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 IPR2013-00064
`PATENT 7,923,311
`
`
`
`PRELIMINARY RESPONSE OF THE PATENT OWNER
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... ..1
`
`II. THE PETITION LACKS A STATUTORY BASIS TO PROCEED ......... ..3
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PETITION LACKS A STATUTORY BASIS TO PROCEED ........... 3
`A. The Petition May Not Be Considered Because It Fails to Identify All
`A. The Petition May Not Be Considered Because It Fails to Identify All
`Real Parties-in-Interest ........................................................................................ 3
`Real Parties-in-Interest ...................................................................................... ..3
`1. The Real Parties-in-Interest, Besides the Petitioner, Include CMO USA,
`1. The Real Parties-in-Interest, Besides the Petitioner, Include CMO USA,
`Acer America, ViewSonic, VIZIO and Westinghouse. ...................................... 4
`Acer America, ViewSonic, VIZIO and Westinghouse ..................................... ..4
`B. The Petition Should Be Denied Because It Presents Substantially the
`B. The Petition Should Be Denied Because It Presents Substantially the
`Same Prior Art As the Office Considered Previously. .................................... 10
`Same Prior Art As the Office Considered Previously.....................................10
`C. The Petition Fails to Establish a Reasonable Likelihood that at Least
`One Challenged Claim in the Petition Is Unpatentable .................................. 13
`One Challenged Claim in the Petition Is Unpatentable ..................................l3
`1. The invention of the ‘311 patent ................................................................ 13
`1. The invention of the ‘3ll patent .............................................................. ..l3
`2. The claims of the ‘311 patent ..................................................................... 16
`2. The claims of the ‘3ll patent ................................................................... ..l6
`3. The claims of the ‘311 patent are patentably distinct from the cancelled
`3. The claims of the ‘3 ll patent are patentably distinct from the cancelled
`claims in the ‘258 patent ................................................................................... 18
`claims in the ‘25 8 patent ................................................................................. ..l8
`a. Claim 9 of the ‘311 patent recites patentably significant limitations
`a. Claim 9 of the ‘3ll patent recites patentably significant limitations
`absent from claim 5 of the ‘258 patent .......................................................... 19
`absent from claim 5 of the ‘25 8 patent ........................................................ ..l9
`b. Estoppel is inapplicable to the ‘311 patent claims ................................. 20
`b. Estoppel is inapplicable to the ‘3 ll patent claims ............................... ..20
`4. Claims 9, 10, 15, 48 and 51 ........................................................................ 22
`4. Claims 9, 10, 15, 48 and 51 ...................................................................... ..22
`a. Taniguchi in view of Mori ...................................................................... 22
`a. Taniguchi in view of Mori .................................................................... ..22
`(1) Taniguchi does not disclose element (j) of Claim 9 ............................ 22
`(1) Taniguchi does not disclose element (1') of Claim 9 .......................... ..22
`(2) There is no motivation to combine Taniguchi with Mori ................... 27
`(2) There is no motivation to combine Taniguchi with Mori ................. ..27
`b. Noguchi in view of Mori and Koden ...................................................... 34
`b. Noguchi in view of Mori and Koden .................................................... ..34
`(1) Noguchi does not disclose elements (e) and (j) of Claim 9 ................ 35
`(1) Noguchi does not disclose elements (e) and (j) of Claim 9 .............. ..35
`(2) There is no motivation to combine Noguchi with Mori...................... 37
`(2) There is no motivation to combine Noguchi with Mori .................... ..37
`c. Matsuzaki in view of Mori and Kwasnick .............................................. 38
`(1) Matsuzaki does not disclose elements (h), (i), and (j) of Claim 9 ..... 39
`(1) Matsuzaki does not disclose elements (h), (i), and (1') of Claim 9 .....39
`(2) There is no motivation to combine Matsuzaki with Mori ................... 40
`(2) There is no motivation to combine Matsuzaki with Mori ................. ..40
`5. Claim 11 ..................................................................................................... 41
`a. Taniguchi in view of Mori and Van Zant ............................................... 41
`a. Taniguchi in view of Mori and Van Zant ............................................. ..4l
`
`C. The Petition Fails to Establish a Reasonable Likelihood that at Least
`
`c. Matsuzaki in view of Mori and Kwasnick ............................................ ..38
`
`5. Claim 11 ................................................................................................... ..4l
`
`
`
`i
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`b. Noguchi in view of Mori, Koden and Van Zant ..................................... 41
`b. Noguchi in View of Mori, Koden and Van Zant ................................... ..41
`c. Matsuzaki in view of Mori, Kwasnick and Van Zant ............................ 42
`c. Matsuzaki in View of Mori, Kwasnick and Van Zant .......................... ..42
`6. Claims 17-19, and 52 ................................................................................. 43
`6. Claims 17-19, and 52 ............................................................................... ..43
`a. Taniguchi in view of Mori and Kato ...................................................... 43
`a. Taniguchi in View of Mori and Kato .................................................... ..43
`b. Noguchi in view of Mori, Koden and Kato ............................................ 44
`b. Noguchi in View of Mori, Koden and Kato .......................................... ..44
`c. Matsuzaki in view of Mori, Kwasnick and Kato .................................... 46
`c. Matsuzaki in View of Mori, Kwasnick and Kato .................................. ..46
`III. CONCLUSION ................................................................................................ 48
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`III. CONCLUSION ................................................................................................48
`
`
`
`ii
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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 – ‘311 Patent Prosecution History Excerpt - Prior Art considered
`by the Office
`Exhibit 2007 – United States Patent No. 4,857,907 (Koden)
`
`
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`iii
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`

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`I.
`
`INTRODUCTION
`
`By its petition, Trial No. IPR2013-00064 (the “Petition”), Petitioner Chimei
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`Innolux Corp. (“CMI”) challenges the validity of claims 9-11, 15, 17-19, 48, 51,
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`and 52 of United States Patent No. 7,923,311 (“the ‘311 patent”). In response, the
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`Patent Owner respectfully submits this Preliminary Response. The NOTICE OF
`
`FILING DATE ACCORDED TO PETITION, mailed on November 29, 2012, sets
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`the deadline for this Preliminary response “no later than three months from the date
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`of this notice” (page 2, Paper No. 3). See also, 37 C.F.R. § 42.107(b).
`
`Accordingly, this Preliminary Response of the Patent Owner is timely filed.
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`The Petition should be denied on the ground that all prior art cited, with the
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`exception of one secondary reference, is the same prior art previously considered
`
`by the Office during prosecution of the ‘311 patent, and that secondary reference
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`adds nothing new to the prior art already presented to the Office. See 35 U.S.C. §
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`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
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`Petition fails to identify several real parties-in-interest, including Acer America
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`Corporation (“Acer America”); Chi Mei Optoelectronics USA, Inc. (“CMO
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`
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`1
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`

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`USA”); ViewSonic Corporation (“ViewSonic”); VIZIO, Inc. (“VIZIO”); and
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`Westinghouse Digital, LLC (“Westinghouse”). 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 ‘311 patent over substantially the same prior art
`
`references cited in the Petition during the original prosecution of the application
`
`that became the ‘311 patent. Therefore, the Petition does not meet the threshold
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`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
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`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
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`real parties-in-interest, (ii) the Office has already considered substantially the same
`
`prior art references in granting the ‘311 patent, and/or (iii) the Petition does not
`
`establish a “reasonable likelihood” that any of the challenged claims is invalid, the
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`Patent Owner respectfully requests that the Petition be denied.
`
`
`
`2
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`

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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__...
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`(2) the petition identifies all real parties in interest….
`
`(Emphasis added). Further, the Office rules require that the petitioner provide
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`certain mandatory notices, including of the real parties-in-interest. 37 C.F.R. §
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`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
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`“the spirit of that formulation as to IPR and PGR proceedings means that, at a
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`general level, the ‘real party-in-interest’ is the party that desires review of the
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`patent.”). One consideration in identifying a “real party-in-interest” is whether the
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`non-party “‘has the actual measure of control or opportunity to control that might
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`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.
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`Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4451).
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`This requirement of § 312(a)(2) is critically important “to assist members of
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`the Board in identifying potential conflicts, and to assure proper application of the
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`statutory estoppel provisions … to protect patent owners from harassment via
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`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
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`each of these additional real parties-in-interest are co-defendants in a currently
`
`pending litigation for infringement of the ‘311 patent brought by the Patent Owner,
`
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al., Case
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`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,
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`including Gregory Cordrey – named as Petitioner’s Backup Counsel in the
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`4
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`Petition. (See, Ex. 2002 and Ex. 2003). CMI and all of the foregoing co-
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`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
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`Inter Partes Review; Memorandum of Points and Authorities in Support of Motion
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`and Declaration of Gregory S. Cordrey in Support Thereof (the “Motion to Stay”)
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`(Ex. 2002 and Ex. 2003).
`
`All the defendants in the CMI case are real parties-in-interest because they
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`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
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`filed.” (Ex. 2002, pp. 2 and 5-6, emphasis added). Further, the defendants
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`represented to the Court in the CMI case that the “Defendants have moved
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`expeditiously to prepare and file a comprehensive petition for an IPR of the
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`Asserted Patents.” (Id. at 17) (emphasis added). As noted, one of the “Asserted
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`Patents” in the CMI case is the ‘311 patent. See also Id. at 6 (“Defendants’
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`petitions for IPR…”); Id. at 8 (“Defendants have presented the PTO with prior
`
`art…”) (emphasis added).
`
`
`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.)
`
`
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`5
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`

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`Furthermore, in Defendants’ Reply in Support of Their Motion to Stay
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`Litigation Pending Outcome of Inter Partes Review (“Defendants’ Reply”), they
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`stated that “[t]o the extent there was any ambiguity on this issue, CMO USA, Acer,
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`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.;
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`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.
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`The existence of unidentified real parties-in-interest is further evidenced by
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`a declaration submitted by the Petitioner’s Backup Counsel, Gregory Cordrey, in
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`support of Defendants’ Motion to Stay, which stated that “[o]n November 26,
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`2012, Defendants filed with the U.S. Patent and Trademark Office (“PTO”) two
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`petitions for IPR for U.S. Patent No. 7,923,311 (“’311 Patent”).” (Ex. 2003, p. 2,
`
`emphasis added). The Declaration identifies the Petition at issue as the collective
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`“Defendants’ first petition for IPR.” (Id., emphasis added). Thus, the Petitioner’s
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`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 26,
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`2012, the Petition at issue here was filed on behalf of all defendants. Thus, the
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`Petition is not just CMI’s petition, but also the inter partes review petition of all
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`five other co-defendants in the pending CMI case. Each of the other five co-
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`6
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`defendants, according to their representations to the Court in the CMI case, was
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`behind the preparation and filing of the Petition, while collectively seeking a stay
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`of litigation and acknowledging statutory estoppel based on their status as real
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`parties-in-interest. At a minimum these five co-defendants had the opportunity to
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`control the content of the Petition.
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`Here, there is no concern that estoppel will apply against a party who was
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`opposed to filing the Petition or had no control over the Petition. (See, e.g., In re
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`Arviv, et al., Reexamination Proceeding Control No. 95/001,526, pages 5-6 of
`
`Decision Dismissing §1.182 and §1.183 Petitions, mailed April 18, 2011 (The
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`Office of Patent Legal Administration stated its concern that finding a co-
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`defendant in a litigation to be ipso facto a real party in interest could result in
`
`estoppel against a party who was opposed to filing the request for reexamination or
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`a party who had no control over the request for reexamination.)) As CMO USA,
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`Acer America, VIZIO, ViewSonic, and Westinghouse advised the Court in the
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`CMI case, the Petition is theirs and CMI’s. They all are real-parties-in-interest not
`
`because they are co-defendants in a concurrent litigation, but because by virtue of
`
`it being their Petition, they each controlled or had the opportunity to control the
`
`content of the Petition, and they collectively caused the Petition to be filed.
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`Although CMO USA, Acer America, VIZIO, ViewSonic and Westinghouse
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`informed the Court in the CMI case that they agree to be bound by the estoppel
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`7
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`provisions of the IPR proceedings, such statement to the Court is not the equivalent
`
`of, and is a woefully inadequate substitute for, such parties being named in the
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`Petition as real parties-in-interest. For example, under 35 U.S.C. § 315(e)(1) and
`
`(2), not only the petitioner, but also “the real party-in-interest or privy of the
`
`petitioner” is bound by the estoppel provisions. First, the co-defendants’
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`representation to the Court in the CMI case that they agree to be bound by the
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`estoppel provisions of the IPR proceedings would not necessarily be known to the
`
`Office in future inter partes review proceedings involving the same patent.
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`Therefore, the Office would have no practical way of enforcing the estoppel
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`provisions of § 315(e)(1), which provides that no real party-in-interest may request
`
`or maintain a proceeding before the Office with respect to a claim in a patent that
`
`results in a final written decision under § 318(a) on any ground that the petitioner
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`raised or reasonably could have raised during that inter partes review. Similarly,
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`with respect to estoppel under § 315(e)(2) in future civil actions, the extent to
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`which unidentified real parties-in-interest will actually be bound by their statement
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`to the Court in the CMI case is unclear.
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`Moreover, unless real parties-in-interest are identified in the petition,
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`potential conflicts of interest involving members of the Patent Trial and Appeal
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`Board cannot readily be identified. The requirement to identify all real parties in
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`interest pursuant to §312(a)(2) serves the same purpose as a similar requirement to
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`8
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`identify interested parties in litigation pursuant to Federal Rule of Civil Procedure
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`7.1. It is critically important that the judges of the Patent Trial and Appeal Board
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`not have a conflict created by a financial interest in the outcome of the cases under
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`their review. ‘‘[I]n the case of the Board, a conflict would typically arise when an
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`official has an investment in a company with a direct interest in a Board
`
`proceeding. Such conflicts can only be avoided if the parties promptly provide
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`information necessary to identify potential conflicts.’’ See Rules of Practice for
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`Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent
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`Trial and Appeal Board Decisions, 77 FR 48612, 48617 (Aug. 14, 2012). Thus, a
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`prompt identification of all real parties-in-interest is required to allow judges of the
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`Patent Trial and Appeal Board to recuse themselves from a proceeding that creates
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`a conflict of interest.
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`As such, all the defendants in the CMI case, Acer America, CMO USA,
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`ViewSonic, VIZIO and Westinghouse are real parties-in-interest with respect to the
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`Petition. However, Section I(A) of the Petition merely states “Pursuant to 37
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`C.F.R. § 42.8(b)(1), Petitioner certifies that CMI is the real party-in-interest”
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`without identifying any other real parties-in-interest. Thus, the certification made
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`in Section I(A) of the Petition is incorrect. As each of these additional parties have
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`jointly acknowledged their collective effort to seek review of the ‘311 patent by
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`filing their Petition, and have represented to the Court in the CMI case that they
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`9
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`moved expeditiously to prepare and file their Petition, they all are real parties-in-
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`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
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`such, the Petition does not satisfy the requirement of § 312(a)(2) to identify all real
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`parties-in-interest. Therefore, inter partes review of the Petition cannot be
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`instituted. Accordingly, the Patent Owner respectfully requests that the Petition be
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`denied on this additional ground.
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`B.
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`The Petition Should Be Denied Because It Presents Substantially
`the Same Prior Art As the Office Considered Previously.
`
`Under 35 U.S.C. § 325(d), the Office need not consider the Petition since all
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`prior art cited in the Petition during the prosecution of the ‘311 patent, with the
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`exception of one secondary reference already were presented to the Office, and that
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`secondary reference is substantially the same as references previously presented to
`
`the Office. As such, the Patent Owner requests that the Board deny the Petition
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`under 35 U.S.C. § 325(d), which provides that “[i]n determining whether to
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`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
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`petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.”
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`The Petition cites to the following eight references:
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`1. JP H1-144682 to Noguchi (“Noguchi,” Ex. 1002);
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`10
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`2. U.S. 5,270,567 to Mori, et al. (“Mori,” Ex. 1003);
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`3. U.S. 4,862,234 to Koden (“Koden,” Ex. 1004);
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`4. U.S. 5,054,887 to Kato, et al, (“Kato,” Ex. 1005);
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`5. JP H2-234125 to Taniguchi, et al. (“Taniguchi,” Ex. 1006);
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`6. JP H1-180523 to Matsuzaki, et al. (“Matsuzaki,” Ex. 1007);
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`7. U.S. 5,198,694 to Kwasnick, et al. (“Kwasnick,” Ex. 1008); and
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`8. Peter Van Zant, Microchip Fabrication: A Practical Guide to
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`Semiconductor Processing, pp., 221-228 and 298 (2nd ed. 1990)
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`(“Van Zant,” Ex. 1009).
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`All prior art references cited in the Petition were submitted to the Office by
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`the Patent Owner in Information Disclosure Statements received by the Office on
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`April 4, 2008 and August 22, 2008, with the exception of Kato, which Petitioner
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`cites only as a secondary reference. On November 4, 2009, the Examiner indicated
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`that he considered each cited reference during the prosecution of the ‘311 patent.
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`(Ex. 2006, pp. 7, 8 and 24).
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`The secondary reference Kato is merely cumulative to U.S. 4,857,907 (“the
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`’907 Koden reference”) (Ex. 2007), which was submitted and considered by the
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`Examiner. (Ex. 2006, p. 8). Kato is cited on pages 55-56 of the Petition to disclose
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`element (i) of claim 17 reciting “forming a passivation film over at least said
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`source and drain electrodes and said channel forming region after removing said
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`11
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`resist.” Kato is also cited on pages 52-53 and 57-58 of the Petition to disclose the
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`element of claim 19 reciting in part “said passivation film is formed so as to cover
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`a portion of said glass substrate where said thin film transistor is not formed.”
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`Pages 46, 51, and 56-57 of the Petition refer to Kato to disclose element (j) of
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`claim 17 reciting “forming a pixel electrode over said passivation film wherein
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`said pixel electrode is electrically connected to said source electrode or said drain
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`electrode.” However, citation to Kato was unnecessary to attempt to show
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`elements (i) and (j) from claim 17 and dependent claim 19 because the ‘907 Koden
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`reference, which has already been considered by the Office, also includes these
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`elements.
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`More specifically, the ‘907 Koden reference (Ex. 2007) discloses in FIG. 2a
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`that a passivation film (insulating film 10) is formed over the source and drain
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`electrodes 8 and 9 of the TFT (element (i) of claim 17) and covers a region of glass
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`substrate where TFT is not formed (dependent claim 19). In addition, the ‘907
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`Koden reference discloses that the pixel electrode (picture element electrode 11) is
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`formed over the insulating film 10 and is electrically connected to the drain
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`electrode 9 of the TFT (element (j) of claim 17). Therefore, the teachings of Kato
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`are cumulative to the ‘907 Koden reference.
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`Thus, with the exception of the secondary reference, Kato, which is
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`cumulative to art already presented to and considered by the Office, the Office has
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`12
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`already considered the same prior art asserted in the Petition. Since substantially
`
`the same 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 §
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`325(d).
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`C. The Petition Fails to Establish a Reasonable Likelihood that at
`Least One Challenged Claim in the Petition Is Unpatentable
`1.
`
`The invention of the ‘311 patent
`
`The ‘311 patent, titled “Electro-Optical Device and Thin Film Transistor and
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`Method for Forming the Same,” teaches a method of manufacturing a thin film
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`transistor (“TFT”) as shown in Figs. 3(A)-3(H). See col. 5, l. 55 – col. 7, l. 9 of the
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`‘311 patent. The manufacturing method of the ‘311 patent includes forming a gate
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`electrode 3 over a glass substrate 1 and forming a gate insulating film 4, which
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`may include silicon nitride, over the gate electrode 3. Next, a first semiconductor
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`film (or amorphous silicon film 5) is formed over the gate insulating film 4 and the
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`gate electrode 3, followed by forming an N-type semiconductor film (or doped
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`amorphous silicon layer 6) over the first semiconductor film. See col. 5, l. 55- col.
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`6, l. 50 and Figs. 3(A)-3(C) of the ‘311 patent.
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`Subsequently, the first semiconductor film and the N-type semiconductor
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`film are patterned using a resist formed by a photomask P2 to form a TFT island as
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`shown in Fig. 3(D), and a conductive layer, such as a chromium layer 7, is then
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`formed over the patterned N-type semiconductor film as shown in Fig. 3(E). See
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`13
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`col. 6, ll. 50-55 of the ‘311 patent. A portion of the conductive layer 7 is then
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`etched to form source and drain electrodes 9 and 10 using a resist 8 formed by a
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`photomask P3. Without removing the resist 8, a portion of the patterned N-type
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`semiconductor film is etched to form a source region 11, drain region 12, and a
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`channel formation region between the source and drain regions. See col. 6, ll. 55-
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`62 and Fig. 3(F) of the ‘311 patent, which is reproduced herein.
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`
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`In one embodiment, a wet etching process may be carried out without
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`peeling the resist 8 off to perform an overetching process to make the distance
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`between the source and drain electrodes 9 and 10 larger than the distance between
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`the source and drain regions 11 and 12 as shown in Fig. 3(G) of the ‘311 patent
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`reproduced herein. See col. 6, ll. 63-66 of the ‘311 patent.
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`14
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`

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`As noted above, the ‘311 patent teaches using the same resist for etching
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`both the source and drain electrodes 9 and 10 and the source and drain regions 11
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`and 12. Using the same resist for these etching processes reduces the number of
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`photomask processes necessary to form the TFT and helps to accurately control the
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`length of the channel formation region. Also, using the same resist for these
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`etching processes prevents a mask misalignment when forming the source and
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`drain electrodes 9 and 10 and source and drain regions 11 and 12, which would
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`cause an undesirable variation of TFT performance characteristics.
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`The resist 8 is then removed as shown in Fig. 3(G), and a passivation film 13
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`is then formed to cover the source and drain electrodes 9 and 10, channel formation
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`region 5, and a part of the source and drain regions 11 and 12 as shown in Fig.
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`3(H). See col. 7, ll. 1-9 of the ‘311 patent. Also, pixel electrodes are formed over
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`the passivation film 13. The pixel electrode is electrically connected to the source
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`electrode or drain electrode of the TFT. See col. 7, ll. 50-53 of the ‘311 patent.
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`The method of the ‘311 patent teaches etching the source and drain
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`electrodes 9 and 10 such that they do not entirely overlap the source and drain
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`regions 11 and 12, resulting in a “stepped structure” shown in FIG. 1(a), which is
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`reproduced below with annotations. This “stepped structure is shown by the upper
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`portion of the source and drain regions 11 and 12 extending beyond the lower
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`portion of the source and drain electrodes 9 and 10, so that the distance between
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`15
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`

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`the source and drain regions 11 and 12 (distance between the red lines) is shorter
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`than the distance between the source and drain electrodes 9 and 10 (distance
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`between blue lines).
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`2.
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`The claims of the ‘311 patent
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`Independent claims 9 and 17 are being challenged in the Petition along with
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`dependent claims 10, 11, 15, 18, 19, 48, 51, and 52. Independent claims 9 and 17
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`
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`recite the following2:
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`Claim elements of claim 9
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`Claim elements of claim 17
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`Claim 9. A method of manufacturing a
`display device including a thin film
`transistor, the method comprising the
`steps of:
`(a) forming a gate electrode over a
`glass substrate;
`(b) forming a gate insulating film
`comprising silicon nitride on said gate
`electrode;
`(c) forming a first semiconductor film
`over said gate electrode with said gate
`
`2 Note that the reference numerals (a, b, c, …) used in claim chart herein
`correspond to those used in Section VII of the Petition.
`
`Claim 17. A method of manufacturing a
`display device including a thin film
`transistor, the method comprising the
`steps of:
`(a) forming a gate electrode over a
`glass substrate;
`(b) forming a gate insulating film
`comprising silicon nitride on said gate
`electrode;
`(c) forming a first semiconductor film
`comprising amorphous silicon over said
`
`
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`16
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`

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`insulating film interposed therebetween; gate electrode with said gate insulating
`film interposed therebetween;
`(d) forming an N-type semiconductor
`film on said first semiconductor film;
`(e) patterning said first and N-type
`semiconductor films using a first
`photomask;
`(f) forming a conductive layer on at
`least the patterned N-type
`semiconductor film;
`(g) etching a portion of said conductive
`layer to form source and drain
`electrodes using a resist formed by a
`second photomask;
`(h) etching a portion of the patterned N-
`type semiconductor film to form source
`and drain regions using said resist
`w