Inter Partes Review of U.S. Patent No. 7,923,311
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`DOCKET NO: 406108US
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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.
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS ........................................................................................ i
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`EXHIBIT LIST ...................................................................................................... iv
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`I. MANDATORY NOTICES ...........................................................................1
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`A. Real Party-In-Interest ...................................................................................1
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`B. Related Matters..............................................................................................1
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`C. Lead and Back-Up Counsel ..........................................................................2
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`D. 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
`
`A. Grounds For Standing...................................................................................3
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`B. Identification of Challenge............................................................................4
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`1.
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`2.
`
`3.
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`4.
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`5.
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`Claims for which inter partes review is requested ...............................4
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`The specific art and statutory ground(s) on which the challenges are
`based......................................................................................................4
`
`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 ...................6
`
`IV. SUMMARY OF THE ‘311 PATENT ..........................................................6
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`A. Description Of The Alleged Invention.........................................................6
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`B. Summary Of The Prosecution History........................................................8
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`-i-
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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
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘311 PATENT IS UNPATENTABLE.........................12
`
`A. Identification Of The References As Prior Art.........................................12
`
`B. Summary Of Unpatentability Arguments.................................................13
`
`1.
`
`2.
`
`Taniguchi in view of Mori and Van Zant renders obvious the Asserted
`Claims of the ‘311 patent ....................................................................14
`
`Noguchi taken in view of Mori, Kwasnick, and Van Zant renders
`obvious the Asserted Claims of the ‘311 patent..................................15
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`3. Matsuzaki in view of Mori, Kwasnick, and Van Zant renders obvious
`the Asserted Claims of the ‘311 patent ...............................................16
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`4.
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`Estoppel within the Office...................................................................16
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`VII. DETAILED EXPLANATION....................................................................18
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`A. Claims 23, 24, and 26...................................................................................18
`
`1.
`
`2.
`
`Taniguchi in view of Mori and Van Zant under 35 U.S.C. § 103. .....18
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`Noguchi in view of Mori and Van Zant under 35 U.S.C. § 103.........22
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`3. Matsuzaki in view of Mori, Kwasnick, and Van Zant under 35 U.S.C.
`§ 103. ...................................................................................................26
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`B. Claims 27–30 ................................................................................................30
`
`1.
`
`2.
`
`3.
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`Taniguchi in view of Mori and Van Zant under 35 U.S.C. § 103. .....30
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`Noguchi in view of Mori and Van Zant under 35 U.S.C. § 103.........32
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`Noguchi in view of Mori, Kwasnick, and Van Zant under 35 U.S.C. §
`103. ......................................................................................................34
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`4. Matsuzaki in view of Mori, Kwasnick, and Van Zant under 35 U.S.C.
`§ 103. ...................................................................................................34
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`-ii-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`C. Claims 31–34, and 53...................................................................................37
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`1.
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`2.
`
`3.
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`Taniguchi in view of Mori and Van Zant under 35 U.S.C. § 103. .....37
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`Noguchi in view of Mori and Van Zant under 35 U.S.C. § 103.........40
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`Noguchi in view of Mori, Kwasnick, and Van Zant under 35 U.S.C. §
`103. ......................................................................................................42
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`4. Matsuzaki in view of Mori, Kwasnick, and Van Zant under 35 U.S.C.
`§ 103. ...................................................................................................42
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`D. Claims 35–38, and 54...................................................................................45
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`1.
`
`2.
`
`3.
`
`Taniguchi taken in view of Mori and Van Zant..................................45
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`Noguchi in view of Mori and Van Zant under 35 U.S.C. § 103.........46
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`Noguchi in view of Mori, Kwasnick, and Van Zant under 35 U.S.C. §
`103. ......................................................................................................48
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`4. Matsuzaki in view of Mori, Kwasnick, and Van Zant........................48
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`E. Claims 39, 40, 42, and 49.............................................................................49
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`1.
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`2.
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`Taniguchi in view of Mori and Van Zant under 35 U.S.C. § 103. .....49
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`Noguchi in view of Mori and Van Zant under 35 U.S.C. § 103.........52
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`3. Matsuzaki in view of Mori, Kwasnick, and Van Zant under 35 U.S.C.
`§ 103. ...................................................................................................54
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`F. Claims 43, 44, 46, and 50.............................................................................57
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`1.
`
`2.
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`Taniguchi in view of Mori and Van Zant under 35 U.S.C. § 103. .....57
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`Noguchi in view of Mori and Van Zant under 35 U.S.C. § 103.........58
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`3. Matsuzaki in view of Mori, Kwasnick, and Van Zant under 35 U.S.C.
`§ 103. ...................................................................................................59
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`VIII. CONCLUSION ............................................................................................60
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`CERTIFICATE OF SERVICE ............................................................................61
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`-iii-
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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 No. H1-144682 to Noguchi (including translation).
`
`1003. U.S. Patent No. 5,270,567 to Mori, et al.
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`1004. (Intentionally Left Blank)
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`1005. (Intentionally Left Blank)
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`1006. Japanese Patent No. H2-234125 to Taniguchi, et al. (including
`translation).
`
`1007. Japanese Patent 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, 298 (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.
`
`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-
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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
`
`requests inter partes review for claims 23, 24, 26–40, 42–44, 46, 49, 50, 53, and 54
`
`(the “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
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`disclosures.
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`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,
`
`2012. This litigation remains pending. The patents-in-suit are U.S. Patents:
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`7,876,413; 6,404,480; 7,697,102; 7,956,978; 8,068,204; and 7,923,311.
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`This IPR petition is directed to U.S. Patent 7,923,311; however, petitions
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`-1-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`corresponding to the remaining patents are forthcoming.1 To this end the Patent
`
`Trial & Appeal Board (PTAB) may wish to consider consolidating the six (6)
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`patents to a single panel of Administrative Patent Judges for administrative
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`efficiency.2 Indeed, a second petition for Inter Partes Review of the ‘311 patent is
`
`filed concurrently herewith.
`
`On October 22, 2012, CMI moved to stay the corresponding district court
`
`litigation pending the conclusion of the Inter Partes Review proceedings.
`
`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 other 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
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`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.
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`II.
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`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $30,200 to Deposit Account
`
`No. 15-0030 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for Inter
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`Partes Review. Review of twenty-five (25) claims is being requested, so an excess
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`claims fee is included in this fee calculation. The undersigned further authorizes
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`payment for any additional fees that might be due in connection with this Petition
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`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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`Inter Partes Review of U.S. Patent No. 7,923,311
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`B.
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`Identification of Challenge
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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 the Asserted of the ‘311 patent.
`
`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 Japanese Patent Publication No. JP H2-234125 to Taniguchi, et al.
`(“Taniguchi,” Ex. 1006)
`4 Japanese Patent Publication No. JP H1-180523 to Matsuzaki, et al.
`(“Matsuzaki,” Ex. 1007)
`5 U.S. Patent No. 5,198,694 to Kwasnick, et al. (“Kwasnick,” Ex. 1008)
`6 Peter Van Zant, Microchip Fabrication: A Practical Guide to Semiconductor
`Processing, pp., 221–28 (2nd ed. 1990) (“Van Zant,” Ex. 1009)
`
`
`
`The Asserted Claims of the ‘311 patent are obvious under 35 U.S.C. §
`
`103(a) over Taniguchi in view of Mori and Van Zant.
`
`Claims 23, 24, 26–28, 30–32, 34–36, 38–40, 42–44, 46, 49, 50, 53, and 54
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`-4-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`of the ‘311 patent are obvious under 35 U.S.C. § 103(a) over Noguchi in view of
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`Mori and Van Zant.
`
`Claims 29, 33, and 37 of the ‘311 patent are obvious under 35 U.S.C. §
`
`103(a) over Noguchi in view of Mori, Kwasnick, and Van Zant.
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`
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`The Asserted Claims of the ‘311 patent are obvious under 35 U.S.C. §
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`103(a) over Matsuzaki in view of Mori, Kwasnick, and Van Zant.
`
`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
`
`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
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`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.
`
`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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`Inter Partes Review of U.S. Patent No. 7,923,311
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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
`
`Co., Ltd. v. ChiMei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed
`
`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
`
`above, including the identification of where each element of the claim is found in
`
`the prior art patents or printed publications, is provided in Section VII, below, in
`
`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
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`-6-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`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
`
`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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`
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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
`
`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 and
`
`drain region extends beyond a lower portion of the source and drain electrodes.
`
`See, e.g., id. at col. 12, ll. 42–46. Specifically, the ‘311 patent claims a structure
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`-7-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`where “an upper portion of each of said source and drain regions [11,12] extend
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`beyond a lower portion of each of said source and drain electrodes [9,10].” 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) and a string of parent applications/patents. In 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
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`Notice of Allowance and eventual issuance of the ‘311 patent.
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`-8-
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`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
`
`disclaimed several other claims.
`
`The ‘258 patent’s claims are nearly identical to those issued in the later, ‘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. 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
`
`JP 168290
`
`07/895,029
`Continuat
`5,648,662
`Division
`5,811,328
`Division
`6,124,155
`Division
`6,335,213
`Division
`6,797,548
`Division
`6,847,064 (5/8/02)
`Division
`7,507,991
`Division
`7,923,311*
`
`Division
`
`6,166,399
`
`Division
`
`6,756,2581234
`
`Division
`
`(Abandoned)
`12/987,397
`
`
`
`NOTE:
`* - 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 27:
`95/000,246
`Claim 5
`A method of manufacturing a
`semiconductor device comprising the
`steps of:
`forming a gate electrode on an insulating
`surface;
`
`A method of manufacturing a display
`device including a thin film transistor
`over a glass substrate, the method
`comprising steps of:
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`Inter Partes Review of U.S. Patent No. 7,923,311
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`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,
`
`
`
`
`
`forming a resist on a conductive layer
`wherein said conductive layer is formed
`on an N-type semiconductor film, said
`N-type semiconductor film is formed on
`a first semiconductor film, and said first
`semiconductor film is formed over a
`gate electrode with a gate insulating film
`comprising silicon nitride interposed
`therebetween;
`
`etching a portion of said conductive
`layer to form source and drain electrodes
`using said resist;
`
`etching a portion of said N-type
`semiconductor film to form source and
`drain regions without removing said
`resist wherein a channel forming region
`is formed in said first semiconductor
`film between said source and drain
`regions; and
`forming a passivation film over at least
`said source and drain electrodes and said
`channel forming region after removing
`said resist,
`wherein each of the source and drain
`regions has a bottom surface in contact
`with the first semiconductor film, each
`of the source and drain electrodes has a
`bottom surface in contact with
`corresponding one of the source and
`drain regions, and
`
`-11-
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`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`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.
`
`the conductive layer is overetched using
`said resist so that a distance between
`opposed ends of the bottom surfaces of
`the source and drain electrodes is larger
`than a distance between opposed ends of
`the bottom surfaces of the source and
`drain regions.
`
`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 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 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).
`
`-12-
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`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`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
`
`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.
`
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`Inter Partes Review of U.S. Patent No. 7,923,311
`
`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.
`
`
`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 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].
`
`-14-
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`

`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`
`
`As discussed in further detail below in Section VII, Taniguchi in view of
`
`Mori and Van Zant renders the Asserted Claims of the ‘311 patent obvious.
`
`2. Noguchi taken in view of Mori, Kwasnick, 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
`
`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, Kwasnick, and Van Zant renders the Asserted Claims of the ‘311 patent
`
`obvious.
`
`
`
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`

`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`3. Matsuzaki in view of Mori, Kwasnick, and Van Zant renders
`obvious the Asserted Claims of the ‘311 patent
`
`Matsuzaki discloses a method of manufacturing a TFT. Ex. 1007 at pg. 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 pg. 5.
`
`
`
`As discussed in further detail below in Section VII, Noguchi in view of
`
`Mori, Kwasnick, 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
`
`-16-
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`

`

`Inter Partes Review of U.S. Patent No. 7,923,311
`
`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.
`
`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