DOCKET NO: 403560US
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`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`IN RE U.S. PATENT NO. 7,923,311
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`FILED :
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`SEP. 17, 2007
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`ISSUED:
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`APR. 12, 2011
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`INVENTORS : HONGYONG ZHANG
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`NAOTO KUSUMOTO
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`ASSIGNEE : SEMICONDUCTOR ENERGY
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`LABORATORY CO., LTD.
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`TITLE :
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`ELECTRO-OPTICAL DEVICE
`AND THIN FILM TRANSISTOR
`AND METHOD FOR FORMING
`THE SAME
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`REQUEST FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,923,311
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`

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`Inter Partes Review of U.S. Patent No. 7,923,311
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`
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................ i
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`EXHIBIT LIST ...................................................................................................... iv
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`I. MANDATORY NOTICES ...........................................................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest.........................................................................1
`
`Related Matters ...................................................................................1
`
`Lead And Back-Up Counsel...............................................................2
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`Service Information.............................................................................3
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`II.
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`PAYMENT OF FEES ...................................................................................3
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`III. REQUIREMENTS FOR INTER PARTES REVIEW................................3
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`A.
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`B.
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`Grounds For Standing ........................................................................3
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`Identification of Challenge .................................................................3
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`1.
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`2.
`
`3.
`
`4.
`
`5.
`
`Claims for which inter partes review is requested ...............................4
`
`The specific art and statutory ground(s) on which the challenges are
`based......................................................................................................4
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`How the challenged claims are to be construed....................................5
`
`How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.204(b)(2). ...................................6
`
`Supporting evidence relied upon to support the challenge ...................7
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`IV. SUMMARY OF THE ‘311 PATENT ..........................................................7
`
`A.
`
`B.
`
`Description Of The Alleged Invention...............................................7
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`Summary Of The Prosecution History..............................................8
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`V.
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`INVOLVED PATENTS/APPLICATIONS.................................................9
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘311 PATENT IS UNPATENTABLE.........................13
`
`A.
`
`B.
`
`1.
`
`2.
`
`Identification Of The References As Prior Art ..............................13
`
`Summary Of Unpatentability Arguments ......................................15
`
`Taniguchi in view of Mori, Kato, and Van Zant renders obvious the
`Asserted Claims of the ‘311 patent .....................................................16
`
`Noguchi taken in view of Mori, Koden, Kato, and Van Zant renders
`obvious the Asserted Claims of the ‘311 patent..................................16
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`3. Matsuzaki in view of Mori, Kwasnick, Kato, and Van Zant renders
`obvious the Asserted Claims of the ‘311 patent..................................17
`
`4.
`
`Estoppel within the office ...................................................................18
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`VII. DETAILED EXPLANATION....................................................................20
`
`A.
`
`Claims 9, 10, 11, 15, 48, and 51 ........................................................20
`
`1.
`
`2.
`
`3.
`
`4.
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`Taniguchi in view of Mori Under 35 U.S.C. § 103 ............................20
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`Taniguchi in view of Mori and Van Zant Under 35 U.S.C. § 103......27
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`Noguchi in view of Mori and Koden under 35 U.S.C. § 103 .............28
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`Noguchi in view of Mori, Koden, and Van Zant under 35 U.S.C. §
`103 .......................................................................................................34
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`5. Matsuzaki in view of Mori and Kwasnick under 35 U.S.C. § 103.....35
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`6. Matsuzaki in view of Mori, Kwasnick, and Van Zant under 35 U.S.C.
`§ 103 ....................................................................................................42
`
`B.
`
`Claims 17, 18, 19, and 52 ..................................................................43
`
`1.
`
`2.
`
`Taniguchi in view of Mori and Kato under 35 U.S.C. § 103..............43
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`Noguchi in view of Mori, Koden and Kato.........................................48
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`3. Matsuzaki in view of Mori, Kwasnick, and Kato. ..............................53
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`VIII. CONCLUSION ............................................................................................59
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`CERTIFICATE OF SERVICE ............................................................................60
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`
` EXHIBIT LIST
`1001. U.S. Patent No. 7,923,311 to Zhang, et al.
`
`1002. Japanese Patent Publication No. H1-144682 to Noguchi (including
`translation).
`
`1003. U.S. Patent No. 5,270,567 to Mori, et al.
`
`1004. U.S. Patent No. 4,862,234 to Koden.
`
`1005. U.S. Patent No. 5,054,887 to Kato, et al.
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`1006. Japanese Patent Publication No. H2-234125 to Taniguchi, et al.
`(including translation).
`
`1007. Japanese Patent Publication No. H1-180523 to Matsuzaki, et al.
`(including translation).
`
`1008. U.S. Patent No. 5,198,694 to Kwasnick, et al.
`
`1009. Peter Van Zant, Microchip Fabrication: A Practical Guide to
`Semiconductor Processing, pp., 222–28 (2nd ed. 1990).
`
`1010. U.S. Patent No. 6,756,258 to Zhang, et al.
`
`1011. Action Closing Prosecution, U.S. Patent No. 6,756,258, Filed May 14,
`2008.
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`1012. Semiconductor Energy Lab. Co. v. Chi Mei Optoelectronics Corp., 531
`F. Supp. 2d 1084 (N.D. Cal. 2007).
`
`1013. Prosecution history of U.S. Application Serial No. 11/898,833, which
`issued as U.S. Patent No. 7,923,311.
`
`1014. Declaration of Jerzy Kanicki, D.Sc.
`
`1015. Joint Claim Construction and Prehearing Statement, Semiconductor
`Energy Laboratory Co., Ltd. v. ChiMei Innolux Corp., et al., SACV12-
`0021-JST (C.D. Cal.), filed Nov. 12, 2012.
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`-iv- 403560US
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`

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`Inter Partes Review of U.S. Patent No. 7,923,311
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`
`Petitioner Chimei Innolux Corp. (“CMI” or “Petitioner”) respectfully
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`requests inter partes review for claims 9–11, 15, 17–19, 48, 51, and 52 (the
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`“Asserted Claims”) of U.S. Patent No. 7,923,311 (the “‘311 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
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`party-in-interest.
`
`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘311 patent is
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`involved in the litigation styled Semiconductor Energy Laboratory Co., Ltd. v. Chi
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`Mei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed on January 5,
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`2012. This litigation remains pending. The patents-in-suit in the litigation
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`proceeding are U.S. Patents: 7,876,413; 6,404,480; 7,697,102; 7,956,978;
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`8,068,204; and 7,923,311.
`
`This IPR petition is directed to U.S. Patent 7,923,311; however, petitions
`
`corresponding to the remaining patents have been previously filed, or are
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`-1-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`forthcoming1. To this end, the Patent Trial & Appeal Board (PTAB) may wish to
`
`consider consolidating the six (6) patents to a single panel of Administrative Patent
`
`Judges for administrative efficiency2. Indeed, a second petition for Inter Partes
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`Review was filed concurrently herewith.
`
`On October 22, 2012, CMI moved to stay the corresponding district court
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`litigation pending the conclusion of the Inter Partes Review proceedings.
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`C. Lead And Back-Up Counsel
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
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`designation of counsel:
`
`Lead Counsel
`Scott A. McKeown
`cpdocketmckeown@oblon.com
`Registration No.: 42,866
`
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, LLP
`1940 Duke Street
`Alexandria, Virginia 22314
`Tel: (703) 413-3000
`Fax: (703) 413-2220
`
`Back-Up Counsel
`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
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`
`1 An IPR petition directed to U.S. Patent 6,404,480 was filed on October 19, 2012;
`IPR petition directed to U.S. Patent 7,956,978 was filed on November 7, 2012; IPR
`petition directed to U.S. Patent 7,697,102 was filed on November 19, 2012.
`2 The patents-in-suit are directed to substantially similar technology
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`D.
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`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
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`counsel is provided above.
`
`II.
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`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 ten (10) claims is being requested. The undersigned
`
`further authorizes payment for any additional fees that might be due in connection
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`with this Petition to be charged to the above referenced Deposit Account.
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`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 ‘311 patent is satisfied.
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`A. Grounds For Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘311
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`patent is available for inter partes review and that the Petitioner is not barred or
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`estopped from requesting inter partes review challenging the claims of the ‘311
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`patent on the grounds identified herein. This is because the ‘311 patent has not
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`been subject to a previous estoppel based proceeding of the AIA, and, the
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`complaint served on CMI referenced above, in Section I.B was served within the
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`last 12 months.
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`B.
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`Identification of Challenge
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`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 the Asserted Claims
`
`of the ‘311 patent.
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`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 claim 9-11, 15, 17-19, 48-51 and 52 of the ‘311 patent3.
`
`2. The specific art and statutory ground(s) on which the challenges
`are based
`Pursuant to 37 C.F.R. § 42.204(b)(2), Inter partes review of the ‘311 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘311 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`1 Japanese Patent Publication No. JP H1-144682 to Noguchi (“Noguchi,” Ex.
`1002)
`2 U.S. Patent No. 5,270,567 to Mori, et al. (“Mori,” Ex. 1003)
`3 U.S. Patent No. 4,862,234 to Koden (“Koden,” Ex. 1004)
`4 U.S. Patent No. 5,054,887 to Kato, et al. (“Kato,” Ex. 1005)
`5 Japanese Patent Publication No. JP H2-234125 to Taniguchi, et al.
`(“Taniguchi,” Ex. 1006)
`6 Japanese Patent Publication No. JP H1-180523 to Matsuzaki, et al.
`(“Matsuzaki,” Ex. 1007)
`7 U.S. Patent No. 5,198,694 to Kwasnick, et al. (“Kwasnick,” Ex. 1008)
`8 Peter Van Zant, Microchip Fabrication: A Practical Guide to Semiconductor
`Processing, pp., 221–28 (2nd ed. 1990) (“Van Zant,” Ex. 1009)
`
`Claims 9, 10, 15, 48, and 51 of the ‘311 patent are obvious under 35 U.S.C.
`
`
`3 A second request for Inter Partes Review of the ‘311 patent is being concurrently
`submitted herewith to address claims 23, 24, 26–40, 42–44, 46, 49, 50, 53, and 54.
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`§ 103(a) over Taniguchi in view of Mori.
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`Claim 11 of the ‘311 patent is obvious under 35 U.S.C. § 103(a) over
`
`Taniguchi in view of Mori and Van Zant.
`
`Claims 9, 10, 15, 48, and 51 of the ‘311 patent are obvious under 35 U.S.C.
`
`§ 103(a) over Noguchi in view of Mori, and Koden.
`
`Claim 11 of the ‘311 patent are obvious under 35 U.S.C. § 103(a) over
`
`Noguchi in view of Mori, Koden, and Van Zant.
`
`
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`Claims 9, 10, 15, 48, and 51 of the ‘311 patent are obvious under 35 U.S.C.
`
`§ 103(a) over Matsuzaki in view of Mori and Kwasnick.
`
`Claim 11 of the ‘311 patent are obvious under 35 U.S.C. § 103(a) over
`
`Matsuzaki in view of Mori, Kwasnick, and Van Zant.
`
`Claims 17–19, 52 are obvious under 35 U.S.C. § 103(a) over Taniguchi in
`
`view of Mori and Kato.
`
`Claims 17–19, 52 are obvious under 35 U.S.C. § 103(a) over Noguchi in
`
`view of Mori, Koden, and Kato.
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`Claims 17–19, 52 are obvious under 35 U.S.C. § 103(a) over Matsuzaki in
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`view of Mori, Kwasnick, and Kato.
`
`3. How the challenged claims are to be construed
`The claims of an expired patent subject to inter partes review “are generally
`
`given their ordinary and customary meaning” as understood by a person of
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`ordinary skill in the art in question at the time of the invention. MPEP § 2258(G)
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`(8th ed. Rev. 9, Aug. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1316
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`(Fed. Cir. 2005)). Petitioner submits, for the purposes of this inter partes review
`
`only, that the claim terms take on their ordinary and customary meaning that the
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`terms would have to one of ordinary skill in the art. None of the challenged claims
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`contain a means-plus-function or step-plus-function limitation, or appear to recite a
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`“coined” or defined phrase (lexicography) requiring special consideration.
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`The claim term “overetching” refers to a semiconductor process known long
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`before the filing date of the ‘311 patent. In Judge Patel’s March 27, 2006 claim
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`construction order of the same term in US Patent No. 6,756,258 and her June 19,
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`2007 summary judgment order it was determined that “the process of overetching.
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`. . [i]s well known as part of every etching process.” SEL has agreed that the
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`identical term used in the ‘311 Patent is likewise bound by the earlier Orders of the
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`‘258 proceeding. Accordingly, for the benefit of the Board, the Joint Claim
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`Construction and Prehearing Statement at 2, 3, Semiconductor Energy Laboratory
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`Co., Ltd. v. ChiMei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed
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`Nov. 12, 2012 (Ex. 1015 pp. 3, 4) is attached herewith.
`
`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 the Asserted
`
`Claims of the ‘311 patent are unpatentable under the statutory grounds identified
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`-6-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`above, including the identification of where each element of the claim is found in
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`the prior art patents or printed publications, is provided in Section VII, below, in
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`the form of claim charts.
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`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 VII, below, in the form of claim
`
`charts. An Exhibit List is provided supra.
`
`IV. SUMMARY OF THE ‘311 PATENT
`A. Description Of The Alleged Invention
`The ‘311 patent (Ex. 1001) describes a method of fabricating a thin-film
`
`transistor (“TFT”) where crystallization of the channel formation region and
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`activation of the ohmic contact region of the source and drain by laser irradiation
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`occurs after the device structure is completed. Ex. 1001, col. 1, ll. 52–56. This is
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`accomplished by constructing the TFT, such that a part of “the channel formation
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`region and parts of the source and drain on the side of channel formation region are
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`exposed to incident laser radiation.” Id. at col. 1, ll. 56–58.
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`The ‘311 patent’s method of constructing the alleged novel TFT is illustrated
`
`in Figures 3(A)–(H). The method is accomplished by systematically layer
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`conductive layers, semiconductor layers, and insulating layers as shown in Figures
`
`3(A)–(H). See id. at col. 5, ln. 55–col. 7, ln. 9. The method includes steps for
`
`applying a photoresist to the top of the TFT structure and using said photoresist to
`
`create the desired geometry shown in Figure 1(a). Id. at col. 6, ln. 56–col. 7, ln. 3.
`
`In order to obtain the claimed benefit of this particular TFT structure the
`
`invention calls for a step-like structure wherein an upper portion of the source (11)
`
`and drain region (12) extends beyond a lower portion of the source electrode (9)
`
`and a drain electrode (10). See, e.g., id. at col. 12, ll. 42–46. Specifically, the ‘311
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`patent claims a structure where “an upper portion of each of said source and drain
`
`regions extend beyond a lower portion of each of said source and drain electrodes.”
`
`Id. at col. 12, ll. 42–44; see also, id. at Fig. 1(a).
`
`B.
`
`Summary Of The Prosecution History
`
`On Sep. 17, 2007, Applicants filed Application Serial No. 11/898,833 (“the
`
`‘833 Application”) claiming foreign priority to Japanese Patent No. 3-174541
`
`(filing date, Jun. 19, 1991) together with a string of parent application/patents. In
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`an Office Action dated Nov. 6, 2009, the examiner rejected all of Applicants’
`
`claims, claims 1–46, on the ground of nonstautory obviousness-type double
`
`patenting as being unpatentable over claims 1–56 of U.S. Patent No. 6,124,155 and
`
`claims 1–113 of U.S. Patent No. 6,797,548.
`
`In response to this rejection, Applicants submitted a Terminal Disclaimer
`
`and an Amendment. Applicants’ Amendment added: 1) dependent claims 47–54;
`
`and 2) an additional element to independent claims 1, 9, 17, 20, 23, 27, 31, 35, 39,
`
`and 43. See, e.g., Ex. 1001, col. 12, ll. 42–46 (“wherein an upper portion of each
`
`of said source and drain regions extend beyond a lower portion of each of said
`
`source and drain electrodes so that a distance between the source and drain regions
`
`is shorter than a distance between the source and drain electrodes”).
`
`The Terminal Disclaimer and Amendment were successful, resulting in a
`
`Notice of Allowance and the eventual issuance of the ‘311 patent.
`
`V.
`
`INVOLVED PATENTS/APPLICATIONS
`
`During prosecution of the ‘833 Application, a related patent, U.S. Patent No.
`
`6,756,258 (Ex. 1010, “the ‘258 patent”), which also claims priority to Japanese
`
`Patent No. 3-174541, was the subject of both litigation and inter partes
`
`reexamination (95/000,246). Both the litigation and the reexamination resulted in
`
`the court/board invalidating/cancelling many of the ‘258 patent’s claims on the
`
`ground of 35 U.S.C. § 103. See, Ex. 1011–13. Additionally, Applicants statutorily
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`disclaimed several other claims.
`
`The ‘258 patent’s claims are nearly identical to those being asserted in the
`
`later issued ‘311 patent. As seen in the comparison chart below, comparing a
`
`representative independent claim from both the ‘311 patent and the ‘258 patent, the
`
`‘311 patent is merely an obvious variant of the surrendered/cancelled claims of the
`
`‘258 patent. See, “Comparison Chart: ‘311 Patent v. ‘258 Patent” (below). The
`
`only differences between the two patents are minor variations in the claim
`
`terminology. See, id. (differences highlighted for emphasis). The elements added
`
`to the ‘311 patent are simple additions of well-known and obvious
`
`features/processes known to a person of ordinary skill in the art. See Section VII,
`
`Claim Charts.
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`
`JP 3-174541 (6/19/91)
`
`JP 168290 (6/19/91)
`
`07/895,029 (6/8/1992)
`Continuation
`5,648,662 (6/15/94)
`Division
`5,811,328 (5/31/95)
`Division
`6,124,155 (3/23/98)
`Division
`6,335,213 (4/14/99)
`Division
`6,797,548 (12/11/01)
`Division
`6,847,064 (5/8/02)
`Division
`7,507,991 (8/26/04)
`Division
`7,923,311* (9/17/07)
`
`Division
`
`6,166,399 (1/19/99)
`
`Division
`
`6,756,2581234 (5/8/02)
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`Division
`
`(Abandoned)
`12/987,397 (11/09/12)
`
`
`
`* - Terminal Disclaimer filed (6,124,155 and 6,797,548)
`1 - Terminal Disclaimer filed (6,124,155)
`2 - Statutory Disclaimer filed cancelling claims 1, 2, 9, 16, 17, and 32
`3 - Inter Partes Reexamination rejecting claims 3–8, 10–15, and 18–23
`4 - Litigation invalidating claims 3–6, 10–13, and 18–21
`
`
`Comparison Chart: ‘311 Patent v. ‘258 Patent
`‘311 Patent
`‘258 Patent
`Cancelled in Reexamination
`Claim 9:
`95/000,246
`Claim 5 :
`A method of manufacturing a
`semiconductor device comprising the
`steps of:
`
`A method of manufacturing a display
`device including a thin film transistor,
`the method comprising the steps of:
`
`A
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`B forming a gate electrode over a glass
`substrate;
`forming a gate insulating film
`comprising silicon nitride on said
`gate electrode;
`forming a first semiconductor film
`over said gate electrode with said gate
`insulating film interposed
`therebetween;
`
`C
`
`D
`
`forming a gate electrode on an
`insulating surface;
`forming a gate insulating film
`comprising silicon nitride on said
`gate electrode;
`forming a first semiconductor film
`comprising amorphous silicon over
`said gate electrode with said gate
`insulating film interposed
`therebetween;
`forming a second semiconductor film
`on said first semiconductor film, said
`second semiconductor film doped
`with an N-type dopant;
`patterning said first and second
`semiconductor films;
`
`forming a conductive layer on the
`patterned second semiconductor film;
`
`patterning the conductive layer to
`form source and drain electrodes by
`using a mask wherein a portion of the
`patterned second semiconductor film
`is exposed between said source and
`drain electrodes;
`etching the exposed portion of the
`second semiconductor film to form
`source and drain regions wherein a
`channel forming region is formed in
`said first semiconductor film between
`said source and drain regions,
`
`E
`
`F
`
`G
`
`H
`
`I
`
`forming an N-type semiconductor
`film on said first semi-conductor
`film;
`
`patterning said first and N-type
`semiconductor films using a first
`photomask;
`forming a conductive layer on at least
`the patterned N-type semiconductor
`film;
`etching a portion of said conductive
`layer to form source and drain
`electrodes using a resist formed by a
`second photomask;
`
`etching a portion of the patterned N-
`type semiconductor film to form
`source and drain regions by dry
`etching without removing said resist
`wherein a channel forming region is
`formed in said first semiconductor
`film between said source and drain
`regions; and
`
`-12-
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`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`
`forming a passivation film over said
`glass substrate to cover at least said
`source and drain electrodes, said
`channel forming region, a part of a
`surface of said source region not
`covered by said source electrode and
`a part of a surface of said drain region
`not covered by said drain electrode
`after removing said resist,
`wherein an upper portion of each of
`said source and drain regions extend
`beyond a lower portion of each of
`said source and drain electrodes so
`that a distance between the source
`and drain regions is shorter than a
`distance between the source and drain
`electrodes.
`
`J
`
`K
`
`
`
`overetching the conductive layer by
`wet etching so that a distance
`between the source and drain regions
`at an upper surface thereof is shorter
`than a distance between the source
`and drain electrodes at a lower
`surface thereof.
`
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘311 PATENT IS UNPATENTABLE
`
`
`A.
`
`Identification Of The References As Prior Art
`
`Japanese Patent Publication No. JP H1-144682 to Noguchi, “Manufacturing
`
`Method of Thin Film Transistor,” was published on Jun. 6, 1989. Noguchi is prior
`
`art at least under 35 U.S.C. § 102(b).
`
`U.S. Patent No. 5,270,567 to Mori, et al., “Thin Film Transistors Without
`
`Capacitances Between Electrodes Thereof,” issued on Dec. 13, 1993 from
`
`application Serial No. 07/845,771 filed on Mar. 3, 1992, which is a continuation of
`
`application Serial No. 07/574,657, filed on Aug. 28, 1990. Mori is prior art under
`
`at least under 35 U.S.C. § 102(e).
`
`-13-
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`Inter Partes Review of U.S. Patent No. 7,923,311
`
`
`U.S. Patent No. 4,862,234 to Koden, “Thin-Film Transistor,” issued on Aug.
`
`29, 1989 from application Serial No. 07/125,961 filed on Nov. 27, 1987. Koden is
`
`prior art under at least 35 U.S.C. § 102(b).
`
`U.S. Patent No. 5,054,887 to Kato, et al., “Active Matrix Type Liquid
`
`Crystal Display,” issued on Oct. 8, 1991 from application Serial No. 07/391,244
`
`filed on Aug. 9, 1989. Kato is prior art under at least 35 U.S.C. § 102(e).
`
`Japanese Patent Publication No. JP H2-234125 to Taniguchi, et al., “Liquid
`
`Crystal Display Device,” was published on Sep. 17, 1990. Taniguchi is prior art
`
`under 35 U.S.C. § 102(b).
`
`Japanese Patent Publication No. H1-180523 to Matsuzaki, et al., “A Thin-
`
`Film Transistor Matrix and the Production Method Thereof,” was published on Jul.
`
`18, 1989. Matsuzaki is prior art under at least 35 U.S.C. § 102(b).
`
`U.S. Patent No. 5,198,694 to Kwasnick, et al., “This Film Transistor
`
`Structure with Improved Source/Drain Contacts,” issued on Mar. 30, 1993 from
`
`application Serial No. 07/825,218 filed Jan. 24, 1992, which was a continuation of
`
`application Serial No. 07/593,419, filed Oct. 5, 1990. Kwasnick is prior art under
`
`at least 35 U.S.C. § 102(e).
`
`Peter Van Zant, Microchip Fabrication: A Practical Guide to Semiconductor
`
`Processing, pp., 222, 223, 228 (McGraw-Hill, 2nd ed. 1990), published no later
`
`than Dec. 31, 1990. As documented on the front cover pages of the Van Zant
`
`-14-
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`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`reference, The Van Zant reference was published in 1990. Accordingly, the Van
`
`Zant reference must have been published at least by Dec. 31, 1990. Additionally,
`
`the Van Zant reference has been used as prior art to invalidate a related U.S.
`
`patent, U.S. Patent No. 6,756,258, which shares the same priority date as the ‘311
`
`patent. The Van Zant reference is prior art under 35 U.S.C. § 102(a).
`
`Summary Of Unpatentability Arguments
`
`B.
`As described above in Section IV.A, the ‘311 patent describes the alleged
`
`“invention” as a TFT structure where “a part of the channel formation region and
`
`parts of the source and drain on the side of the channel formation region are
`
`exposed to incident laser radiation.” Ex. 1001, col. 1, ll. 52–58.
`
`To the extent that Taniguchi, Noguchi, and Matsuzaki do not disclose the
`
`step-like structure of the ‘311 patent, Mori definitively discloses such a structure.
`
`Ex. 1003 at Fig. 12 (see below). Additionally, Mori explicitly discloses that the
`
`step-like structure reduces/eliminates the gate-to-source and gate-to-drain
`
`capacitance problems present in other designs. Id. at col. 2, ll. 18–21. The known
`
`benefit of reducing/eliminating the problematic capacitances present in other
`
`structures provides the motivation for creating such a structure in combination with
`
`the other referenced TFT designs.
`
`-15-
`
`

`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`
`
`The references discussed below show that the ‘311 patent’s claimed TFT
`
`structure would have been obvious a person of ordinary skill in the art.
`
`1. Taniguchi in view of Mori, Kato, and Van Zant renders obvious
`the Asserted Claims of the ‘311 patent
`
`Taniguchi describes a method of manufacturing a liquid crystal display
`
`device containing a TFT. Ex. 1006 at pp. 21–23. Specifically, Taniguchi discloses
`
`a TFT structure wherein the upper portion of the source and drain regions [d0],
`
`extends beyond a lower portion of the source and drain electrodes [d2].
`
`
`
`As discussed in further detail below in Section VII, Taniguchi in view of
`
`Mori, Kato, and Van Zant renders the Asserted Claims of the ‘311 patent obvious.
`
`2. Noguchi taken in view of Mori, Koden, Kato, and Van Zant
`renders obvious the Asserted Claims of the ‘311 patent
`
`Noguchi discloses a method of manufacturing a TFT nearly identical to the
`
`TFT described in the ‘311 patent. Ex. 1002 at Fig. 2(I) (see below). To the extent
`
`-16-
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`Inter Partes Review of U.S. Patent No. 7,923,311
`
`that the source and drain regions [50] do not extend beyond the source and drain
`
`electrodes [60, 70] a person of ordinary skill in the art would have been motivated
`
`to combine the disclosed structure of Mori and Noguchi to form the structure
`
`claimed in the ‘311 patent.
`
`
`
`As discussed in further detail below in Section VII, Noguchi taken in view
`
`of Mori, Koden, Kato, and Van Zant renders the Asserted Claims of the ‘311
`
`patent obvious.
`
`3. Matsuzaki in view of Mori, Kwasnick, Kato, and Van Zant
`renders obvious the Asserted Claims of the ‘311 patent
`
`Matsuzaki discloses a method of manufacturing a TFT. Ex. 1007 at p. 1.
`
`The disclosed TFT structure contains an upper portion of the source and drain
`
`regions [51, 61] that extends beyond a lower portion of the source and drain
`
`electrodes [52, 62]. Id. at Fig. 2. Further, Matsuzaki explicitly describes creating
`
`such a step-like structure in order to prevent undercutting the source and drain
`
`regions. Id. at p. 5.
`
`-17-
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`

`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`
`
`
`As discussed in further detail below in Section VII, Noguchi in view of
`
`Mori, Kwasnick, Kato, and Van Zant render the Asserted Claims of the ‘311 patent
`
`obvious.
`
`4. Estoppel within the office
`As outlined by MPEP 2308.03, [i]f a party loses on an issue, it may not re-
`
`litigate the issue before the examiner or in a subsequent Board of Patent Appeals
`
`and Interferences (Board) proceeding.” As noted infra, a sibling patent of the ‘311
`
`Patent (U.S. Patent 6,756,258), was previously the subject of an inter partes patent
`
`reexamination (95/000,246). As a result of that proceeding 3-8, 10-15 and 18-23
`
`were cancelled and claims 1,2, 9, 16, 17 and 32 were statutorily disclaimed. As
`
`shown in the exemplary claim chart above, these cancelled/disclaimed claims are
`
`coextensive, and patentably indistinct relative to the claims of the ‘311 patent.
`
`For example, in the context of the common patent specification there is no
`
`difference between the claim terms, “semiconductor device” (‘258) and a “display
`
`device including a thin film transistor.” (‘311); “An insulating surface” (258) and a
`
`“glass substrate” (‘311); “semiconductor film” (‘258) and “N-type semiconductor
`
`film” (‘311), etc.
`
`-18-
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`Inter Partes Review of U.S. Patent No. 7,923,311
`
`
`A losing party is barred on the merits from seeking a claim that would have
`
`been anticipated or rendered obvious by the previously contested proceeding. In re
`
`Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992); Ex parte Tytgat, 225
`
`USPQ 907 (Bd. Pat. App. & Inter. 1985). Second, a losing party is procedurally
`
`barred from seeking relief [patentably indistinct amendment] that could have been-
`
`-but was not--sought in the previous contested proceeding; Ex parte Kimura, 55
`
`USPQ2d 1537 (Bd. Pat. App. & Inter. 2000). To the extent the previous inter
`
`partes patent reexamination is not considered a “contested proceeding,