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 |PR20'I 3-00038
`
`PATENT 7,956,978
`
`PATENT OWNER’S REQUEST FOR REHEARING OF DECISION TO
`INSTITUTE INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CHI MEI INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`CASE |PR20'I 3-00038
`
`PATENT 7,956,978
`
`PATENT OWNER’S REQUEST FOR REHEARING OF DECISION TO
`INSTITUTE INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`TABLE OF CONTENTS
`
`THE DECISION ERRED IN FINDING THAT OTHER CIVIL
`
`DE.FENDANTS ARE NOT REAL PARTIES-IN-INTEREST ................... .. I
`
`THE DECISION ERRED IN FAILING TO PROPERLY CONSTRUE THE
`
`CLAIM TERM “BLACK MATRIX” ......................................................... .. 7
`
`THE DECISION ERRED IN FINDING A REASONABLE LIKELIHOOD
`
`OF UNPATENTABILITY ......................................................................... .. 8
`
`SONO DOES NOT TEACH FIRST AND SECOND CONDUCTIVE
`
`LAYERS THAT ARE ELECTRICALLY ISOLATED FROM EACH
`
`OTHER .................................................................................................... .. I0
`
`SONO DOES NOT TEACH TI-IE PLURALITY OF FIRST CONDUCTIVE
`
`LINES AND THE PLURALITY OF SECOND CONDUCTIVE LINES... I3
`
`SONO DOES NOT TEACH FIRST AND SECOND CONDUCTIVE
`
`LAYERS THAT ARE FORMED FROM A SAME LAYER AS THE
`
`PLURALITY OF SECOND CONDUCTIVE LINES .............................. .. I7
`
`SONO DOES NOT TEACH FIRST AND SECOND CONDUCTIVE
`
`LAYERS LONGER THAN A PITCH OF ADJACENT ONES OF THE
`
`PLURALITY OF SECOND CONDUCTIVE LINES .............................. .. I8
`
`WATANABE
`
`DOES
`
`NOT
`
`TEACH
`
`FIRST AND
`
`SECOND
`
`CONDUCTIVE LAYERS LONGER THAN A PITCH OF ADJACENT
`
`ONES OF THE PLURALITY OF SECOND CONDUCTIVE LINES ..... .. 20
`
`CONCLUSION ........................................................................................ .. 24
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING OF DECISION TO
`INSTITUTE INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.71
`
`The Decision to Institute inter partes review of U.S. Patent No. 7,956,978
`
`(“the ‘978 patent”) mailed March 21, 2013, has been carefully considered. This
`
`Request for Rehearing on behalf of the Patent Owner is filed within fourteen days
`
`of the Decision and is timely filed pursuant to 37 C.F.R. § 42.71. The Patent
`
`Owner respectfully requests rehearing because the Board abused its discretion in
`
`failing to dismiss the Petition as required under 35 U.S.C. 3 l2(a)(2) and 37 C.F.R.
`
`§ 42.8(b)(1), in View of the Petition’s failure to name real parties-in-interest who
`
`have admitted participation in the “preparation and filing” of the Petition,
`
`in a
`
`related court proceeding. The Board abused its discretion in failing to afford
`
`proper weight or construction to the word “matrix,” in view of the ordinary
`
`meaning of the word. Furthermore, the Board abused its discretion in failing to
`
`properly consider and interpret what the asserted prior art, including U.S. Patent
`
`No. 5,513,028 to Sono (Ex. 1003) and US. Patent No. 5,504,601 to Watanabe (Ex.
`
`1004), would reasonably have disclosed to a person of ordinary skill in the art.
`
`THE DECISION ERRED IN FINDING THAT OTHER CIVIL
`
`DEFENDANTS ARE NOT REAL PARTIESJN-INTEREST.
`
`As stated at pages 3-7 of the Patent Owner’s Preliminary Response,
`
`the
`
`Petition fails to identify all the real parties-in-interest, and therefore, the Office
`
`lacks statutory authority to consider it under 35 U.S.C. § 312 (a)(2).
`
`In response,
`
`
`
`the Decision finds that “SEL does not set forth persuasive evidence that the district
`
`court
`
`co-defendants CMO USA, Acer America, Viewsonic, VIZIO,
`
`and
`
`Westinghouse necessarily have any control” over the proceeding.
`
`(Decision, page
`
`7.) Instead, the Decision finds that “[t]he statements that SEL refer to are just that”
`
`and that “[i]t is likely that no such stay would have been granted without all co-
`
`defendants agreeing to the estoppel provision.” (Decision, pages 7-8.) Thus, the
`
`Decision concludes, “SEL has not demonstrated that CMI has failed to list all the
`
`real parties-in-interest.”
`
`(Decision, page 8.)
`
`However,
`
`the Patent Owner
`
`respectfully disagrees.
`
`The Decision’s error is again fiindamental. The one point it does consider
`
`(i.e., that the unambiguous statements by all defendant parties of ownership of the
`
`IPR Petition before the District Court may have meant something other than their
`
`plain meaning, see Decision p. 8) is only reached by ignoring the legally binding
`
`nature of those statements (which in turn necessarily governs and limits how they
`
`may be interpreted). A brief outline of this basic principle is set out on pp. 4 - 6
`
`below.
`
`The specific facts of this proceeding clearly establish that unnamed parties,
`
`including Chi Mei Optoelectronics USA,
`
`Inc.
`
`(“CMO USA”), Acer America
`
`Corporation (“Acer America”), ViewSonic Corporation (“ViewSonic”), VIZIO,
`
`inc.
`
`(“W210”), and Westinghouse Digital, LLC (“Westinghouse”), are real
`
`
`
`parties-in-interest.
`
`To support
`
`this position,
`
`the Patent Owner
`
`submitted
`
`statements made by the Defendants in Semiconductor Energy Laboratory Co., Ltd.
`
`v. Chimei
`
`Imzolux Corp, et al., Case No. SACV l2-002l—.lST (C.D. Cal)
`
`(hereinafter the “CM! case”)
`
`(Ex. 2001) that they all participated in filing the
`
`Petition. 1 Namely, in a joint Motion to Stay, the Defendants collectively refer to
`
`the Petition as “their” Petition that “Defendants filed.” (Ex. 2002, pp. 2 and 5-6).
`
`Further, the Defendants made admissions to the Court in the CMI case that the
`
`“Defendants have moved expeditiousbi
`
`to prepare and file a comprehensive
`
`petition for an IPR of the Asserted Patents.” (Id. at 17). Also,
`
`in support of the
`
`Defendants’ Motion to Stay,
`
`the Petitioner’s Backup Counsel
`
`in this
`
`IPR
`
`proceeding, Gregory Cordrey, who also represents CMO USA, Acer America,
`
`ViewSonic, and VIZIO, submitted a declaration stating that collectively “[o]n
`
`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.” (Ex. 2003, p. 1). Since
`
`CMI’s backup counsel, Mr. Cordrey, also represents CMO USA, Acer America,
`
`View/Sonic, and VIZIO, these parties surely have an opportunity to exercise control
`
`of the instant Petition through Mr. Cordrey. Thus, the Petition is not just CMI’s
`
`' As noted in the Preliminary Response of the Patent Owner, at 5, n.l,
`
`Westinghouse joined in the motion to stay and agreed to be bound by the PTO’s
`
`determinations on the [PR petitions. See Exhibit 2019.
`
`
`
`Petition, but also the inter partes review Petition of the other co-defendants in the
`
`pending CMI case. As such, all the other Defendants in the CM] case, Acer
`
`America, CMO USA, Westinghouse, VIZIO and Viewsonic, are real parties-in-
`
`interest with respect to the Petition.
`
`The Decision gives little or no weight to the statements and admissions
`
`made by all Defendants in the CMI case. Specifically, the Decision states that the
`
`“statements that SEL refer to are just that. SEL has not shown persuasively that
`
`the statements mean what SEL suggests they mean.” (Decision, p. 7, 1]. 18-19.)
`
`These statements mean what they say, and that is that all Defendants prepared and
`
`filed the instant IPR Petition.
`
`Further, these statements are admissions made by the Defendants’ attorney
`
`in pleadings filed in the U.S. District Court for the Central District of California.
`
`In presenting papers to a federal court, and pursuant to Federal Rule of Civil
`
`Procedure 1l(b)(3), the signing attorney certifies that “the factual contentions have
`
`evidentiary support.”
`
`Admissions made in documents filed with the district court
`
`in a prior
`
`litigation are admissible in evidence in a subsequent suit, and also should be
`
`admissible in evidence in this IPR proceeding. The Federal Rules of Evidence
`
`provide that a statement made by a party’s attorney is admissible for the truth of
`
`
`
`the matter asserted as a party admission.
`
`See Federal Rules of Evidence
`
`801(d)(2)(C) and (D).
`
`Moreover, such representations to a court, about the party’s past or future
`
`conduct
`
`in the same or related litigation, are not only admissible,
`
`their plain
`
`meanings are legally binding.
`
`See e.g., Super Sack Mfg. Corp.
`
`v. Chase
`
`Packaging Corp,
`
`57 F.3d
`
`1054,
`
`1058-60
`
`(Fed. Cir.
`
`1995)
`
`(counsel’s
`
`representation to court on party’s future conduct in related litigation conclusively
`
`binding),
`
`limitation of holding on jurisdictional issues recognized in Sunshine
`
`Kids Juvenile Prods, LLC,
`
`infra;
`
`Intellectual Property Dev.,
`
`Inc.
`
`v. TC]
`
`Cablevision of Calif, Inc., 248 F.3d 1333, 1341 (Fed. Cir. 2001); Sunshine Kids
`
`Juvenile Prods, LLC v. Indiana Mills & .Mfg., Inc., No. ClO—5697BHS , 201 1 WL
`
`862038, at *2-*3 (W.D. Wash. Mar. 9, 2011) (covenant of counsel stated in motion
`
`papers
`
`and
`
`briefs
`
`subsequently
`
`binding
`
`and
`
`enforceable
`
`against
`
`party
`
`notwithstanding lack of further formality or execution by corporate officer); see
`
`also CHARLES A. WRIGHT, ARTHUR R. MILLER, MARY K. KANE, & RICHARD L.
`
`MARCUS, Federal Practice & Procedure §§ 2722 & 2723 (Supp. Dec. 2012)
`
`(discussing when statements to court orally or in motions, briefs, or other papers
`
`constitute conclusive evidence that may be used to establish non-existence of
`
`issues of fact for Rule 56 purposes).
`
`
`
`The Decision’s reasoning about these straightforward statements appears to
`
`be backwards. On pages 7-8, the Decision states that what appear to be judicial
`
`admissions (i.e., that the Petition was “filed” by parties not named here) should
`
`apparently not be taken either to mean what
`
`they say or as binding, because
`
`without those statements “[i]t is likely that no such stay would have been granted.”
`
`That would appear to be rather a conclusive reason in favor of taking them as
`
`binding. If a party’s counsel has to tell a court “X is a fact” in order to induce the
`
`court to rule in the party’s favor,” and the court does rule in its favor (by granting a
`
`stay), the straightforward logical inference is that, since the statement successfully
`
`induced a Court's ruling, the same party will not be allowed to dispute or disavow
`
`that fact to another forum, when a contrary fact narrative is more convenient. The
`
`Decision seems to take a representation of fact that successfully induces a court to
`
`rule in the speaker’s favor as “just something someone says.”
`
`The Board is not
`
`free to disregard CMI’s and the other Defendants’
`
`statements made in the papers filed with U.S. District Court for the Central District
`
`of California in the CMI case,
`
`including the statements that all Defendants
`
`prepared and filed the instant IPR petition. These admissions must be taken as
`
`fact, therefore, all Defendants in the CM] case are real parties—in-interest, and the
`
`Board should modify its Decision to deny the Petition under 35 U.S.C. § 312
`
`(3)0)-
`
`
`
`THE DECISION ERRED IN FAILING TO PROPERLY CONSTRUE
`
`THE CLAIM TERM “BLACK MATRIX”
`
`In its claim construction findings,
`
`the Board construed the term “black
`
`matrix” to mean “[a] layer which blocks light to another layer or the same layer
`
`‘H43
`
`rendering it ‘black.
`
`(Dec. 9.) However, such construction wholly disregards the
`
`1'}
`term “matrix. A proper construction would give meaning to the term “matrix.”
`
`See Merck & Ca. V. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed, Cir. 2005)
`
`(“A claim construction that gives meaning to all the terms of the claim is preferred
`
`over one that does not do so.”); see also Pause Tech. LLC v. _Tz'vo, .Inc., 419 F.3d
`
`1326, 1334 (Fed. Cir. 2005). The plain and ordinary meaning of the term “matrix,”
`
`in the context of a black matrix, means a grid. See, for example, U.S. Patent No.
`
`6,243,146 to Rho at Figure 2 (black matrix 110) and U.S. Patent No. 5,654,781 to
`
`lzumi at Figure 3 (black matrix 5), (both patents were discussed by the Board in its
`
`analysis of the term “black matrix”) (Dec. 19-20.)
`
`In this regard, as claim 17
`
`explicitly requires,
`
`the black matrix or grid is disposed to be “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.”
`
`Moreover, as described in the Preliminary Response, Sono does not teach
`
`the claimed black matrix.
`
`(Prelim. Resp. 40-42.) In view of the Board’s failure to
`
`afford the term “matrix” its proper weight, the Patent Owner respectfully requests
`
`
`
`plain and ordinary meaning, a black matrix means a layer disposed in 61 matrix or
`
`grid which blocks light. On the other hand, Sono only potentially discloses a
`
`shield plate 29 or an opaque layer that covers elements outside of Sono’s display
`
`area,
`
`is not partly overlapped by intersections of conductive lines within the
`
`display area and, as such,
`
`is akin to a bezel or rectangular frame, not a black
`
`“matrix.”
`
`For these reasons, Sono does not teach or suggest a “black matrix" as
`
`properly construed, and thus, claim 17 is patentable over Sono.
`
`Further,
`
`the
`
`Admitted Prior Art and Watanabe do not cure this deficiency of Sono.
`
`Accordingly, reconsideration of the Patent Owner’s arguments is respectfully
`
`requested because the Board erred in failing to afford a proper construction to the
`
`term “matrix.”
`
`III. THE DECISION ERRED IN FINDING A REASONABLE
`
`LIKELIHOOD OF UNPATENTABILITY
`
`The Decision finds a reasonable likelihood of the Petition prevailing based
`
`on a generous expansion from the Petition’s assertions. For example, contrary to
`
`the Petition’s explicit allegation that Sono shows “at
`
`least first and second
`
`conductive layers (dummy pixels in 7 and 7’ include first and second conductive
`
`layers that are formed from a same layer as the second conductive lines” (Pet. 21),
`
`and in response to the Patent Owner’s reply to such theory based on Sono’s Figure
`
`4, the Board clarifies that “CMI relies on the dummy circuit area 74 for the first
`
`
`
`and recited second conductive layers and the vertical lines I for the recited second
`
`conductive lines.
`
`(Dec. 16-17.) However, for the reasons provided in detail
`
`7')
`
`below, Sono’s dummy circuit area 74 does not reasonably suggest the claimed first
`
`and second conductive layers and Sono’s vertical lines in the dummy pixel area 7’
`
`do not reasonably correspond to the claimed plurality of second conductive lines.
`
`Furthermore, the Admitted Prior Art and Watanabe do not cure these deficiencies
`
`of Sono. 2
`
`2 The Decision acknowledges that the all of the asserted prior art, including Sono,
`
`Watanabe and the Admitted Prior Art, was cited and considered by the Examiner
`
`during prosecution of the involved patent (Prelim. Resp. 7-1]; Dec. 6), but
`
`concludes that “[a]bsent a showing of ‘substantially the same
`
`arguments,’ :'d.,
`
`and considering that CMI includes evidence not considered before the ‘978 patent
`
`examiner,
`
`including the declaration of Miltiadis Hatalis, Ph.D.
`
`(‘Hatalis
`
`Declaration’) (Ex. 1005), SEL does not show that the inter partes review of the
`
`‘978 Patent would be improper under 35 U.S.C. § 325(d).” (Dec. 6.) However, it
`
`is noted that the Hatalis Declaration is not prior art while § 325(d) only requires a
`
`showing that “the same or substantially the same prior art 5:3; arguments previously
`
`were presented to the Office.” (Emphasis added). That is, the use of disjunctive
`
`or means
`
`“in the
`
`alternative” under
`
`traditional doctrines of
`
`statutory
`
`interpretation.
`
`See, Eskridge
`
`et
`
`al., CASES AND MATERIALS ON
`
`
`
`A.
`
`TEACH FIRST AND SECOND
`SONO DOES NOT
`CONDUCTIVE LAYERS THAT ARE ELECTRICALLY
`
`ISOLATED FROM EACH OTHER
`
`Contrary to the findings made in the Decision, Sono does not teach either
`
`explicitly or in context that horizontal dummy circuit 74 includes first and second
`
`conductive layers or “long conductive layer runs.” The Board asserts that Sono
`
`discloses “making the peripheral circuits the same to ensure a uniform substrate-to-
`
`substrate gap.” (Dec. 17.) The Board also finds, based on the Hatalis Declaration,
`
`that “isolation saves power and that Sono’s dummy circuits are isolated naturally
`
`from one another because the dummy circuits do not serve an electrical function”
`
`and that “Sono generally depicts isolated (i.e., unconnected) dummy circuits 74
`
`and 75 (Fig. 7) and teaches ‘locally cutting of the wiring’ within dummy pixel
`
`circuits to create electrical isolation from driving an_d scanning lines as noted supra
`
`(See Ex. 1003, col. 3, 11. 47-51.).’’ (Id., 18.) Thus, the Board concludes that “Sono
`
`suggests isolating different metal dummy step regions from one another and from
`
`conducting lines.” (Id.) The Patent Owner disagrees.
`
`LEGISLATION: STATUTES AND THE CREATION OF PUBLIC POLICY (3d.
`
`ed. 2001), p. 827, n.l. As such, and contrary to the Board’s analysis, § 325(d)
`
`explicitly permits dismissal of the Petition “absent a showing of ‘substantially the
`
`same
`
`arguments” and the Board's requirement of a dual showing lacks proper
`
`statutory basis.
`
`
`
`Initially, in finding that Sono generally depicts that the dummy circuits are
`
`themselves isolated (i.c., unconnected), there can be no proper reason or technical
`
`rationale why one of ordinary skill in the art would conclude that disconnecting
`
`different metal dummy step regions from one another would be necessary or
`
`obvious.
`
`In other words, cutting internal wirings within isolated “dummy” circuits
`
`would not save power.
`
`Instead, if the dummy circuits are “isolated naturally” as
`
`the Decision states, then disconnecting alleged metal dummy step regions (asserted
`
`first and second conductive layers) could only potentially serve to frustrate Sono’s
`
`above-mentioned purpose of “making the peripheral circuits the same to ensure a
`
`uniform substrate-to-substrate gap,” requiring an additional and unnecessary step
`
`at that. That is, if the internal wirings were cut within the isolated dummy circuits,
`
`the structure of the dummy peripheral circuits 74 and 75 and that of the operational
`
`peripheral circuits 72 and 73 would not be the same.
`
`In this regard, as the Patent Owner noted in the Preliminary Response, the
`
`Hatalis Declaration is unsupported and provides no technical basis for the premise
`
`that alleged “long conductive layer runs” comprised within Sono’s dummy circuit
`
`74 would necessarily or obviously be electrically isolated from each other. (Prelim.
`
`Resp. 38-40.) As noted therein,
`
`the Hatalis Declaration improperly relies on
`
`Sono’s teachings with respect to dummy pixels (e.g., Ex. 1003, col. 4, ll. 22~24),
`
`while the Decision newly clarifies that “long conductive layer runs” within dummy
`
`
`
`circuits 74 and 75 are alleged to correspond to the claimed first and second
`
`conductive layers. As the Decision itself acknowledges, dummy circuits 74 and 75
`
`are formed to parallel peripheral circuits 72 and 73, not dummy pixels.
`
`(Dec. 17.)
`
`Accordingly, the reliance by Dr. Hatalis and by the Board on Sono’s description of
`
`“Lanny cutting of the wiring” within the dummy pixel areas is improper in the
`
`context of an extraneous and “unconnected” dummy circuit 74.
`
`Likewise, the Hatalis Declaration provides no technical basis for the premise
`
`that “[a]s there is no electrical function to the dummy circuits, naturally, the first
`
`and second conductive layers are electrically isolated from each other.” (Ex. 1005,
`
`paragraph 43.) For example, the Declaration provides no facts or data supporting
`
`this premise, as required under Fed. R. Evid. § 702(b). Notwithstanding the failure
`
`of Dr. Hatalis to support this premise, those of ordinary skill in the art readily
`
`understand that isolating dummy circuits 74 and 75 from extraneous circuits, such
`
`as pixel area 7l, does not necessarily or naturally isolate internal structures, such as
`
`“long conductive layer runs,” from one another electrically.
`
`Internal components
`
`may maintain the ability to convey and transfer electrical charge regardless of
`
`whether they constitute a structure isolated from the external circuits. For example,
`
`persons of ordinary skill in the art would immediately appreciate that they may
`
`unplug their cell phone or television from a wall socket without electrically
`
`isolating each internal component therein from one another. Likewise, the absence
`
`
`
`of an electrical
`
`function does not “naturally” deprive internal components
`
`(especially “conductive” components) of their ability to carry or conduct charge to
`
`other internal components.
`
`Since Sono does not teach or suggest the feature of claims 7 and 17 that the
`
`conductive layers are electrically isolated from each other as well as electrically
`
`isolated from the conductive lines, the Board erred in its findings with respect to
`
`this features. Accordingly, reconsideration of the Patent Owner’s arguments is
`
`respectfully requested.
`
`B.
`
`$ONO DOES NOT TEACH THE PLURALITY OF FIRST
`CONDUCTIVE LINES AND THE PLURALITY OF SECOND
`
`CONDUCTIVE LINES
`
`Furthermore, the Decision confuses the portion of Sono relied on to teach
`
`the plurality of first conductive lines and the plurality of second conductive lines.
`
`Specifically, in response to the Patent Owner's arguments that Sono’s shield plate
`
`or opaque layer does not overlap the intersections of first and second conductive
`
`lines, the Decision relies on horizontal lines and vertical lines in the dummy pixel
`
`areas 7 and 7’
`
`(i.e.,
`
`the intersections of such dummy lines shown circled in
`
`annotated Figure 4 of Sono, below).
`
`(Dec. 19.) The Decision rationalizes that the
`
`claimed black matrix is not necessarily integral to the pixel area and that a BM on
`
`TFT is not claimed, but appears to recognize that claim 17 requires that a black
`
`matrix is over “first and second conductive line intersections and first and second
`
`
`
`conductive layers,” Qzoncluding that “Sono teaches or suggests covering peripheral
`
`display areas which would include the dummy pixel and circuit areas which in turn
`
`would include the recited regions.” (Id.)
`
`That is, as illustrated in Sono’s Figure 5, a shield plate 29 is formed over the
`
`dummy pixel areas, framing the display area but is not formed over it.
`
`(Ex. 1003,
`
`col. 3, 1. 67 to col. 4,
`
`l. 5.) As such, the Decision relies on horizontal lines in
`
`Sono’s dummy pixel area 7 and on vertical lines in Sono’s dummy pixel area 7’ to
`
`allegedly suggest the claimed plurality of first conductive lines and plurality of
`
`second conductive lines, respectively (i.e., the RED and BLUE lines, respectively,
`
`in Sono’s Figure 4, annotated below).
`
`FIG. 4
`
`I
`
`HORIZONTAL SHIFT
`
`REGISTER
` T‘
`
`
`
`
`VER-TIIIALSHIFT
`-'I-"ill-"I
`
`
`>3
`
`
`
`The specification of the ‘978 patent clearly discloses that the black matrix is
`
`formed in a display area (i.e., pixel section 102).
`
`(See Ex. 1001, col. 4, ll. 56-62,
`
`and col. 14, 11. 48-54.) On the other hand and as noted above, Sono explicitly
`
`teaches “locally cutting of the wiring” with respect to the dummy pixel areas on
`
`which the Decision expressly relies, to create an electrically insulated state vis-a-
`
`vis the display area (i.e., the RED and BLUE lines of dummy pixel rows 7 and
`
`columns 7’).
`
`(Ex. 1003, Figure 4, col. 3, 11. 49-52.) Thus, Sono only potentially
`
`discloses that
`
`the display and scanning lines 1 and 2, which intersect in the
`
`display area 8X8’ and outside of this dummy pixel area, include such electrical
`
`connections.
`
`(Ex. 1003, col. 3, 11. 18-23 and col. 4, 11. 20-24.)
`
`In this regard,
`
`it
`
`is noted that
`
`the Decision itself is
`
`inherently self-
`
`contradicting. As noted above,
`
`the Decision heavily relies on Dr.
`
`l-latalis’
`
`conjecture that alleged long conductive layer runs of Sono’s dummy circuit 74 are
`
`electrically isolated from one another in view of Sono’s depiction of “isolated (i.e.,
`
`unconnected) dummy circuits 74 and 75.” (Dec. 18, citing Hatalis Declaration at
`
`paragraph 43). However, claims 7 and 17 of the ‘978 patent expressly define that
`
`the plurality of first conductive lines and plurality of second conductive lines are
`
`“electrically connected” to a plurality of thin film transistors, which are in turn
`
`“electrically connected” to a plurality of pixel electrodes. Even if arguendo the
`
`Board maintains its position that isolating dummy circuit 74 would naturally render
`
`
`
`internal components of dummy circuit 74 electrically isolated from one another,
`
`then this suspect conclusion would necessarily infer that horizontal lines (i.e., RED
`
`lines) and vertical lines (i.e., BLUE lines) within the isolated dummy pixel areas 7
`
`and 7’ are likewise not “electrically connected” to the pixel electrodes and thin
`
`film transistors, contrary to claims 7 and 17. As such, these dummy pixel areas
`
`cannot be reasonably relied on to suggest the claimed plurality of first conductive
`
`lines and plurality of second conductive lines (i.e., that are “electrically connected”
`
`to a plurality of thin film transistors, which are in turn “electrically connected” to a
`
`plurality of pixel electrodes).
`
`That
`
`is, on one hand,
`
`the Decision relies on Sono’s above-mentioned
`
`disclosure of “locally cutting of the wiring’ within dummy pixel circuits” to
`
`postulate that internal components of Sono’s peripheral (i.e., not “local”) dummy
`
`circuit 74 are electrically isolated.
`
`(Dec. 18.) However, the Decision jumps the
`
`rails and undermines its dubious position by relying on the horizontal and vertical
`
`lines within the very same dummy pixel circuit, which must be “electrically
`
`connected” to local internal components (i.e., thin film transistors) as required in
`
`claims 7 and 17.
`
`Accordingly,
`
`the only applicable intersections of vertical and horizontal
`
`lines in Sono occur in display area 8><8’, which the Decision disavows supra, and
`
`which is outside of the dummy pixel areas on which the Petition and the Decision
`
`
`
`explicitly rely. Sono does not otherwise disclose shield plate 29 or opaque layer
`
`partially overlapped by vertical and horizontal lines 1 and 2, i.e., in display area
`
`8X8’. As such, Sono does not teach the claimed plurality of first conductive lines
`
`and the plurality of second conductive lines, and the Decision commits clear errors
`
`of fact in finding otherwise.
`
`C.
`
`SONO DOES NOT
`
`TEACH FIRST AND SECOND
`
`CONDUCTIVE LAYERS THAT ARE FORMED FROM A
`
`SAME
`
`LAYER AS THE PLURALITY OF
`
`SECOND
`
`CONDUCTIVE LINES
`
`As the Decision notes, claims 7 and 17 each require “at least first and second
`
`conductive layers formed from a same layer as the plurality of second conductive
`
`lines.”
`
`In response to the Patent Owner’s objection to the Hatalis Dec1aration’s
`
`conflating of Sono’s teachings with respect to dummy pixel areas 7 and 7’ and
`
`Sono’s dummy circuit areas 74 and 75 (Ex. 1005, paragraph 40), the Decision
`
`responds that “SEL’s argument is not germane to CMI’s position
`
`CMI relies on
`
`the dummy circuit area 74 for the first and recited second conductive layers and the
`
`vertical lines 1 for the recited second conductive lines.” (Dec. 16-17.)
`
`Yet, Sono does not teach that dummy circuit area 74 is formed from “a same
`
`process” or “a same step” as vertical lines 1, but instead discloses a “same step”
`
`for forming the scanning, driving and dummy circuits 72-75, as the Patent Owner
`
`has argued (Prelim. Resp. 28) and as the Decision nominally notes.
`
`(Dec. 15.)
`
`Both the Petition and the Decision are silent as to why alleged “long conductive
`
`
`
`layer runs” (alleged first and second conductive layers) within dummy circuit 74
`
`would necessarily or obviously have been formed from a same layer as vertical
`
`lines 1 (alleged plurality of second conductive lines) and Sono is silent with respect
`
`to this limitation.
`
`D.
`
`SONO DOES NOT
`
`TEACH FIRST AND
`
`SECOND
`
`CONDUCTIVE LAYERS LONGER THAN A PITCH OF
`
`ADJACENT ONES OF THE PLURALITY OF SECOND
`
`CONDUCTIVE LINES
`
`Contrary to the assertions made in the Decision, Sono does not teach, either
`
`explicitly or in context, a metal step length in the dummy circuit area 74 that
`
`“spans at least five conductive scanning or display line 2 pitch lengths." (Dec. 17.)
`
`As noted in the Preliminary Response, Sono is silent as to the internal structure of
`
`the dummy circuit area 74.
`
`(Prelim. Resp. 30-37.) The Decision states that “CMI
`
`relies on Sono‘s teachings directed to metal step lengths in the dummy circuit area
`
`74 under the sealant 76, wherein the step length spans at least five conductive
`
`scanning or display line 2 pitch lengths.” (Dec. 17, citing Pet. 23-24.) The Patent
`
`Owner respectfully disagrees. There is no teaching in Sono that first and second
`
`conductive layers allegedly disposed within dummy circuit area 74 are longer than
`
`a pitch of adjacent ones of the plurality of second conductive lines.
`
`Sono does not include any explicit discussion of the internal structure of
`
`peripheral circuits 72 and 73 or dummy circuits 74 and 75. As such, there is no
`
`explanation why peripheral circuits would have long conductive layer
`
`runs
`
`
`
`including conductive runs spanning a pitch of at least five pitch lengths, let alone
`
`that a dummy circuit would. Moreover, the Decision states “[i]n context, Sono
`
`refers to ‘the width of such step’ as ‘five scanning lines or display lines’ (Ex. 1003,
`
`col. 3, 1. 40) not only in relation to ‘dummy pixels’ but also in relation to ‘said step
`
`formed by the circuit elements or wiring provided in the peripheral
`
`area.” (Dec. 17.) Contrary to the Decision, Sono does not teach, either explicitly
`
`or in context, that the width of such step is extended either to the peripheral circuits
`
`or to the dummy circuits explicitly relied on.
`
`Instead, Sono explicitly states that
`
`“[t]he width of such step may vary depending upon the case, but, in case of said
`
`dummy pixels, sufficient effect can be attained with a width corresponding, for
`
`example,
`
`to five scanning lines or display lines.” (Ex. 1003, col. 3,
`
`11. 4043;
`
`emphasis added.)
`
`In proper context, “the width of such step” refers to a width of the dummy
`
`step of dummy pixel rows 7 or dummy pixel columns 7’, not
`
`the length of
`
`speculative “long conductive layer runs” allegedly within Sono’s dummy circuit
`
`74. Even if arguerzdo the same effect were obtained by commuting the “width of
`
`such step” from the dummy pixel area to an adjacent dummy peripheral circuit, as
`
`the Decision suggests, then there is no explanation why the length of alleged “long
`
`conductive layer runs” (i.e., first and second conductive layers) would necessarily
`
`or obviously reflect such width.
`
`In any event, contrary to the Board’s findings,
`
`
`
`Sono explicitly states that with respect to dummy circuit “uniformity in cell gap,
`
`for example, can be attained even if these parts are different shapes.” (Ex. 1003 at
`
`col. 3, ll. 28-33.)
`
`Accordingly, Sono does not teach, either explicitly or in context, a length of
`
`first and second conductive layers longer than a pitch of adjacent ones of the
`
`plurality of second conductive lines. The findings of the Decision to the contrary
`
`are not gleaned from the prior art, are not based on Sono’s context and instead
`
`contradict Sono’s express teachings.
`
`E. WATANABE DOES NOT TEACH FIRST AND SECOND
`
`CONDUCTIVE LAYERS LONGER THAN A PITCH OF
`
`ADJACENT ONES OF THE PLURALITY OF SECOND
`
`CONDUCTIVE LINES
`
`The Decision notes that “Watanabe teaches that ‘the substrate gap adjusting
`
`layers 25 and 27 may be formed in long patterns along with the lead portions 13,
`
`17, and 18 (without contacting them)” (citing Watanabe, Ex. 1004 at col. 13, 11.
`
`45-49) and concludes that “[s]ucli long gap patterns reasonably suggest lengths
`
`greater than the pitch between at least lines 17 in Figure 5." (Dec. 22.) The Patent
`
`Owner disagrees.
`
`Watanabe at col. 13, 11. 45-49 only potentially discloses that the substrate
`
`gap adjusting layers 25 and 27 may be formed in patterns along with the lead
`
`portions 13, 17, and 18 without contacting them (see Watanabe’s Figure 5 El
`
`annotated below to highlight blue “patterns” of gap adjusting layers 25 along a
`
`
`
`horizontal X direction coextending with lead portion 17 (alleged in Decision as
`
`second conductive line; Dec. 22.)) Likewise, in Watanabe’s Figure 5, the “pattern”
`
`of gap adjusting layers 27 cocxtcnds with or parallels lead portion 13 (See
`
`Watanabe’s Figure 5, annotated below to highlight blue “patterns” of gap adjusting
`
`layers 27 along a vertical Y direction coextending with lead portion 13.) See also,
`
`Ex. 1004, claims 3 and 6. As such, Watanabe fails to suggest the claimed length of
`
`conductive layers with respect to the pitch of adjacent second conductive lines that
`
`extend in an orthogonal direction.
`
`In this regard, Watanabe’s disclosure of
`
`“patterns” of gap adjusting layers in Figure 5, coextending with lead portions,
`
`compares with those of Watanabe’s First Embodiment — illustrating in Figure l, for
`
`example, similar patterns formed along lead portions 13, 17 and 18.
`
`(Ex. 1004,
`
`col. 10, ll. 66-67.)
`
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