DOCKET NO: 403589US91IPR
`
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`IN RE U.S. PATENT NO. 7,956,978
`
`TRIAL NO: IPR2013-00038
`
`FILED : JULY 1, 2008
`
`ISSUED: JUNE 7, 2011
`
`INVENTORS : HONGYONG ZHANG
`
`ASSIGNEE: SEMICONDUCTOR ENERGY
` LABORATORY CO., LTD.
`
`TITLE: LIQUID-CRYSTAL DISPLAY
`DEVICE HAVING A
`PARTICULAR CONDUCTIVE
`LAYER
`
`
`
`
`
`
`
`
`
`
`
`
`REQUEST FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,956,978
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`
`TABLE OF CONTENTS
`
`1. Involved Applications ...............................................................................2
`
`
`I.  MANDATORY NOTICES .............................................................................1 
`
`A.  Real Party-In-Interest ....................................................................................1 
`
`B.  Related Matters..............................................................................................1 
`
`
`
`
`
`
`2. Request for Motion Authorization Pursuant to
` 37 C.F.R. 42.20(b).....................................................................................4
`
`
`
`C.  Lead And Back-Up Counsel .........................................................................4 
`
`D.  Service Information.......................................................................................5 
`
`PAYMENT OF FEES .....................................................................................5 
`
`
`II. 
`
`III.  REQUIREMENTS FOR INTER PARTES REVIEW......................................5 
`
`A.  Grounds For Standing ...................................................................................5 
`
`B. 
`
`Identification of Challenge............................................................................6 
`
`
`1.  Claims for which inter partes review is requested .................................6 
`
`2.  The specific art and statutory ground(s) of the challenge.......................6 
`
`3.  How the challenged claims are to be construed......................................7 
`
`4.  How the construed claims are unpatentable under the statutory grounds
`identified in 37 C.F.R. § 42.204(b)(2).............................................................7 
`
`5. 
`
`Supporting evidence relied upon to support the challenge.....................8 
`
`
`IV.  SUMMARY OF THE ‘978 PATENT.............................................................8 
`
`A.  Description Of The Alleged Invention..........................................................8 
`
`-ii-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`
`B.  Summary Of The Prosecution History........................................................10 
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘978 PATENT IS UNPATENTABLE .............................12 
`
`
`V. 
`
`
`Identification Of The References As Prior Art ...........................................12 
`
`
`A. 
`
`B.  Summary Of Grounds for Unpatentaility....................................................13 
`
`1. 
`
`2.  Applicant’s Admitted Prior Art in view of Sono renders claims 7
`
`and 17 of the ‘978 patent obvious.........................................................16 
`
`3.  Applicant’s Admitted Prior Art in view of Watanabe and Sono .renders
`
`claims 7 and 17 of the ‘978 patent obvious ..........................................17 
`
`Sono renders claims 7 and 17 of the ‘978 patent obvious ....................14 
`
`
`VI.  DETAILED EXPLANATION ......................................................................17 
`
`VII.  CONCLUSION..............................................................................................60 
`
`
`
`
`
`-iii-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
` EXHIBIT LIST
`
`1001. U.S. Patent No. 7,956,978 to Zhang et al.
`
`1002. Prosecution history of application 12/165,783, which matured into the
`‘978 patent.
`
`1003. U.S. Patent No. 5,513,028 to Sono et al.
`
`1004. U.S. Patent No. 5,504,601 to Watanabe et al.
`
`1005. Declaration of Miltiadis Hatalis, Ph.D.
`
`
`
`
`
`
`
`
`
`
`-iv-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`Petitioner Chimei Innolux Corp. (“CMI” or “Petitioner”) respectfully
`
`requests inter partes review for claims 7 and 17 U.S. Patent No. 7,956,978 (the
`
`“‘978 patent,” attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319 and
`
`37 C.F.R. § 42.100 et seq.
`
`I. MANDATORY NOTICES
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), CMI provides the following mandatory
`
`disclosures.
`
`
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that CMI is the real
`
`party-in-interest.
`
`
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘978 patent is
`
`involved in the litigation styled Semiconductor Energy Laboratory Co., Ltd. v.
`
`Chimei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed on January 5,
`
`2012. This litigation remains pending. The patents-in-suit are U.S. Patents
`
`7,876,413; 6,404,480; 7,697,102; 7,956,978; 8,068,204; and 7,923,311.
`
`This IPR petition is directed to U.S. Patent 7,956,978, however, petitions
`
`corresponding to the remaining patents are forthcoming1. To this end the Patent
`
`Trial & Appeal Board (PTAB) may wish to consider consolidating the six (6)
`
`
`1 An IPR petition directed to U.S. Patent 6,404,480 was filed on October 19, 2012.
`
`-1-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`patents to a single panel of Administrative Patent Judges for administrative
`
`efficiency2. Likewise, the PTAB is encouraged to take immediate jurisdiction over
`
`all involved applications as noted below in B(1) of this Section.
`
`CMI move to stay the corresponding district court litigation pending the
`
`conclusion of the Inter Partes Review proceedings on October 22, 2012.
`
`Through these filings, CMI is availing themselves of the new alternatives to
`
`time consuming and costly patent litigation that were provided on September 16,
`
`2012 by the Leahy-Smith America Invents Act. As the current proceeding must be
`
`concluded within 12 months by statute, will resolve issues of patentability for not
`
`only the ‘978 patent but all involved applications, and will be exclusively presided
`
`over by technically trained Administrative Patent Judges of the PTAB, CMI is
`
`looking forward to a timely and cost effective resolution to this dispute.
`
`1. Involved Applications
`
`37 C.F.R. 42.3 conveys exclusive jurisdiction to the PTAB over every
`
`involved application and patent during the proceeding, as the Board may order. See
`
`35 U.S.C. 6 (b), as amended, 35 U.S.C. 326(c), and Public Law 112–29, section
`
`18. The term “proceeding” is defined by 37 C.F.R. 42.2 as a trial or preliminary
`
`proceeding. Rule 42.2 also defines the term “preliminary proceeding” as beginning
`
`
`2 The ‘480 patent is related in lineage to the ‘102 patent. The other patents-in-suit
`are also directed to substantially similar technology
`
`-2-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`with the filing of an IPR petition. To this end, the PTAB now has jurisdiction over
`
`the following involved patents/applications.
`
`
`
`Pending application 13/484,800 is actively being prosecuted by the
`
`patentee3. As an application claiming priority to the ‘’978 patent remains active,
`
`this application may be utilized as a basis to present patentably indistinct claims,
`
`and, may, if allowed to continue, proceed to issuance prior to the determination of
`
`the PTAB in this IPR. The issuance of such indistinct claims during the pendency
`
`of this IPR is at least inconsistent with 37 C.F.R. 42.373(d)(ii), and, would provide
`
`an “end-around” the reasonable number of substitute claims that may be presented
`
`in this proceeding. As such, further USPTO processing of these proceedings may
`
`prejudicial to the Petitioner’s interests and inconsistent with controlling PTAB
`
`rules. Petitioner respectfully submits that it is appropriate under the circumstances
`
`
`3 As this application was only filed on May 31, 2012, the status is not yet available
`in PAIR. As such, it is unknown whether this application is a continuation or
`divisional filing.
`
`-3-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`for the PTAB to suspend, sua sponte, further prosecution of the above noted
`
`application, or at least require any further patent application filings, or claim
`
`changes be authorized by the PTAB prior to submission to the USPTO.
`
`2. Request for Motion Authorization Pursuant to 37 C.F.R. 42.20(b)
`
`Alternatively, should the Board require that the above noted relief be
`
`requested by motion, pursuant to 37 C.F.R. 42.20(b), Petitioner hereby requests
`
`authorization in this paper to pursue a motion seeking the relief outlined above and
`
`for the judges assigned to this proceeding to convey such authorization during the
`
`first conference call with counsel.
`
`
`
`C. Lead And Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner designates the following
`
`counsel:
`
`Lead Counsel
`
`Backup Counsel
`
`Scott A. McKeown
`cpdocketmckeown@oblon.com
`Registration No.: 42,866
`
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`1940 Duke Street
`Alexandria, Virginia 22314
`Tel: (703) 413-3000
`Fax: (703) 413-2220
`
`
`
`
`
`Gregory S. Cordrey
`gcordrey@jmbm.com
`Registration No.: 44,089
`
`JEFFER MANGELS BUTLER &
`MITCHELL LLP
`3 Park Plaza, Suite 1100
`Irvine, California 92614-2592
`Tel: (949) 623-7200
`Fax: (949) 623-7202
`
`-4-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`
`
`
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`II.
`
`
`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $27,200 to Deposit Account
`
`No. 15-0030 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for Inter
`
`Partes Review. Review of two (2) claims is being requested, so no excess claims
`
`fee is required. The undersigned further authorizes payment for any additional fees
`
`that might be due in connection with this Petition to be charged to the above
`
`referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘978 patent is satisfied.
`
`
`
`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘978
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘978
`
`patent on the grounds identified herein. This is because the ‘978 patent has not
`
`been subject to a previous estoppel based proceeding of the AIA, and, the
`
`-5-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`complaint served on CMI referenced above, in Section 1(B) was served within the
`
`last 12 months.
`
`
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the Patent Trial and Appeal Board (“PTAB”) invalidate claims 7 and 17 of
`
`the ‘978 patent.
`
`
`
`1. Claims for which inter partes review is requested
`
`Pursuant to 37 C.F.R. § 42.204(b)(1), Petitioner request inter partes review
`
`of claims 7 and 17 of the ‘978 patent.
`
`
`
`2. The specific art and statutory ground(s) of the challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), Inter partes review of the ‘978 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘978 patent under 35 U.S.C. § 102(a), and/or (e):
`
`1. U.S. Patent No. 5,513,028 to Sono et al. (“Sono,” Ex. 1003) issued on
`
`April 30, 1996 from an application filed on February 24, 1993. Sono
`
`is prior art to the ‘978 patent under at least 35 U.S.C. § 102(a) and (e).
`
`2. U.S. Patent No. 5,504,601 to Watanabe et al. (“Watanabe,” Ex. 1004)
`
`issued on April 2, 1996 from an application filed on July 13, 1994.
`
`Wattanabe is prior art to the ‘978 patent under at least 35 U.S.C. §
`
`102(a) and (e).
`
`-6-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`3. U.S. Patent No. 7,956,978 to Zhang et al. (Ex. 1001, see Figs. 16 and
`
`17, generally Col. 1:12 - Col. 3:11) includes admissions by the
`
`Applicant which constitute Admitted Prior Art (“APA”).
`
`Sono (Ex. 1003) renders claims 7 and 17 obvious under 35 U.S.C. § 103.
`
`APA (Ex. 1001) taken in view of Sono (Ex. 1003) renders obvious claims 7
`
`and 17 under 35 U.S.C. § 103.
`
`APA (Ex. 1001) taken in view of Watanabe (Ex. 1004) and Sono (Ex. 1003)
`
`renders obvious claims 7 and 17 under 35 U.S.C. § 103.
`
`3. How the challenged claims are to be construed
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). Petitioner submits, for the purposes of this inter partes review
`
`only, that the claim terms take on their ordinary and customary meaning that the
`
`terms would have to one of ordinary skill in the art. None of the challenged claims
`
`contain a means-plus-function or step-plus-function limitation, or appear to recite a
`
`coined” phrase or defined phrase (lexicography) requiring special consideration.
`
`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.204(b)(2).
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 7 and 17
`
`
`
`of the ‘978 patent are unpatentable under the statutory grounds identified above,
`
`including the identification of where each element of the claim is found in the prior
`
`-7-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`art patents or printed publications, is provided in Section VII, below, in the form of
`
`claim charts.
`
`
`
`5. Supporting evidence relied upon to support the challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges and the relevance of the evidence to
`
`the challenges raised, including identifying specific portions of the evidence that
`
`support the challenges, are provided in Section VI, below, in the form of claim
`
`charts. An Exhibit List is provided supra.
`
`IV. SUMMARY OF THE ‘978 PATENT
`
`A. Description Of The Alleged Invention
`
`The ‘978 patent describes that prior art LCD devices may include peripheral
`
`drive circuits (signal line drive circuit 13 and scanning line drive circuit 14) with
`
`signal lines 15 and scanning lines 16 that extend outside of a sealing material
`
`region 17. (Ex. 1001 at col, 2, ll. 32-49) Because lines 15 and 16 only extend
`
`outside of the sealing material region on two sides of the sealing material region,
`
`the seal around the device may not be uniform. (Id. At ll. 45-47) When assembling
`
`the LCD device, this non-symmetrical property creates a non-uniform seal that
`
`may degrade operation of the device or contribute to deteriorated image quality.
`
`(Ex. 1001 at col., 2, ll. 50-58)
`
`-8-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`In various embodiments, the ‘978 patent also describes an LCD device with
`
`peripheral drive circuits within a sealing material region in a non-symmetrical
`
`configuration (see Fig. 1, circuit 103 drives signal lines 105 extending vertically;
`
`circuit 104 drives scanning lines 106 extending horizontally) In order to eliminate
`
`the problems identified in the admitted prior art of Figs 16-17, the ‘978 patent
`
`describes “interval maintaining means” or “dummy” wiring structures in regions
`
`R1, R2, R3, and R4 that at least partially overlap with the sealing region 107.The
`
`dummy wiring structures are of a height in areas R3 and R4 that is “nearly equal to
`
`the height of the region in which the thickness of the matrix circuit is maximum.”
`
`(i.e., areas R1 and R2) (Ex. 1001, col. 4, ll. 47–50; col. 6, ll. 5-63. (Ex. 1005,
`
`Hatalis Decl. at ¶ ¶ 26-27)
`
`
`
`-9-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`As shown below in Fig. 6. Of the ‘978 patent (below), the dummy wiring
`
`structure, in some examples, is a laminate structure of layered dummy members
`
`(301-304). ‘978 patent, col. 4, ll. 14–29. By the provision of the dummy wiring
`
`structure, the interval or “gap” between substrates of the seal region in areas R1,
`
`R2, R3 and R4 is equalized to facilitate a more consistent seal. ‘978 patent, Fig. 1,
`
`3. As the dummy wiring patterns serve no electrical function, they are not
`
`electrically connected to the remainder of the semiconductor circuit, or each other.
`
`(Ex. 1001, col. 7, ll. 58-64) (Ex. 1005, Hatalis Decl. at ¶¶ 26-27)
`
`
`
`
`
`As a result of the dummy structures, the seal may be formed at a same height
`
`about the periphery of the device. (Ex. 1001, col. 16, ll 10-24)
`
`B.
`
`Summary Of The Prosecution History
`
`The ‘978 patent issued from U.S. Patent Application No. 12/165,783, filed
`
`July 1, 2008 (‘978 patent application). The ‘978 patent claims the benefit of a
`
`December 21, 1995 foreign priority date.
`
`-10-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`The ‘978 patent application underwent multiple rounds of amendments at
`
`the Patent Office that resulted in three Requests for Continued Examination and
`
`four Notices of Allowance dated June 2, 2009 (Ex. 1002 at p. 79), June 10, 2010
`
`(Ex. 1002 at p. 48), September 21, 2010 (Ex. 1002 at p. 32), and January 12, 2011
`
`(Ex. 1002 at p. 2). After each notice of allowance, an RCE was seemingly filed to
`
`introduce further IDS filings (see Ex. 1002 at pp. 47 and 72) or to amend or add
`
`new claims (see Ex. 1002 at pp. 10 and 72).
`
`During the prosecution of the ‘978 patent, no prior art rejections were ever
`
`made against any of the ‘978 patent application’s pending claims. Each Notice of
`
`Allowance identified allowable subject matter only by identifying various
`
`limitations from the claims. (See, e.g., Ex. 1002 at pp. 6-8, 36-68, 52-53, and 84-
`
`85). In the final Notice of Allowance, claims 7 and 17 were allowed because the
`
`prior allegedly neither anticipated or rendered obvious an electro-optical display
`
`having conductive layers (i.e., dummy circuitry) that was dimensioned to account
`
`for a step in the device topology, these specific limitation were noted as:
`
`“at ;east [sic] first and second conductive layers formed from a
`same layer as the plurality of second conductive lines (scanning lines),
`wherein at least a part of each of the first and second conductive lines
`(scanning lines or data lines) is overlapped with the portion of the
`sealing member, wherein a length of the first conductive layer along
`the first direction (such as horizontal direction) or the second direction
`(such as vertical direction) and a length of the second conductive layer
`
`-11-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`along the first direction (such as horizontal direction) or the second
`direction (such as vertical direction) are longer than a pitch of
`adjacent ones of the plurality of second conductive lines (scanning
`lines) or are longer than a pitch of adjacent ones of the plurality of
`first conductive lines (date [sic] lines), wherein the first and second
`conductive layers are electrically isolated from both of the plurality of
`first conductive lines (data lines) and the plurality of second
`conductive lines (scanning lines), and wherein the first and second of
`the conductive layers are electrically isolated from each other, such as
`shown in Fig.8.”
`No specific prior art references were identified in the Notices of
`Allowance.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`
`CLAIM OF THE ‘978 PATENT IS UNPATENTABLE
`
`
`A.
`
`Identification Of The References As Prior Art
`
`
`
`U.S. Patent No. 5,513,028 to Sono et al. (“Sono,” Ex. 1003), “Liquid Crystal
`
`Display with Display Area Having Same Height as Peripheral Portion Thereof,”
`
`issued on April 30, 1996 from application Serial No. 08/419,762 filed April 10,
`
`1995. Sono is prior art under at least 35 U.S.C. § 102(a) and (e).
`
`U.S. Patent No. 5,504,601 to Watanabe et al. (“Watanabe,” Ex. 1004),
`
`“Liquid Crystal Display Apparatus with Gap Adjusting Layers Located Between
`
`the Display Region and Driver Circuits,” issued on April 2, 1996 from application
`
`-12-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`Serial No. 08/196,215 filed July 13, 1994. Watanabe is prior art under at least 35
`
`U.S.C. § 102(a) and (e).
`
`U.S. Patent No. 7,956,978 to Zhang et al. (Ex. 1001) includes admissions by
`
`the Applicant which constitute Admitted Prior Art (“APA”) (see Figs. 16 and 17,
`
`generally Col. 1:12 - Col. 3:11)
`
`B.
`
`Summary Of Grounds for Unpatentability
`
`
`The Examiner’s statement of reasons for allowance characterized claims 7
`
`and 17 of the ‘978 patent as having a combination of features that were neither
`
`anticipated nor rendered obvious by the prior art. However, as discussed below, the
`
`limitations of claims 7 and 17 were neither new to the prior art nor were they
`
`claimed in a non-obvious combination.
`
`The Applicant’s Admitted Prior Art discloses that many of the limitations in
`
`claims 7 and 17 regarding conventional LCD displays were old and well known in
`
`the art. Claims 7 and 17 include limitations that attempt to distinguish the claims
`
`from 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).
`
`However, the use of electrically isolated dummy structures/wirings, and the
`
`dimensioning of them to account for a step height in semiconductor construction,
`
`-13-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`was neither new nor non-obvious at the time the alleged invention of the ‘978
`
`patent was filed.
`
`As outlined in the prior art described infra, it was well known to include
`
`electrically isolated dummy wiring and circuit structures internal to an LCD
`
`semiconductor device for the purpose of ensuring a more reliable construction.
`
`Indeed, the cited prior art applies these structures to remedy the very same
`
`deficiencies in the art discussed in the ‘978 patent. As explained in more detail
`
`below, a reasonable likelihood exists that petitioner will prevail in demonstrating
`
`the unpatentability of both claim 7 and 17 of the ‘978 patent.
`
`1. Sono renders claims 7 and 17 of the ‘978 patent obvious
`
`Similar to the ‘978 patent, Sono describes the use of dummy
`
`wirings/circuitry in an LCD display to account for “steps” in device topology.
`
`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).
`
`Sono explains that LCD devices can exhibit a non uniform gap about a seal
`
`area 32. This gap (shown below in Fig. 1 of Sono) is described as being caused by
`
`the formation of the seal over peripheral circuits 31. (Ex. 1003 at col. 1, ll. 36-45).
`
`-14-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`
`
`Sono explains how to create a uniform gap by forming a “dummy area.”
`
`More specifically, in said dummy area dummy pixels are formed of a same
`
`configuration, having same wirings, switching elements, pixel electrodes, etc. as in
`
`the display area. In such cases, the pixel electrodes are described as being
`
`electrically insulated in order to avoid unnecessary voltage application. (Ex. 1003
`
`at col. 3, ll. 18-23). “By surrounding the display area with the dummy area. . .
`
`image display with high quality can be attained.” (Ex. 1003 at col. 3, ll. 18-23) (Ex.
`
`1005, Hatalis Decl. at ¶ 36).
`
`
`
`-15-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`Sono also teaches that a uniform gap or step may be formed by dummy
`
`circuits or wiring. “Also in the present invention, said step may be formed by the
`
`circuit elements or wiring provided in the peripheral area.” (Ex. 1003 col. 3, ll. 28-
`
`30). As shown above in Fig 8 (cf. Fig. 1 above) Sono evens out differences in
`
`spacing by providing dummy areas in the form of dummy pixels as well as dummy
`
`circuits that may be provided generally along the periphery of the display area (Ex.
`
`1003 at col. ). Furthermore, Sono describes that the dummy areas include the same
`
`structures as the non-dummy areas, so as to advance the goal of providing a
`
`uniform cell gap. (Ex. 1003 at col. 3, ll. 17-27) (Ex. 1005, Hatalis Decl. at ¶ 37).
`
`With respect to claim 17, 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)
`
`Thus, Sono renders claims 7 and 17 obvious. A more detailed claim
`
`mapping is provided in the claim charts that follow.
`
`2. Applicant’s Admitted Prior Art in view of Sono renders claims 7
`and 17 of the ‘978 patent obvious
`
`Additionally, the APA, taken in view of Sono, renders obvious claims 7 and
`
`17. A more detailed claim mapping is provided in the claim charts that follow.
`
`-16-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`3. Applicant’s Admitted Prior Art in view of Watanabe and Sono
`renders claims 7 and 17 of the ‘978 patent obvious
`
`Similar to the ‘978 patent, Watanabe describes the use of dummy areas in an
`
`LCD display. Watanabe describes the use of dummy areas for the purpose of
`
`providing a uniform step in the sealing material of the display to ensure a high
`
`image quality (Ex. 1004 at col. 3, ll. 58-62). Watanabe accomplishes this by
`
`providing a plurality of dummy areas generally along the periphery of the display
`
`area. (Ex. 1004 at Fig. 5) Furthermore, Watanabe describes that the dummy areas
`
`are formed with the same layers as the non-dummy conductive lines, so as to
`
`advance the goal of providing a uniform step across the display. (Ex. 1004 at col.
`
`12, ll. 52-59) (Ex. 1005, Hatalis Decl. at ¶¶ 51-52).
`
`With respect to claim 17, Sono describes that providing a black matrix was
`
`known in the art to shield external light and provide an image with increased
`
`contrast. (Ex. 1003 at col. 3, ll. 64-67)
`
`Thus, the APA in view of Watanabe renders claims 7 and 17 obvious. A
`
`more detailed explanation and analysis is provided in the claim charts that follow.
`
`VI. DETAILED EXPLANATION
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
`
`claim charts a detailed comparison of the claimed subject matter and the prior art
`
`specifying where each element of challenged claim is found in the prior art
`
`references. All emphasis is added unless otherwise indicated.
`
`-17-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`
`
`Patent
`7,956,978
`Claim 7
`7.1 A display
`device
`comprising:
`
`7.2 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
`
`7.3 a plurality
`of first
`conductive lines
`extending over
`the first
`substrate in the
`first direction;
`
`Sono (Ex. 1003) Renders Claims 7 and 17 Obvious
`
`Sono: Sono describes a display device. (Ex.1003 Col. 1:12-
`13)
`
`
`Sono: Sono describes 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. (Ex.
`1003, Col. 5:1-21)
`
`See also Fig. 7:
`
`
`Sono: Sono describes a plurality of first conductive lines (Fig.
`4, scanning lines 2) extending over the first substrate in the
`first direction. (Ex. 1003, Col. 4:17-18)
`
`-18-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`
`“In FIGS. 7 and 8 there are shown a pixel area 71 including
`vertical signal lines, horizontal gate lines and a two-
`dimensional array of transistor switches positioned at the
`crossing points of said lines, for transferring signals to the
`corresponding pixel electrodes…” (Ex. 1003 Col. 5:1-6)
`Sono: Sono describes a plurality of second conductive lines
`(See Fig. 4 above, display lines 1) extending over the first
`substrate in the second direction. (Ex. 1003 Col. 4:17-18)
`
`“In FIGS. 7 and 8 there are shown a pixel area 71 including
`vertical signal lines, horizontal gate lines and a two-
`dimensional array of transistor switches positioned at the
`crossing points of said lines, for transferring signals to the
`corresponding pixel electrodes…” (Ex. 1003 Col. 5:1-6)
`Sono: An insulating film disposed between the plurality of
`first conductive lines and the plurality of second conductive
`lines is an inherent feature of Sono.
`
`Sono describes a liquid crystal display device having a display
`area using scanning lines and display lines. As recognized by
`
`7.4 a plurality
`of second
`conductive lines
`extending over
`the first
`substrate in the
`second direction
`
`7.5 an
`insulating film
`disposed
`between the
`plurality of first
`conductive lines
`
`-19-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`and the plurality
`of second
`conductive lines
`
`7.6 a plurality
`of thin film
`transistors
`electrically
`connected to the
`plurality of first
`conductive lines
`and the plurality
`of second
`conductive lines
`7.7 a plurality
`of pixel
`electrodes
`electrically
`connected to the
`plurality of thin
`film transistors
`
`7.8 a second
`substrate
`opposed to the
`first substrate
`
`those skilled in the art, the scanning lines and display lines
`inherently have an insulating film disposed between them so
`as to prevent short-circuiting and thus ensuring that the liquid
`crystal display device is capable of performing its intended
`function. (Ex. 1003 Col. 2:59-64)
`
`Sono: Sono describes a plurality of thin film transistors (see
`Fig. 4 above, TFT elements 3) electrically connected to the
`plurality of first and second conductive lines. (Ex. 1003 Col.
`4:18-19)
`
`“In FIGS. 7 and 8 there are shown a pixel area 71 including
`vertical signal lines, horizontal gate lines and a two-
`dimensional array of transistor switches positioned at the
`crossing points of said lines, for transferring signals to the
`corresponding pixel electrodes…” (Ex. 1003 Col. 5:1-6)
`Sono: Sono describes a plurality of pixel electrodes (see Fig.
`4 above, pixel electrodes 4) electrically connected to the
`plurality of thin film transistors. (Ex. 1003 Col. 4:18-19)
`
`“In FIGS. 7 and 8 there are shown a pixel area 71 including
`vertical signal lines, horizontal gate lines and a two-
`dimensional array of transistor switches positioned at the
`crossing points of said lines, for transferring signals to the
`corresponding pixel electrodes…” (Ex. 1003 Col. 5:1-6)
`Sono: Sono describes a second substrate opposed to the first
`substrate. (Ex. 1003 Col. 4:47-49; Col. 5:13)
`
`See also Fig. 8, counter substrate 79:
`
`
`
`-20-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,956,978
`
`Sono: Sono describes a sealing member disposed between the
`first substrate and the second substrate, the sealing member
`having a portion adjacent to the first side edge. (Ex. 1003 Col.
`5:11-12)
`
`See also Fig. 7 and Fig. 8, sealing member 76:
`
`7.9 a sealing
`member
`disposed
`between the first
`substrate and the
`second
`substrate, the
`sealing member
`having a portion
`adjacent to the
`first side edge
`
`7.10 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
`
`
`Sono: See (annotated) Figs. 4, 7, and 8, showing 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 (Fig. 4,
`element 1)); dummy circuit 74 includes first and second
`conductive layers formed from a same layer as second
`conductive lines (“a horizontal dummy circuit 74 having a
`same step as that of said horizontal scanning circuit 72, a
`vertical dummy circuit 75 having a same step as that of said
`horizontal scanning circuit 72” (Ex. 1003, Col. 5:8-11)) “…it
`is preferable to form a dummy area to the pixel area. More
`specifically, in said dummy area