`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` Entered: June 3, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00066(SCM)
`Patent 7,876,413 B2
` _______________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`DECISION
` Request for Rehearing
`
`37 C.F.R. § 42.71(d)
`
`
`
`Case IPR2013-00066
`Patent 7,876,413 B2
`
`
`I. BACKGROUND
`
`Patent Owner, Semiconductor Energy Laboratory Co., Ltd. (“SEL”), in its
`
`Rehearing Request, seeks reversal of the Board’s Decision (“Decision”) to institute
`
`an inter partes review of certain claims in the `413 patent. (See Rehearing Req. 6.)
`
`SEL directs arguments toward a claim phrase which appears in claims 1, 2, 4-7, 9,
`
`15, 17, 18, 20-22, and 29, “contact through an opening in the second insulating
`
`film.” (See Rehearing Req. 6.)1 SEL argues that the Decision unreasonably
`
`construes the phrase and that the claims define over Sukegawa. (See Rehearing
`
`Req. 1-15.)
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`
`§ 42.71(d), which provides in relevant part:
`
`
`
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the decision.
`The request must specifically identify all matters the party believes the
`Board misapprehended or overlooked, and the place where each matter
`was previously addressed in a motion, opposition, or a reply.
`
`
`For the reasons that follow, SEL fails to show that the Board
`
`misapprehended or overlooked any material matters warranting a reversal of the
`
`Decision. Accordingly, the Board denies the requested relief.
`
`
`
`
`
` II. DISCUSSION
`
`SEL’s contention that the Board overlooked or misapprehended the meaning
`
`of “contact through an opening” is not persuasive. The Board construed the phrase
`
`to include SEL’s definition; i.e., the contact occurs “through” or “because of” the
`
`
`1 The Board instituted review of claims 1, 2, 4-7, 9-11, 13-18, 20- 22, 24, 25, and
`27-29. (Dec. 2.)
`
`
`
`2
`
`
`
`Case IPR2013-00066
`Patent 7,876,413 B2
`
`opening. The Board also construed the phrase to include another ordinary
`
`definition supported by the `413 patent; i.e., the location of the contact occurs
`
`“through” or “between the vertical limits of the opening.” (See Dec. 11-12.)
`
`SEL urges that the Board’s claim construction misinterprets the meaning of
`
`“through” because “the Board used a general purpose dictionary that is completely
`
`unrelated to semiconductor technology.” (See Rehearing Req. 5.) SEL also
`
`contends that the `413 patent Specification does not support the Board’s claim
`
`construction and only supports SEL’s claim construction. (See Rehearing Req. 8-
`
`10.)
`
`The Decision addresses SEL’s contention that “through” only means
`
`“because of” or “by virtue of.” (See Rehearing Req. 10; Dec. 10-12; 17-20.) SEL
`
`now contends that “[w]hen the Board consulted a general purpose dictionary for
`
`definitions of ‘through,’ it found some definitions beyond the context of the ‘413
`
`patent specification.” (Rehearing Req. 9.) SEL includes the following dictionary
`
`definitions cited by the Board as “beyond the [proper] context”: defining “through”
`
`to mean “[a]mong or between; in the midst of: a walk through the flowers” or
`
`“[h]ere and there in; around: a tour through France.” (See Dec. 11 (dictionary
`
`citation omitted); Rehearing Req. 5, 9-10.)
`
`Contrary to SEL’s argument, the `413 patent employs the word “through” in
`
`different contexts. For example, the`413 patent notes that “a spacer . . . penetrates
`
`through the resin.” (Ex. 1001, col. 13, ll. 43-44.) In other words, contrary to
`
`SEL’s arguments, the word “through” as employed in the `413 patent does not
`
`always take on its alternative ordinary meanings of “because of” or “by virtue of.”
`
`Rather, the word implies that “through an opening” can mean “between the vertical
`
`limits of the opening” as the Decision reasons and as discussed further below. (See
`
`Rehearing Req. 11; Dec. 12, 18.)
`
`
`
`3
`
`
`
`Case IPR2013-00066
`Patent 7,876,413 B2
`
`
`While SEL contends that it is not clear how the Board’s definition of
`
`“through” is “relevant” to the phrase at issue, SEL virtually acknowledges that the
`
`Board provides the relevance in SEL’s statement that “Figure 4A of the `413 patent
`
`shows that the [electrical] contact occurs at the bottom of the opening in resin
`
`inter-layer film 113, as the Board notes.” (Rehearing Req. 10.) While SEL also
`
`contends that the depicted contact satisfies its proposed definition that the contact
`
`occurs “because of” the opening, the depicted contact location is also consistent
`
`with the Board’s definition which also specifies a contact location. In other words,
`
`Figure 4A shows contact “between the vertical limits of the opening.” The Figure
`
`4A depiction and the Board’s definition coalesce with one of the Board’s cited
`
`dictionary definitions of “through” as meaning, for example, “among or between”
`
`as discussed supra.
`
`Moreover, the `413 patent states that electrical lines are “connected in
`
`parallel by forming contact holes in the first inter-layer film.” (Ex. 1001, col. 8, ll.
`
`48-49.) That disclosure implies that the claims at issue are broader than any single
`
`embodiment described therein. If the disclosed contact occurs “because of” the
`
`opening, it does so because a connection occurs “by [first] forming” the opening.
`
`In other words, the thrust of SEL’s arguments is that an implied order of making
`
`the opening exists in which an electrical contact is formed after forming the
`
`opening: “To make that contact happen, an opening had to be provided before
`
`depositing the ITO 114.” (Rehearing Req. 11.) However, contrary to SEL’s
`
`thrust, the device claims at issue here do not require the specific order of making as
`
`argued, even if the `413 patent happens to disclose such an order. Therefore, for
`
`this additional reason, SEL does not show that the Decision misapprehends the
`
`meaning of the claim phrase, “contact through an opening.”
`
`
`
`4
`
`
`
`Case IPR2013-00066
`Patent 7,876,413 B2
`
`
`Moreover, even under SEL’s definition of “contact through an opening,”
`
`SEL does not show that the Board misapprehended that Sukegawa renders obvious
`
`the disputed phrase in the claims at issue. (See Rehearing Req. 14-15; Dec. 19-20.)
`
`As the Decision explains under an alternative which employs SEL’s definition,
`
`Sukegawa suggests making a subsequent through-hole reconnection in a repairing
`
`operation “to replace the peeled-off wiring 7 and film 8.” (Dec. 20.) In response,
`
`SEL contends that it would have been “technically impossible” to place a
`
`completed LCD panel into a “deposition or etching apparatus” to replace that
`
`wiring and film. (See Rehearing Req. 15.)
`
`However, at this preliminary stage, the record does not support SEL’s
`
`characterization of a deposition or etching apparatus. Sukegawa reasonably
`
`suggests that applying new contact materials in through-holes would have been
`
`obvious to replace the missing contact materials, as the Decision explains. (See
`
`Dec. 19-20.) SEL also does not contend that forming metal contact layers other
`
`than by “deposition or etching” would have been impossible or unobvious.
`
`Accordingly, SEL does not show that the Decision misapprehends the claim
`
`phrase “contact through an opening,” or overlooks a material point related to the
`
`obviousness of providing such contact through an opening as set forth in the claims
`
`at issue here.
`
`III. CONCLUSION
`
`Based on the foregoing discussion, SEL’s Rehearing Request is granted to
`
`the extent that the Board has reconsidered its Decision, but SEL’s requested relief
`
`for a reversal of the Decision is denied because SEL has not shown that the
`
`Decision overlooks or misapprehends a material point.
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2013-00066
`Patent 7,876,413 B2
`
`
`
`For Petitioner:
`
`Scott A. McKeown
`Gregory S. Cordrey
`OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
`cpdocketmckeown@oblon.com
`gcordrey@jmbm.com
`
`For Patent Owner:
`
`Mark Murphy
`Edward Manzo
`Husch Blackwell
`mark.murphy@huschblackwell.com
`
`Stanley A. Schlitter
`Douglas R. Peterson
`Steptoe & Johnson, LLP
`sschlitt@steptoe.com
`dpeterson@steptoe.com
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
