UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`CHI MEI INNOLUX CORPORATION
`Petitioner
`
`v.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`
`
`CASE IPR2013-00038
`PATENT 7,956,978
`
`
`
`
`
`
`
`PRELIMINARY RESPONSE OF THE PATENT OWNER
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................... 1
`I.
`THE PETITION LACKS A STATUTORY BASIS TO PROCEED ...... 3
`II.
`The Petition May Not Be Considered Because It Fails to Identify all
`A.
`Real Parties-in-Interest. .......................................................................................... 3
`1.
`The Real Parties-in-Interest, Besides the Petitioner, Include CMO USA,
`Acer America, ViewSonic, VIZIO and Westinghouse. ........................... 4
`The Petition Should Be Denied Because It Presents the Same Prior Art
`B.
`the Office Considered Previously. .......................................................................... 7
`C.
`The Petition Fails to Establish a Reasonable Likelihood that at Least
`One of the Challenged Claims in the Petition is Unpatentable. ........................... 11
`1.
`The invention of the ‘978 Patent ............................................................ 12
`2.
`Claims of the ‘978 Patent ....................................................................... 17
`3.
`Claims 7 and 17 are patentable over Sono ............................................. 19
`a. Sono does not teach claim element (j), “at least first and second
`conductive layers formed from a same layer as the plurality of second
`conductive lines, wherein at least a part of each of the first and second
`conductive layers is overlapped with the portion of the sealing
`member.” ................................................................................................ 20
`b. Sono does not teach claim element (k), “wherein a length of the first
`conductive layer along the first direction and a length of the second
`conductive layer along the first direction are longer than a pitch of
`adjacent ones of the plurality of second conductive lines.” .................. 30
`c. Sono does not teach claim element (l), “wherein the first and second
`conductive layers are electrically isolated from both of the plurality of
`first conductive lines and the plurality of second conductive lines, and
`wherein the first and second conductive layers are electrically isolated
`from each other.” ................................................................................... 38
`d. Sono does not teach claim element (m), “a black matrix at least partly
`overlapped with intersections of the plurality of first conductive lines
`and the plurality of second conductive lines and the first and second
`conductive layers .” ................................................................................ 40
`
`
`
`i
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`

`

`4.
`5.
`
`e. Sono does not teach claim element (b), “a first substrate having a first
`side edge extending in a first direction and a second side edge
`extending in a second direction orthogonal to the first direction.” ....... 42
`f. Sono does not teach claim element (c), “a plurality of first conductive
`lines extending over the first substrate in the first direction.” ............... 44
`g. Sono does not teach claim element (d), “a plurality of second conductive
`lines extending over the first substrate in the second direction.” .......... 45
`h. Sono does not teach claim element (i) “a sealing member disposed
`between the first substrate and the second substrate, the sealing member
`having a portion adjacent to the first side edge.” ................................... 47
`Claims 7 and 17 are patentable over the APA and Sono. ...................... 47
`Claims 7 and 17 are not obvious based on the APA, Sono, and
`Watanabe ................................................................................................ 49
`a. The improper reading of Watanabe in the Petition ................................ 49
`b. The APA, Sono and Watanabe do not teach claim element (k), “wherein
`a length of the first conductive layer along the first direction and a
`length of the second conductive layer along the first direction are longer
`than a pitch of adjacent ones of the plurality of second conductive
`lines.” ..................................................................................................... 52
`c. The APA, Sono and Watanabe do not teach claim element (l), “wherein
`the first and second conductive layers are electrically isolated from both
`of the plurality of first conductive lines and the plurality of second
`conductive lines, and wherein the first and second conductive layers are
`electrically isolated from each other.” ................................................... 56
`d. The APA, Sono and Watanabe do not teach claim element (m), “a black
`matrix at least partly overlapped with intersections of the plurality of
`first conductive lines and the plurality of second conductive lines and
`the first and second conductive layers.” ................................................ 58
`CONCLUSION ...................................................................................... 60
`
`ii
`
`III.
`
`
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`
`

`

`
`
`EXHIBIT LIST
`
`
`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 – Defendants’ Motion to Stay Litigation Pending Outcome of Inter
`Partes Review, Semiconductor Energy Laboratory Co., Ltd. v. Chimei
`Innolux Corp., et al.
`Exhibit 2003 – Supplemental Declaration of Gregory S. Cordrey in Support of
`Defendants' Motion for Stay, Semiconductor Energy Laboratory Co., Ltd. v.
`Chimei Innolux Corp., et al.
`to Stay,
`their Motion
`in Support of
`Exhibit 2004 – Defendants’ Reply
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.
`Exhibit 2005 – Defendant Westinghouse Digital's Notice
`of
`Joinder,
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.
`Exhibit 2006 – ‘978 Patent Prosecution History Excerpt Part I - Prior Art
`considered by the Office
`Exhibit 2007 – ‘978 Patent Prosecution History Excerpt Part II - Expert Opinion
`of Dr. Silzars considered by the Office
`
`
`
`
`
`iii
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`

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`I.
`
`INTRODUCTION
`
`By its petition, Trial No. IPR2013-00038 (the “Petition”), Petitioner Chimei
`
`Innolux Corp. (“CMI”) challenges the validity of claims 7 and 17 of United States
`
`Patent No. 7,956,978 (“the ‘978 patent”). In response, the Patent Owner
`
`respectfully submits this Preliminary Response. The NOTICE OF FILING DATE
`
`ACCORDED TO PETITION and the REVISED NOTICE OF FILING DATE
`
`ACCORDED TO PETITION, mailed on November 9, 2012, sets the deadline for
`
`filing this preliminary response “no later than three months from the date of this
`
`notice” (page 2, Paper No. 3; page 2, Paper No. 4). See also, 37 C.F.R. § 42.107(b).
`
`Accordingly, this Preliminary Response of the Patent Owner is timely filed.
`
`The Petition should be denied on the statutory ground that the prior art cited
`
`is the same prior art previously considered by the Office during prosecution of the
`
`application that became the ‘978 patent. See 35 U.S.C. § 325(d) (“In determining
`
`whether to institute or order a proceeding under … chapter 31, the Director may
`
`take into account whether, and reject the petition or request because, the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.”).
`
`The Petition should be denied on the additional statutory ground that the
`
`Petition fails to identify several real parties-in-interest, including Acer America
`
`Corporation (“Acer America”), Chi Mei Optoelectronics USA, Inc. (“CMO
`
`
`
`1
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`

`

`USA”), Westinghouse Digital, LLC (“Westinghouse”), ViewSonic Corporation
`
`(“ViewSonic”) and VIZIO, Inc. (“VIZIO”). The Petition should be denied because
`
`“[a] petition…may be considered only if … (2) the petition identifies all real
`
`parties in interest.” See 35 U.S.C. § 312(a).
`
`Finally, the Petition should be denied because, as explained below, the
`
`Office correctly allowed the ‘978 patent over the same prior art references cited in
`
`the Petition during the original prosecution of the application that became the ‘978
`
`patent. Therefore, the Petition does not meet the threshold requirement for
`
`instituting an inter partes review “that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” See 35 U.S.C. § 314(a).
`
`Because (i) the Petition may not be considered because it fails to identify all
`
`real parties-in-interest, (ii) the Office has already considered all of the asserted
`
`prior art in granting the ‘978 patent, and/or (iii) the Petition does not establish a
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`“reasonable likelihood” that any of the challenged claims is invalid, the Patent
`
`Owner respectfully requests that the Petition be denied.
`
`
`
`2
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`II. THE PETITION LACKS A STATUTORY BASIS TO PROCEED
`A. The Petition May Not Be Considered Because It Fails to Identify
`all Real Parties-in-Interest.
`
`Because the Petition fails to identify all the real parties-in-interest, the Office
`
`lacks statutory authority to consider it under 35 U.S.C. § 312 (a)(2), which
`
`provides:
`
`(a) REQUIREMENTS OF A PETITION.—A petition filed
`
`under section 311 may be considered only if__...
`
`(2) the petition identifies all real parties in interest….
`
`(Emphasis added). Further, the Office rules require that the petitioner provide
`
`certain mandatory notices, including of the real parties-in-interest. 37 C.F.R. §
`
`42.8(b) (“Each of the following notices must be filed: (1) “Identify each real
`
`party-in-interest for the party.”). Here, the Petition fails to identify any of the real
`
`parties-in-interest other than Petitioner itself.
`
`Under § 312(a)(2) and § 315(b), the term “real party-in-interest” generally
`
`means a party “that desires review of the patent.” See Office Patent Trial Practice
`
`Guide, 77 Federal Register 48759 (“Real Party-in-Interest or Privy,” stating that
`
`“the spirit of that formulation as to IPR and PGR proceedings means that, at a
`
`general level, the ‘real party-in-interest’ is the party that desires review of the
`
`patent.”). One consideration in identifying a “real party-in-interest” is whether the
`
`non-party “‘has the actual measure of control or opportunity to control that might
`
`
`
`3
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`reasonably be expected between two formal coparties.’” (Office Patent Trial
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`Practice Guide, 77 Federal Register 48759, citing Charles Alan Wright, Arthur R.
`
`Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4451).
`
`This requirement of § 312(a)(2) is critically important “to assist members of
`
`the Board in identifying potential conflicts, and to assure proper application of the
`
`statutory estoppel provisions … to protect patent owners from harassment via
`
`successive petitions by the same or related parties, to prevent parties from having a
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`‘second bite at the apple,’ and to protect the integrity of both the USPTO and
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`Federal Courts by assuring that all issues are promptly raised and vetted.” Id. As
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`such, the statutory requirement to identify “all” real parties-in-interest is not a mere
`
`formality.
`
`1.
`The Real Parties-in-Interest, Besides the Petitioner, Include
`CMO USA, Acer America, ViewSonic, VIZIO and Westinghouse.
`
`The Petition fails to identify the following real parties-in-interest: Acer
`
`America; CMO USA; ViewSonic; VIZIO; and Westinghouse. Petitioner CMI and
`
`each of these additional real parties-in-interest are co-defendants in a currently
`
`pending litigation for infringement of the ‘978 patent brought by the Patent Owner,
`
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al., Case
`
`No. SACV 12-0021-JST (C.D. Cal) (hereinafter the “CMI case”). See, Ex. 2001.
`
`All but Westinghouse are jointly represented in the CMI case by the same counsel,
`
`including Gregory Cordrey – named as Petitioner’s Backup Counsel in the
`
`
`
`4
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`Petition. (See, Ex. 2002 and Ex. 2003). CMI and all of the foregoing co-
`
`defendants joined with the Petitioner in filing a motion to stay the CMI case. 1 See
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`Defendants’ Notice of Motion and Motion to Stay Litigation Pending Outcome of
`
`Inter Partes Review; Memorandum of Points and Authorities in Support of Motion
`
`and Declaration of Gregory S. Cordrey in Support Thereof (the “Motion to Stay”)
`
`(Ex. 2002 and Ex. 2003).
`
`All the defendants in the CMI case are real parties-in-interest because they
`
`all participated in filing the Petition. Thus, the co-defendants, in their joint Motion
`
`to Stay, collectively refer to an earlier Petition as “their” Petition that “Defendants
`
`filed.” (Ex. 2002, pp. 2 and 5-6). Further, the defendants represented 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.” (Id. at 17) (emphasis
`
`added). As noted, one of the “Asserted Patents” in the CMI case is the ‘978 patent.
`
`See also Id. at 6 (“Defendants’ petitions for IPR…”); Id. at 8 (“Defendants have
`
`presented the PTO with prior art…”) (emphasis added).
`
`Furthermore, in Defendants’ Reply in Support of Their Motion to Stay
`
`Litigation Pending Outcome of Inter Partes Review (“Defendants’ Reply”), they
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`1 Although not included originally as one of the “Defendants” in the motion to
`stay, Westinghouse subsequently joined in the motion to stay, advising the Court
`that Westinghouse “hereby joins Defendants’ motion to stay” and “[a]dditionally,
`in the event that the Court grants the Motion and stays the litigation, Westinghouse
`agrees to be bound by the PTO’s determinations on the IPRs pursuant to the
`estoppel provisions of 35 U.S.C. § 315(e)(2).” (Ex. 2005, p. 2.)
`
`
`
`5
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`stated that “[t]o the extent there was any ambiguity on this issue, CMO USA, Acer,
`
`VIZIO, and ViewSonic hereby expressly confirm their agreement to be bound by
`
`the estoppel provisions of the IPRs proceedings.” Defendants’ Reply, at 2, n. 4.;
`
`id. at 14 (Ex. 2004, pp. 2-3; 14). Thus, removing any possible doubt about their
`
`status, the defendants themselves have all expressly committed to be real parties-
`
`in-interest in order to obtain a stay of the co-pending CMI case.
`
`Likewise, in support of the Defendants’ Motion to Stay, the Petitioner’s
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`Backup Counsel, Gregory Cordrey, submitted a declaration stating that “[o]n
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`November 7, 2012, Defendants filed with the U.S. Patent and Trademark Office
`
`(‘PTO’) its petition for IPR for U.S. Patent No. 7,956,978 (‘‘978 Patent’)” (Ex.
`
`2003, p. 1). The Declaration identifies the Petition at issue as the collective
`
`“Defendants’ petition for IPR.” (Id. at 2). Thus, the Petitioner’s Backup Counsel
`
`stated in his foregoing Declaration, “under penalty of perjury under the laws of the
`
`United States of America” (Id., p. 3), that on November 7, 2012, the Petition at
`
`issue here was filed on behalf of all the defendants. Thus, the Petition is not just
`
`CMI’s petition, but also the inter partes review petition of all five other co-
`
`defendants in the pending CMI case. Each of the other five co-defendants,
`
`according to their representations to the Court in the CMI case, participated in the
`
`preparation and filing of the Petition, while collectively seeking statutory rights
`
`(i.e., a stay of litigation) and acknowledging statutory estoppels based on their
`
`
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`6
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`status as real parties-in-interest. At a minimum these five co-defendants had the
`
`opportunity to control the content of the Petition.
`
`As such, all the defendants in the CMI case, Acer America, CMO USA,
`
`Westinghouse, VIZIO and ViewSonic, are real parties-in-interest with respect to
`
`the Petition. However, Section I(A) of the Petition merely states “Pursuant to 37
`
`C.F.R. § 42.8(b)(1), Petitioner certifies that CMI is the real party-in-interest”
`
`without identifying any other real parties-in-interest. Thus, the certification made
`
`in Section I(A) of the Petition is incorrect. As each of these additional parties have
`
`jointly acknowledged their collective effort to seek review of the ‘978 patent by
`
`filing their Petition, and have represented to the Court in the CMI case that they
`
`moved expeditiously to prepare and file their Petition, they all are real parties-in-
`
`interest. Notwithstanding that each of the parties in the CMI case is a real party-in-
`
`interest with respect to the Petition, none of them was identified in the Petition. As
`
`such, the Petition does not satisfy the requirement of § 312(a)(2) to identify all real
`
`parties-in-interest. Therefore, inter partes review of the Petition cannot be
`
`instituted. Accordingly, the Patent Owner respectfully requests that the Petition be
`
`denied on this additional ground.
`
`B.
`The Petition Should Be Denied Because It Presents the Same
`Prior Art the Office Considered Previously.
`
`Under 35 U.S.C. § 325(d), the Office need not consider the Petition since the
`
`Office already considered the prior art cited in the Petition during the prosecution
`
`
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`7
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`of the ‘978 patent. As such, the Patent Owner requests that the Board deny the
`
`Petition under 35 U.S.C. § 325(d), which provides that “[i]n determining whether
`
`to institute or order a proceeding under this chapter, chapter 30, or chapter 31 [i.e.,
`
`inter partes review], the Director may take into account whether, and reject the
`
`petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.”
`
`Although not mentioned in the Petition, all prior art references cited by the
`
`Petitioner, including U.S. Patent No. 5,513,028 to Sono (“Sono”) and U.S. Patent
`
`No. 5,504,601 to Watanabe (“Watanabe”), were submitted to the Office by the
`
`Patent Owner. Each reference, and the Admitted Prior Art (“APA”) as part of the
`
`original application, was fully considered by the Examiner in allowing the claims
`
`that issued into the ‘978 patent. In this regard, the Petitioner’s Exhibit 1002 (the
`
`“Prosecution history” of the ‘978 patent) is incomplete and is missing the part
`
`showing that the Examiner considered Sono and Watanabe. Sono was submitted in
`
`an Information Disclosure Statement filed on September 2, 2010 (Ex. 1002, p. 40)
`
`and considered by the Examiner on September 13, 2010 (Ex. 2006, p. 6, cite no. 2).
`
`Watanabe was submitted in an Information Disclosure Statement filed on July 1,
`
`2008 and considered by the Examiner on May 26, 2009 (Ex. 2006, p. 21, Desig. ID
`
`AJ).
`
`
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`8
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`In fact, contrary to the Petitioner’s contention that “[n]o specific prior art
`
`references were identified in the Notices of Allowance” (Pet., p. 12), the Examiner
`
`specifically provided a further Form PTO-892 accompanying the final Notice of
`
`Allowance on January 12, 2011, again acknowledging consideration of Sono.
`
`(See, Ex. 2006, p. 1). Moreover, as this final Notice of Allowance and PTO-892
`
`were issued immediately following the addition of new claims 7 and 17 (Ex. 1002,
`
`pp. 17-20), it is clear from the record that Sono was explicitly considered by the
`
`Examiner in examining claims 7 and 17, the claims at issue, and that claims 7 and
`
`17 were found to be valid over Sono. As with the above-mentioned Information
`
`Disclosure Statements, the Petitioner has also apparently omitted the Examiner’s
`
`Form PTO-892 from the Petitioner’s selective excerpts from the prosecution
`
`history (Pet., pp. 10-12, Ex. 1002). Thus, what must be appreciated is that the
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`entirety of the prosecution history clearly evidences that the APA, Sono, and
`
`Watanabe were all considered by the Office and that claims 7 and 17 were found
`
`patentable over the foregoing prior art.
`
`Also relevant to the Office’s consideration of Sono and Watanabe, the Patent
`
`Owner submitted material litigation documents pertaining to a civil action
`
`involving parent patent no. 7,394,516 (“the ‘516 patent”) (Civil Action No. 3:09-
`
`CV-00001, Semiconductor Energy Laboratory Co., Ltd. v. Samsung Electronics
`
`Co., Ltd., et al. (W.D. Wis)). These documents include, for example, civil lawsuit
`
`
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`9
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`filings pertaining to the validity of the parent ‘516 patent, including a number of
`
`expert opinions with respect to both Sono and Watanabe. See, for example,
`
`“Expert Report of Dr. Aris Silzars…” (Ex. 2007; Sono discussed at pp. 20-24, 41;
`
`Watanabe discussed at pp. 28, 49-50), which was considered by the Examiner on
`
`September 13, 2010 (Ex. 2006, p. 11, cite no. 82). As the '978 patent descends
`
`directly from the '516 patent and in view of the detailed analysis of the cited prior
`
`art references, the Examiner would certainly have considered these reports to be
`
`enlightening. On the other hand, the Petition fails to address the detailed analysis
`
`provided in the expert opinions considered by the Examiner.2 Therefore, these
`
`litigation documents concerning the ‘516 patent, having been considered by the
`
`Examiner in allowing the ‘978 patent to issue, are relevant to and confirm the
`
`
`2 For example, the Expert Opinion of Dr. Silzars stated that Sono does not disclose
`“a conductive layer that continuously extends for more than one pitch of second
`conductive lines.” (Ex. 2007, p. 22). As noted above, the report was considered by
`the Examiner in allowing the ‘978 patent to issue. The Petition and Declaration of
`Dr. Hatalis are totally silent with respect to this analysis and offer no evidence to
`support the conclusory statement that “Sono, just like the ‘978 patent, describes the
`use of dummy areas for the purpose of providing a uniform cell gap that avoids
`unevenness in display color. (Exhibit 1003 at col. 2, ll. 10-13) (Ex. 1005, Hatalis
`Decl. at ¶ 32)” (Pet., p. 14). Furthermore, the Expert Opinion of Dr. Silzars
`explained in significant detail why “Sono discloses a shield plate instead of a black
`matrix” (Ex. 2007, p. 21). As noted above, the report was considered by the
`Examiner in allowing the ‘978 patent to issue. The Petition and Declaration of Dr.
`Hatalis are totally silent with respect to this analysis and offer no evidence to
`support the conclusory statement that “Sono also describes that providing a black
`matrix was known in the art to provide a sharper display area. (Ex. 1003 at col. 3,
`ll. 64-67)” (Pet., p. 16).
`
`
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`10
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`validity of the ‘978 patent over Sono and Watanabe, and are discussed below in
`
`Section II(C).
`
`Thus, all the prior art asserted in the Petition has already been considered by
`
`the Office, as have a number of expert reports (see Other Publications under
`
`References Cited in the ‘978 patent (Ex. 1001, pp. 1-5) regarding the same prior
`
`art. Since all of the prior art asserted in the Petition was previously presented and
`
`considered by the Office, the Petition for inter partes review should be denied
`
`pursuant to § 325(d).
`
`C. The Petition Fails to Establish a Reasonable Likelihood that at
`Least One of the Challenged Claims in the Petition is Unpatentable.
`
`The Petitioner cannot meet the elevated “reasonable likelihood” standard
`
`that at least one claim is unpatentable because the Office correctly allowed the
`
`claims of the ‘978 patent over the same prior art set forth in the current Petition
`
`during prosecution of the application that became the ‘978 patent. Under 35
`
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(c), inter partes review may only be
`
`instituted if the petition, when viewed in light of the patent owner’s response,
`
`establishes a reasonable likelihood that at least one of the challenged claims in the
`
`petition is unpatentable. In enacting the “reasonable likelihood” standard,
`
`Congress set forth a substantially higher standard than the “substantial new
`
`question” under previous law, in order to deliberately reduce the number of inter
`
`partes requests that are ultimately granted. See, H.R. Rep. No. 112-98 (part 1), at
`
`
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`11
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`47 (2011) (“The threshold for initiating an inter partes review is elevated from
`
`‘significant new question of patentability’— a standard that currently allows 95%
`
`of all requests to be granted—to a standard requiring petitioners to present
`
`information showing that their challenge has a reasonable likelihood of success.”).
`
`Thus, the new standard makes inter partes review unavailable but for exceptional
`
`cases where “serious doubts” about the patent’s validity are raised and a “prima
`
`facie case” has been established by the petitioner. See, 157 Cong. Rec. S1375
`
`(Mar. 8, 2011) (statement of Sen. Jon Kyl (D-Ariz)).
`
`It is respectfully submitted that the Petition fails to meet this burden because
`
`none of the prior art asserted by Petitioner discloses or suggests all of the features
`
`of the ‘978 patent claims.
`
`1.
`
`The invention of the ‘978 Patent
`
`The ‘978 patent, titled “Liquid-Crystal Display Device Having a Particular
`
`Conductive Layer,” relates to a liquid-crystal display (“LCD”) device of the active
`
`matrix type for reducing failure occurring when bonding substrates and for
`
`preventing moisture from entering from the exterior. See, for example, col. 1, ll. 8-
`
`10; col. 13, ll. 38-50; and col. 14, ll. 7-27 of the ‘978 patent. Annotated Fig. 1 of
`
`the ‘978 patent, which is reproduced below, is a top view of a first substrate 101 of
`
`the LCD device having a first side edge, extending in a first direction, and a second
`
`side edge, extending in a second direction orthogonal to the first direction.
`
`
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`12
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`

`
`
`
`
`As shown in the schematic diagram in Fig. 1 of the ‘978 patent, the LCD
`
`device includes a pixel section 102 and liquid crystal cells 111 in the pixel section
`
`102, including a plurality of first conductive lines (e.g., signal lines 105) and a
`
`plurality of second conductive lines (e.g., scanning lines 106). See, e.g., col. 6, ll.
`
`16-34 of the ‘978 patent. There is also an insulating film (e.g. interlayer insulator
`
`220) that is disposed between the first conductive lines and the second conductive
`
`lines as shown in Fig. 2E of the ‘978 patent, which is reproduced above (with
`
`annotations). See, e.g., col. 9, ll. 4-15 of the ‘978 patent. In the pixel section 102,
`13
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`

`

`thin film transistors 112 are electrically connected to the first conductive lines 105
`
`and the second conductive lines 106, and also are electrically connected to pixel
`
`electrodes (the liquid crystal cells 111). See col. 6, ll. 31-34 of the ‘978 patent.
`
`The sealing member formation region is represented by the cross hatched area 107,
`
`which surrounds the pixel section 102 as shown in Fig. 1 of the ‘978 patent. The
`
`sealing member in the sealing member formation region 107 is disposed between
`
`the first substrate 101 and a second substrate. See col. 6, ll. 35-41 of the ‘978
`
`patent.
`
`As shown in Fig. 1 of the ‘978 patent, for example, the first conductive lines
`
`105 and the second conductive lines 106 cross the sealing member formation
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`region 107 at locations such as those identified as R3 and R4 in Fig. 1. The ‘978
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`patent teaches forming first and second conductive layers (e.g., dummy wirings
`
`501) over the first substrate 101 so as to overlap with the sealing member
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`formation region 107 as shown in Fig. 9 of the ‘978 patent, which is reproduced
`
`below (with annotations). See col. 13, ll. 51-55, 61-66 of the ‘978 patent. The
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`conductive layers 501 evenly support the sealing member formation region so that,
`
`as a result, pressure can be uniformly applied to the first and second substrates
`
`when they are pressed toward each other and bonded together. See col. 14, ll. 39-
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`47 of the ‘978 patent.
`
`
`
`14
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`

`

`
`
`The ’978 patent specifies that such conductive layers or dummy wirings
`
`provided in the sealing member formation region 107 also have characteristics that
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`i) at least first and second conductive layers are formed from a same layer as the
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`plurality of second conductive lines, ii) a length of the first conductive layer along
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`the first direction and a length of the second conductive layer along the first
`
`direction are longer than a pitch of adjacent ones of the plurality of second
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`conductive lines, and iii) the first and second conductive layers are electrically
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`isolated from each other and from both of the plurality of first conductive lines and
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`the plurality of second conductive lines.3
`
`
`3 The Petition improperly characterizes the challenged claims, stating that:
`“[c]laims 7 and 17 include limitations that attempt to distinguish the claims from
`15
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`
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`

`

`As to the characteristics of the above i), specifically, the first and second
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`conductive layers (i.e., the dummy wirings 501) are formed from a same layer as
`
`the second conductive lines (i.e., scanning lines 106). See col. 13, ll. 51-66 of the
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`‘978 patent, which states in part “[t]he starting film is patterned so that while the
`
`gate electrode/wiring of a TFT [i.e. scanning line 106] are formed, dummy wirings
`
`501 which are not electrically connected are formed as shown in FIG.9.” (emphasis
`
`added).
`
`As to the characteristics of the above ii), the ‘978 patent specification also
`
`discloses that lengths of the first and second conductive layers along the first
`
`direction are longer than a pitch of adjacent second conductive lines as illustrated
`
`by Fig. 9 of the ‘978 patent. See Figs. 1 (showing the first direction along the first
`
`side edge) and 9 (showing branches 501a are longer than the pitch of dummy
`
`wirings 501) reproduced above. See also, col. 12, ll. 31-34 (pitch of the dummy
`
`wirings is equal to the pitch of the scanning lines 106) and col. 14, ll. 18-27
`
`(branches 501a orthogonal to longitudinal direction of the dummy wiring are
`
`longer than the pitch).
`
`the APA. Those allegedly distinguishing limitations are directed to the inclusion of
`electrically isolated, dummy wirings that attempt to create uniformity in the step of
`a sealing material (such as in claims 7 and 17)” (Pet., p. 13). The Petitioner’s
`foregoing characterization of claims 7 and 17 is too narrow. Nothing in the ‘978
`patent limits the patentable concept of the subject invention only to “the inclusion
`of electrically isolated, dummy wirings that attempt to create uniformity in the step
`of a sealing material.” Rather, the inventive concept of claims 7 and 17 is the
`entire combination of elements of those claims.
`
`
`
`16
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`

`

`As to the characteristics of the above iii), the ‘978 patent specification also
`
`discloses that the first and second conductive layers are electrically isolated from
`
`the first and second conductive lines and from each other. See col. 6, ll. 53-58; col.
`
`13, ll. 61-66; Figs. 4 and 9 of the ‘978 patent.
`
`Also, in one embodiment described in the ‘978 patent specification, a black
`
`matrix is overlapped with intersections of the first conductive lines and the second
`
`conductive lines and the first and second conductive layers . See col. 2, ll. 59-64,
`
`col. 4, ll. 56-62, col. 14, ll. 48-54, and col. 16, ll. 1-9 of the ‘978 patent.
`
`2.
`
`Claims of the ‘978 Patent
`
`Only independent claims 7 and 17 are being challenged in the Petition.
`
`Independent claim 7 recites the following4:
`
`(a) A display device comprising:
`(b) a first substrate having a first side edge extending in a first
`direction and a second side edge extending in a second direction
`orthogonal to the first direction;
`(c) a plurality of first conductive lines extending over the first
`substrate in the first direction;
`(d) a plurality of second conductive lines extending over the first
`substrate in the second direction;
`
`
`4 As noted in MPEP § 2143.03, “[a]ll words in a claim must be considered in
`judging the patentability of that claim against the prior art.” (Citing In re Wilson,
`424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)).
`
`
`
`17
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`

`

`(e) an
`the plurality of first
`insulating film disposed between
`conductive lines and the plurality of second conductive lines;
`(f) a plurality of thin film transistors electrically connected to the
`plurality of first conductive lines and the plurality of second
`conductive lines
`(g) a plurality