UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`Petitioner,
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner.
`
`Case IPR2013-00028
`U.S. Patent 6,404,480
`
`PETITIONER’S OPPOSITION TO MOTION TO AMEND
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`Petitioner,
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner.
`
`Case IPR2013-00028
`U.S. Patent 6,404,480
`
`PETITIONER’S OPPOSITION TO MOTION TO AMEND
`
`
`
`
`
`EXHIBIT LIST
`
`Previously Filed
`
`
`Exhibit 1001
`
`Exhibit 1004
`
`U.S. Patent No. 6,404,480 to Hirakata
`
`Unexamined Patent Application Publication H5-243333
`("Moriyama")
`
`Exhibit 1005
`
`U.S. Patent No. 4,600,273 to Ohno
`
`Currently Filed
`
`
`Exhibit 1009
`
`Exhibit 1010
`
`Exhibit 1011
`
`Deposition transcript of Miltiadis Hatalis, Ph.D. dated May
`20, 2013
`Deposition transcript of Paul A. Kohl, Ph.D. dated August 14,
`2013
`
`Declaration of Miltiadis Hatalis, Ph.D. in support of Innolux
`Corp.'s Opposition to Amendment and Reply
`
`
`
`
`
`
`
`
`Petitioner Innolux Corporation ("Innolux") hereby provides its opposition to
`
`Patent Owner Semiconductor Energy Laboratory Co., Ltd.'s ("SEL" or "Patent
`
`Owner") Motion to Amend ("Motion") claims 1, 6 and 11 of United States Patent
`
`No. 6,404,480 ("the '480 Patent"). For the reasons stated below, SEL’s Motion
`
`should be denied.
`
`I. Legal Standards
`
`
`
`The Patent Owner, as the moving party, bears the burden to show entitlement
`
`to the requested relief. See 37 C.F.R § 42.20(c). For a patent owner's motion to
`
`amend, 37 C.F.R §42.20(c) places the burden on SEL to show a patentable
`
`distinction of each proposed substitute claim over the prior art of record and prior
`
`art known to the patent owner. See Idle Free Systems, Inc. v. Bergstrom, Inc.,
`
`IPR2012-00027, Paper 26 ("Some representation should be made about the specific
`
`technical disclosure of the closest prior art known to the patent owner, and not just a
`
`conclusory remark that no prior art known to the patent owner renders obvious the
`
`proposed substitute claims."). A motion to amend may be denied where the
`
`amendment does not respond to a ground of unpatentability involved in the trial.
`
`See Id.
`
`
`
`A motion to amend may also be denied if it introduces new matter. 35 U.S.C.
`
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). The burden is on the patent owner to
`
`show written description support in the original disclosure of the patent. The
`
`written description test is whether the original disclosure of the application relied
`
`
`
`1
`
`
`
`upon reasonably conveys to a person of ordinary skill in the art that the inventor had
`
`possession of the claim subject matter as of the filing date. See IPR2-12-00005,
`
`Paper 27 (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F. 3d 1336, 1351 (Fed.
`
`Cir. 2010) (en banc)). If the claim language does not appear in ipsis verbis in the
`
`original disclosure, a mere citation to the original disclosure without any
`
`explanation as to why a person or ordinary skill in the art would have recognized
`
`that the inventor possessed the claimed subject matter as a whole may be
`
`inadequate. See IPR2-12-00005, Paper 27.
`
`II. The Proposed Amendment Does Not Obviate A Ground of
`
`Unpatentability
`
`
`
`As a result of the Board's refusal of SEL's position that the claimed elements
`
`must be limited to a single common contact portion, SEL now seeks to amend the
`
`claims to make this an express limitation. See Decision at 13-15; see also Decision
`
`on Request for Rehearing at 9-10 ("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.").
`
`SEL's proposed claim amendments would require (1) that the "at least two
`
`openings" and "plurality of conductive spacers" to be present in a single common
`
`contact portion and (2) that the second interlayer insulating film is provided over a
`
`source electrode and a drain electrode in the pixel region.
`
`
`
`2
`
`
`
`
`
`However, the proposed substitute claims 31, 32 and 33 are disclosed in the
`
`prior art and remain obvious in view of the original prior art presented in the
`
`Petition, i.e. the Admitted Prior Art ("APA") and Moriyama.
`
`
`
`
`
`
`
`
`A. The Proposed Amendment of "a plurality of conductive spacers
`
`held between said first substrate and said second substrate in said
`
`single common contact portion" Do Not Distinguish, or Overcome,
`
`The Prior Art
`
`1. Moriyama discloses the presence of multiple conductive
`spacers in a single common contact portion
`
`Moriyama discloses a plurality of conductive spacers, i.e. metal particles 16,
`
`in a single common contact portion to provide a uniform distance, and an electrical
`
`connection, between opposing substrates 14. See Ex. 1004 at ¶¶ 7, 20 and Figs. 4, 5
`
`and 7; see also Deposition transcript of Miltiadis Hatalis, Ph.D. dated May 20, 2013
`
`("Ex. 1009") at 68:16-70:17. The copper plating pattern 21 and transparent metal
`
`layer 4 are connected to each other via the metal particles 16. See Ex. 1009 at 69:6-
`
`8; see also Ex. 1004 at Fig. 7A. Moriyama's Figure 7(a) shows a plurality of
`
`conductive spacers 16 held over the second interlayer insulating film 5 and in
`
`contact with the second conductive film (layers 3 and 4) and third conductive film
`
`on the counter-substrate. Id.; Ex. 1009 at 164:7-165:7. Similarly, Figure 4 of
`
`Moriyama (and the associated cross-section of Figure 5) shows a plurality of
`
`conductive spacers 16 held over the insulating film and making contact with the
`
`second and third conductive films. Id. SEL's expert, Dr. Kohl, agreed that
`
`Moriyama discloses a plurality of conductive spacers which are held over an
`
`
`
`3
`
`
`
`interlayer insulating film. See Deposition transcript of Paul A. Kohl, Ph.D. dated
`
`August 14, 2013 ("Ex. 1010") at 27-28, 34 ("Moriyama has one insulating layer
`
`above underlay metal 1 and that is insulating layer 5. That's the only insulator
`
`above underlay metal 1 in Moriyama. And that is a possibility that this is layer 5,
`
`and if it were indeed layer 5, then as I described in my lengthy answer a few
`
`minutes ago, that the metal particles 6 (sic) are located above the single insulating
`
`layer 5 in Fig. 5.").
`
`2. The APA discloses the presence of multiple conductive
`spacers in a single common contact portion
`
`
`
`Figure 13 of the APA reasonably suggests to one of ordinary skill in the art
`
`that a plurality of conductive spacers can be contained within a single common
`
`contact portion. Although Figure 13 only depicts one conductive spacer 26, this
`
`illustration must be viewed in context. One of ordinary skill in the art would
`
`understand that the single conductive spacer 26 shown in Figure 13 is merely
`
`illustrative and that the opening would contain many conductive spacers. See Ex.
`
`1009 at 23:20-24:22. The purpose of the APA's Figure 13 is to show the difference
`
`in diameter between the conductive spacer 26 and the insulating spacers 25 resulting
`
`from the thickness of insulating film 18, not to provide an accurate depiction of the
`
`number of spacers in a given region. Id.
`
`
`
`One of ordinary skill would readily recognize that Fig. 13 is not drawn to
`
`scale and that the relative size of conductive spacer 26 and the horizontal length of
`
`
`
`4
`
`
`
`conductive layers 21 and 22 as depicted are grossly exaggerated. See Ex. 1009 at
`
`24:2-27:6. In reality, the diameter of conductive spacer 26 would be far smaller
`
`than the length of conductive layers 21 and 22 (and the opening in insulating layer
`
`18), and there would be room for many conductive spheres within the opening. Id.
`
`Figure 12 of the APA confirms this fact. Based on the '480 specification, the square
`
`contact regions 16A-D are each about 1000 microns on a side, whereas the diameter
`
`of the conductive spacer 26 is on the order of 5 microns. See col. 7, ll. 22-24, col.
`
`10, ll. 57-58, and col. 11, ll. 16-17; see also Ex. 1009 at 33:1-34:14 and 170:18-
`
`171:25. Thus, roughly 200 conductive spacers 26 could fit in the cross-section of
`
`the common contact portion – a stark contrast to the representation of Fig. 13 in
`
`which there is only room for a single conductive spacer 26. See Ex. 1009 at 26:15-
`
`27:6.
`
`
`
`Moreover, the technology used to apply the conductive spheres dictates that
`
`more than one conductive sphere will be in the opening. The conductive spheres
`
`are applied in a process that offers little control as to the number and location of
`
`their placement. See Ex. 1009 at 171:2-18. Conductive spheres are not applied
`
`individually and doing so would be difficult and impractical. Id. The testimony of
`
`SEL's expert, Dr. Kohl, confirms this technical reality. See Ex. 1010 at 145:15-23
`
`(stating that he could not recall an instance in which a device had only conductive
`
`spacer in a contact hole). Even if it were feasible, there would be no motivation for
`
`one of skill in the art to undertake such an effort. With only one sphere in the
`
`
`
`5
`
`
`
`opening, electrical resistance would be undesirably high. See Ex. 1009 at 171:12-
`
`172:5. A plurality of spacers would be needed for proper electrical conduction. Id.
`
`
`
`
`
`
`
`
`
`
`B. The Proposed Amendment of "a second interlayer insulating
`
`film…having at least two openings in a single common contact
`
`portion" Does Not Distinguish, or Overcome, The Prior Art
`
`
`
`
`1. Moriyama discloses multiple openings in the insulating layer
`
`a single common contact portion
`
`It also is undisputed that Moriyama discloses an insulating layer between two
`
`conductive films, as required by the claim language. See Ex. 1004, Figs. 5 and 7(a)
`
`(showing insulating layer 5 on top of conductive film 1 and below conductive film
`
`4); see also Declaration of Miltiadis Hatalis, Ph.D. in support of Innolux Corp.'s
`
`Opposition to Amendment ("Ex. 1011") at ¶ 36; Ex. 1009 at 164-166; Ex. 1010 at
`
`35-36. There is also no dispute that Moriyama further discloses at least two
`
`openings in this insulating film in a single common contact portion. See Ex. 1004,
`
`Figs. 4 and 7(a); Ex. 1009 at 140:10-142:13; Ex. 1010 at 100:5-9.
`
`
`
`While Moriyama does not explicitly show a first insulating layer between the
`
`substrate and first metal layer, this difference is insignificant. First, the use of a first
`
`insulating layer was well known in the prior art. For example, the APA discloses a
`
`first and second conductive film and first and second insulating film. See Ex. 1011,
`
`¶ 52; Ex. 1010 at 77:4-80:24, 86:12-87:3. Second, SEL's expert conceded that, like
`
`Figure 1 of the '480 patent which does not show the first insulating layer, Moriyama
`
`also may disclose a first insulating layer. Ex. 1010 at 47:16-25 ("There could be an
`
`insulator under metal 1 in Moriyama."). Indeed, Moriyama discloses a prior art
`6
`
`
`
`
`
`structure that is substantively identical to that claimed in the '480 patent. Compare
`
`Ex. 1004, Fig. 9(a) of Moriyama with Ex. 1001, Fig. 1 of '480 patent. Both
`
`structures have first and second conductive layers, and an insulating film between
`
`the first and second conductive layers. Ex. 1011, ¶ 75-76, 85. While Moriyama
`
`uses a bottom gate structure and does not explicitly disclose a first insulating layer
`
`between the substrate and first conductive film, a person of ordinary skill in the art
`
`would understand that in a top gate structure, like shown in the APA (discussed
`
`below), there inherently is an insulating film below the substrate and the gate, i.e.,
`
`the first conductive film. Ex. 1011, ¶ 50.
`
`Finally, the use of a first insulating layer does not contribute to the claimed
`
`contact structure's function of electrically connecting the two substrates. Ex. 1011,
`
`¶ 55.
`
`2. One of ordinary skill in the art would be motivated to form
`multiple openings in the second insulating layer in a single
`common contact portion of the APA in view of Moriyama
`
`
`
`It would be obvious to modify the APA to use the multiple openings in the
`
`second insulating film in a single common contact portion as taught by Moriyama.
`
`Ex. 1011, ¶ 53. Moriyama discloses the common practice of forming multiple
`
`openings (i.e. contact holes) in the terminal pad region. Id. Moriyama teaches that
`
`it is desirable to increase the number of contact holes in order to reduce resistance
`
`and increase the reliability. See Ex. 1004, ¶ 0019 ("In addition, by increasing the
`
`number of contact holes, it has been possible to reduce the resistance and increase
`
`
`
`7
`
`
`
`the reliability of the electrical contacts between the underlying metal layer 1 and the
`
`transparent metal layer 4 on the surface."). Moriyama discloses the well-known
`
`practice of using multiple contact holes in order to maximize the perimeter-to-area
`
`ratio. See Ex. 1009 at 141:9-22; Ex. 1011, ¶ 53.
`
`
`
`SEL's expert, Dr. Kohl, acknowledged Moriyama's teaching that increasing
`
`the number of contact holes (and thus corresponding openings in the insulating
`
`layer) increases reliability and reduces resistance. See Ex. 1010 at 65:22-66:15
`
`("Moriyama says that in their particular case of a specific size contact hole 2, that
`
`increasing the number of those [holes] increased the reliability of the electrical
`
`contacts between the underlayer metal 3 [sic] and transparent metal 4."). Multiple
`
`holes provide better reliability with the ITO on top the insulting film because it has
`
`the benefit of avoiding corrosion compared to the configuration when you have
`
`pinholes in an ITO layer placed on top of the first conductive layer. See Ex. 1011, ¶
`
`53. In this latter configuration, shown in the APA, such pinholes would cause
`
`corrosion in the underlying metal layer. Id. Thus, one of ordinary skill would be
`
`motivated to modify the APA in view of Moriyama to form multiple openings in the
`
`second insulating layer in a single common contact portion to achieve these
`
`benefits. Id.
`
`
`
`SEL incorrectly asserts that there would be no motivation to modify the APA
`
`to use a plurality of openings rather than a single opening in a single common
`
`contact portion. See Mot. at 9, 10. SEL asserts that placing a conductive spacer in a
`
`
`
`8
`
`
`
`single opening has the benefit of maximizing the contact area for the conductive
`
`spacer and minimizing the risk that the conductive spacer would be inadvertently
`
`placed outside the opening. Id. Critically, this "advantage" of the APA structure is
`
`based on the unfounded assumption that the conductive spacers have a different
`
`diameter than the insulating spacers. Ex. 1011, ¶ 58.
`
`
`
`SEL's argument ignores that one of ordinary skill in the art would have
`
`known from Moriyama that increasing the number of contact holes reduces
`
`resistance and improves reliability. See Ex. 1004, ¶ 0019. SEL further ignores that
`
`a person of ordinary skill in the art would know that if the common contact portion
`
`of the APA is modified in view of Moriyama's Figures 4, 7, or 9 to form multiple
`
`openings, then the conductive spacers could be held on the second interlayer
`
`insulating film as shown in Moriyama's Figures 4 and 7. See Ex. 1009 at 141:9-
`
`142:13, 85:2-87:23. In this configuration, the conductive spacers and insulating
`
`spacers necessarily would have the same diameter as claimed in the '480 patent
`
`because they both are placed on top of the conductive layer formed over the
`
`insulating layer. Id. This avoids any problem of non-uniform cell gap caused by
`
`having differently sized spacers (as SEL wrongly assumes) in the pixel and common
`
`contact portions of the substrate.
`
`
`
`SEL also asserts that the APA's structure has the benefit of avoiding
`
`discontinuities in the ITO layer (conducting pad 22) at the step heights because
`
`electrical contact between the second and third conductive layers is made by the
`
`
`
`9
`
`
`
`conductive spacer in the contact hole. Mot. at 11. To the contrary, SEL ignores that
`
`using multiple openings also will maximize the perimeter-to-area ratio and actually
`
`improve step coverage as was known in the art. See Ex. 1009 at 141:9-142:13,
`
`85:2-87:23. Indeed, like the prior art disclosed in Moriyama (depicted in Figure 9),
`
`the '480 patent also uses multiple openings to increase edge perimeter (i.e.,
`
`perimeter-to-area ratio) to provide better step coverage. Id. Moriyama improves
`
`upon the prior art, rather than teach away from using multiple openings as SEL
`
`wrongly suggests, by adding an additional metal layer 3 to further improve the step
`
`coverage while avoiding the problem described in the '480 patent (shown in the
`
`APA) of forming non-uniform substrate gaps caused by variations in the insulating
`
`film under the second conductive layer. See Ex. 1004, ¶¶ 0017-18.
`
`SEL argues that Moriyama could only be modified to include another
`
`"interlayer" insulating layer by placing it between metal layers 3 and 4, and that
`
`modifying Moriyama in this way would defeat Moriyama's solution to the step
`
`height problem of using overlay metal layer 3 directly over or under metal layer 4.
`
`See Mot. at 13. SEL's argument elevates form over substance. Moriyama's
`
`insulating layer meets the limitations of the second insulating layer, which requires
`
`an insulating film placed on top of a first conductive layer and under a second
`
`conductive layer. See Ex. 1001, col. 14, ll. 34-38. SEL's complicated hypothetical
`
`solution ignores the undisputed fact that the APA discloses first and second
`
`interlayer insulating films and could be modified in view of Moriyama. See Ex.
`
`
`
`10
`
`
`
`1009 15:25-16:7, 18:22-19:4; Ex. 1010 at 53:3-15, 83:19-84:4. A person of
`
`ordinary skill in the art would understand that the APA could be readily modified to
`
`use Moriyama’s multiple contact holes in a single common contact portion (to
`
`reduce resistance and increase reliability), which results in the placement of the
`
`conductive spacers over the second interlayer insulating film. See Ex. 1011, ¶¶ 35,
`
`45-46.1
`
`
`
`
`
`
`
`
`
`
`C. The Proposed Amendment of "…said second interlayer insulating
`
`film is provided over a source electrode and a drain electrode
`
`disposed in a pixel region of said first substrate" Does Not
`
`Distinguish, or Overcome, The Prior Art
`
`The proposed amendment requiring the second interlayer insulating film to be
`
`provided over a source electrode and a drain electrode in the pixel region are
`
`obvious over the APA in view of Moriyama. There is no dispute that the APA
`
`shows a second interlayer insulating film provided over a source electrode and drain
`
`electrode in a pixel region. Ex. 1001, Fig. 13 (showing second interlayer insulating
`
`film 18 provided over source and drain electrodes in pixel region 12); see also Kohl
`
`
`1 SEL argues that modifying Moriyama to place an insulating layer between layers 3
`
`and 4 would cause several problems. See Mot. at 13. These "problems" are
`
`irrelevant because the APA discloses a first insulating film and, whether or not
`
`Moriyama has one or could be modified, it is insignificant because the critical
`
`disclosure is the ability to modify the APA by placing the conductive spacers on the
`
`second conductive film and over the insulating film as shown in Moriyama.
`
`
`
`11
`
`
`
`Ex. 1010 at 76:7-77:5 (features shown in Fig. 13 were well known in the prior art).
`
`As explained above, it would have been obvious to modify the APA to include
`
`Moriyama’s teaching of using multiple openings in the second insulating layer in a
`
`single common contact portion in order to increase the reliability, reduce the
`
`resistance and reduce corrosion. By using multiple openings in the second
`
`insulating layer, it would be obvious to place the plurality of conductive spacers on
`
`the second conductive layer above the second insulating film as shown in
`
`Moriyama. As such, the proposed amended claims would be obvious over the APA
`
`in view of Moriyama.
`
` IV. Conclusion
`
`For the foregoing reasons, SEL's Motion to Amend should be denied.
`
`Dated: September 23, 2013
`
`
`
`Respectfully submitted,
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Lead Counsel for Petitioner
`Oblon, Spivak, McClelland, Maier &
`Neustadt, LLP
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`SMcKeown@oblon.com
`
`Gregory S. Cordrey (Reg. No. 190,144)
`Back-up Counsel for Petitioner
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`
`12
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: (949) 623-7236
`Fax: (888) 712-3345
`gxc@jmbm.com
`
`Stanley M. Gibson
`Admitted pro hac vice
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`Tel: (310) 201-3548
`Fax: (310) 712-8548
`smg@jmbm.com
`
`
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that PETITIONER’S OPPOSITION TO MOTION TO
`
`AMEND in connection with Inter Partes Review Case IPR2013-00028 was
`
`served on this 23rd day of September 2013 by electronic mail to Robinson
`
`Intellectual Property Law Office, P.C., Counsel for Patent Owner, at
`
`[erobinson@riplo.com], having a postal address at:
`
`Robinson Intellectual Property Law Office, P.C
`3975 Fair Ridge Drive
`Suite 20 North
`Fairfax, VA 22030
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`
`
`
`
`
`14
`
`
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