UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO, LTD.
`Patent Owner
`
`
`
`CASE IPR2013-00066
`
`PATENT 7,876,413
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO, LTD.
`Patent Owner
`
`
`
`CASE IPR2013-00066
`
`PATENT 7,876,413
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`Patent Owner Semiconductor Energy Laboratory Co, Ltd.
`
`(“Patent
`
`Owner”) believes that the original claims of US. Patent No. 7,876,413 (“the 1413
`
`patent”) remain valid for the reasons set forth in the Patent Owner’s Response.
`
`Should the Board instead conclude that original claim 1 is unpatentable, the Patent
`
`Owner respectfully moves to cancel original claim 1 and substitute claim 30 in its
`
`place. Pursuant to 37 CFR § 42.121, a listing of the preposed substitute claim is
`
`provided below.
`
`I. CLAIM LISTING
`
`Claim 1 is replaced by proposed substitute claim 30.
`
`(Replaced by proposed substitute)
`
`30.
`
`(Proposed substitute for original claim 1)
`
`A liquid crystal display device comprising:
`
`a first wiring over a substrate;
`
`a first insulating film over the first wiring:
`
`a second wiring over the substrate and the first insulating film;
`
`a second insulating film over the second wiring;
`
`a transparent conductive layer over a first region of the second wiring and
`
`the second insulating film;
`
`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 second wiring,
`
`wherein the sealant is in direct contact with the second insulating film;
`
`wherein the second wiring overlaps at least part of the first wiring;
`
`wherein the first wiring and the second wiring are in electrical contact
`
`through an opening in the first insulating film;
`
`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 are in direct
`
`contact through an opening in the second insulating filmgfld
`
`wherein the sealant does not overlap the transparent conductive layer.
`
`11. THE PROPOSED AMENDMENTS ARE SUPPORTED IN THE
`
`ORIGINAL DISCLOSURE
`
`Proposed substitute claim 30 is identical to original independent claim 1,
`
`except that the proposed substitute claim further clarifies the order of the disclosed
`
`layers and that the sealant does not overlap the transparent conductive layer.
`
`These features are supported throughout the “413 patent specification and
`
`drawings. Because there was no change to the original disclosure when the ”413
`
`patent issued, cites are provided to the ’413 patent, and not the original disclosure
`
`of the application. More specifically, for example, FIG. 4A in the ‘413 patent
`
`shows a transparent conductive layer (ITO) (114) over a first region of the second
`
`
`
`wiring (external connection line) (403) and the second insulating film (resin inter-
`
`laye‘r film) (113); and that the sealant (105) does not overlap the transparent
`
`conductive layer (114). See annotated copy of FIG. 4A below (illustrating claimed
`
`first and second regions); see also id, at col. 8, 11. 5260.
`
`105 SEALENT
`
`7///
`
`113 RESIN INTER-LAYER FILM
`
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`111 UNDERLYING
`
`
`“second
`
`
`FILM
`
`
` 403
`X 101 SUBSTRATE
`region”
`401 AUXILIARY LINES
`
`
`
`EXTERNAL CONNECTION LINES
`
`The amended feature reciting a transparent conductive layer over a first
`
`region of the second wiring and the second insulating film is significant and useful
`
`with regard to the ‘413 invention as this amended feature confirms the order of the
`
`layers in the claimed display device. One skilled in the art would understand the
`
`order of these three layers from the other features recited in the original claim 1.
`
`Ex. 2012, Escuti Decl., at W 70-77. More Specifically, original claim element 1.5
`
`requires that the second insulating film must be over the second wiring which
`
`means that “the second wiring has to exist before the second insulating film comes
`
`over it.” Ex. 2011, Hatalis Dep., at p. 48, 11. 12-19. Original claim element 1.6
`
`specifies that the transparent conductive layer is over (a first region of) the second
`
`
`
`wiring which means that “the second wiring comes before the transparent
`
`conductive layer.” Id, at p. 50, 11. 13-15. Therefore, these two claim elements
`
`clearly tell one skilled in the art
`
`that both the second insulating film and
`
`transparent conductive layer must be above the second wiring, thus, the second
`
`wiring must be the bottommost of these three layers.
`
`The order of these three layers is further understood from the language of
`
`original claim element 1.13, which requires that the second wiring must directly
`
`contact
`
`the transparent conductive layer
`
`through an opening in the second
`
`insulating film. One skilled in the art would understand from this language that the
`
`second insulating film must be the middle one of the three layers and that an
`
`opening in the second insulating film permits the contact to occur. With the
`
`second insulating film as the middle layer, the top layer must be the transparent
`
`conductive layer since the second wiring cannot be the top layer, as explained
`
`above. Therefore, the transparent conductive layer must be the uppermost layer of
`
`the three, with the second insulating film beneath it, and the second wiring beneath
`
`the second insulating film. Ex. 2012, Escuti Decl., at 111] 74-77.
`
`The proposed amendment confirms this positional relationship of these three
`
`layers in FIG. 4A of the ‘413 patent by reciting a transparent conductive layer
`
`(114) over a first region of the second wiring (403) and the second insulating film
`
`
`
`(113). As a result of this structure, a connection with high reliability can be
`
`achieved because the transparent conductive layer
`
`is formed on the second
`
`insulating film, and therefore, the entire region at the terminal portion where the
`
`transparent conductive layer is formed can be used as the connection area with the
`
`PFC. This is shown, for example,
`
`in FIG. 4A in the ’413 patent wherein the
`
`second insulating film (1.13) is formed under part of the transparent conductive
`
`layer (114), and there is no layer that blocks the transparent conductive layer (114)
`
`from connecting with FPC (107). As a result, the connection reliability between
`
`the transparent conductive layer and the PFC is increased. Ex. 20.12, Escuti Decl.,
`
`1111 40, 137.
`
`In addition, because no other layer will be formed over the
`
`transparent cenductive layer, the transparent conductive layer will not be damaged
`
`(ag, the properties of the layer changed or the layer thinned by overetching an
`
`overlying layer) due to the deposition or etching process of any layer located above
`
`the transparent conductive layer. Id, at 1111 41, 138.
`
`The proposed amended feature reciting that the Sealant (105) does not
`
`overlap the transparent conductive layer (114) is a significant and useful feature of
`
`the ‘413 invention because it confirms the positional relationship between the
`
`sealant and the transparent conductive layer in the claimed display device. One
`
`skilled in the art would understand the positional relationship between the sealant
`
`
`
`and the transparent conductive layer from the other features recited in the original
`
`claims. More specifically, original claim element 1.6 requires that the transparent
`
`conductive layer is over a first region of the second wiring. Original claim element
`
`1.8 requires that the sealant is over a second region of the second wiring. Original
`
`claim element 1.9 requires that the sealant is in direct contact with the second
`
`insulating film. Therefore, these three claim elements clearly tell one skilled in the
`
`art that the sealant does not overlap the transparent conductive layer. 101., at W 48,
`
`50.
`
`The preposed amendment confirms this positional relationship shown in
`
`FIG. 4A of the ‘413 patent wherein the sealant (105) does not overlap the
`
`transparent conductive layer (114). This structure is advantageous to improve the
`
`reliability of an electronic apparatus by providing for the sealant (105) to have
`
`favorable adhesion to the second insulating film.
`
`fat, at 1111 39, 46-51. This is
`
`accomplished in the present invention by having the sealant (105) and transparent
`
`conductive layer (114) not overlap each other and by having the sealant (105) in
`
`direct contact with the second insulating film (113). See FIG. 4A. Generally, a
`
`sealant has poor adhesion to a transparent conductive layer made of ITO. Id., at 1111
`
`39, 51,172,173.
`
`
`
`III. THE PROPOSED AMENDMENTS OBVIATE A GROUND OF
`
`UNPATENTABILITY
`
`Sukegawa and Nakamoto
`
`US. Patent No. 5,636,329 to Sukegawa (“Sukegawa”; Ex. 1003) and JP
`
`HOS-160446 to Nakamoto (“Nakamoto”; Ex. 1004) do not disclose the claimed
`
`sequence of layers of proposed substitute claim 30. As explained above, proposed
`
`substitute claim 30 requires a second wiring, a second insulating film over the
`
`second wiring, and a transparent conductive layer over the second insulating film
`
`(see e.g., FIG. 4A of the ’413 patent). Dr. Hatalis admits in his deposition that
`
`the ’413 patent discloses this positional relationship of these three layers. Ex.
`
`2011, atp. 76,11. 13-20.
`
`Sukegawa, however, only discloses a metal wiring 7 (the alleged “second
`
`wiring”), a transparent conductive film 8 on top of the wiring 7, and a protective
`
`insulating film 9 (the alleged “second insulating film”) over the transparent
`
`conductive film 8. See 8.3., Ex. 1003, at Fig. 2C. Therefore,
`
`in contrast to
`
`proposed substitute claim 30, Sukegawa reverses the order of the transparent
`
`conductive layer and second insulating film. Sultegawa discloses that the metal
`
`wiring 7 is protected by double coverage with the transparent conductive film 8
`
`and the protective insulation film 9 or the anisotropic conductive film 10, because
`
`the protective fimction of the transparent conductive film 8 to the metal wiring 7 is
`
`
`
`not very effective. Sukegawa also suggests that the transparent conductive film 8
`
`cannot be made thick in order to ensure transparency, thus, pin-holes are easily
`
`formed in the film. These pin-holes will allow corrosion to occur on the metal
`
`wiring 7, which is under the transparent conductive film 8. EX. 1003, at col. 1, 11.
`
`39-49.
`
`In order to resolve this defect, Sukegawa teaches forming the protective
`
`insulation film 9 or the anisotropic conductive film 10 over the transparent
`
`conductive film 8. Ex. 1003, at col. 3, 11. 37-53 and col. 6, 11. 9-20. Ex. 2023, at p.
`
`104, 1. l4 — p. 105, l. 2. With this double coverage structure, the metal layer 7 will
`
`not be exposed to the external air and will be protected against corrosion, even
`
`when the pin-holes are formed in the transparent conductive film 8. Ex. 1003, at
`
`col. 6, 11. 22-26. That is, in Sukegawa, the transparent conductive film 8 must be
`
`formed under the protective insulation film 9. Therefore, there would not have
`
`been any motivation to modify the structure of Sukegawa to the claimed sequence
`
`of layers of proposed substitute claim 30. Ex. 2012, Escuti Decl., at 11'” 86, 87, 141.
`
`In addition, Dr.
`
`I-Iatalis admitted that
`
`it would be understood from the
`
`proposed amended claim language that the contact between the second wiring and
`
`the transparent conductive layer is because of the opening in the second insulating
`
`film. Ex. 2011, at p. 76, 11. 13-22.
`
`In contrast, Sukegawa clearly shows that any
`
`contact between alleged second wiring 7 and transparent conductive layer 8 occurs
`
`
`
`below the opening in alleged second insulating film 9, and not because of the
`
`opening in the second insulating film 9. Ex. 2012, Escuti Decl., at 1111 145, 146,
`
`152.
`
`Therefore, Sukegawa does not disclose the claimed features of “a transparent
`
`conductive layer over a first region of the second wiring and the second insulating
`
`filing” and “wherein the second wiring and the transparent conductive layer are in
`
`direct contact through an opening in the second insulating film” of proposed
`
`substitute claim 30. This is significant because without these features, Sukegawa
`
`cannot achieve one of the advantageous effects of the “413 patent, namely, making
`
`a more reliable connection. This is because the second insulating film 9 in
`
`Sukegawa is formed on the transparent conductive layer 8, and, therefore, the
`
`entire region of the terminal portion where the transparent conductive layer is
`
`formed cannot be used as the connection area with the PFC which degrades the
`
`reliability of the device. Sea, raga, Ex. 1003, at FIGS. 1A and 2C.
`
`Ex. 2012,
`
`Escuti Decl., at W 40, 137.
`
`In addition, in the ‘413 patent, because no other layer will be formed over
`
`the transparent conductive layer,
`
`the transparent conductive layer will not be
`
`damaged (e.g.,
`
`the properties of the layer changed or the layer thinned by
`
`overetching an overlying layer) due to the deposition or etching process of any
`
`
`
`layer located above the transparent conductive layer. This advantageous effect
`
`also cannot be achieved with the structure in Sukegawa. 1d, at 11 41, 138.
`
`Further, it is undisputed that N'akamoto also does not disclose these claimed
`
`features. Nakamoto only discloses that a terminal portion consists of silicon oxide
`
`SIC) formed on the substrate SUB 1, conductive film g1 formed on the $10, 1T0 d1
`
`formed on the conductive film g1, and protective film PSVI formed over the ITO
`
`d1. See e.g. Ex. 1004, at Fig. 9. This is significant because the structure disclosed
`
`in Nakamoto also cannot achieve the advantages of a more reliable connection
`
`between the transparent conductive layer and the PFC, and not damaging the
`
`transparent conductive film due to the deposition or etching process of any
`
`overlying layer. Ex. 2012, Escuti Decl., at 1111 40, 41, 94, 95, 123.
`
`In addition, Sukegawa and Nakamoto do not disclose the claimed feature
`
`that “the sealant does not overlap the transparent conductive layer,” as recited in
`
`proposed substitute claim 30. As discussed above, Sukegawa and Nakamoto do
`
`not disclose the claimed “transparent conductive layer” which must be over the
`
`second insulating film, and, there would not have been any motivation to modify
`
`the structure of Sukegawa. Moreover,
`
`in Sukegawa, even if the transparent
`
`conductive film 8 could be formed over the protective insulation film 9 (for which
`
`there is no suggestion), Sukegawa does not suggest that the tranSparent conductive
`
`
`
`film 8 is patterned before it reaches the sealant nor does it teach the position
`
`relationship between the sealant and the transparent conductive film 8. Rather,
`
`Sukegawa discloses that metal Wiring 7 is covered by transparent conductive film 8
`
`and protective insulation film 9 in order to protect metal wiring 7 from corrosion
`
`(Ex. 1003, at col. 6, 11. 9-20).
`
`In light of this object of Sultegawa, if the metal
`
`wiring 7 is extended under the sealant to the display portion,
`
`the transparent
`
`conductive film 8 is also continuously extended together with the metal wiring 7.
`
`In that case, the sealant would directly overlie the transparent conductive film 8.
`
`This would not achieve one of the advantageous effects of the ‘413 patent, namely,
`
`creating good adhesion for the sealant by placing it on an insulating film, rather
`
`than on a transparent conductive film.
`
`Ex. 2012, Escuti Decl, at
`
`11 174.
`
`Accordingly Sukegawa and Nakamoto cannot achieve the advantage of favorable
`
`adhesion between the sealant and the second insulating film. 1d, at 0 175.
`
`Therefore, Sukegawa and Naltamoto fail
`
`to disclose and teach each and
`
`every limitation of proposed substitute claim 30 of the ’41 3 patent.
`
`
`Shiba
`
`U. S. Patent No. 5,684,555 (“Shiba”; Ex. 2022)' also does not disclose these
`
`amended features of proposed substitute claim 30. Specifically, Shiba does not
`
`‘ Shiba is cited in IPR2013-OOO68.
`
`
`
`disclose the claimed sequence of layers of proposed substitute claim 30 as Shiba
`
`does not disclose the transparent conductive layer must be formed above the
`
`second insulating film. Shiba only discloses the common pad 751 which is formed
`
`in the same step of forming the data lines Xi or the scanning lines Yi. See, rag,
`
`Shiba, at FIG. 4, col. 6,
`
`ll. 25-36. Thus, Shiba does not disclose forming a
`
`transparent conductive layer at the terminal portion. Ex. 2012, Escuti Dec1., at 1]
`
`176.
`
`Further, if a transparent conductive layer were to be added at the terminal
`
`portion in Shiba, without additional steps, it would be under, not over, the common
`
`pad 751 since the pixel electrode 251 is formed under the source electrode 231.
`
`See Shiba, at FIG. 4. Thus, Shiba would require additional steps or changes in the
`
`manufacturing process in order for the transparent conductive layer to be formed as
`
`the top layer. Since adding or changing process steps is to be avoided, one skilled
`
`in the art would not have adopted such a modification in Shiba. Therefore, in
`
`contrast
`
`to proposed substitute claim 30, Shiba does not
`
`teach the claimed
`
`sequence of the transparent conductive layer and the second insulating film. 161., at
`
`111] 177-182.
`
`This
`
`is
`
`significant because Shiba cannot
`
`then achieve the
`
`advantageous effects of the ’413 patent, namely, making a more reliable
`
`connection between the transparent conductive layer and the PFC, and not
`
`
`
`damaging the transparent conductive layer due to the deposition or etching process
`
`of any overlying layer. Id., at fil 182.
`
`Furthermore, the transparent conductive layer of the ’413 claims would not
`
`have been obvious in view of Shiba in combination with Sulcegavva because the
`
`substitute claim clarifies that the transparent conductive layer will be the top layer.
`
`As explained supra, Sukegawa’s transparent conductive film 8 must be formed
`
`under the protective insulation film 9 to protect against corrosion (oxidation) on
`
`the upper layer metal wiring 7.
`
`In light of this object of Sultegawa, if the
`
`transparent conductive layer is formed in the terminal portion of Shiba,
`
`the
`
`transparent conductive layer would need to be provided under the protective
`
`overcoat 241, not over the protective overcoat 241. Accordingly, one skilled in the
`
`art, trying to provide the [TO on the common pad 751 of Shiba in view of the
`
`teaching of Sukegawa, would form the ITO over the common pad 751 and under
`
`protective overcoat 241. Therefore, even if Shiba and Sukegawa were combined,
`
`the resulting structure would not have the ITO over the protective overcoat 241.
`
`This structure is different from FIG. 4A of the ’413 patent and from the structure
`
`recited in proposed substitute claim 30, which have the ITO as the top layer (i.e.,
`
`the [TO 114 is formed over the resin inter-layer film 113). 1d,, at 1] 183.
`
`
`
`In addition, Shiba does not disclose the claimed feature that the sealant does
`
`not overlap the transparent conductive layer, as recited in proposed substitute claim
`
`30. First, as discussed above, the claimed transparent conductive layer formed
`
`over the second insulating film is not disclosed in Shiba. Furthermore, Shiba in
`
`combination with Sultegawa also does not disclose this claimed feature for the
`
`reasons described supra. This is significant because Shiba then cannot achieve the
`
`favorable adhesion between the sealant and second insulting film, which is one of
`
`the advantageous effects of the “413 patent. Id, at 11 184.
`
`Therefore, Shiba also fails to disclose and teach each and every limitation of
`
`proposed substitute claim 30 of the ’413 patent. Id, at 1i 185.
`
`IV. REQUEST FOR EXPRESS FINDING REGARDING SCOPE OF
`AMENDED CLAIMS
`
`It
`
`is respeetfiilly submitted that the scope of the substitute claim 30,
`
`is
`
`substantially identical to that of the original claim 1
`
`(disclosing the layering
`
`structure discussed above) as this claim would be interpreted by a district court.
`
`A district court would have construed original claim 1
`
`in accordance with
`
`how one skilled in the art would have understood the layering structure given the
`
`plain and ordinary meaning of the claim in light of the specification. Phillips v.
`
`AWH Corp, 415 F.3d 1303, l3l2~13 (Fed. Cir. 2005); see Ex. 2012, Escuti Decl.,
`
`at W 34, 70-77.
`
`In view of their substantially identical scope, the Patent Owner
`
`
`
`respectfully requests a finding by the Board that the scepe of proposed substitute
`
`claim 30 is substantially identical within the meaning of 35 U.S.C. § 252 with that
`
`of original claim 1. See 77 Fed. Reg. 157 at 48766 (“Claim Construction”).
`
`CONCLUSION
`
`Pursuant to 37 CFR 42.121, this Motion to Amend presents one proposed
`
`substitute claim which is supported in the original disclosure of the "413 patent.
`
`Furthermore, the proposed substitute claim obviates all grounds of unpatentability
`
`set forth in the Decision to Institute. Also, the proposed substitute claim is
`
`patentable over the closest prior art known to the Patent Owner, which are the
`
`Sukegawa and Shiba references cited in the Petitions for IPR2013—00066 and
`
`IPR2013-00068.
`
`In addition,
`
`the proposed substitute claim is patentable over
`
`Nakamoto, which is also cited in the Petition for IPR2013~00066 Accordingly,
`
`contingent upon any determination by the Board that original claim 1
`
`is
`
`unpatentable, Patent Owner respectfully requests that the prOposed amendment be
`
`entered substituting claim 30 for original claim 1.
`
`Res e tf l
`/ .
`
`submi ted,
`
` Dated:
`
`Edward D Manzo, Reg. 28,139
`
`I—IUSCH BLACKWELL LLP
`
`120 So. Riverside Plaza, #2200
`Chicago, IL 60606
`312-655-1500
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing PATENT OWNER’S MOTION TO AMEND
`
`was served on the Petitioner by electronic mail on July 24, 2013.
`
`Scott A. McKeown
`
`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, VA 22314
`
`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
`
`Stanley Gibson
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
`
`%~.
`
`
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