Paper 10
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` Entered: April 24, 2013
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CHIMEI INNOLUX CORPORATION
`Petitioner
`
`v.
` SEMICONDUCTOR ENERGY LABORATORY CO., LTD.1
`Patent Owner
`_______________
`
`Case IPR2013-00066 (SCM)
`Patent 7,876,413 B2
`_______________
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`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`DECISION
` Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`1 See Paper 7 at 1-2 (counsel for Semiconductor Energy Laboratory Co.,
`Ltd., referring to a USPTO recorded assignment of application number
`09/165,628, at reel 009581, frame 0943, as evidence of ownership of the
``413 patent).
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`Case IPR2013-00066
`Patent 7,876,413 B2
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`I. BACKGROUND
`Petitioner, Chimei Innolux Corp. (“CMI”), filed a Petition2 to institute an
`inter partes review of claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of
`U.S. Patent 7,876,413 owned by Semiconductor Energy Laboratory Co., Ltd.
`(“SEL”). See 35 U.S.C. § 311. In response, Patent Owner, SEL, filed a
`Preliminary Response.3
`The standard for instituting an inter partes review is set forth in 35 U.S.C. §
`314(a):
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`Pursuant to the defined threshold under 35 U.S.C. § 314(a), the Board
`institutes an inter partes review of claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and
`27-29 of the `413 patent.
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`A. The `413 Patent
`The `413 patent describes LCD (liquid-crystal display) devices having two
`opposing substrates bonded together with a sealant material. One substrate carries
`an active matrix display circuit and peripheral driving circuits, and the other
`substrate carries a counter electrode. (See Ex. 1001, Abstract.) According to the
``413 patent, prior art LCD devices have non-uniform seals which create an uneven
`gap between the two opposing substrates. The uneven gap ultimately results in
`deteriorated LCD image quality. The uneven seal and consequent gap occur
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`2 Petition for Inter Partes Review of U.S. Patent No. 7,876,413 Under 35 U.S.C.
`§§ 311-319 and 37 C.F.R. § 42.100 Et Seq. (Nov. 30, 2012).
`3 Preliminary Response of the Patent Owner Under 37 C.F.R. § 42.107 (Mar. 4,
`2013).
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`Patent 77,876,413 BB2
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`becausee peripheraal drive circcuits and cconducting lines on thhe active mmatrix
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`substratte extend uunder the seealing regiion in a nonn-uniform
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`manner, fofor examplee,
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`only in some locattions or wiith varyingg width andd density.
`(Ex. 1001
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`14B, cool. 1, ll. 40--48; col. 2,, ll. 51-61.))
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`TThe `413 paatent disclooses a soluution to thee seal probllem which
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`employing adjustmment wirinng lines thaat have appproximatelyy the samee thickness
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`width, aand spacingg as externnal conducttion lines aand auxiliaary lines. TThe lines
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`and spacing in ordder to rend
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`er the seal and conseequent gap
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`between oopposing
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`substrattes more unniform. (IdId. at Abstrract, col. 2,, l. 62 – co
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`l. 3, l. 18;
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`62; and Figs. 4A, 4B.)
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`, through ccontact holles in a firsst
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`TThe `413 paatent also ddescribes cconnecting
`in parallel
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`insulatinng layer, twwo conduccting lines
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`to minimiize the totaal resistanc
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`the lines. (Id. at ccol. 3, ll. 577-62; col. 88, ll. 42-511.) To accoommodate
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`for such liines
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`extendinng under thhe sealant, the `413 ppatent desccribes usingg overlappping
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`adjustmment layers adjacent thhe conductting lines uunder the ssealant. (Idd. at col. 3
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`51-62; ccol. 9, ll. 20-46; Figs. 4A; 4B.)
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`lines annd other dissclosed feaatures:
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`col. 3, ll. 551-
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`extend uunder the ssealant relaatively unifformly in oone or morre of thicknness, widthh,
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`, ll.
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`FFigures 4A and 4B, wwhich followw, illustratte the paralllel conneccted wiringg
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`FFigure 4A ddepicts external connnection andd auxiliary
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`lines 403
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`and 401
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`connectted in paralllel to miniimize the ttotal line reesistance.
`As the fig
`ure shows
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`lines exxtend underr sealant 1005. Figuree 4A also ddepicts flexxible printeed circuit
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`(FPC) 1107 electriccally conneected to ann indium tinn oxide (ITTO) film 1
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`connectted throughh contact hholes in a s
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`econd insuulating filmm 113 to exxternal
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`connecttion lines 4403. (Id. att col. 8, ll. 52-60.)
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`FFigure 4B, bbelow, deppicts adjusttment layeers 402 andd 404 emplloyed to re
`iform as
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`the sealant height and consequent subsstrate-to-suubstrate gapap more un
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`explaineed supra.
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`14 which iis
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`nder
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`FFigure 5. beelow, repreesents anotther view wwhich empploys the saame
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`connecttion schemme represennted in Figuures 1, 4A,, and 4B annd shows tthe FPC 1007
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`connectted to exterrnal connection lines 108 whichh extend uunder sealannt 105 andd
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`active mattrix circuitt 103. (Seee id.
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`connectt to the perripheral driiving circuit 509 and
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`at col. 99, ll.55-65.))
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`Patent 7,876,413 B2
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`B. Illustrative Claim
`Challenged claims 1, 7, 10, 17, 22, and 24 are independent. Each of the
`independent claims, except for claim 10, contains the three highlighted limitations
`appearing below in claim 1. Claim 10 recites the first and second highlighted
`limitations appearing below in claim 1. In challenging the claims, SEL primarily
`relies on the same arguments with respect to the limitations in controversy as
`represented by claim 1.
`Claim 1 follows:
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`1. A liquid crystal display device comprising:
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`a first wiring over a substrate;
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`a first insulating film over the first wiring;
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`a second wiring over the substrate and the first insulating film;
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`a second insulating film over the second wiring;
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`a transparent conductive layer over a first region of the second
`wiring;
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`a flexible printed circuit over the first wiring and the first region
`of the second wiring; and
`a sealant over the first wiring and a second region of the
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`second wiring,
`wherein the sealant is in direct contact with the second
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`insulating film;
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`wherein the second wiring overlaps at least part of the first
`wiring;
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`wherein the first wiring and the second wiring are in electrical
`contact through an opening in the first insulating film;
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`wherein the second wiring and the flexible printed circuit are in
`electrical contact through the transparent conductive layer; and
`wherein the second wiring and the transparent conductive layer
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`are in direct contact through an opening in the second insulating film.
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`C. Related Proceedings
`The `413 patent and several other related CMI patents are the subject of in
`inter partes review filings before the PTAB and are also alleged by SEL to be
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`infringed by CMI and several other co-defendants in litigation styled as
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.,
`SACV12-0021-JST (C.D. Cal.) (filed Jan. 5, 2012) [hereinafter the CMI Case].
`(See Pet. 1; Prelim. Resp. 5; Ex. 2001.)
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`D. The Asserted Grounds
`CMI asserts the following obviousness grounds of unpatentability under 35
`U.S.C. § 103:
`Claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 over Prior Art
`Admissions in the `431 patent and Sukegawa, U.S. 5,636,329 (June 3, 1997).4
`Claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 over Sukegawa and
`Nakamoto, JP H08-160446 (June 21, 1996).
`(Pet. 8.)
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`II. ANALYSIS
`A. Preliminary Request
`CMI requests the Board to intercede in SEL’s pending patent application,
`13/304,660, an application that is a progeny of the `413 patent for which CMI
`seeks inter partes review, and other related SEL applications (Pet. 3), and further
`encourages the Board to “take immediate jurisdiction over all involved [SEL]
`applications” (Pet. 2). “To this end, the Petitioner requests that the PTAB issue a
`standing order in this proceeding, once instituted. . . . [which would] require the
`Patent Owner to provide written notice in all pending continuation/divisional or
`reissue applications of the existence of a related IPR proceeding (within 30 days of
`institution).” (Pet. 4.) CMI also requests that the standing order “require the
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`4 CMI cites to Prior Art Figures 13, 14A, and 14B, and col. 1, l. 25 – col. 3, l. 3 in
`the `413 patent as “Admitted Prior Art” (termed “Prior Art Admissions” here).
`(See Pet. 7.)
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`Patent Owner to provide a written reminder to the Examiner with each such
`submission as to the estoppel impact of a finally refused or cancelled claim in this
`proceeding.” (Id.)
`We treat the request as a motion.5 The motion is DENIED.
`As SEL points out, CMI does not show that the claims in the pending
`application (or other applications) are patentably indistinct from claims at issue
`here. (Prelim. Resp. 2.) Without such a showing, CMI fails to show why the
`Board should intercede. Further, the Board has considered and denied a similar
`request by CMI in a related proceeding. (See IPR2013-00038, Paper No. 7,
`Decision – CMI Motion – 37 C.F.R. § 42.3(a).) That decision is incorporated and
`adopted herein by reference. Primarily, as the decision explains, the pending
`patent applications specifically and generally mentioned by SEL are not
`“involved” under 37 C.F.R. § 42.2, and as such, the Board lacks jurisdiction over
`those applications.
`Notwithstanding CMI’s characterization of SEL’s conduct in unrelated
`proceedings which transpired over thirteen years ago, CMI has not shown that such
`past conduct establishes a “history of especially egregious conduct” that would
`warrant the standing order CMI requests. (See Pet. 4.) Therefore, CMI has not
`shown that a standing order is necessary based on the facts presented.
`B. Statutory Threshold Issues
`1. Prosecution History of the `413 Patent
`SEL contends that CMI’s petition for inter partes review of the `413 patent
`is improper under 35 U.S.C. § 325(d) because during prosecution of the application
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`5 The Board exercises its discretion to treat the request as a motion. See 37 C.F.R.
`§§ 42.1(b) and 42.5(b). Ordinarily, a party requesting relief must seek Board
`authorization to file a motion. 37 C.F.R. § 42.20(b).
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`leading to the `413 patent, the PTO examiner previously considered the same or
`cumulative prior art under consideration here. SEL maintains that the examiner
`considered Sukegawa and the Prior Art Admissions appearing in the `413 patent,
`and that Nakamoto “is cumulative of . . . teachings” (Prelim. Resp. 11) also cited
`during prosecution of the `413 patent application. (See Prelim. Resp. 10-12; 56-
`58.)
`That the documents are listed or are cumulative to prior art listed in the
`prosecution record of the `413 patent application is a factor which the Board “may
`take into account” according to 35 U.S.C. § 325(d). However, SEL does not show
`that the examiner of the `413 patent application considered “substantially the same
`. . . arguments,” as CMI presents here, another factor which the Board “may take
`into account” under 35 U.S.C. § 325(d).
`Absent a showing of “substantially the same . . . arguments,” id., and
`considering that CMI includes evidence not considered before the `413 patent
`examiner, including the declaration of Miltiadis Hatalis, Ph.D. (“Hatalis
`Declaration”) (Ex. 1005), SEL does not show that the inter partes review of the
``413 patent would be improper under 35 U.S.C. § 325(d).
`2. Real Parties-In-Interest
`SEL also contends that this review should be denied because the Petition
`fails to identify all of the real parties-in-interest as required by 35 U.S.C. § 312
`(a)(2) and 37 C.F.R. § 42.8(b)(1). (Prelim. Resp. 3-10.) The Trial Practice Guide
`provides guidance regarding factors to consider in determining whether a party is a
`real party-in-interest. As SEL acknowledges, a primary consideration includes
`whether a non-party exercises control over a petitioner’s participation in a
`proceeding. (See Prelim. Resp. 4, citing Office Patent Trial Practice Guide, 77
`Fed. Reg. 48756, 48759 (August 14, 2012).) Other considerations may include
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`whether a non-party, in conjunction with control, funds the proceeding and directs
`the proceeding. (Trial Practice Guide at 60.)
`SEL asserts that co-defendants with CMI, “CMO USA,” “Acer America,”
`“ViewSonic,” “VIZIO,” and “Westinghouse,” in the pending CMI Case (see supra
`§ IC), represented to the district court that the co-defendants all participated in
`filing the instant Petition in support of a district court motion to stay, and that the
`co-defendants all agreed to be bound by this inter partes review. (See Prelim.
`Resp. 3-10.) SEL focuses on statements to the district court in which the co-
`defendants refer to “‘their’” Petition which “Defendants have moved expeditiously
`to prepare and file.”” (Prelim. Resp. 5-6 (quoting CMI Case motion, Ex. 2002 at
`2, 17, emphasis by SEL).)
`Notwithstanding SEL’s assertions, SEL does not set forth persuasive
`evidence that the district court co-defendants CMO USA, Acer America,
`ViewSonic, VIZIO, and Westinghouse necessarily have any control over this
`proceeding. The statements that SEL refer to do not show that these other co-
`defendants had control over the Petition or will exert control over the proceeding.
`The statements made in connection with the joint motion to stay may have been a
`short-hand explanation (e.g., speaking as one unified voice as opposed to
`explaining in great length who controlled the contents of the Petition, etc.) to the
`district court of the events leading up to the filing of the instant Petition. Toward
`that end, only lead counsel for CMI, Scott A. McKeown, signed the Petition (Pet.
`56) which “certifies that CMI is the real party-in-interest” (Pet. 1). Accordingly,
`the collective filing of a motion to stay in the district court does not prove control
`here by another co-defendant.
`SEL has not shown, for example, that co-defendants other than CMI, i.e.,
`CMO USA, Acer America, ViewSonic, VIZIO, and Westinghouse, necessarily co-
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`authored the Petition or otherwise exerted control over its contents, or will exert
`any control over the remaining portions of this proceeding. SEL has failed to
`provide persuasive evidence that the other co-defendants in the CMI Case provided
`funding for the instant Petition, let alone exercised control and funding. That the
`other co-defendants agreed to be bound by the decision of this inter partes review
`insofar as the co-pending litigation is concerned does not dictate that the other co-
`defendants are real parties-in-interest in this proceeding. Accordingly, SEL has not
`demonstrated that CMI has failed to list all the real parties-in-interest under 35
`U.S.C. § 312 (a)(2) and 37 C.F.R. § 42.8(b).
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`C. Claim Construction
`The Board interprets each claim in an inter partes review using the
`“broadest reasonable construction in light of the specification of the patent in
`which it appears.” 37 C.F.R. § 42.100(b). See also Patent Trial Practice Guide,
`77 Fed. Reg. at 48766 (Claim Construction). “Generally speaking, we indulge a
`‘heavy presumption’ that a claim term carries its ordinary and customary
`meaning.” See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002). Tempering the presumption, “claims ‘must be read in view of the
`specification, of which they are a part. . . .’ [T]he specification ‘is always highly
`relevant to the claim construction analysis. Usually, it is dispositive; it is the single
`best guide to the meaning of a disputed term.”’ See Phillips v. AWH Corp., 415
`F.3d 1303, 1317 (Fed. Circ. 2005) (en banc) (citations omitted).
`SEL maintains that in light of the `413 patent, the claim 1 phrase, “contact
`through an opening,” carries an ordinary meaning of contact “made possible by (or
`by virtue of) the opening” in insulation layer 113 as depicted in Figure 4A. (See
`Prelim. Resp. 39.) CMI does not explicitly propose a definition, but SEL
`maintains that CMI’s implicit definition improperly “mean[s] merely contact ‘at
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`least partly below’ an opening.” (See Prelim. Resp. 39.)
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`The term “through” has several ordinary definitions:
`1. In one side and out the opposite or another side of. 2. Among or
`between; in the midst of: a walk through the flowers. 3. By way of.
`4. By the means or agency of: “they preserved their individuality
`through men and not by opposition to them” (F. Scott Fitzgerald). 5.
`Here and there in; around: a tour through France. . . . 9. Because of .
`. . .
`The American Heritage Dictionary of the English Language, 1341 (1975).
`SEL’s proposed definition of “through” as meaning “made possible by (or
`by virtue of)” is consistent with at least the third, fourth and ninth definitions
`quoted supra. SEL’s proposed definition also is consistent with the `413 patent
`specification. For example, Figure 4A of the `413 patent (see supra) shows an
`opening or contact hole in the second insulating film 113 which facilitates
`electrical contact between the ITO metal film 114 and external connection line
`403. As described in the `413 patent, “[r]eferring to FIG. 4A, the external
`connection lines 403 are electrically connected to an FPC (flexible printed circuit)
`107 through contact holes provided in the resin inter-layer film 113 through an
`ITO (indium tin oxide) film 114.” (Ex. 1001, col. 8, ll. 53-55.)
`Alternatively, the ordinary meaning of “through” according to the
`definitions listed supra, tempered by the meaning thereof in light of the `413 patent
`specification and the claim phrase at issue, does not preclude the “electrical
`contact” from occurring “between” the vertical limits of the claimed opening or
`through-hole defined by the surrounding insulation film. (See supra, second and
`fifth definitions.) Figure 4A of the `413 patent shows that the electrical contact
`between ITO transparent conductive layer 114 and second wiring 403 occurs at the
`bottom boundary of the opening in the second insulating film 113, such that
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`“between” includes that bottom boundary of the opening in insulating film 113.
`Accordingly, “contact through an opening” means contact which occurs because
`of, or by virtue of, the opening, or which occurs between the vertical limits of the
`opening.
`The parties do not contend that any other claim terms or phrases should be
`given a meaning other than the ordinary and customary meaning that the terms or
`phrases would have to a person of ordinary skill in the art in light of the `413
`patent specification. See Ayst Technologies Inc. v. Emap, Inc., 268 F.3d 1364,
`1369 (Fed. Cir. 2001) (there is “no reason to depart from the position consistently
`taken on this issue by the parties”).
` D. Asserted Grounds of Unpatentability
`1. Sukegawa with Nakamoto
`CMI relies on the Hatalis Declaration, Shiba, Sukegawa, and Watanabe to
`set forth its obviousness challenge to the claims. In response, SEL focuses
`attention on representative claim 1 and three claim phrases recited therein: “a
`sealant over the first wiring and a second region of the second wiring,” “wherein
`the second wiring and the transparent conductive layer are in direct contact through
`an opening in the second insulating film,” and “wherein the sealant is in direct
`contact with the second insulating film.”
`As background, SEL illustrates disclosed first and second regions of the
`claimed second wiring by annotating Figure 4A in the `413 patent:
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`Annotated FFigure 4A supra dep
`f a er a secondd region of
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`icts a sealaant 105 ov
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`ctrical conntact therebbetween, annd a
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`second wiring 4033 and a firsst wiring 4001, the ele
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`flexiblee circuit board 107 coonnected too the indiumm tin oxidee (ITO) traansparent l
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`114. (SSee Prelim. Resp. 17.))
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`AAs indicated, represenntative claiim 1 requirres a sealannt. SEL coontends thaat
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`“no refeerence nummeral [in Suukegawa] iis identifieed as the seealant,” andd that “Dr..
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`Hatalis also does nnot identifyfy the sealaant in Sukeegawa.” (PPrelim. Ressp. 43, n. 113.)
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`While SSukegawa ddoes not diisclose a seealant refeerence nummber or deppict a sealaant,
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`Dr. Hatalis identiffies the seaalant by refference to
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`Sukegawaa’s “Fig. 3DD, col. 5, lll.
`30-34”
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`(Ex. 1005,, ¶ 99) whiich states thhat with reespect to Fiigure 3D, ““[a] liquid
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`crystal ppanel is coompleted byy injectingg and sealinng liquid ccrystal mat
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`erial in thee
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`gap” (EEx. 1003, cool. 5, ll. 322-34 (emphhasis addedd).) Dr. Haatalis also
`identifies
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`Nakamooto’s “sealant (SL) . . . over thee first wirinng and a seecond regioon of the
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`second wiring (DTTM). See NNakamotoo, Fig. 5.”
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`005, ¶ 1000.) In othe
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`words, SSukegawa and Nakammoto each disclose aa sealant.
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`ly becausee
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`RReference cclaim 1 difffers from SSukegawa’’s disclosuure primari
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`Sukegawwa does noot disclose “a sealantt over . . . aa second reegion of thhe second
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`wiring”” as claim 11 requires. CMI reliees on a commbination oof Sukegawwa and
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`Nakamooto for thatt deficienccy. (See Peet. 37-39.)
`on that
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`combination, CMII proposes
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`modifyingg Sukegawwa’s secondd wiring 7
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`extends under the sealant dissclosed in Sukegawaa. (See Pett. 38-39.)
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`SSukegawa’ss first wirinng 2 and seecond wiriing 7 contaact each othher outsidee of
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`the sealant in ordeer to make a secure, ccorrosion rresistant, loocal connection to a
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`(See Exx. 1003, Abbstract, Figgure 3E, cool. 7, ll. 53--57.)
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`a terminnal region of underlyying active matrix subbstrate 1, fofollows:
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`flexiblee wiring subbstrate 31; however, only first wwiring 2 exxtends undder the seallant.
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`Sukegawa’ss Figure 2CC, illustratiing the conntact schemme betweenn FPC 31 aand
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`FFigure 2C ddepicts a seecond wirinng 7 conneected to a ffirst wiringg 2 by fourr
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`throughh-holes in ffirst insulatting layer 33. As Figuure 2C deppicts, the seecond wirinng 7
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`does noot extend unnder a seallant (undeppicted). Thhe sealant wwould be llocated
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`concepttually on thhe far left-hhand side oof the subsstrate 1 oppposite the FFPC
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`connecttion on the right-handd side, as inndicated abbove and eexplained ffurther beloow.
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`(See Exx. 1003, Figg. 3D, col. 1, ll. 21-599; Ex. 100
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`single teerminal coonnection; hhowever, aas backgro
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`und, Sukeggawa desc
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`hundredds of terminals [whicch are simillar to that rrepresentedd in Figuree 2C] arrannged
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`in parallel with eaach other allong a periipheral porrtion 100 oof a substraate 1.” (Exx.
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`1003, cool. 4, ll. 3-4.)
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`so that iit also (i.e., like first wiring 2) eextends unnder the seaalant followws: “As
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`OOne of CMI’s stated rrationales ffor modifyying Sukeggawa’s secoond wiringg 7
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`illustrated by Sukegawa and Nakamoto, it was known in the art to provide
`connections between circuits inside and outside of a sealant by extending second
`wirings under the sealant and by using second wirings and first wirings.” (Pet. 39
`(citing Ex. 1005, Hatalis Decl. ¶¶ 98-101, 144).) Dr. Hatalis provides two other
`rationales: “Sukegawa explains that in a multilayer structure for providing an
`external connection, including a first and second wiring over a substrate provides
`lower resistance as well as a more secure connection.” (Ex. 1005, ¶ 99 (citing Ex.
`1003, col. 6, ll. 9-20).) Dr. Hatalis further explains that based on the teachings in
`Sukegawa and Nakamoto, placing the “sealant near close to the connection to the
`tape carrier package was known, and also that the placement of the sealant over
`first and second wirings that extend outside the sealant was known, [therefore,] it
`would have taken only ordinary skill to include a configuration having the sealant
`over the first and second wirings.” (Ex. 1005, ¶ 101).)
`SEL contends that Sukegawa’s connection scheme does not provide for
`reducing the resistance of the upper metal wiring layer. Rather, SEL contends that
`current flows downward in a vertical direction from the upper second wiring 7 to
`the lower first wiring 2. (See Prelim. Resp. 32-33.)
`SEL’s argument does not address one of CMI’s articulated reasons for the
`proposed modification, i.e., making a secure connection by using two wirings in
`parallel instead of one. With respect to the challenged reason based on the
`reduction in resistance, while SEL is correct that the multiple through holes 6
`connecting second wiring 7 to first wiring 2 establish a downward signal direction,
`the signals also necessarily must travel parallel from the FPC on the active matrix
`substrate along first wiring 2 to a display circuit gate terminal on the opposite side
`of the sealant. (See Ex. 1003, Fig. 2C; col. 4, ll. 18-21; col. 5, ll. 32-36.)
`In other words, while through-holes 6 constitute parallel connections
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`between the first and second wirings 2 and 7 which reduce the overall resistance
`relative to one through hole, the two parallel connected wirings 7 and 2 reduce the
`overall resistance relative to just one wiring and ultimately establish a parallel
`reduced resistance for the signal flow to the display circuit. Sukegawa specifically
`points out that the resistance of the upper wiring layer 7 is reduced by virtue of its
`connection to the lower layer 2. (See Ex. 1003, col. 7, ll. 15-21.) Therefore, as Dr.
`Hatalis reasons, skilled artisans would have recognized that extending first and
`second wirings such as 2 and 7 under the sealant would have created a more
`reliable connection and a reduced resistance as compared to extending just one
`wiring layer 2 to make the display circuit connection.
`Claim 1 does not specify how the first and second wiring layers extend
`under the sealant. Claim 1 is broad enough such that the first and second wirings
`extend under the sealant as side-by-side conductors on one layer or as stacked
`conductors with one above the other (see, e.g., Sukegawa Figure 3E). While the
``413 patent describes problems with wires extending under sealants (see Ex. 1001,
`col. 2, ll. 40-61; Figs. 14A, 14B (discussing Admitted Prior Art)), skilled artisans
`knew how to extend wirings under sealants to make electrical connections as Dr.
`Hatalis reasons and as the record supports.
`Accordingly, the record supports CMI’s stated rationale, including reduced
`resistance and a secure connection, for extending the parallel connection of
`Sukegawa’s second wiring 7 to create “a second region of the second wiring”
`under the sealant as claim 1 requires.
`While SEL explains persuasively that Nakamoto’s “TFT would not operate”
`(Prelim. Resp. 48) if Nakamoto’s GTM and DTM display wirings were connected
`directly together (see Prelim. Resp. 46-50), CMI’s proposed ground of
`unpatentability does not rely on such hypothetical connections. Rather, CMI relies
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`on direcct electricaal connectioons betweeen Sukegawwa’s first aand secondd wirings 22 and
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`7 as discussed suppra.
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`CClaims 1, 7, 17, and 222 and depeendent claiims 15 andd 29 also reecite “wheerein
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`the secoond wiring and the traansparent cconductivee layer are
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`an openning in the second inssulating filmm.” Indeppendent claaim 10 doees not recit
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`openingg for a simiilar connecction.
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`CMI’s showwing pertaiining to thaat limitatioon in claimm 1 followss:
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`(See Pett. 41-42.)
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`2C supra ffrom Sukeegawa and
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`AAccording tto the CMII’s annotatted Figure
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`correspoonding expplanation, CCMI reliess on the oppening in thhe insulatioon layer 9
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`demarcaated by thee depicted double-arrrow. In ressponse, SEEL argues tthat Sukeg
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`fails to show that contact bettween the second wirring 7 and
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`the transpparent layerr 8
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`is “throuugh” the ddepicted oppening in thhe second iinsulation
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`layer 9, beecause any
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`contact occurs bellow the opeening. (Seee Prelim. RResp. 52-553.) Accorrding to SEEL,
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`in Figurre 2C, conttact betweeen metal wwiring layerrs 7 and 8
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`or “undder” any oppening, as opposed too “by virtuue of” the oopenings, aand therefoore
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`does noot occur “thhrough” thee openings in the inssulation layyer 9. (Seee Prelim. RResp.
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`38-39.)
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`Inn other woords, SEL’ss argumentt relies on oone ordinaary definitiion of
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`3 patent ass discussedd supra in tthe claim cconstructioon
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`“througgh” in light
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`rding to annother defiinition whiich
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`413 patentt specificattion, the cllaim 1 phraase “contacct
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`throughh an openinng” includees contact bbetween thhe vertical
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`t. Transpaarent conduuctive layeer 8
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`SSukegawa’ss Figure 3BB shows suuch contac
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`and secoond wiringg 7 make contact betwween the vvertical limmits of the oopening in
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`second insulating film 9 as ddepicted beelow in thee annotatedd version oof the figurre:
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`TThe double-arrow linee (annotateed by the BBoard) reprresents appproximatelyy
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`where ccontact occcurs betweeen the secoond wiringg portion 7--2 and trannsparent
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`conducttive layer 88 “through” the opening in secoond insulatting film 9
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`as claim 11
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`requiress, where “tthrough” mmeans “betwween.”6 NNotwithstannding SEL
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`6 More accurately, the doublle-arrow linne should bbe slanted
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`the left to point too the lower vertical limmit of the
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`opening wwhere the seecond
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`insulatinng film 9 mmeets the trransparentt conductivve layer 8.
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`bottom of the openning in inssulation layyer 9 is chaaracterizedd more accuurately as
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`tilted (i..e., non-hoorizontal) pplane relative to the uupper planee of the un
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`7 and coonductive llayer 8 andd prove thee contact iss “through,,” (i.e., bettween the
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`limits of) the hole, as claim 1 requires.. The reasoon the botttom of the
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`is basedd on the absence of thhe underlyiing film 7
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`slightly doownward tto
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`definition of contact “through” an opening as meaning contact “by virtue of” an
`opening, the `413 patent is not limited to any preferred embodiment disclosed
`therein. For example, the last clause in claim 10 implies a broad disclosure for
`providing electrical contact, because it recites “wherein the second wiring and
`transparent conductive layer are in direct contact” without reciting any type of
`opening. Further, whi