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 IPR 2013-00066
`
`PATENT 7,876,413
`
`PATENT OWNER RESPONSE TO PETITION
`
`UNDER 37 C.F.R. § 42.120
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`The Invention of the ’413 Patent......... .................................................... ..1
`
`1. Achieving Low Electrical Resistance ......................................................... .. 2
`
`2. Achieving Improved Adhesion Of The Sealant ......................................... .. 2
`
`3. Achieving a Reliable Connection With The FPC ...................................... .. 4
`
`II.
`
`Independent Claims of the ‘'41:’: Patent .................................................. .. 5
`
`III. New Evidence On How Ordinarily Skilled Artisans Understand the
`
`Claim Language ..................... n3kn ....nXIn ..................................................... ..7
`
`A.
`
`B.
`
`C.
`
`To Persons Skilled in the Art, “contact through an opening” Has But
`One Meaning. ...... `{n ................................................................................... ..8
`
`The Board’s Construction of “Contact Through an Opening” as
`Meaning “Contact ...Which Occurs Between the Vertical Limits of the
`Opening” ls Improper ....................... ibn ................................................... 9
`
`The Second Meaning Adopted by the Board Lacks Evidentiary
`............................. Vn .... .. 10
`Support ...................................................
`
`1).
`
`Persons of Ordinary Skill in the Art Would Not Understand “Contact
`
`Through an Opening” to Mean “Contact Within the Vertical Limits of
`
`the Opening.” ............ Xn .................................................... 7n ...................... 12
`
`IV.
`
`The Background Of The Prior Art...... ..............................`<n ................ 16
`
`A.
`
`Sukegawa ................................................... ........ ............................ ... ....... .. 17
`
`B. Nakamoto .........................................................................................;/n ..... ..21
`
`V.
`
`The ’413 Patent Is Patentable Over The Prior Art ............................. ..22
`
`A.
`
`Sukegawa and Nakamoto Do Not Render Obvious the Claimed
`
`Location of the Sealant Relative to the Second Wiring, the Second
`
`Insulating Film and the Transparent Conductive Layer ..................... 23
`
`

`
`B.
`
`C.
`
`A Transparent Conductive Layer Over a First Region of the Second
`Wiring and Sealant Over a Second Region of the Second Wiring and
`In Direct Contact With the Second Insulating Film Is Not Obvious... 26
`
`Sukegawa and Nakamoto Fail to Dislcose a “First Wiring” and
`Overlying “Second Wiring” That Extend to the Claimed “Second
`
`Region” ............................................ ... .......................................................31
`
`1. Sukegawa Does Not Teach the Claimed Structure .................................. .. 31
`
`2. Nakamoto Does Not Teach the Claimed Structure .................................. .. 33
`
`3. The Claimed Structure is Not Obvious In View Of Sukegawa in
`Combination With Nakamoto ......................................................................... .. 35
`
`D.
`
`Sukegawa and Nakamoto Fail to Disclose The Claimed Second Wiring
`Making Direct Contact With the Transparent Conductive Layer
`Through an Opening in the Second Insulating Film ........................... ..-44
`
`Sukegawa Does Not Disclose the Limitation “Contact Through An
`l
`Opening” In Claim Element 1.13 et al ............................................................ ..-44
`
`2. Even Under the Board’s Construction, Sukegawa is Deficient ............... .. 47
`
`3. Sukegawa FIG. 3B/3E Are Similarly Deficient ....................................... .. 49
`
`4. The High Reliability Advantage ............................................................... .. 50
`
`5. The Protected Transparent Conductive Filrn Advantage ......................... .. 51
`
`6. Sukegawa Does Not Achieve These Advantages ................................... .. 52
`
`7. Sultegawa Combined With Naltamoto Do Not Meet the Limitation
`
`“Contact Through An Opening” In Claim Element 1.13 et al ........................ .. 54
`
`E.
`
`Reconnecting After “Peel-Off” Does Not Suggest the Claimed Element
`
`.... ............................. ...... ............................ .... ....................... 0nn ................ ..54
`
`VI.
`
`Conclusion ....................nn .............................. PMn ....................................... .. 59
`
`

`
`Previously Filed
`
`EXHIBIT LIST
`
`Exhibit 2001 — Complaint, Semiconductor Energy Laboratory Co., Ltd v.
`Chimei Irmolux: Corp., et aI., 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.
`Irmolux Corp., et al.
`
`v. Chimei
`
`Exhibit 2003 — Supplemental Declaration of Gregory S. Cordrey in Support of
`Defendants‘ Motion for Stay, Semiconductor Energy Laboratory Co., Ltd. v.
`Chimet Irmolux C'orp., et al.
`
`Exhibit 2004 - Defendants’ Reply in Support of their Motion to Stay,
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Irmolux Corp, et al.
`
`Joinder,
`of
`Digita1‘s Notice
`Exhibit 2005 — Defendant Westinghouse
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Irmolux 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
`
`Currently Filed
`
`Exhibit 2008 — Display search Laboratory website material
`
`Exhibit 2009 — Sukegawa FIG. 1B marked by Dr. Hatalis at deposition to show
`vertical and horizontal limits of the opening in insulation film 9
`
`Exhibit 2010 — Sukegawa FIG. 2C marked by Dr. Hatalis at deposition to show
`hypothetical placement of a sealant
`
`iii
`
`

`
`Exhibit 201 1 — Dr. Hatalis deposition transcript, July 1, 2013
`
`Exhibit 2012 — Declaration of Michael Escuti, PhD
`
`Exhibit 2013 — materials iirom LG website <TFT process-">
`
`Exhibit 2014 — materials from CPT website <ITFT process‘?
`
`Exhibit 2015 ~ materials from ShinMaywa Website <evaporator>
`
`Exhibit 2016 — materials from Pascal website <1aser deposition>
`Exhibit 2017 — materials from MicroTec website -=2screen.printing‘:>
`
`Exhibit 2018 — materials from ULVAC website <laser ablation?-
`
`Exhibit 2019 - materials from MicroFab website <ion beam etch technology}
`
`Exhibit 2020 — materials from SIJ website <inl<jel;“-*
`
`Exhibit 2021 — Hen1ey_S]D DIGEST OF TECHNICAL PAPERS 1994
`
`Exhibit 2022 ~ Shiba, US Patent No. 5,684,555, IPR20l3-00068, Ex. 1003.
`
`Exhibit 2023 —— Dr. Hatalis deposition transcript, July 2, 2013, for No. IPR2013-
`00068
`
`Exhibit 2014 — Watanabe US Patent No. 5,504,601
`
`iv
`
`

`
`Introduction
`
`This is the 37 CFR § 42.120 response by Semiconductor Energy Laboratory
`
`Co., Ltd. (“Patent Owner”) to the petition filed November 30, 2012. In its decision
`
`(Paper No. 10, April 24, 2013; “Decision” or “Dec.”), the Board instituted inter
`
`partes review (“IPR”) of claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of
`
`U.S. Patent No. 7,876,413 (“the ’4I3 patent”) (Ex. 1001) based on alleged
`
`obviousness over the combination of U.S. Patent No. 5,63 6,329 (“Sukegawa”) (Ex.
`
`1003) and JP Publication No. H08-160446 (“Nakamoto”) (Ex. 1004).
`
`Petitioner’s burden is to demonstrate unpatentability by a preponderance of
`
`the evidence. 35 U.S.C. § 316(e). The Petitioner fails to meet its burden. '
`
`I.
`
`THE INVENTION OF THE ’413 PATENT
`
`The ’413 patent relates to a display device such as a liquid crystal display
`
`1 The Patent Owner respectfially submits that the Board lacks statutory authority to
`
`consider the Petition because Petitioner failed to identify all real parties~in-interest
`
`according to 35 U.S.C. § 312(a)(2). Notably, Chi Mei Optoelectronics USA, Inc.,
`
`Acer America Corporation, Viewsonic Corporation, VIZIO Inc.,
`
`and
`
`Westinghouse Digital, LLC are real parties-in-interest, which Petitioner failed to
`
`identify in its Petition. See Paper No. 9, Preliminary Response (“Preliminary
`
`Resp”), at 3-10. The Petition should have been denied on this ground.
`
`

`
`(“LCD”) device. The ’413 patent has the following advantageous effects: (1)
`
`achieving low electrical resistance; (2) achieving improved adhesion of the sealant;
`
`and (3) achieving a reliable connection with the flexible printed circuit (“FPC”).
`
`These advantageous effects are achieved simultaneously by the combination of
`
`claim elements, as discussed in more detail below.
`
`1.
`
`Achieving Low Electrical Resistance
`
`All claims in the ’4l3 patent require a contact hole (“an opening”) through
`
`the first insulating film (between the two conducting lines) to allow electrical
`
`contact between them. Ex. 2012, Escuti Decl., at 1] 38. The advantage of reduced
`
`electrical resistance, Ex.1001, at col. 8,
`
`ll. 42-51, results fi‘om the following
`
`limitations in claim 1 (and limitations in other contested claims):
`
`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.
`
`2.
`
`Achieving Improved Adhesion Of The Sealant
`
`Furthermore, in order to improve the reliability of an LCD by providing for
`
`the sealant 105 to have favorable adhesion, this invention provides a structure
`
`where the sealant 105 does not overlap the indium tin oxide (“ITO”) film 114,
`
`which corresponds to a “transparent conductive layer” in the claims, and the
`
`

`
`sealant is in direct contact with the second insulating film (such as the resin inter-
`
`layer film 113). 1d., at FIG. 4A. Generally, a sealant has poor adhesion to ITO.
`
`Ex. 2012, Escuti Decl., at ‘W 49, 172. As shown in FIG. 4A of the ’413 patent, the
`
`transparent conductive layer is over a “first region” of the second wiring,
`
`the
`
`sealant is over both the first wiring and a “second region" of the second wiring,
`
`and the sealant is in direct contact with the second insulating film. An annotated
`
`FIG. 4A illustrates the claimed “first region” and “second region.” Dec., at 13.
`
`importantly, as shown in FIG. 4A, the second wiring (external connection line)
`
`extends under the sealant (and is shown in FIGS. 1, 4A, and 5 extending through
`
`and beyond the sealant). The claims require the sealant to overlie a “second
`
`region” of the second wiring, e.g., claim element; “a sealant over the first wiring
`
`and a second region of the second wiring,” as FIG. 4A shows:
`
`
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`
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`---11.’! REHIN ll"-'TE|'1H.Nr'El'-i FILM
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`
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`
`‘
`
`
`‘ 401 AUXILIAIW LINES
`‘F103
`ll‘-JTERNAL CDNNEGTION LINES
`
`The transparent conductive layer 114 is formed after the second insulating
`
`film I13, as shown by the horizontal portion of the transparent conductive layer
`
`114 that lies m the upper surface of the second insulating film 113.
`
`It is also
`
`important that this portion of the transparent conductive layer 114 does not extend
`
`

`
`to the second region, 13.3., is separated from the sealant 105. Hence, the sealant 105
`
`makes direct contact with the second insulating film 113, and the transparent
`
`conductive layer 114 does not extend beneath the sealant 105. This configuration
`
`provides favorable adhesion of the sealant. Ex. 2012, Escuti Decl., at 1111 39, 173.
`
`This advantage is achieved by the following limitations in claim 1 (and limitations
`
`in the other independent claims):
`
`a transparent conductive layer over a first region of the second
`
`wiring;
`
`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;
`
`3. Achieving a Reliable Connection With The FPC
`
`Additionally, independent claims 1, 7, 17, and 22 and dependent claims 15
`
`and 29 of the ’4l3 patent have the advantage of achieving a reliable connection
`
`with the flexible printed circuit 107 (“FPC”).
`
`First, a connection with high
`
`reliability can be achieved because the entire terminal portion region where the
`
`transparent conductive layer is formed can be used as the connection area for the
`
`FPC. For example, in FIG. 4A of the ’413 patent, because resin inter~1ayer film
`
`113 is formed before and located under the ITO layer 114, there will be no layer
`
`that blocks the ITO layer 114 from connecting with the FPC 107. That is, the entire
`
`area where the ITO layer 114 is formed corresponds to the region where the FPC
`
`

`
`107 can be connected. Because the connection area is not obstructed by the resin»«
`
`layer film 113, the connection reli.ability between the ITO layer 114 and the FPC
`
`107 will increase. Ex. 2012, Escuti Decl., at 1111 40, 137.
`
`Second, because no other layer is formed over the transparent conductive
`
`layer, the transparent conductive layer will not be damaged (such as the properties
`
`of the layer changed or the layer thinned by overetching) due to the deposition or
`
`etching process of any such other layer. Therefore, a more reliable connection
`
`with the FPC is achieved. As shown in FIG. 4A of the "413 patent, the transparent
`
`conductive layer 114 is formed over the second insulating film 113, and the second
`
`wiring 403 and the transparent conductive layer are in direct contact through an
`
`opening in the second insulating film.
`
`Id., at W 41, 138. This advantage is
`
`achieved by the following limitations in claim 1
`
`(with similar limitations in
`
`independent claims 7, 17, and 22 and dependent claims 15 and 29):
`
`wherein the second wiring and the flexible printed circuit are in
`
`electrical contact through the transparent conductive layer;
`
`wherein the second wiring and the transparent conductive layer
`
`are in direct contact through an opening in the second insulating film.
`
`II.
`
`INDEPENDENT CLAIMS OF THE ’413 PATENT
`
`The Petition challenges all of the ’413 independent claims. The following
`
`claim chart correlates the features of claim 1
`
`to similar
`
`recitals in other
`
`independent claims:
`
`

`
`Claim language
`A `nn display device Comprising:
`
`a first insulating film over the first wiring
`
`Corresponding element
`
`
`7.1, 10.1, 17.1, 22.1, 24.1
`
`nos.
`
`
`
`
`7.3, 10.3, 17.4, 22.4, 24.4
`
`a second wiring over the substrate and the first 7.4, 10.4, 17.5, 22.5, 24.5
`
`insulating film
`
`
`
`7.5, 10.5, 17.6, 22.6, 24.6
`
`a second insulating filrn over the second wiring
`
`
`
`
`
`1.3
`
`
`
`
`
`
`
`1.7
`
`1.8
`
`
`
`a transparent conductive layer over a first 7.6, 10.6, 17.7, 22.7, 24.7
`region of the second wiring;
`
`
`a flexible printed circuit over the first Wiring 7.7, 10.7, 17.8, 22.8, 24.8
`and the first region of the second wiring;
`
`
`
`
`
`a sealant over the first wiring and a second 7.8, 10.8, 17.9, 22.9, 24.9
`region of the second wiring,
`
`
`
`
`
`
`
`
`
`
`
`1.9 wherein the sealant is in direct contact with the 7.9, 10.9, 17.11, 22.11,
`second insulating film;
`24.11
`
`wherein the first wiring and the second wiring
`are in electrical contact through an opening in
`the first insulating film;
`
`7.10, 10.10, 17.12, 22.12,
`24.12
`
`7.11, 10.11, 17.13, 22.13,
`24.13
`
`1.12 wherein the second wiring and the flexible
`printed circuit are in electrical contact through
`the transparent conductive layer;
` 1.13 wherein the second wiring and the transparent 7.13, 17.16, 22.16
`conductive layer are in direct contact through an
`
`oenin in the second insulating film.
`
`
`7.12, 10.12, 17.14, 22.15,
`24.15
`
`

`
`III. NEW EVIDENCE ON HOW ORDINARILY SKILLED ARTISANS
`UNDERSTAND THE CLAIM LANGUAGE
`
`Claim elements 1.11 and 1.13 (and other claims) use the phrase “contact
`
`through an opening in the _|n insulating film.” The Board construed the phrase to
`
`have two meanings: “contact which occurs because of, or by virtue of, the opening,
`
`or which occurs between the vertical limits of the opening.” Dec., at 11-12, see
`
`also Rehearing Dec., at 3-4.
`
`The claims use the word “through” in several contexts, z'.e., through an
`
`opening, a layer, or a wiring. Claims I, 7, 10, 15, 17, 22, 24, and 29 each recite
`
`“contact through an opening in the Qn insulating film.” Claim element 1.12 recites
`
`“electrical contact through the transparent conductive layer.” See also claims 7, 17,
`
`and 22. Lastly, “connected `n through (wiring)” is recited in claims 17, 22, and 24.
`
`In every instance, the inventor is claiming that the contact or connection is made by
`
`virtue of the opening, layer, or wiring. The contact or connection occurs because
`
`ofthe opening, layer, or wiring and uses the full thickness of the opening or layer.
`
`The ’413 specification likewise includes an explanatory sentence using two
`
`types of “through” connections, “Referring 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, ’413 Patent, at col. 8, 11. 52-55 (emphasis
`
`added). The word “through” as used in this sentence means “because of,” and “by
`
`

`
`virtue of” to persons skilled in the art in both instances. Ex. 2012, Escuti Decl., at
`
`M 52-59, 74-81.
`
`A.
`
`To Persons Skilled in the Art, “contact through an opening”
`Has But One Meaning.
`
`The Patent Owner respectfully submits the accompanying declaration of Dr.
`
`Escuti (Ex. 2012) as evidence that the second part of the Board’s interpretation
`
`extends beyond the broadest, reasonable interpretation in light of the specification
`
`as it would be interpreted by one of ordinary skill in the art.
`
`In re American
`
`Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
`“Although the PTO must give claims their broadest reasonable interpretation, this
`
`interpretation must be consistent with the one that those skilled in the art would
`
`reach.” Id., citing In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). The
`
`Board’s analysis focused on the word “through" apart from the context of the claim
`
`elements in which the term is used and resorted to dictionary definitions of that
`
`single word in the abstract, rather than the understanding of the meaning of the
`
`entire phrase containing the word to a person of ordinary skill in the art. Ex. 2012,
`
`Escuti Decl., at ‘W 54, 58, 59.
`
`The Federal Circuit routinely instructs that context of claim language is
`
`important. For example, the Court stated, “. . .claim language must be construed in
`
`the context of the claim in which it appears. Extracting a single word from a claim
`
`divorced from the surrounding limitations can lead construction astray...” IGT v.
`
`

`
`Bally Gaming Intl, Inc, 659 F.3d 1109, 1117 (Fed. Cir. 2011). The importance of
`
`context to claim construction is well established. See Phillzps v. AWH Corp, 415
`
`F.3d 1303, 1312-13 (Fed.Cir. 2005)
`
`(en banc)
`
`(quoting Vitrorzics Corp.
`
`v.
`
`Conceptronic, Inc, 90 F .3d 1576, 1582 (Fed.Cir. 1996)).
`
`“[T]he person of
`
`ordinary skill in the art is deemed to read the claim term not only in the context of
`
`the particular claim in which [it] appears, but in the context of the entire patent,
`
`including the specz'ficatian.” 1d,, at 1313 [emphasis added].
`
`The claim term “contact
`
`through an opening” should be construed
`
`considering the phrase as a whole.
`
`In integrated circuit fabrication and LCD
`
`fabrication, “contact through an opening in an insulator” is a phrase which has a
`
`r.i_ngl_e meaning, Ex. 2012, Escuti Decl., at 111] 52-59, 67. This meaning corresponds
`
`to the first meaning which the Board adopted, namely, “contact which occurs
`
`because of, or by virtue of, the opening.”
`
`B.
`
`The Board’s Construction of “Contact Through an Opening” as
`Meaning “Contact ...Which Occurs Between the Vertical Limits
`of the Opening” Is Improper
`
`The Patent Owner respectfully submits that the specification of the ’413
`
`patent and the context in which “contact through an opening” is used in the claims
`
`do not suggest the construction, “contact which occurs between the vertical limits.”
`
`While acknowledging that the specification “is the single best guide to the meaning
`
`of a disputed term,” the Decision resorts instead to abstract definitions ficm a
`
`

`
`dictionary. Dec., at 10-11.
`
`In FIG. 4A, the contact through the opening in resin
`
`inter-layer film 113 is completely through film 113, from top to bottom. Similarly,
`
`the connection between external connection lines 403 (second wiring) and the FPC
`
`107 is completely through ITO 114 (transparent conductive layer), from top to
`
`bottom.
`
`Finally,
`
`the electrical contacts between the auxiliary lines 401 (first
`
`wiring) and external connection lines 403 (second wiring) are completely through
`
`first interlayer film 112. Even in the example the Board cites in its Decision on
`
`Rehearing (Paper 23) (“Rehearing Decf’), at 3 —- “a spacer .
`
`.
`
`. penetrates through
`
`the resin” — the spacers must penetrate completely through the resin from top to
`
`bottom, not merely within the vertical limits of the resin, or they could not function
`
`as spacers. See Ex. 1001, ’413 Patent, at col. 13,
`
`11. 43—44.
`
`In each of the
`
`foregoing instances, the contact or penetration is through the entirety of the vertical
`
`limits of the respective opening or thickness of the ITO layer or resin.
`
`In these
`
`instances, the contact is not merely in the vicinity of or within some portion of the
`
`vertical limits of the opening or layer, and the penetration of the spacers is not
`
`merely part way into the resin. None of the foregoing connections would exist
`
`without the respective opening.
`
`C.
`
`The Second Meaning Adopted by the Board Lacks Evidentiary
`Support
`
`The second meaning of “contact through an opening” adopted by the Board,
`
`however, “contact which occurs between the Vertical limits of the opening,” Dec.,
`
`10
`
`

`
`at 12, does not require the contact to be because of or by virtue of the opening.
`
`Nothing in the specification or claims of the ’413 patent suggests that “contact
`
`through an opening” should be given this second meaning. Dr. Escuti attests that
`
`the Board’s second meaning is contrary to any reasonable interpretation that a
`
`person of ordinary skill in the art would ascribe to the phrase “contact through an
`
`opening” in the context of the specification and claims of the ’4l3 patent. Ex.
`
`2012, Escuti Decl., at 1111 52-81.
`
`The Board did not expressly rely on Dr. Hatalis’ declaration testimony on
`
`this point, and in any event it is inconsistent and not credible.
`
`In his declaration at
`
`11 113, he construes claim element 1.11 C‘. . .contact through an opening in the first
`
`insulating film”) to mean that the opening allows one layer or film on one side of
`
`the opening to extend into the opening to thereby make contact with another layer
`
`or film on the opposite side of the opening, z'.e., the contact is because of the
`
`opening. Then, in 11 122 of his declaration, Dr. Hatalis asserts that there is “contact
`
`through an opening” where an opening is located a.l:)_o\/_e two layers that tfl£a_L_iy
`
`were in contact with each other before the opening was created, so that the opening
`
`has no causal relationship to the contact, and the contact is not because of the
`
`opening. Dr. I-Iatalis cites no evidence to support
`
`this latter construction. His
`
`testimony thus lacks credibility? Consequently, Dr. Hatalis’ testimony relating to
`
`2 The Office Patent Trial Practice Guide states (at page 48763): Affidavits
`
`ll
`
`

`
`the construction or application of the claim element “contact through an opening”
`
`should be accorded little Weight. [d., at W 60-64.
`
`D.
`
`Persons of Ordinary Skill in the Art Would Not Understand
`“Contact Through an Opening” to Mean “Contact Within the
`Vertical Limits of the Opening.”
`
`Here the meaning of “contact through an opening” is not ambiguous in the
`
`context of the specification and claims of the ’413 patent. Because the meaning is
`
`not ambiguous from the intrinsic evidence, it cannot be rendered ambiguous by
`
`reference to abstract definitions of “through” in a dictionary, which is extrinsic
`
`evidence. Vitronics Corp. v. Conceptronic,
`
`Imzz, 90 F.3d 1576, 1583 (Fed. Cir.
`
`1996) (“When the intrinsic evidence is unambiguous, it is improper for the court to
`
`rely on extrinsic evidence such as expert
`
`testimony for purposes of claim
`
`construction”); see also, Bell ti: Howell Document Mg-mt. Prods. Co. v. Altek Sys,
`
`132 F.3d. 701, 706 (Fed. Cir. 1997) (providing rationale for refraining from using
`
`expert testimony when the intrinsic evidence is unambiguous and refraining fi'om
`
`expressing an opinion of an expert must disclose the underlying facts or data upon
`
`which the opinion is based. See Fed. R. Evid. 705; and § 42.65. Opinions
`
`expressed without disclosing the underlying facts or data may be given little or no
`
`Weight. Rohm & Haas Co. 1;. Brorech Corp, 127 F.3d 1089, 1092 (Fed. Cir. 1997)
`
`(nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires
`
`the fact finder to credit unsupported assertions of an expert witness).
`
`12
`
`

`
`using extrinsic evidence to cast light upon ambiguous claim language because
`
`“expert testimony should not “inject a new meaning into terms that is inconsistent
`
`with what the inventor set forth in his or her patent,” and should be used only if it
`
`is not inconsistent with the unambiguous intrinsic evidence.)
`
`However, if extrinsic evidence is to be considered, then the testimony of
`
`Patent Owner’s expert, Dr. Escuti, must be considered. He flatly disagrees with Dr.
`
`Hatalis and explains that in the context of the specification and claims, “contact
`
`through an opening” must be construed consistent with the relative orientation of
`
`structures shown in FIG. 4A of the ’413 patent. Ex. 2012, Escuti Decl., at 111] 52-81.
`
`Dr. Escuti explains that persons of ordinary skill in the art would not adopt the
`
`Board’s alternate interpretation that does not require contact to exist because of, or
`
`by virtue of, the opening. Id., at W 60-64.
`
`Dr. Hatalis addressed the question of the relative locations of layers during
`
`his deposition and conceded that, except for three layers, the order of the layers is
`
`completely specified by the claims. Ex. 2011, Hatalis Dep., at p. 47, 1. 4 — p. 60, l.
`
`11. The three layers for which Dr. Hatalis contends the claims do not specify the
`
`order are the second wiring, the transparent conductive layer and the second
`
`insulating film. Id., at p. 59, 1. 12 — p. 60, 1. 11. However, the claims specify the
`
`order of these three layers also. Ex. 2012, Escuti Decl., at 1] 69.
`
`13
`
`

`
`The elements of claim 1 specify the order of the layers recited therein. Both
`
`Petitioner and Patent Owner agree that the substrate is the lowermost layer,
`
`followed by the first wiring, the first insulating film and the second wiring in that
`
`order. Claim element 1.12 requires: “wherein the second wiring and the flexible
`
`printed circuit are in electrical contact through the transparent conductive layer.”
`
`Therefore,
`
`if, as Patent Owner contends, and consistent with the Board’s first
`
`meaning (see Dec., at 12), “contact through an opening” means contact which
`
`occurs because of, or by virtue of, the opening, then the transparent conductive
`
`layer must be disposed between the second wiring and the FPC so that the
`
`transparent conductive layer provides an electrical path between the second wiring
`
`and the FPC. That is, the electrical connection occurs because of the transparent
`
`conductive layer. Similarly, claim element 1.13 requires:
`
`“wherein the second
`
`wiring and the transparent conductive layer are in direct contact through an
`
`opening in the second insulating film.” Therefore, if “contact through an opening”
`
`means contact that occurs because of, or by virtue of, the opening, the second
`
`insulating film must be between the second wiring and the transparent conductive
`
`layer. That is, the direct contact between the transparent conductive layer and the
`
`second wiring occurs because of an opening in the second insulating film. This
`
`analysis applies to claims 1, 7, 15, 17, 22, and 29. Id., at 1171] 70-77.
`
`14
`
`

`
`Importantly,
`
`the
`
`structure
`
`_
`resulting
`
`from the
`
`_
`foregoing
`
`construction of “contact
`
`through
`
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`SI‘U.C111‘B S DWI} 3.
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`105 SEALENT
`
`113 RESIN INTER-LAYER FILM
`
`;_
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`I.
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`.
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`112 FIRST INTER-
`LAYERFILM
`
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`401 AUXILIARY LINES
`403
`EXTERNAL CONNECTION LINES
`
`X 101 SUBSTRATE
`
`FIG. 4A of the ’-413 patent.
`
`It shows a horizontal portion of the transparent
`
`conductive layer 114 (blue) located on top of the second insulating film 113
`
`(purple) (indicating that it was formed E film 113), and on top of the second
`
`wiring 403 (yellow) located immediately beneath the second insulating film 113
`
`(purple). Id, at {I 75. As noted, claim element 1.13 calls for “direct contact” of the
`
`transparent conductive layer with the second wiring “through an opening in the
`
`second insulating film.” In the context of the specification and claims of the ’413
`
`patent, the ordinarily skilled artisan would understand this language only one way -
`
`— that the opening in the second insulating film allows the transparent conductive
`
`layer to make direct contact with the second wiring. Id, at ‘W 74-77.
`
`In fact, this corresponds to the structure shown in the right-hand portion of
`
`FIG. 4A of the ’413 patent, which shows an opening in second insulating film 113
`
`(purple) over which the transparent conductive layer 114 (blue) has been formed so
`
`that a horizontal portion of the transparent conductive layer is located on the
`
`underlying second insulating film 113, a vertical portion of the transparent
`
`15
`
`

`
`conductive layer is shown along the edge of the opening in second insulating film
`
`113, and another horizontal portion of the transparent conductive layer is located at
`
`the bottom of the opening in the second insulating film 113. At the bottom of that
`
`opening, the transparent conductive layer 114 makes direct contact with the upper
`
`surface of the second wiring 403 (yellow). 1d., at 1111 76-77. This permits the
`
`second wiring to be in electrical contact with the FPC “through the transparent
`
`conductive layer.” See claim element 1.12.
`
`For these reasons, the Patent Owner submits that the Board should modify
`
`its construction of “contact through an opening” to remove “between the vertical
`
`limits” as an alternative meaning.
`
`IV. The Background Of The Prior Art
`
`The Board found, at
`
`the preliminary stage of granting the Petition, a
`
`reasonable likelihood of unpatentability over Sukegawa (Ex. 1003) in light of
`
`Nakamoto (Ex. 1004). Dec., at 22. In regard to Sukegawa, the Petition relies
`
`principally on FIG. 2G. The only other figures from Sukegawa relied on in the
`
`Petition are FIG. 3C (Petition at 29, 48, and 49) and FIG. 3D (Id. at 38 and 47).
`
`Similarly, Dr. Hatalis relies on only these same figures from Sukegawa. See Ex.
`
`l0O5,_Hatalis Dec., at 111] 60, 84, 116, 125 and 140 (referring to FIG. 3C), 111} 99,
`
`103 (referring to FIG. 3D); see also Ex. 2011, Hatalis Dep, at p. 105, II. 14-24.
`
`16
`
`

`
`A.
`
`Sukegawa
`
`Sulcegawa,
`
`the primary reference, discloses a corrosion problem in the
`
`terminal portion of an LCD where a tape carrier package connects to one of the
`
`two opposing substrates. Colorized copies of FIGS. 1B and 2C are shown below.
`
` 100
`
`FIG. 2C
`PRIOR ART
`
`FIG. 1B
`PRIOR ART
`
`In that terminal portion, the prior art had included an upper layer metal
`
`wiring 7 (burnt yellow) that overlies a lower layer metal wiring 2 (yellow) with an
`
`interlayer insulating film 3 (red) between them.
`
`The lower layer metal wiring 2 and the upper layer metal wiring 7 contact
`
`one another because of “contact holes 6” (Ex. 1003, Sukegawa, at col. 3, ln.13) in
`
`interlayer insulating film 3. That is, contact holes 6 overlie upper surface portions
`
`of lower layer metal wiring 2 and extend completely through interlayer insulating
`
`film 3. When the metal to form upper layer metal wiring 7 is added after interlayer
`
`insulating film 3 has been etched to open contact holes 6 exposing the upper
`
`surface of the underlying lower layer metal wiring 2 below contact holes 6,
`
`portions of that upper layer metal wiring 7 extend through the contact holes 6 to
`
`establish direct contact between upper layer metal wiring 7 and lower layer metal
`
`17
`
`

`
`wiring 2. This is the normal usage of “contact through an opening in an insulation
`
`layer.” Sukegawa uses the equivalent phrase, “connected @Kn by way of Dn contact
`
`holes.” Id., at col. 4, 11. 60-61. This meaning of “contact through an opening in an
`
`insulation layer”