UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CMI CORP.
`
`Petitioner
`
`V.
`
`PATENT OF HIRAKATA YOSHIHARU and
`
`SHUNPEI YAMAZAKI
`
`Patent Owner
`
`CASE IPR 2013-00066
`
`PATENT 7,876,413
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`UNDER 37 CFR § 42.107
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`

`
`Contents
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`I. The Petition May Not Be Considered Because it Fails to Identify all Real
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`Parties-in-Interest.................................................................................................. .. 3
`
`II.
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`The Same Prior Art Cited in the Petition Was Already Considered by
`
`the Office .............................................................................................................. .. 10
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`III. The Admitted Prior Art (“APA”) ............................................................. .. 13
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`IV. The Invention of the ‘413 Patent .............................................................. .. 13
`
`A.
`
`“First Wiring” and “Second Wiring” ................................................... .. 15
`
`B.
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`“First Region” and “Second Region” .................................................... .. 16
`
`V.
`
`Claims of the ‘413 Patent .......................................................................... .. 18
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`VI. The Petition Fails to Establish a Reasonable Likelihood that at Least
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`One Challenged Claim Is Unpatentable Over the APA In View Of
`
`Sukegawa .................................................................................. ..20
`
`A. APA and Sukegawa Fail to Disclose the Claimed “First Wiring” and
`
`the Claimed “Second Wiring” ......................................................................... ..21
`
`1.
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`APA Fails to Disclose the Claimed “First Wiring” and the Claimed
`
`“Second Wiring” ........................................................................................... .. 21
`
`a. The relationship between the short ring and the external connection line
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`of the APA does not correspond to the relationship recited in the claims of
`
`the “first wiring” and the “second wiring” .................................................. .. 22
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`b. APA lacks one of the elements that is essential to form the “first region”
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`and the “second region” ............................................................................... .. 25
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`2.
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`Sukegawa Fails to Disclose the Claimed “First Wiring” and the
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`Claimed “Second Wiring” ............................................................................ .. 29
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`a. The relationship between the lower layer metal wiring and the upper
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`layer metal wiring of Sukegawa does not correspond to the relationship
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`recited in the claims of the “first wiring” and the “second wiring” ............ .. 30
`
`

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`b. Upper layer metal wiring in Sukegawa, which the Petition alleges
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`corresponds to the claimed “second wiring,” lacks the claimed “second
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`region” .......................................................................................................... .. 33
`
`B.
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`Sukegawa Fails to Show the Claim Element of “Direct Contact
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`Through an Opening in the Second Insulating Film” .................................. .. 37
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`C. A Person of Ordinary Skill in the Art Would Not Combine the APA
`
`with Sukegawa .................................................................................................. .. 40
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`D.
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`Even Combined, the APA and Sukegawa Would Not Meet the ‘413
`
`Patent Claim Elements ..................................................................................... .. 42
`
`E.
`
`The APA and Sukegawa Have Already Been Considered by the Office
`
`............................................................................................ ..42
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`VII.
`
`The Petition Fails to Establish a Reasonable Likelihood that at Least
`
`One Challenged Claim Is Unpatentable Over Sukegawa In View of
`
`Nakamoto .................................................................................. ..43
`
`A.
`
`Sukegawa and Nakamoto Fail to Disclose the Claimed “First Wiring”
`
`and the Claimed “Second Wiring” ................................................................... 44
`
`1.
`
`Sukegawa Fails to Disclose the Claimed “First Wiring” and the
`
`Claimed “Second Wiring” ............................................................................ .. 44
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`2. Nakamoto Fails to Disclose the Claimed “First Wiring” and the
`
`Claimed “Second Wiring” ............................................................................ .. 45
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`a. The relationship between the GTM and the DTM of Nakamoto does not
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`correspond to the relationship recited in the claims of the “first wiring” and
`
`the “second wiring” ...................................................................................... .. 46
`
`b. Nakamoto does not disclose the “first region” ....................................... .. 49
`
`B.
`
`Sukegawa Fails to Show the Claim Element of Sealant in “Direct
`
`Contact With the Second Insulating Film” .................................................... .. 51
`
`C.
`
`Sukegawa Fails to Show the Claim Element of “Direct Contact
`
`Through an Opening in the Second Insulating Film” ................................... .. 52
`
`ii
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`

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`D. A Person of Ordinary Skill in the Art Would Not Combine Sukegawa
`
`with Nakamoto .................................................................................................. .. 53
`
`E.
`
`Even Combined, Sukegawa and Nakamoto Would Not Meet the ‘413
`
`Patent Claim Elements ..................................................................................... .. 56
`
`F.
`
`The Teachings in the Petition Have Already Been Considered by the
`
`Office .................................................................................................................. .. 56
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`VIII. Conclusion ................................................................................................ .. 58
`
`iii
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`

`
`EXHIBIT LIST
`
`Exhibit 2001 — Complaint, Semiconductor Energy Laboratory Co., Ltd.
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`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.
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`Exhibit 2003 — Supplemental Declaration of Gregory S. Cordrey in Support of
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`Defendants’ Motion for Stay, Semiconductor Energy Laboratory Co, Ltd. V.
`
`Chimei Innolux Corp., et al.
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`Exhibit 2004 — Defendants’ Reply in Support of their Motion to Stay,
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`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp, et al.
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`Exhibit 2005 — Defendant Westinghouse Digital's Notice
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`of
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`Joinder,
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`Semiconductor Energy Laboratory Co., Ltd v. Chimei Innolux Corp, et al.
`
`Exhibit 2006 — Prosecution File History of US application serial no. 12/252,793
`
`(US Patent No. 7,876,413) Excerpt —- Prior Art considered by the Office
`
`Exhibit 2007 — Sasuga, US Patent No. 5,432,626
`
`iv
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`

`
`Introduction
`
`Patent Owner Semiconductor Energy Laboratory Co., Ltd. (“SEL”) submits
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`this Preliminary Response to the Petition seeking inter partes review (“IPR”) of its
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`U.S. Patent No. 7,876,413 (“the ‘413 patent”) filed on November 30, 2012 .
`
`The Board appears to have incorrectly identified inventors Yoshiharu
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`Hirakata (identified in caption as “Hirakata Yoshiharu”) and Shunpei Yamazaki as
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`the Patent Owner in the caption of the NOTICE OF INCOMPLETE PETITION
`
`mailed November 30, 2012. However, SEL is the Patent Owner and real party-in-
`
`interest, by virtue of an assignment recorded with the Patent and Trademark Office
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`at reel 009581, frame 0943. See, MPEP § 306. Accordingly, the Patent Owner
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`requests correction of the caption and that future mailings properly reflect SEL as
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`the Patent Owner.
`
`In the Petition, Petitioner Chimei Innolux Corp. (“CMI”) attempts to smear
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`the Patent Owner at pp. 4 and 5 of the Petition, referring to a case from 13 years
`
`ago. This over a decade ago case on an unrelated matter has utterly no bearing on
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`the merits of the Petition at bar.
`
`Petitioner raises another unrelated matter
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`concerning how the Patent Owner allegedly derives its revenue.
`
`Petitioner’s
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`assertion is neither accurate nor relevant to any issue in this proceeding.
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`Moreover, Petitioner suggests that the Board intercede in another pending
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`patent application of the Patent Owner, where the Office has sent a Notice of
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`

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`Allowance.
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`In its Petition, Petitioner has not explained how the claims currently
`
`present in the Patent Owner’s pending patent application are patentably indistinct
`
`from the challenged claims of the involved ‘4l3 patent. If Petitioner believes that
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`it can demonstrate a reasonable likelihood that at least one of the application
`
`claims is unpatentable, then it can submit a proper petition with proper evidence
`
`and a proper showing, and the requisite fees, and ask the Board to consider
`
`instituting another inter partes review. But the rules simply do not permit
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`Petitioner to interfere with a pending application that is not involved in the present
`
`request for IPR. Nor is it necessary for the Board to interject itself into a pending
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`application with respect to this Petition.
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`Putting the above issues aside, the Patent Owner respectfully requests that
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`the Board deny the Petition. As will be explained in more detail infra, the Petition
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`should be denied for failing to identify all the real parties-in-interest pursuant to 35
`
`U.S.C. § 312 (a)(2). Also,
`
`the art relied on in the Petition is the same or
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`substantially the same art previously presented to the Office during prosecution of
`
`the ‘4l3 patent, and therefore, the Petition should be denied under 35 U.S.C. §
`
`325(d). Furthermore, for the reasons discussed below, the Petition should be
`
`denied because it does not meet the elevated “reasonable likelihood” standardl that
`
`1 In enacting the “reasonable likelihood” standard in 35 U.S.C. § 3 l4, Congress set
`
`forth a substantially higher standard than the “substantial new question” under
`
`previous law, in order to deliberately reduce the number of inter partes requests
`
`2
`
`

`
`at least one claim of the ‘413 patent is unpatentable.
`
`I.
`
`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 states:
`
`(a) REQUIREMENTS OF A PETITION.——A petition filed under section
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`311 may be considered only if_...
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`(2) the petition identifies all real parties in interest. @n
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`(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. §
`
`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 § 3l2(a)(2) and § 3l5(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
`
`that are ultimately granted. See, H.R. Rep. No. 112-98 (part 1), at 47 (2011) (“The
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`threshold for initiating an inter partes review is elevated from ‘significant new
`
`question of patentability’—— a standard that currently allows 95% of all requests to
`
`be granted—to a standard requiring petitioners to present information showing that
`
`their challenge has a reasonable likelihood of success”). Thus, the new standard
`
`makes inter partes review unavailable but for exceptional cases where “serious
`
`doubts” about the patent’s Validity are raised and a “prima facie case” has been
`
`established by the petitioner. See, 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement
`
`of Sen. Jon Kyl (D—Ariz)).
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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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`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.
`
`Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4451).
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`This requirement of § 3l2(a)(2) is critically important “to assist members of
`
`the Board in identifying potential conflicts, and to assure proper application of the
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`statutory estoppel provisions nun
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`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.
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`The Petition fails to identify the following real parties—in-interest: Acer
`
`America Corporation (“Acer America”); Chi Mei Optoelectronics USA,
`
`Inc.
`
`(“CMO USA”); ViewSonic Corporation (“ViewSonic”); VIZIO, Inc. (“VIZIO”);
`
`and Westinghouse Digital, LLC (“Westinghouse”). Petitioner CMI and each of
`
`these additional real parties—in-interest are co-defendants in a currently pending
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`

`
`litigation for infringement of the ‘413 patent brought by the Patent Owner,
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`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Irmolux Corp, et al., Case
`
`No. SACV l2—0021—JST (C.D. Cal) (hereinafter the “CMI case”). See, p:n 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
`
`Petition.
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`(See, Ex. 2002 and Ex. 2003). CMI and all of the foregoing co-
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`defendants joined with Petitioner in filing a motion to stay the CMI case.2 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
`
`and Declaration of Gregory S. Cordrey in Support Thereof (the “Motion to Stay”)
`
`(Ex. 2002 and Ex. 2003).
`
`All the defendants in the CMI case are real parties-in-interest because they
`
`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
`
`filed.”
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`(Ex. 2002, pp. 2, 5, and 6, emphasis added). Further, the defendants
`
`represented to the Court
`
`in the CA4] case that
`
`the “Defendant; have moved
`
`2 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
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`agrees to be bound by the PTO’s determinations on the IPRs pursuant to the
`
`estoppel provisions of 35 U.S.C. § 3 l5(e)(2).” (EX. 2005, p. 2.)
`
`5
`
`

`
`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 ‘413 patent. See also Id. at 6 (“Defendant§’
`
`petitions for IPR...”); Id. at 8 (“Defendantg have presented the PTO with prior
`
`art. . .”) (emphasis added).
`
`Furthermore,
`
`in Defendants’ Reply in Support of Their Motion to Stay
`
`Litigation Pending Outcome of Inter Partes Review (“Defendants’ Reply”), they
`
`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 1PRs proceedings.” Defendants’ Reply, at 2, n. 4.;
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`id. at 14 (Ex. 2004, pp. 2 and 3; 14). Thus, removing any possible doubt about
`
`their status, the defendants themselves have all expressly committed to be real
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`parties—in—interest in order to obtain a stay of the co-pending CM] 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 Petitioner’s Backup Counsel, Gregory Cordrey,
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`in
`
`support of Defendants’ Motion to Stay, which stated that “[o]n November 28,
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`2012, Defendants filed with the U.S. Patent and Trademark Office (“PTO”) its
`
`petition for IPR for U.S. Patent No. 7,876,413 (“’413 Patent”).” (Ex. 2003, p. 3,
`
`emphasis added). The Declaration identifies the Petition at issue as the collective
`
`“Defendant§’ 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 28,
`
`2012, the Petition at issue here was filed on behalf of all defendants. Thus, the
`
`Petition is not just CMI’s petition, but also the inter partes review petition of all
`
`five other co—defendants in the pending CMI case. Each of the other five co-
`
`defendants, according to their representations to the Court
`
`in the CM case,
`
`participated in the preparation and filing of the Petition, while collectively seeking
`
`statutory rights (i.e., a stay of litigation) and acknowledging statutory estoppel
`
`based on their status as real parties-in-interest. At a minimum, these five co-
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`defendants had the opportunity to control the content of the Petition.
`
`Here, there is no concern that estoppel will apply against a party who was
`
`opposed to filing the Petition or had no control over the Petition.
`
`(See, e.g., In re
`
`Arviv, er al., Reexamination Proceeding Control No. 95/001,526, pages 5 and 6 of
`
`Decision Dismissing §1.182 and §1.183 Petitions, mailed April 18, 2011 (The
`
`Office of Patent Legal Administration stated its concern that finding a co-
`
`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
`
`a party who had no control over the request for reexamination.» As CMO USA,
`
`Acer America, VIZIO, ViewSonic, and Westinghouse advised the Court in the
`
`CMI case, the Petition is theirs and CM1’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.
`
`Although CMO USA, Acer America, VIZIO, ViewSonic and Westinghouse
`
`informed the Court in the CM] case that they agree to be bound by the estoppel
`
`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
`
`Petition as real parties—in—interest. For example, under 35 U.S.C. § 3l5(e)(l) 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’
`
`representation to the Court in the CMI case that they agree to be bound by the
`
`estoppel provisions of the IPR proceedings would not necessarily be known to the
`
`Office in future inter partes review proceedings involving the same patent.
`
`Therefore,
`
`the Office would have no practical way of enforcing the estoppel
`
`provisions of § 3 l5(e)(l), 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 § 3l8(a) on any ground that the petitioner
`
`raised or reasonably could have raised during that inter partes review. Similarly,
`
`with respect to estoppel under § 3l5(e)(2) in future civil actions, the extent to
`
`

`
`which unidentified real parties-in-interest will actually be bound by their statement
`
`to the Court in the CM] case is unclear.
`
`Moreover, unless real parties-in-interest are identified in the petition,
`
`potential conflicts of interest involving members of the Patent Trial and Appeal
`
`Board cannot readily be identified. The requirement to identify all real parties in
`
`interest pursuant to §3 l2(a)(2) serves the same purpose as a similar requirement to
`
`identify interested parties in litigation pursuant to Federal Rule of Civil Procedure
`
`7.1.
`
`It is critically important that the judges of the Patent Trial and Appeal Board
`
`not have a conflict created by a financial interest in the outcome of the cases under
`
`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
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`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 CM] case, Acer America, CMO USA,
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`ViewSonic, VIZIO and Westinghouse are real parties-in-interest with respect to the
`
`

`
`Petition. However, Section I(A) of the Petition merely states “Pursuant to 37
`
`C.F.R. § 42.8(b)(l), Petitioner certifies that CMI is the real party-in-interest”
`
`without identifying any other real parties—in-interest. Thus, the certification made
`
`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 ‘4l3 patent by
`
`filing their Petition, and have represented to the Court in the CA/II case that they
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`moved expeditiously to prepare and file their Petition, they all are real parties-in-
`
`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 except CMI was identified in the
`
`Petition. As such, the Petition does not satisfy the requirement of § 3l2(a)(2) to
`
`identify all real parties-in-interest. Therefore, inter partes review of the Petition
`
`cannot be instituted. Accordingly, the Patent Owner respectfully requests that the
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`Petition be denied on this additional ground.
`
`II.
`
`The Same Prior Art Cited in the Petition Was Already Considered by
`the Office
`
`Under 35 U.S.C. § 325(d), the Board need not consider the Petition since all
`
`prior art references cited in the Petition already were presented to the Office during
`
`the prosecution of the ‘4l3 patent, with the exception of one secondary reference
`
`in which the cited teachings are cumulative to and substantially the same as a
`
`reference that was previously presented to and considered by the Office. As such,
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`the Patent Owner requests that the Board deny the Petition under 35 U.S.C. §
`
`10
`
`

`
`325(d), which provides that “[i]n determining whether to institute or order a
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`proceeding under this chapter, chapter 30, or chapter 31 [i.e., inter partes review],
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`the Director may take into account whether, and reject the petition or request
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`because, the same or substantially the same prior art or arguments previously were
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`presented to the Office.”
`
`The Office has already considered the APA and U.S. Patent No. 5,636,329
`
`(“Sukegawa”) during the prosecution of the ‘413 patent and found the claims
`
`patentable over that prior art. While the Office has not considered JP Patent
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`Application Publication No. H08-160446 (“Nakamoto”) per se, the Office has
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`already considered the teachings relied upon by Petitioner in another reference
`
`which is cumulative of these teachings.
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`More specifically,
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`the APA was included in the specification of the
`
`application as
`
`filed and presumably considered by the Office during the
`
`prosecution of the ‘413 patent.
`
`Sukegawa was submitted to the Office by the Patent Owner
`
`in an
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`Information Disclosure Statement received by the Office on May 5, 2010 and was
`
`considered by the Office in at least the Final Office Action dated June 16, 2010
`
`during the prosecution of the ‘413 patent.
`
`(EX. 2006, p. l).3
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`3 It is noted that the Patent Owner submitted references and the Office referred to
`
`such references during the prosecution of the ‘413 patent, but these documents are
`
`not included in Exhibit 1002 submitted by Petitioner. Exhibit 1002 is deficient.
`
`ll
`
`

`
`Nakamoto itself was not cited during prosecution of the application that
`
`became the ‘413 patent. However, the teachings relied upon by Petitioner from
`
`Nakamoto are cumulative of U.S. Patent No. 5,432,626 (“Sasuga,” EX. 2007),
`
`which was submitted to the Office by the Patent Owner in an Information
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`Disclosure Statement received by the Office on October 16, 2008 and considered
`
`by the Office in at least the Office Action dated February 1, 2010. (Ex. 2006, p. 3).
`
`Indeed, Figs. 5 and 9 of Nakamoto, which are the only figures from Nakamoto that
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`Petitioner refers to in Section VI of its Petition, are the same as Figs. 18 and 22 of
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`Sasuga.4 Hence, this disclosure in Nakamoto is cumulative to Sasuga, and the
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`Office has therefore already considered that disclosure — whether in Sasuga or
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`Nakamoto, during the prosecution of the ‘413 patent and allowed the claims over
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`that disclosure.
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`Thus, the Office has already considered the same prior art teachings asserted
`
`in the Petition.
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`Since the same or substantially the same prior art teachings
`
`asserted in the Petition were already previously presented to and considered by the
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`Office, the Petition for inter partes review should be denied pursuant to § 325(d).
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`Accordingly, the Patent Owner is submitting a copy of missing excerpts from the
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`file history for the ‘4l3 patent in Exhibit 2006.
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`4 Further, Figs. 3, 4, 6-8, 10, and 11 of Nakamoto also are disclosed in Sasuga. (Ex.
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`2007, Figs. 1, 2,11, 21, 23, 26 and 31).
`
`12
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`

`
`III. The Admitted Prior Art (“APA”)
`
`The ‘413 patent refers to prior art structures shown in Figs. 13 and 14A
`
`reproduced below. APA shows an example of a liquid crystal display device.
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`Referring to Fig. 13 of the ‘413 patent, a substrate 1501 and a counter substrate
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`1502 are disposed in a face—to-face relationship with a sealant 1505 interposed
`
`between them to form a panel. On the substrate 1501, an active matrix display
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`circuit 1503 is provided with external connection lines 1508 for electrically
`
`connecting an FPC (flexible printed circuit) 1507 outside the sealant 1505 to
`
`transmit signals between active matrix display circuit 1503 and the FPC 1507. Fig.
`
`14A of the ‘4l3 patent, which is a cross sectional view of Fig. 13, shows that the
`
`FPC 1507 and the active matrix display circuit 1503 are connected through
`
`external connection lines 1508.
`
`In addition, the sealant 1505 overlaps the external
`
`connection lines 1508. (Ex. 1001, col. 1, l. 48 — col. 2, l. 30).
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`IV.
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`The Invention of the ‘413 Patent
`
`The ‘413 patent, entitled “Electronic Apparatus With A Flexible Printed
`
`Circuit And A Transparent Conductive Layer,” relates to a display device. The
`
`13
`
`

`
`invention uses auxiliary lines such as 401, which correspond to a “first wiring” in
`
`the claims.
`
`(Ex. 1001, col. 8, 11. 42-50 and Fig. 4A). A first inter—layer film 112,
`
`which corresponds to a “first insulating film,” separates the auxiliary lines 401
`
`from external connection lines such as 403, which correspond to a “second wiring”
`
`in the claims.
`
`(Id., col. 8, ll. 42-50 and Fig. 4A). All of the claims in the ‘413
`
`patent require a contact hole (“an opening”) through the first insulating film to
`
`allow electrical contact between these two wirings.
`
`(1d., col. 8, 11. 46-50 and Fig.
`
`4A). One reason for, and result of, electrically connecting the auxiliary lines 401
`
`to the external connection lines 403 is to lower electrical resistance. As explained
`
`in the ‘4l3 patent specification, even when the second wiring is made from a
`
`metal,
`
`the wiring faces a problem of high line resistance, which can cause
`
`propagation delay and deterioration of high frequency signals normally used in
`
`such LCD circuits and communicated via the flexible printed circuit referenced in
`
`the claims, thereby inhibiting optimal performance. (Id., col. 8, 1. 61 - col. 9, l. 11).
`
`The above configuration in the patent reduces this electrical resistance.
`
`(1d., col. 8,
`
`11. 42-50 and Fig. 4A).
`
`Furthermore, in order to improve the reliability of an electronic apparatus by
`
`providing for the sealant 105 to have favorable adhesion, this invention provides a
`
`structure wherein the sealant 105 and the indium tin oxide (“ITO”) film 114, which
`
`corresponds to a “transparent conductive layer,” do not overlap each other, and the
`
`14
`
`

`
`sealant 105 is in direct Contact with the second insulating film such as the resin
`
`inter-layer film 113.
`
`(ld., Fig. 4A). Generally, a sealant has poor adhesion to a
`
`transparent conductive film made of ITO. As shown in Fig. 4A of the ‘413 patent,
`
`the transparent conductive layer is over a “first region” of the second wiring, and
`
`the sealant is over the first wiring and a “second region” of the second wiring. The
`
`above configuration in the patent provides favorable adhesion of the sealant.
`
`A.
`
`“First Wiring” and “Second Wiring”
`
`Fig. 4A of the ‘413 patent (reproduced below with annotations) is a cross
`
`sectional View of Fig.
`
`1 of the ‘413 patent. As shown in annotated Fig. 4A, the
`
`display device includes a first wiring (e. g., auxiliary lines 401) over a substrate 101,
`
`a first insulating film (e. g., first inter-layer film 112) over the first wiring and a
`
`second wiring (e. g., external connection lines 403) over the substrate 101 and the
`
`first insulating film.
`
`(Petitioner agrees that the auxiliary line 401 in the patent
`
`corresponds to the claimed “first wiring” and the external connection lines 403
`
`correspond to the claimed “second wiring.” See Pet., pp. 14 and 15.)
`
`15
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`

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`EXTERNAL CONNECTION LINES
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`The specification of the ‘413 patent states, “auxiliary lines 401 that extend
`
`along external connection lines 403 are provided under the first inter—layer film
`
`112 and the external connection lines 403 and auxiliary lines 401 are electrically
`
`connected in parallel by forming contact holes in the first inter-layer film 112 to
`
`reduce the electrical resistance as shown in FIG. 4A.” (Ex. 1001, col. 8, 11. 45-50).
`
`As made clear by the figures and the specification of the ‘413 patent, one
`
`aspect of the invention of the ‘413 patent is that the first wiring and the second
`
`Wiring overlap and are in electrical contact
`
`through an opening of the first
`
`insulating film in such a way as to reduce electrical resistance.
`
`B.
`
`“First Region” and “Second Region”
`
`The ‘413 patent claims further require the second wiring to have both a “first
`
`region” and a “second region.” As shown in Fig. 4A of the ‘413 patent (see below
`
`with annotations), the display device includes a transparent conductive layer (e.g.,
`
`ITO film 114) over a first region of the second Wiring (e.g., external connection
`
`16
`
`

`
`lines 403), a flexible printed circuit (e. g., FPC 107) over the first region of the
`
`second wiring, and a sealant (e. g., sealant 105) over a second region of the second
`
`Wiring. Further, the sealant is in direct contact with a second insulating film (e.g.,
`
`resin inter—layer film 1 13).
`
`105 SEALENT
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