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 REPLY TO RESPONSE OF THE PATENT OWNER
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`
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`
`
`___________________________
`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 REPLY TO RESPONSE OF THE PATENT OWNER
`
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`I.
`
`CLAIMS 1, 5, 6, 10, 11, AND 15 OF THE '480 PATENT ARE
`OBVIOUS OVER THE APA IN VIEW OF MORIYAMA ........................... 1
`
`
`
`A.
`
`B.
`
`The claims are not restricted to a single common contact
`portion ......................................................................................... 1
`
`The APA and Moriyama disclose "a second insulating film
`having at least two openings" ..................................................... 3
`
`1. Moriyama discloses at least two openings in a
`second insulating film ....................................................... 3
`
`2.
`
`3.
`
`The APA discloses at least two openings in the
`second insulating film ....................................................... 5
`
`It would be obvious to modify the APA to use the
`multiple openings in the second insulating film
`shown in Moriyama .......................................................... 6
`
`C.
`
`The Prior Art discloses "wherein at least one of said conductive
`spacers is held over said second interlayer insulating film" ....... 8
`
`1. Moriyama discloses conductive spacers held over
`an interlayer insulating film .............................................. 9
`
`2.
`
`3.
`
`The use of an interlayer insulating film below the
`first conductive film was disclosed in the APA ............. 10
`
`It is obvious to place the conductive spacers on the
`highest surface ................................................................ 12
`
`D.
`
`The prior art discloses the claim limitation "wherein said
`conductive spacers are dispersed into a sealing material" ........ 13
`
`II.
`
`CLAIMS 2, 7 AND 12 OF THE '480 PATENT ARE OBVIOUS
`OVER THE APA IN VIEW OF MORIYAMA AND OHNO ...................... 15
`
`III. CONCLUSION .............................................................................................. 15
`
`i
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`EXHIBIT LIST
`
`Previously Filed
`
`
`Exhibit 1001
`Exhibit 1004
`
`Exhibit 1007
`Exhibit 1005
`
`Currently Filed
`
`
`Exhibit 1009
`
`Exhibit 1010
`
`Exhibit 1011
`
`U.S. Patent No. 6,404,480 to Hirakata
`Unexamined Patent Application Publication H5-243333
`("Moriyama")
`Declaration of Miltiadis Hatalis, Ph.D.
`U.S. Patent No. 4,600,273 to Ohno
`
`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
`
`i
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`
`
`
`
`Petitioner Innolux Corporation ("Innolux") hereby provides its reply to
`
`Patent Owner Semiconductor Energy Laboratory Co., Ltd.'s ("SEL" or "Patent
`
`Owner") response 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").
`
`The '480 patent specification provides a detailed description of the prior art
`
`LCD structure upon which the '480 patent purports to improve, i.e., the Admitted
`
`Prior Art ("APA") shown in Figures 12 and 13. The APA discloses the structure
`
`recited in the independent claims of the '480 patent with a single exception of the
`
`placement of the conductive spacers over the second interlayer insulating film.
`
`SEL's expert, Dr. Kohl, confirmed that the features shown in Figure 13 of the
`
`Admitted Prior Art were known prior to the invention claimed in the '480 patent.
`
`Deposition transcript of Paul A. Kohl, Ph.D. dated August 14, 2013 ("Ex. 1010") at
`
`76:23-77:5. That feature, however, also was well known in the prior art as the
`
`Moriyama reference makes clear. For this reason, claims 1, 2, 5-7, 10-12 and 15
`
`are rendered obvious over the APA in view of Moriyama.
`
`I.
`
`CLAIMS 1, 5, 6, 10, 11, AND 15 OF THE '480 PATENT ARE
`OBVIOUS OVER THE APA IN VIEW OF MORIYAMA
`A. The claims are not restricted to a single common contact portion
`
`
`
`In an attempt to distinguish the claims from the APA, SEL initially responds
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`that the claims should be limited to a single common contact portion of the active
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`matrix display device described in the '480 patent. Resp. at 36. That is, according
`
`1
`
`
`
`
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`to SEL's interpretation of the claims, the claimed "at least two openings" and "a
`
`plurality of conductive spacers" must all be present in a single common contact
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`portion, and that the other common contact portions on the substrate should not be
`
`considered. SEL relies on specific embodiments in the specification as support for
`
`its narrow interpretation of the claims, but the specification does not support SEL's
`
`position. In fact, other figures show that there are, in fact, multiple common
`
`contact portions on the substrate. Ex. 1001, Figs. 3-4 (contact holes 16a-d). And,
`
`contrary to SEL's assertion, the portions of the specification upon which it relies
`
`also do not state that the "openings" refer to a single common contact portion.
`
`Indeed, the specification repeatedly refers to the entire substrate. See e.g., Ex.
`
`1001, col. 6, ll. 1-8 ("In the present embodiment, as shown in FIG. 1, a first
`
`conducting film 103 is formed on a first substrate 101. A dielectric film 104 is
`
`deposited on the first conducting film 103. The dielectric film 104 is selectively
`
`left to form openings 111 [on the substrate] that expose parts of the first
`
`conducting film 103.") (emphasis added). As the Board recognized, "much of the
`
`Specification is directed to contact structures for electrically connecting together
`
`conducting lines formed on two opposite substrates generally." See Decision on
`
`Request for Rehearing [Paper No. 27] at 9. Thus, SEL's construction improperly
`
`attempts to import limitations shown in some of the figures into the claims.
`
`Decision at 13; Decision on Request for Rehearing at 10.
`
`2
`
`
`
`
`
`
`
`Moreover, claim terms in inter partes review should be given the "broadest
`
`reasonable construction consistent with the specification." See 37 C.F.R. §
`
`42.100(b); In re ICON Health and Fitness, Inc., 496 F. 3d 1374 (Fed. Cir. 2007)
`
`("we look to the specification to see if it provides a definition for claim terms, but
`
`otherwise apply a broad interpretation."). Accordingly, SEL's narrow
`
`interpretation of the claims is unwarranted, contrary to the broadest reasonable
`
`construction standard, and should be rejected. See Decision at 13-15; see also
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`Decision on Request for Rehearing at 9-10. Even if the claims are construed
`
`according to the way SEL proposes, as explained below, they are rendered obvious
`
`over the APA in view of Moriyama.
`
`B.
`
`The APA and Moriyama disclose "a second insulating film having
`at least two openings"
`
`1. Moriyama discloses at least two openings in a second
`insulating film
`
`The claims require that a "second interlayer insulating film [have] at least
`
`two openings." Ex. 1001, col. 14: 34-36. The claims further require that the
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`second interlayer insulating film is provided on top of the first conductive film and
`
`under the second conductive film, i.e., between the first and second conductive
`
`films. Id., col. 14:34-38. There is no dispute that Moriyama discloses an
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`insulating layer between two conductive films. Ex. 1004, Figs. 5 and 7(a)
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`(showing insulating layer 5 on top of conductive film 1 and below conductive film
`
`3
`
`
`
`
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`4); Declaration of Miltiadis Hatalis, Ph.D. in support of Innolux Corp.'s Opposition
`
`to Amendment ("Ex. 1011"), ¶ 36; Deposition transcript of Miltiadis Hatalis, Ph.D.
`
`dated May 20, 2013 ("Ex. 1009") at 164-166; Ex. 1010 at 35-36. Moriyama
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`indisputably discloses at least two openings in this insulating film. Ex. 1004, Figs.
`
`4, 7(a); Ex. 1011, ¶ 36; Ex. 1009 at 58:2-6; Ex. 1010 at 25-27. Finally, although
`
`not required by the claims, there is no dispute that Moriyama discloses at least two
`
`openings in the insulating film in a single common contact portion. Ex. 1004,
`
`Figs. 4, 7(a); Ex. 1009 at 140:10-142:13; Ex. 1010 at 100:5-9.
`
`SEL responds that Moriyama discloses only a single interlayer insulating
`
`film. Resp. at 41-42. Yet, SEL's expert conceded that Moriyama may have an
`
`additional insulating layer under the lower (first) metal layer 1 in Figure 5 of
`
`Moriyama. Ex. 1010 at 47:16-25 ("There could be an insulator under metal 1 in
`
`Moriyama."). The '480 patent also illustrates its contact structure without the first
`
`insulating layer. Ex. 1001, Fig. 1 (omitting the first insulating layer). Moreover,
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`the existence of an insulating layer under the first conductive film does not affect
`
`the electrical function of the contact structure because, like the glass substrate, it
`
`merely acts as an additional insulator below the first conductive film and thus it is
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`not relevant to the operation of the electrical connection contact between the two
`
`substrates. Ex. 1011, ¶ 48.
`
`4
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`
`
`
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`Indeed, Moriyama discloses a prior art 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 would understand that
`
`in a top gate structure, like the APA (discussed below), there inherently is an
`
`insulating film between the substrate and the gate. Ex. 1011, ¶ 50.
`
`2.
`
`The APA discloses at least two openings in the second
`insulating film
`
`Under a proper construction of the claims, there is no dispute that the APA
`
`discloses at least two openings in the second insulating film. The '480 patent
`
`explains that "FIG. 13 is a cross-sectional view of the pixel region 12 and common
`
`contact portion 16 representing the common contact portions 16a-d." Ex. 1001,
`
`col. 1, ll. 63-65. APA Figure 12 is a top plan view of a TFT substrate, which
`
`includes pixel region 12 and four common contact portions 16a-d. As shown in
`
`Figure 12, the second insulating film 18 will have an opening corresponding to
`
`each of the four common contact portions 16a-d. Ex. 1001, Fig. 13; Ex. 1009 at
`
`21:2-15. These openings satisfy the "at least two openings" limitation.
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`5
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`
`
`
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`3.
`
`It would be obvious to modify the APA to use the multiple
`openings in the second insulating film shown in Moriyama
`
`There is no dispute that the APA discloses a first and second conductive film
`
`and first and second insulating film. Ex. 1011, ¶ 52; Ex. 1010 at 77:4-80:24,
`
`86:12-87:3. Even if the claims were narrowly interpreted to require "at least two
`
`openings in a single common contact region," as explained above, there is no
`
`dispute that Moriyama discloses this feature. Ex. 1004, Figs. 4 and 7(a); Ex. 1009
`
`at 140:10-142:13; Ex. 1010 at 100:5-9.
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`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. Ex. 1004, ¶ 0019 ("In addition, by increasing the number of contact
`
`holes, it has been possible to reduce the resistance and increase 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. 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. 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
`
`6
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`
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`
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`of the electrical contacts between the underlayer metal 3 [sic] and transparent
`
`metal 4."). With the ITO on top the insulting film, corrosion of the underlying
`
`metal caused by pinholes is avoided. One of ordinary skill would be motivated to
`
`modify the APA in view of Moriyama to form multiple openings in a single
`
`common contact portion to achieve these benefits. Ex. 1011, ¶ 53.
`
`SEL incorrectly asserts that there would be no motivation to modify the
`
`APA to use a plurality of openings in the common contact portion because certain
`
`"advantages" would be lost. Resp. at 40-41. SEL asserts that placing a conductive
`
`spacer in a 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. 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. Resp. at 17-21.
`
`SEL's argument 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 top of the second interlayer insulating film as shown in Moriyama. Ex.
`
`1004, Figs. 4, 7; Ex. 1009 at 141:9-142:13, 85:2-87:23. In this configuration, the
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`conductive spacers and insulating spacers necessarily would have the same
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`diameter because they both are placed on top of the conductive layer formed over
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`7
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`
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`the insulating layer. Id. This avoids any problem of non-uniform cell gap caused
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`by having differently sized spacers (as SEL wrongly assumes) in the pixel and
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`common contact portions of the substrate.
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`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
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`electrical contact between the second and third conductive layers is made by the
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`conductive spacer in the contact hole. Id. However, SEL ignores that using
`
`multiple openings also will maximize the perimeter-to-area ratio and improve step
`
`coverage as was known in the art. 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
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`an additional metal layer 3 to further improve the step coverage while avoiding the
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`problem described in the '480 patent (shown in the APA) of forming non-uniform
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`substrate gaps caused by variations in the insulating film under the second
`
`conductive layer. Ex. 1004, ¶¶ 0017-18.
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`C. The Prior Art discloses "wherein at least one of said conductive
`spacers is held over said second interlayer insulating film"
`
`Moriyama discloses to one of ordinary skill in the art that providing
`
`conductive spacers over a second insulating film provides desirable electrical
`
`8
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`
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`
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`contact between opposing substrates. See Ex. 1004, ¶¶ 6-7, 21 and Figs. 4, 5 &
`
`7(a); Ex. 1011, ¶ 46. As Dr. Hatalis testified, this technique was well-recognized
`
`in the industry to reduce the adverse effects of thickness variations across
`
`substrates. Ex. 1009 at 97:8-98:2, 99:9-100:4, and 114:22-115:23.
`
`1. Moriyama discloses conductive spacers held over an
`interlayer insulating film
`
`Moriyama discloses conductive spacers 16 held over the insulating layer to
`
`provide desirable electrical connection between the opposing substrates via the
`
`conductive spacers, as shown in Moriyama's Figures 4, 5 and 7(a). Ex. 1004, Fig.
`
`7(a). Moriyama's Figure 7(a) shows 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 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 at least two conductive spacers which are held over an
`
`interlayer insulating film. See 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
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`9
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`
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`
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`answer a few minutes ago, that the metal particles 6 (sic) are located above the
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`single insulating layer 5 in Fig. 5.").
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`Moriyama's teaching of placing the conductive spacers over the insulating
`
`layer is the result of the known practice of using multiple openings in the terminal
`
`pad region. As explained above, Moriyama used the known practice of forming
`
`multiple openings (i.e. contact holes) in the terminal pad region so that the two
`
`metal layers will contact in a manner that maximizes the perimeter-to-area ratio to
`
`improve contact, reliability and corrosion resistance. Ex. 1009 at 140:10-142:24.;
`
`Ex. 1011, ¶ 54. Dr. Kohl also acknowledges Moriyama's teaching that additional
`
`contact holes generally increase reliability and reduces resistance. Ex. 1010 at
`
`65:22-66:15. As a result of increasing the contact holes in Moriyama, a topology
`
`is created wherein some conductive spacers will rest on top of the dielectric and
`
`others will fall into the contact holes and touch the lower metal layer. Ex. 1009 at
`
`141:16-142:13. The use of multiple contact holes in the terminal region was well
`
`known at the time of Moriyama, and the presence of conductive spacers above the
`
`dielectric layer is an inherent result of such a structure. Id.
`
`2.
`
`The use of an interlayer insulating film below the first
`conductive film was disclosed in the APA
`
`SEL next contends that even if there were an insulating layer under metal 1,
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`it would not be an "interlayer" insulating film, which it asserts must be an
`
`insulating film interposed "between two metal layers." Resp. at 46-47. SEL
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`10
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`
`
`
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`argues that Moriyama could only be modified to include another "interlayer"
`
`insulating layer by placing it between metal layers 3 and 4, but concludes that this
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`modification defeats Moriyama's solution to the step height problem of using
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`overlay metal layer 3 directly over or under metal layer 4. Id.
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`
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`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.
`
`Ex. 1001, col. 14, ll. 34-38. SEL's complicated and made-up solution ignores, and
`
`there is no dispute, that the APA discloses first and second interlayer insulating
`
`films. Ex. 1009 15:25-16:7, 18:22-19:4; Ex. 1010 at 53:3-15, 83:19-84:4. As
`
`explained above, a person of ordinary skill in the art would understand that the
`
`APA – with its first and second interlayer insulating films – readily could be
`
`modified to use multiple contact holes in a single common contact portion (to
`
`reduce resistance and increase reliability), which results in the conductive spacers
`
`being held over the second insulating film. Ex. 1011, ¶¶ 35, 45-46.
`
`
`
`
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`Finally, Figures 5 and 7(a) of Moriyama plainly show at least one of the
`
`conductive spacers held over the insulating film and in contact with the second
`
`conductive film and third conductive film. Thus, even if Moriyama's insulating
`
`film is not considered a "second" insulating film, it does not detract from the
`
`critical teaching at issue, i.e. Moriyama's teaching of placing conductive spacers
`
`11
`
`
`
`
`
`over an interlayer insulating layer to provide electrical contact between conductive
`
`elements on opposing substrates. As such, the differences between the claims'
`
`requirement and Moriyama's teaching are insignificant. Ex. 1011, ¶ 56.
`
`
`
`SEL argues that placing an insulating layer between layers 3 and 4 would
`
`cause several problems. Resp. at 47-49. These "problems" are irrelevant because
`
`Petitioner is not advocating modifying Moriyama. SEL also argues that metals 3
`
`and 4 should not be considered a second conductive layer. SEL is wrong. It was
`
`well known that two conductive materials directly in contact with each other can
`
`form a single conductive film. Ex. 3001 at 131-134; Decision at 17.
`
`3.
`
`It is obvious to place the conductive spacers on the highest
`surface
`
`Contrary to SEL's assertions, it would have been known to one of ordinary
`
`skill to place conducting spacers on the highest surface in order to ensure a good
`
`electrical contact between opposing substrates via the conductive spacers. Ex.
`
`1009 at 145:2-146:7. Moriyama plainly discloses that when you have multiple
`
`openings, the conductive spacers inherently are placed on the highest surface,
`
`which provides the additional requirement that the spacers have the same diameter.
`
`Ex. 1011, ¶ 58. Thus, with the same sized spacers the placement of the spacers is
`
`not critical. Id.
`
`SEL's reliance on prior art that places the conducting spacers in the opening
`
`of the second insulating film misses the point (although it aptly shows that the
`
`12
`
`
`
`
`
`feature of claim 11 of having openings in the insulating layer larger than the
`
`conductive spacers was well known). Resp. at 51-54. The fact that there may be
`
`prior art contact structures like the APA does not detract from Moriyama's teaching
`
`of placing conductive spacers held over an interlayer insulating film. See Ex.
`
`1004, ¶¶ 6-7, 21, Figs. 5 & 7(a); Ex. 1011, ¶ 46.
`
`SEL asserts that Moriyama teaches away from placing conductive spacers
`
`over the insulating film and on top of the ITO layer because doing so can yield
`
`unreliable connections due to discontinuities in the ITO layer at the step height.
`
`Resp. at 54. SEL contends that, as a result, a more reliable connection is obtained
`
`by placing the spacer in the opening. Id. Indeed, SEL's assertion that the teaching
`
`of Moriyama would lead a person of ordinary skill in the art to use a single contact
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`hole is contrary to the express teachings of Moriyama. See Ex. 1004, ¶ 0019.
`
`Instead, one of ordinary skill in the art would understand from the well-known
`
`design principle – stated in Moriyama – that having many smaller holes is better
`
`than having fewer larger holes because it reduces resistance, improves reliability,
`
`and provides more effective contact by minimizing step coverage problems. Id.;
`
`Ex. 1011 at ¶¶ 44-47.
`
`D. The prior art discloses the claim limitation "wherein said
`conductive spacers are dispersed into a sealing material"
`
`A person of ordinary skill in the art would understand that Moriyama's
`
`thermal resin 22 is a sealing material in which conductive spacers are dispersed as
`
`13
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`
`
`
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`recited in claim 6. Ex. 1004, ¶ 7, Fig. 7(a); Ex. 1007, ¶ 38. Moriyama discloses
`
`that at least one of the conductive spacers is dispersed into a sealing material. In
`
`particular, Figure 7(a) shows "a thermal resin 22, which contains metal particles
`
`16." Id. One of ordinary skill in the art was well aware that a curable thermal
`
`resin is an organic substance that becomes hardened by heat or UV curing and can
`
`serve as a sealing material, e.g. bonding two substrates together that contain
`
`conductive spacers. Ex. 1009 at 168:5-169:16. Moreover, Dr. Kohl agreed that
`
`thermal resins were known in the prior art to be acceptable as sealing materials.
`
`See Ex. 1010 at 103:3-9 ("Thermally curable resins were known to be acceptable
`
`and used as sealing materials before the invention of the '480 patent"). Therefore,
`
`one of ordinary skill in the art would recognize Moriyama's thermal curable resin
`
`22 satisfies the "sealing material" limitation of claim 6.
`
`SEL responds that the sealing material cannot be reasonably construed to
`
`include Moriyama's "thermal curable resin 22" because the thermal curable resin
`
`22 of Moriyama is not used to seal liquid crystal material. Resp. at 55. SEL's
`
`argument again rests on an unduly narrow interpretation of "sealing material" to
`
`mean "a material used to fix or seal liquid crystal material between two substrates
`
`of a display device," which it argues excludes the thermosetting resin of
`
`Moriyama. Resp. at 55. However, there is nothing in the specification cited by
`
`SEL that warrants such a narrow construction. In fact, the portion the '480 patent
`
`14
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`
`
`
`
`cited by SEL gives an example of using thermosetting resin as a sealing material.
`
`Ex. 1001, col. 11, ll. 1-4 ("A UV-curable and thermosetting resin was used as the
`
`sealing material."). The Board similarly rejected SEL's proposed construction of
`
`"sealing material" to exclude Moriyama's thermosetting resin. See Decision at 19
`
`("While the example discusses the sealing and fixing of liquid crystal material, we
`
`do not extrapolate that example into a definition of the subject claim term. As
`
`such, we do not see why the thermal resin (22) of Moriyama cannot be equivalent
`
`to the 'sealing material' of claim 6."). For this reason, claim 6 would have been
`
`obvious over the APA in view of Moriyama.
`
`II. CLAIMS 2, 7 AND 12 OF THE '480 PATENT ARE OBVIOUS OVER
`THE APA IN VIEW OF MORIYAMA AND OHNO
`
`SEL does not seriously dispute Ohno's disclosure of coating conductive
`
`spheres with gold. Resp. at 58 ("Ohno only potentially discloses that a glass fiber
`
`123 is coated with the gold layer 125 as shown in Fig. 8 and col. 9, l. 44 – col. 10,
`
`1.15."); Ex. 1005 at col. 2, ll. 6-18 and col. 4, ll. 42-44; Ex. 1009 at 162:17-25.
`
`Instead, SEL contends that Ohno does not disclose various claim limitations, none
`
`of which were relied on in the Petition. Accordingly, claims 2, 7 and 12 would
`
`have been obvious over the APA in view of Moriyama and Ohno.
`
`III. CONCLUSION
`
`For these reasons, the Board should determine that claims 1, 2, 5-7, 10-12
`
`and 15 of the '480 patent are obvious is warranted.
`
`15
`
`
`
`
`
`
`
`
`
`
`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
`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
`
`16
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that PETITIONER'S REPLY TO RESPONSE OF THE PATENT
`
`OWNER 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)
`
`
`
`
`LA 9983043v1
`
`17
`
`
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