ‘480 patent also shows a common
`
`contact portion with only a single opening in
`
`the APA. Accordingly, the APA does not
`
`disclose “said second interlayer insulating film having at least two openings.”
`
`Moriyama does not cure this deficiency of the APA. Instead, Moriyama
`
`only discloses a structure having a single interlayer insulating film (insulating film
`
`5), and therefore, cannot have both a “first interlayer insulating film” and a
`
`“second interlayer insulating film” as the claims require. In fact, the insulating
`
`film 5 of Moriyama (Figs. 7a and 7b) is similar to the first interlayer insulating
`
`film of the APA (Fig. 13), in that it is disposed between the gate metal layer 7 and
`
`the source/drain electrodes 11/12.1 Because Moriyama does not disclose a “second
`
`interlayer insulating film,” Moriyama also does not disclose a “second interlayer
`
`insulating film having at least two openings” as required by independent claims 1,
`
`6, and 11. Accordingly, since the APA does not disclose “at least two openings” in
`
`the second interlayer insulating film and Moriyama does not disclose a “second
`
`
`1 As shown in Fig. 13 of the ‘480 patent, the first interlayer insulating film of the
`APA is disposed between the gate metal layer and the source/drain electrodes of
`the TFT 17 in the pixel region.
`
`
`
`3
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`

`

`interlayer insulating film,” these reference do not teach or suggest the claim
`
`limitation “wherein said first conductive film is connected with said second
`
`conductive film in said openings,” as recited by the independent claims.
`
`The APA and Moriyama also do not disclose “wherein at least one of said
`
`conductive spacers is held over said second interlayer insulating film,” as
`
`recited in independent claims 1, 6, and 11.
`
`Although the APA discloses having first and second interlayer insulating
`
`films as shown in Fig. 13 of the ‘480 patent, it does not disclose or suggest placing
`
`conductive spacers over the second interlayer insulating film (interlayer dielectric
`
`film 18). Instead, the conducting spacer 26 is only shown to be held over the first
`
`interlayer insulating film in Fig. 13. Similarly, Moriyama only discloses placing a
`
`conducting spacer (metal particle 16) over one interlayer insulating film (insulating
`
`film 5). As stated above, insulating film 5 is similar to the first interlayer
`
`insulating film of the APA. Thus, both the APA and Moriyama teach placing a
`
`conducting spacer over one interlayer insulating film. Neither reference teaches
`
`placing a plurality of conducting spacers over a second interlayer insulating film.
`
`Therefore, the APA and Moriyama combined do not teach or suggest “wherein at
`
`least one of said conductive spacers is held over said second interlayer insulating
`
`film,” as required by the claims.
`
`Furthermore, independent claim 6 recites “wherein said conductive spacers
`
`
`
`4
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`

`

`are dispersed into a sealing material.” Given its plain meaning in the art in light
`
`of the specification of the ‘480 patent, a “sealing material” in the claims refers to a
`
`material used to fix or seal liquid crystal material between the two substrates of a
`
`display device. Ex. 1001, the ‘480 patent, col. 11, ll. 1-37; and Ex. 2026, Kohl
`
`Decl., ¶ 69.
`
`The APA does not disclose or suggest that its conducting spacer 26 is
`
`dispersed into a sealing material. Also, Moriyama discloses that “19 is a seal
`
`material for plugging the liquid crystal,” and Moriyama does not disclose or
`
`suggest dispersing the alleged conductive spacers (metal particles 16) into the seal
`
`material 19. Ex. 1004, Moriyama, ¶ 20. Therefore, the APA and Moriyama do not
`
`disclose the limitation “wherein said conductive spacers are dispersed into a
`
`sealing material,” as recited in claim 6.
`
`Accordingly, claims 1, 5, 6, 10, 11, and 15 are patentable over the APA and
`
`Moriyama.
`
`B. Claims 2, 7, and 12 of the ‘480 Patent Are Not Obvious Over the
`Admitted Prior Art, Moriyama, and Ohno
`
`The Patent Owner respectfully submits that dependent claims 2, 7, and 12,
`
`which depend from independent claims 1, 6, and 11, respectively, are not obvious
`
`in view of the APA, Moriyama, and Ohno. As discussed in the above section, the
`
`APA and Moriyama combined do not disclose at least the following claim
`
`elements: “second interlayer insulating film having at least two openings”;
`
`
`
`5
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`

`

`“wherein at least one of said conductive spacers is held over said second interlayer
`
`insulating film”; or “wherein said conductive spacers are dispersed into a sealing
`
`material.” Ohno does not cure the above-mentioned deficiencies in the prior art.
`
`Accordingly, dependent claims 2, 7, and 12 are also patentable.
`
`III. The ‘480 Patent
`A. Claims of the ‘480 Patent
`Independent claim 1, which is the broadest claim challenged by the
`
`Petitioner, recites the following:
`
`(a) An active matrix display device comprising:
`(b) a first substrate;
`(c) a first interlayer insulating film provided over said first
`substrate;
`(d) a first conductive film provided on said first interlayer
`insulating film;
`(e) a second interlayer insulating film provided on said first
`conductive film, said second interlayer insulating film having at
`least two openings;
`(f) a second conductive film provided on said second interlayer
`insulating film and in said openings;
`(g) a second substrate opposed to said first substrate;
`(h) a third conductive film provided on said second substrate;
`and
`(i) a plurality of conductive spacers held between said first
`substrate and said second substrate;
`(j) wherein said first conductive film is connected with said
`second conductive film in said openings;
`(k) 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.
`6
`
`
`
`

`

`Independent claim 6 includes the following element in addition to those
`
`recited in claim 1:
`
`(l) wherein said conductive spacers are dispersed into a sealing
`material.
`Also, independent claim 11 has the following element in addition to those
`
`recited in claim 1:
`
`(m) wherein each of said openings occupies an area larger than
`an area occupied by each of said conductive spacers.
`The challenged dependent claims 2, 7, and 12 recite “wherein each of said
`
`conductive spacers is a sphere coated with gold”; and dependent claims 5, 10, and
`
`15 recite “wherein said active matrix display device is a liquid crystal display
`
`device.”
`
`B. Claims of the ‘480 patent are directed to a common contact
`portion
`
`It is respectfully submitted that the Decision and Rehearing Decision
`
`incorrectly construed certain claim terms in the ‘480 patent by not giving them a
`
`reasonable construction in light of the specification of the patent. As the
`
`Decision stated, 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).” Dec., at 11. Further, the Board cited
`
`the Federal Circuit’s en banc decision in Phillips v. AWH Corp., where the Federal
`
`Circuit expressly recognized that the “Patent and Trademark Office (‘PTO’)
`
`
`
`7
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`

`

`determines the scope of claims in patent applications not solely on the basis of the
`
`claim language, but upon giving claims their broadest reasonable construction ‘in
`
`light of the specification as it would be interpreted by one of ordinary skill in the
`
`art.’” See 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citations omitted).
`
`It is respectfully submitted that the Board incorrectly found in the Rehearing
`
`Decision that “claim 1 does not require such an added limitation, i.e., that the
`
`contact structures must be in the common contact portion” and “[a]lthough 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.” Reh. Dec., at 9. In fact, the contact structures
`
`(conducting spacers) must be in a common contact portion and cannot be located in
`
`the pixel region. See Exhibit 2026, Kohl Decl., ¶¶ 26-29, 38, 39, and 54. As Dr.
`
`Kohl explains in paragraph 54 of his declaration, if a conducting spacer made an
`
`electrical connection between the two opposing substrates in the pixel region, the
`
`LCD would not function because no electric field could be established across the
`
`liquid crystal material. Further, a skilled artisan would understand that the first and
`
`second conductive films, on the TFT substrate, would only be electrically
`
`connected to the third conductive film on the counter substrate for the purpose of
`
`establishing the common potential on the counter electrode at the common contact
`
`portion. Ex. 2026, Kohl Decl., ¶ 54. It is for these reasons that the ‘480 patent
`
`
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`8
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`

`

`consistently discloses throughout that insulating spacers 25 or 402 (made of a
`
`polymeric material) are disposed in the pixel region, and conducting spacers 26,
`
`107, or 401 are disposed in the common contact portion.
`
`Furthermore, the specification of the ‘480 patent discloses that all the
`
`elements in independent claims 1, 6, and 11 that establish an electrical connection
`
`between a first conductive film on a first substrate and a third conductive film on a
`
`counter substrate are in a common contact portion. The “Field of the Invention”
`
`states that “[t]he present invention relates to a contact structure for electrically
`
`connecting
`
`together conducting
`
`lines formed on
`
`two opposite substrates,
`
`respectively, via conducting spacers and, more particularly, to a contact structure
`
`used in common contacts of an electrooptical device such as a liquid crystal
`
`display.” Ex. 1001, the ‘480 patent, col. 1, ll. 10-16 (emphasis added). In
`
`addition, the Abstract of the ‘480 patent states that “[t]here is disclosed a contact
`
`structure for electrically connecting conducting lines formed on a first substrate of
`
`an electrooptical device such as a liquid crystal display with conducting lines
`
`formed on a second substrate via conducting spacers.” (Emphasis added). In light
`
`of the knowledge possessed by a person of ordinary skill in the art and the
`
`specification of the ‘480 patent, one would understand that the ‘480 patent claims
`
`are directed to a structure of a common contact portion of an active matrix display
`
`device. Ex. 2026, Kohl Decl., ¶¶ 26-29.
`
`
`
`9
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`

`

`C. The invention of the ‘480 patent
`In a liquid crystal display (“LCD”), it is important that the spacing between
`
`the two substrates sandwiching the liquid crystal material be uniform across the
`
`LCD and among different LCDs so that good image quality can be provided and
`
`reliable electrical connections between conductive films on the two substrates are
`
`maintained. Ex. 1001, the ‘480 patent, col. 2, l. 44-col. 3, l. 18. At the time of the
`
`invention of the ‘480 patent, prior designs of LCDs, such as the APA, experienced
`
`poor electrical connections between conductive films on the TFT substrate and on
`
`the counter substrate. Ex. 2026, Kohl Decl., ¶¶ 29, and 79. The inventors of the
`
`‘480 patent discovered that it was the non-uniform cell gap in the common contact
`
`portion of the LCD that caused the poor electrical connection. Id.; Ex. 1001, the
`
`‘480 patent, col. 2, ln. 30 – col. 3, ln. 18.
`
`The APA shown in Fig. 13 of the ‘480 patent illustrates this problem. In the
`
`APA, uniform insulating spacers 25 could achieve a uniform cell gap Gp in the
`
`pixel area, however, variations in cell gap Gc2 in the common contact portion
`
`could occur among different cells or different common contact portions because of
`
`the variation of the thickness “t” of the interlayer dielectric film 18. See Ex. 1001,
`
`the ‘480 patent, col. 2, ll. 39-65. It was difficult to achieve a uniform thickness “t”
`
`
`2 The cell gap Gc of the common contact portion is about equal to the sum of the
`cell gap Gp in the pixel region 12 plus the thickness “t” of the interlayer dielectric
`film 18 as shown in Fig. 13 of the ‘480 patent.
`
`
`
`10
`
`

`

`of the interlayer dielectric film 18. An overly thick interlayer insulating film may
`
`increase the cell gap Gc in the common contact portion to a value that makes it
`
`difficult (or impossible) for a standard sized conductive spacer in the common
`
`contact portion from forming an adequate electrical contact between the
`
`conducting pad 22 and the counter electrode 24. Id. at col. 3, ll. 7-18. In such a
`
`case, the voltage potential of the counter electrode would not be clamped to a
`
`common potential and a display cannot be provided. Id.; Ex 2026, Kohl Decl., ¶¶
`
`26-29, and 79.
`
`To correct this problem, the inventors of the ‘480 patent redesigned the
`
`common contact portion of LCDs such that conductive spacers are held over the
`
`second interlayer insulating film. Id. at Fig. 6. The ‘480 patent discloses a
`
`redesigned common contact portion of an LCD, including the addition of multiple
`
`openings in the second interlayer insulating film at a common contact portion and
`
`the placement of conducting spacers over the second interlayer insulating film at a
`
`common contact portion, which allows for good electrical connection between
`
`conductive films on the two substrates of the LCD while not detracting from a
`
`uniform gap between the substrates. Id. at col. 3, ll. 21-27.
`
`
`
`11
`
`

`

`This LCD design includes a plurality of conductive spacers 401 positioned
`
`between two substrates in a common contact portion as shown in Fig. 6 of the ‘480
`
`patent, which is reproduced herein with annotations. Non-conductive spacers 402
`
`are positioned between the two substrates in the pixel region as shown in Fig. 6.
`
`These non-conductive spacers 402 maintain the cell gap between the opposing
`
`substrates. Id. at col. 11, ll. 20-22. The conductive spacers 401, on the other hand,
`
`are resilient, which facilitates making a good electrical connection while not
`
`interfering with the cell gap established by the non-conductive spacers. The ‘480
`
`patent discloses that the diameter of the conducting spacers 401 may be larger than
`
`the cell gap. For example, the specification discloses conducting spacers 401
`
`having a diameter of 3.5 microns while the cell gap set by the non-conductive
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`spacers is 3 microns. Id. at col. 11, ll. 15-18. When the diameter of the conductive
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`spacer is larger than the cell gap (i.e., non-conductive spacers 402), the conductive
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`spacers become crushed (i.e., compressed) when the opposing substrates are
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`clamped
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`together,
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`which
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`increases
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`reliability of
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`the
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`electrical connection between
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`the two opposing substrates. Id.
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`at col. 11, ll. 50-61.
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`Also, as discussed above,
`
`
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`12
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`

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`there can be no conductive spacers in the pixel region or the LCD will not
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`function. Ex. 2026, Kohl Decl., ¶ 54. In the pixel region, the pixel electrode on
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`the TFT substrate and the counter electrode on the opposing substrates must be at
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`different voltages for the liquid crystal display device to function. Id. at ¶¶ 26-29,
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`38, and 39. There could be no potential difference in voltage between the
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`electrodes on the two opposing substrates if conductive spacers were disposed in
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`the pixel region. Id. Thus, the conductive spacers must be located in a common
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`contact portion of the liquid crystal display device where it is desirable for the
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`conductive films on the two opposing substrates to have the same voltage. Id.
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`The embodiment shown in Fig. 6 includes a first substrate 201, a first
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`interlayer insulating film 315 provided over the first substrate 201, and a first
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`conductive film 318 provided on the first interlayer insulating film 315. As shown
`
`in Fig. 6, the first interlayer insulating film 315 covers both the pixel region and
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`the common contact portion, and the first interlayer insulating film 315 is disposed
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`between two conductive layers. Specifically, the first interlayer insulating film 315
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`is disposed between the gate electrode and the source/drain electrode of the thin-
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`film transistor in the pixel region. Ex. 1001, the ‘480 patent, Figs. 5E and 6; Ex.
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`2026, Kohl Decl., ¶¶ 32 and 33.
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`Further, the invention of the ‘480 patent includes a second interlayer
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`insulating film 319 provided on the first conductive film 318, the second interlayer
`
`
`
`13
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`

`

`insulating film having at least two openings in a common contact portion as shown
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`in Fig. 6. The specification and figures of the ‘480 patent consistently show at
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`least two openings in the second interlayer insulating film in a common contact
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`portion. Ex. 1001, the ‘480 patent, Figs. 1, 2A, 5F, 5G, and 6-10.3 The plurality of
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`openings in a common contact portion allow enough surface area over the second
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`interlayer insulating film for the conducting spacers to sit over the second
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`interlayer insulating film. Ex. 2026, Kohl Decl., ¶ 42.
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`A second conductive film 323 is provided on the second interlayer insulating
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`film 319 in a common contact portion. As shown in Fig. 6 of the ‘480 patent, the
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`second conductive film 323 is in contact with the first conductive film 318 in the
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`openings of the second interlayer insulating film 319 in a common contact portion.
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`Fig. 6 also shows a second substrate 251 on which a third conductive film 252 (i.e.,
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`the counter electrode) is formed. The conductive spacers 401 are positioned over
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`the second interlayer insulating film 319 to create a reliable electrical connection
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`between the second conductive film 323 and the third conductive film 252 on the
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`second substrate 251. Ex. 1001, the ‘480 patent, col. 10, ll. 43-49.
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`Placing the conductive spacers 401 over the second interlayer insulating film
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`319 in a common contact portion, the second interlayer insulating film including at
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`least two openings to connect the first and second conductive films 318 and 323,
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`3 Fig. 2A of the ‘480 patent depicts twenty-five (25) openings in the common
`contact portion.
`
`
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`14
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`

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`helped solve the problems found in the prior art LCD design. By placing the
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`conductive spacers 401 on top of the second interlayer insulating film, the cell gap
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`will remain uniform despite any variations in the thickness of the second interlayer
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`insulating film, and a good electrical connection will remain between the second
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`and third conductive films. Ex. 2026, Kohl Decl., ¶¶ 31 , 38, 57, and 67.
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`IV. The APA
`A. The APA discloses an internal conducting line 21
`As shown in Fig. 13, the prior art LCD includes a first substrate 11 and an
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`interlayer insulating film provided on the first substrate between the gate metal and
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`the source/drain electrode of the thin-film transistor. Internal conducting lines 21
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`provided on the first interlayer insulating film are located in the common contact
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`portion. Although Petitioner appears to identify both the internal conducting lines
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`21 and the source/drain electrodes as “a first conductive film” by highlighting each
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`structure on page 20 of the
`
`Petition,
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`the
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`combined
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`source/drain electrodes and
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`internal conducting lines 21
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`cannot be equivalent to a
`
`single conductive film. Ex.
`
`2026, Kohl Decl., ¶¶ 80-83. Although the source/drain electrodes and the internal
`
`
`
`15
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`

`

`conducting line 21 are formed from the same starting film, this starting film is
`
`patterned into separate structures having different functions. Id. In addition, if both
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`the internal conducting line 21 in the common contact portion and the source/drain
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`electrodes of the TFT in the pixel region were part of the same conductive film (i.e.
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`same structure), the common contact portion would be short-circuited to the TFT
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`in the pixel region, and the TFT would not function. Id. Thus, the source/drain
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`electrodes do not constitute any part of a claimed “first conductive film.” Id.
`
`The APA discloses a conducting pad 22
`
`B.
`The APA also includes a conducting pad 22 provided in the opening of the
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`interlayer dielectric film 18 to make electrical contact with the internal conducting
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`line 21. Although Petitioner appears to identify both the conducting pad 22 and the
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`pixel electrode 19 as “a second conductive film” by highlighting each structure on
`
`page 21 of the Petition, the combined conducting pad 22 and pixel electrode 19
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`cannot be equivalent t