IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`Oct. 16, 2008
`
`In re U.S. Patent No. 7,876,413
`
`Filed:
`
`Issued:
`
`Inventors: Yoshiharu Hirakata
`Shunpei Yamazaki
`
`Jan. 25, 2011
`
`
`Assignee: Semiconductor Energy Laboratory Co., Ltd.
`
`Title:
`
`Electronic Apparatus with a Flexible Printed Circuit and a
`Transparent Conductive Layer
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`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.
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`Oct. 16, 2008
`
`In re U.S. Patent No. 7,876,413
`
`Filed:
`
`Issued:
`
`Inventors: Yoshiharu Hirakata
`Shunpei Yamazaki
`
`Jan. 25, 2011
`
`
`Assignee: Semiconductor Energy Laboratory Co., Ltd.
`
`Title:
`
`Electronic Apparatus with a Flexible Printed Circuit and a
`Transparent Conductive Layer
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`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.
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS ........................................................................................ i
`
`EXHIBIT LIST ...................................................................................................... iii
`
`I. MANDATORY NOTICES ...........................................................................1
`
`A. Real Party-In-Interest................................................................................1
`
`B. Related Matters ..........................................................................................1
`
`C. Lead And Back-Up Counsel......................................................................5
`
`D. Service Information....................................................................................6
`
`II.
`
`PAYMENT OF FEES ...................................................................................6
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW................................6
`
`A. Grounds For Standing ...............................................................................6
`
`B.
`
`Identification of Challenge ........................................................................7
`
`1. Claims for which inter partes review is requested ...............................7
`
`2. The specific art and statutory ground(s) of the challenge ..................7
`
`3. How the challenged claims are to be construed...................................8
`
`4. How the construed claims are unpatentable under the statutory
`
`grounds identified in 37 C.F.R. § 42.204(b)(2)............................................8
`
`5. Supporting evidence relied upon to support the challenge.................9
`
`IV. SUMMARY OF THE ‘413 PATENT ..........................................................9
`
`A. Description Of The Alleged Invention .....................................................9
`
`-i-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`B. Summary Of The Prosecution History...................................................11
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`V.
`CLAIM OF THE ‘413 PATENT IS UNPATENTABLE ...................................13
`
`A.
`
`Identification Of The References As Prior Art .....................................13
`
`B. Summary Of Grounds for Unpatentability ...........................................14
`
`1. Applicant’s Admitted Prior art in view of Sukegawa renders claims
`
`1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413 patent obvious
`
`
`
`15
`
`2. Sukegawa in view of Nakamoto renders claims 1, 2, 4-7, 9-11, 13-18,
`
`20-22, 24, 25, and 27-29 of the ‘413 patent obvious..................................16
`
`VI. DETAILED EXPLANATION....................................................................16
`
`VII. CONCLUSION ............................................................................................54
`
`CERTIFICATE OF SERVICE ............................................................................56
`
`
`
`
`-ii-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
` EXHIBIT LIST
`1001. U.S. Patent No. 7,876,413 to Hirakata et al.
`
`1002. Prosecution history of application 12/252,793, which matured into the
`
`‘413 patent.
`
`1003. U.S. Patent No. 5,636,329 to Sukegawa et al.
`
`1004. Japanese Patent Publication No. H08-160446 to Nakamoto et al.
`(including English translation)
`
`1005. Declaration of Miltiadis Hatalis, Ph.D.
`
`
`
`-iii-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`Petitioner Chimei Innolux Corp. (“CMI” or “Petitioner”) respectfully
`
`requests inter partes review for 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 “‘413 patent,” attached as Ex. 1001) in
`
`accordance with 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`I. MANDATORY NOTICES
`Pursuant to 37 C.F.R. § 42.8(a)(1), CMI provides the following mandatory
`
`disclosures.
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that CMI is the real
`
`party-in-interest.
`
`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘413 patent is
`
`involved in the litigation styled Semiconductor Energy Laboratory Co., Ltd. V.
`
`Chimei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), filed on January 5,
`
`2012. This litigation remains pending. The patents-in-suit are U.S. Patents
`
`7,876,413; 6,404,480; 7,697,102; 7,956,978; 8,068,204; and 7,923,311.
`
`This IPR petition is directed to U.S. Patent 7,876,413, however, petitions
`
`corresponding to the remaining patents have been filed previously, one remaining
`
`petition is forthcoming. To this end, the Patent Trial & Appeal Board (PTAB) may
`
`wish to consider consolidating the six (6) patents to a single panel of
`
`Administrative Patent Judges for administrative efficiency. Likewise, the PTAB is
`
`-1-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`encouraged to take immediate jurisdiction over all involved applications as noted
`
`below in B(1) of this Section.
`
`CMI moved to stay the corresponding district court litigation pending the
`
`conclusion of the Inter Partes Review proceedings on October 22, 2012.
`
`Through these filings, CMI is availing themselves of the new alternatives to
`
`time consuming and costly patent litigation that were provided on September 16,
`
`2012 by the Leahy-Smith America Invents Act. As the current proceeding must be
`
`concluded within 12 months by statute, will resolve issues of patentability for not
`
`only the ‘413 patent but all “involved” claims. Moreover, the proceeding will be
`
`exclusively presided over by technically trained Administrative Patent Judges of
`
`the PTAB. CMI is looking forward to a timely and cost effective resolution to this
`
`dispute.
`
`1. Involved Claims
`
`37 C.F.R. 42.3 conveys exclusive jurisdiction to the PTAB over involved
`
`claims subject to the proceeding, as the Board may order. See 35 U.S.C. 6(b), as
`
`amended, 35 U.S.C. 326(c), and Public Law 112-29, section 18. The term
`
`“proceeding” is defined by 37 C.F.R. 42.2 as a trial or preliminary proceeding.
`
`Rule 42.2 also defines the term “preliminary proceeding” as beginning with the
`
`filing of an IPR petition. To this end, the PTAB now has jurisdiction over the
`
`following pending claims.
`
`-2-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`JP 9-289160 (10/06/1997)
`
`6,072,556 (10/1/1998)
`Continuation
`6,239,854 (01/11/2000)
`Continuation
`6,567,146 (03/24/2001)
`Continuation
`7,268,851 (03/10/2003)
`Continuation
`7,440,068 (08/13/2007)
`Continuation
`7,876,413 (10/16/2008)
`Continuation
`8,068,204 (01/20/2011)
`
`13/304,660 (11/27/2011)
`PENDING (Notice of Allowance, 10/01/2012)
`
`
`
`Pending application 13/304,660 has been issued a Notice of Allowance, but
`
`no issue fee has been paid, and prosecution may still be reopened. As an
`
`application claiming priority to the ‘413 patent remains active, this application may
`
`be utilized as a basis to present patentably indistinct claims, and, may, if allowed to
`
`continue, proceed to issuance prior to the determination of the PTAB in this IPR.
`
`The issuance of such indistinct claims during the pendency of this IPR is at least
`
`inconsistent with 37 C.F.R. 42.373(d)(ii), and would provide an “end-around” the
`
`reasonable number of substitute claims that may be presented in this proceeding 37
`
`C.F.R. 42.121(a)(3). As such, further USPTO processing of these proceedings may
`
`-3-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`be prejudicial to the Petitioner’s interests and inconsistent with controlling PTAB
`
`rules.
`
`To this end, the Petitioner requests that the PTAB issue a standing order in
`
`this proceeding, once instituted. The requested Order 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). Likewise, should the Patent Owner submit claim amendments and/or
`
`new claims during the very limited pendency of the related IPR, it is requested that
`
`the Standing Order require the 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.
`
`While this Requested Order may seem unnecessary due to the already
`
`existing obligation of the Patent Owner under the duties of disclosure, candor, and
`
`good faith, this particular Patent Owner has exhibited a history of especially
`
`egregious conduct in this regard. See Semiconductor Energy Laboratory Co. V.
`
`Samsung Electronics Co., 204 F.3d 1368, 1377-78, 54 USPQ2d 1001, 1008 (Fed.
`
`Cir. 2000) (discussing SEL’s deliberate submission of incomplete information to
`
`the USPTO to mislead the patent examiner.)1
`
`
`1 Previous IPR filings 2013-00028 and 2013-00038 the Requester sought
`suspension of ongoing continuation application prosecution. This request was
`denied (Decisions of November 28, 2012) noting that the examiner had the
`
`-4-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`2. Request for Motion Authorization Pursuant to 37 C.F.R. 42.20(b)
`
`Alternatively, should the Board require that the above noted relief be
`
`requested by motion, pursuant to 37 C.F.R. 42.20(b), Petitioner hereby requests
`
`authorization in this paper to pursue a motion seeking the relief outlined above,
`
`and for the judges assigned to this proceeding to convey such authorization during
`
`the first conference call with counsel.
`
`C. Lead And Back-Up Counsel
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`Lead Counsel
`Scott A. McKeown
`cpdocketmckeown@oblon.com
`Registration No.: 42,866
`
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`1940 Duke Street
`Alexandria, Virginia 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`
`Back-Up Counsel
`Gregory S. Cordrey
`gcordrey@jmbm.com
`Registration No.: 44,089
`
`JEFFER MANGELS BUTLER &
`MITCHELL LLP
`3 Park Plaza, Suite 1100
`Irvine, California 92614-2592
`Tel: (949) 623-7200
`Fax: (949) 623-7202
`
`
`discretion to consider such action upon discovering patentably indistinct claims in
`those applications. In view of the relative newness of these PTAB proceedings, and
`the likelihood that such matters may be in advertently overlooked in the near term,
`good cause is shown for the requested Order; especially here where the Patent
`Owner has a history of misleading conduct, and derives the vast majority of their
`revenue from patent infringement suits.
`
`-5-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`II.
`
`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $29,000 to Deposit Account
`
`No. 15-0030 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for Inter
`
`Partes Review. Review of twenty-three (23) claims is being requested, so an
`
`excess claims fee is included in this fee calculation. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to the above referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘413 patent is satisfied.
`
`A. Grounds For Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘413
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘413
`
`patent on the grounds identified herein. This is because the ‘413 patent has not
`
`been subject to a previous estoppel based proceeding of the AIA, and, the
`
`complaint served on CMI referenced above in Section I(B) was served within the
`
`last 12 months.
`
`-6-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the Patent Trial and Appeal Board (“PTAB”) invalidate claims 1, 2, 4-7, 9-
`
`11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413 patent.
`
`1. Claims for which inter partes review is requested
`Pursuant to 37 C.F.R. § 42.204(b)(1), Petitioner requests inter partes review
`
`of claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413 patent.
`
`2. The specific art and statutory ground(s) of the challenge
`Pursuant to 37 C.F.R. § 42.204(b)(2), Inter partes review of the ‘413 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘413 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`(1) U.S. Patent No. 5,636,329 to Sukegawa et al. (“Sukegawa,” Ex. 1003)
`
`issued on June 3, 1997 from an application filed on June 22, 1995. Sukegawa is
`
`prior art to the ‘413 patent under at least 35 U.S.C. § 102(a) and (e).
`
`(2)
`
`Japanese Patent Publication JP H08-160446 to Nakamoto et al.
`
`(“Nakamoto,” Ex. 1004), published on June 21, 1996 from an application filed on
`
`December 8, 1992. Nakamoto is prior art to the ‘413 patent under at least 35
`
`U.S.C. § 102(a) and (b).
`
`(3) U.S. Patent No. 7,876,413 to Hirakata et al. (Ex. 1001, see Figs. 13,
`
`14A, and 14B, col. 1, l. 25 - col. 3, l. 3) includes admissions by the Applicant
`
`which constitute Admitted Prior Art (“APA”).
`
`-7-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`APA (Ex. 1001) taken in view of Sukegawa (Ex. 1003) renders obvious
`
`claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 under 35 U.S.C. § 103.
`
`Sukegawa (Ex. 1003) taken in view of Nakamoto (Ex. 1004) renders
`
`obvious claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 under 35 U.S.C. §
`
`103.
`
`3. How the challenged claims are to be construed
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). Petitioner submits, for the purposes of this inter partes review
`
`only, that the claim terms take on their ordinary and customary meaning that the
`
`terms would have to one of ordinary skill in the art. None of the challenged claims
`
`contains a means-plus-function or step-plus-function limitation, or appeal to recite
`
`a “coined” phrase or defined phrase (lexicography) requiring special consideration.
`
`4. How the construed claims are unpatentable under the statutory
`grounds identified in 37 C.F.R. § 42.204(b)(2).
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1, 2, 4-
`
`7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413 patent are unpatentable under
`
`the statutory grounds identified above, including the identification of where each
`
`element of the claim is found in the prior art patents or printed publications, is
`
`provided in Section VII, below, in the form of claim charts.
`
`-8-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`5. Supporting evidence relied upon to support the challenge
`Pursuant to 37 C.F.R. § 42.204(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges and the relevance of the evidence to
`
`the challenges raised, including identifying specific portions of the evidence that
`
`support the challenges, are provided in Section VI, below, in the form of claim
`
`charts. An Appendix of Exhibits identifying the exhibits is also attached.
`
`IV. SUMMARY OF THE ‘413 PATENT
`
`
`A. Description Of The Alleged Invention
`
`The ‘413 patent describes the state of the prior art in Figs. 13 and 14 (shown
`
`below). When peripheral driving circuits 1504 are enclosed by a sealant 1505,
`
`external connection lines 1508 may have to cross the sealant to exchange signals
`
`with a flexible printed circuit (FPC) 1507. See Fig. 13.
`
`Comparing an area where an external connection line 1508 is present with
`
`an area where external connection line 1508 is not present, a height difference d
`
`
`
`-9-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`may be found (see Fig. 14A below), resulting in undesired display properties (e.g.
`
`uneven color and brightness). The ‘413 patent attempts to minimize height
`
`differences through the use of adjustment layers (see Fig. 2B below).
`
`
`
`The ‘413 patent also includes claim limitation that are related to a third
`
`described embodiment which includes a configuration of the external connection
`
`lines that “makes it possible to reduce electrical resistance of the external
`
`connection lines 403 significantly … to provide preferable display when driven at
`
`a high frequency and a high speed” (Col. 9:6-11). The ‘413 patent accomplishes
`
`this by including a layer with an auxiliary line 401 that runs parallel with external
`
`connection line 403. See Fig. 4A below.
`
`However, the ‘413 patent also recognizes that the inclusion of the auxiliary
`
`line 401 in parallel with external connection line 403 increases the height
`
`
`
`-10-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`difference that caused undesired display properties (see col. 9:12-19). Thus, the
`
`‘413 patent features adjustment layers are provided to minimize height differences.
`
`See Fig. 4B:
`
`
`
`B.
`
`Summary Of The Prosecution History
`
`The ‘413 patent issued from U.S. Patent Application No. 12/252,793, filed
`
`October 16, 2008 (‘413 patent application). The ‘413 patent claims the benefit of
`
`an October 6, 1997 foreign priority date.
`
`On February 1, 2010, the Office issued a Non-Final Rejection including a
`
`non-statutory double patenting rejection on sole claim 1. In response, the Patent
`
`Owner amended sole claim 1 and added new claims 37-64 in an amendment filed
`
`on May 5, 2010.
`
`In a Final Rejection filed June 16, 2010, the Office rejected all pending
`
`claims based on non-statutory double patenting. In response to the double
`
`patenting rejections, Patent Owner filed three terminal disclaimers on September
`
`28, 2010 which the Office approved.
`
`-11-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`The Final Rejection of June 16, 2010 also objected to claims 1, 42, 50, 52,
`
`57, and 64 because they included the language “… the second wiring and the
`
`transparent conductive layer are in direct contact through an opening in the second
`
`insulating film.” The Examiner’s reasoning for the objection was that, according to
`
`Fig. 4A, “the second wiring (403) and the transparent conductive layer (114) are in
`
`direct conduct without any opening.”
`
`With regard to the objected claim language, the Patent Owner and the
`
`Examiner conducted a telephone interview (see Remarks, September 15, 2010,
`
`page 13). During the telephone interview, the Examiner agreed that paragraph
`
`[0093] of the ‘413 patent application provided sufficient support for the claim
`
`language that “…the second wiring and the transparent conductive layer are in
`
`direct contact through an opening in the second insulating film.” Paragraph [0093]
`
`recites:
`
`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.”
`(emphasis provided in Patent Owner’s Remarks, September 15,
`2010).
`The Office issued a Notice of Allowance on October 8, 2010, indicating that
`
`“the prior art of record neither anticipated nor rendered obvious that a liquid crystal
`
`-12-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`display device comprises various related elements as claimed with specific features
`
`recited in the claims…” Specifically, that:
`
`In claims 1, 42, 45, 52, 57, and 59, the second wiring and the
`flexible printed circuit are in electrical contact through the transparent
`conductive layer; and the second wiring and the transparent
`conductive layer are in direct contact through an opening in the
`second insulating film (see Fig. 4A, the opening is the flexible printed
`circuit 107 located position, and a part of the second wiring 403 in
`direct contact a part of the conductive layer 114 through such opening
`wherein the flexible printed conductive layer 107 located, and a part
`of the second wiring 403 in direct contact a part of the transparent
`conductive layer 114).
`(emphasis original).
`The prior art of record was not discussed with particularity.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘413 PATENT IS UNPATENTABLE
`
`
`A.
`
`Identification Of The References As Prior Art
`
`
`
`U.S. Patent No. 5,636,329 to Sukegawa et al. (“Sukegawa,” Ex. 1003),
`
`“Liquid Crystal Display Apparatus Having Terminal Protected From Break Down”
`
`issued on June 3, 1997 from application Serial No. 08/493,537 filed on June 22,
`
`1995. Sukegawa is prior art to the ‘413 patent under at least 35 U.S.C. § 102(a) and
`
`(e).
`
`-13-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`Japanese Patent Publication JP H08-160446 to Nakamoto et al.
`
`(“Nakamoto,” Ex. 1004), “The Tape Carrier and Its Manufacturing Process, and
`
`the Liquid Crystal Display Device Using the Tape Carrier” published on June 21,
`
`1996 from application Japanese Application No. (1994) 305098 filed on December
`
`8, 1992. Nakamoto is prior art to the ‘413 patent under at least 35 U.S.C. § 102(a)
`
`and (b).
`
`U.S. Patent No. 7,876,413 to Hirakata et al. (Ex. 1001) includes admissions
`
`by the Applicant which constitute Admitted Prior Art (“APA”) (see Figs. 13, 14A,
`
`and 14B, col. 1, l. 25 - col. 3, l. 3).
`
`
`
`B.
`
`Summary Of Grounds for Unpatentability
`
`The Examiner’s statement of reasons for allowance characterized claims 1,
`
`2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413 patent as having a
`
`combination of features that were neither anticipated nor rendered obvious by the
`
`prior art. However, as discussed below, the limitations of claims 1, 2, 4-7, 9-11,
`
`13-18, 20-22, 24, 25, and 27-29 were neither new to the prior art nor were they
`
`claimed in a non-obvious combination.
`
`The APA discloses that many of the limitations in claims 1, 2, 4-7, 9-11, 13-
`
`18, 20-22, 24, 25, and 27-29 regarding conventional LCD displays were old and
`
`well known in the art. Claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29
`
`include limitations that attempt to distinguish the claims from the APA. Those
`
`-14-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`limitations are generally directed to the inclusion of an auxiliary line in addition to
`
`an external connection line that connects to a flexible printed circuit to reduce
`
`electrical resistance (Ex. 1001, col. 9, ll. 6-11).
`
`However, the use of an auxiliary line, even as limited by claims 1, 2, 4-7, 9-
`
`11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413 patent, was neither new nor non-
`
`obvious at the time the invention was made.
`
`1. Applicant’s Admitted Prior art in view of Sukegawa renders
`claims 1, 2, 4-7, 9-11, 13-18, 20-22, 24, 25, and 27-29 of the ‘413
`patent obvious
`
`Similar to the ‘413 patent, Sukegawa describes the use of an auxiliary line
`
`that connects an LCD display with a flexible printed circuit. Sukegawa describes
`
`that the use of the auxiliary line in its provides benefits such as reduced resistance
`
`values (Ex. 1001, col. 7, ll. 16-26), a more secure connection, and less peeling of
`
`the layers in the multi-layered wiring (Ex. 1003, col. 7, ll. 3-8). Sukegawa provides
`
`these benefits through its multilayer connection that includes at least a lower layer
`
`metal wiring, an interlayer insulating film, an upper layer metal wiring, and a
`
`protective insulating film (Ex. 1003, see generally cols. 4 and 5, Fig. 3E).
`
`Thus, the APA in view of Sukegawa renders obvious claims 1, 2, 4-7, 9-11,
`
`13-18, 20-22, 24, 25, and 27-29. A more detailed explanation and analysis is
`
`provided in the claim charts that follow.
`
`-15-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`2. Sukegawa in view of Nakamoto renders claims 1, 2, 4-7, 9-11, 13-
`18, 20-22, 24, 25, and 27-29 of the ‘413 patent obvious
`
`As discussed above, similar to the ‘413 patent, Sukegawa describes the use
`
`of a multilayer connection that includes at least a lower layer metal wiring, an
`
`interlayer insulating film, an upper layer metal wiring, and a protective insulating
`
`film that connects an LCD display with a flexible printed circuit.
`
`Nakamoto describes yet another possible configuration of connecting an
`
`LCD display with a tape carrier, the configuration having a sealant, conductive
`
`lines, and insulating layers. (Ex. 1004, fig. 9.)
`
`Thus, Sukegawa in view of Nakamoto renders obvious claims 1, 2, 4-7, 9-
`
`11, 13-18, 20-22, 24, 25, and 27-29. A more detailed explanation and analysis is
`
`provided in the claim charts that follow.
`
`VI. DETAILED EXPLANATION
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
`
`claim charts a detailed comparison of the claimed subject matter and the prior art
`
`specifying where each element of challenged claim is found in the prior art
`
`references. All emphasis is added unless otherwise indicated.
`
`
`Patent 7,876,413
`Claim 1
`1.1 A liquid crystal display
`device comprising:
`
`Admitted Prior Art in ‘413 Patent (“APA”) in
`view of Sukegawa et al. (USPN 5,636,329)
`
`APA: “Fig. 13 shows an example of a liquid
`crystal display device…” (Col. 1:8).
`
`-16-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`1.2 a first wiring over a
`substrate
`
`APA: See Fig. 13, showing a first wiring (short
`ring 1509) over a substrate (substrate 1501)
`
`“There is further provided short rings 1509 which
`are formed by extending scanning lines and signal
`lines.” (Col. 1: 61-62)
`
`1.3 a first insulating film over
`the first wiring
`
`See Hatalis Declaration (Ex. 1005), ¶¶ 34-36.
`APA: See Fig. 14A, showing a first insulating film
`(first interlayer film 1512).
`
`
`
`
`Sukegawa: See Fig. 2C, showing a first insulating
`film (insulation film 3) over the first wiring (lower
`layer metal wiring 2).
`
`
`
`The ‘413 patent is directed to providing
`connections between circuits inside and outside of
`a sealant by using first and second conductive lines
`(Col. 8:42-51). As illustrated by the APA and
`Sukegawa, it was known in the art to provide an
`insulating film between first and second wirings so
`
`-17-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`1.4 a second wiring over the
`substrate and the first
`insulating film
`
`as to provide a more secure connection. See Hatalis
`Declaration (Ex. 1005), ¶¶ 34-36, 88.
`APA: See Fig. 14A, showing a second wiring
`(external connection line 1508) over the substrate
`(substrate 1501) and the first insulating film (first
`interlayer film 1512)
`
`1.5 a second insulating film
`over the second wiring
`
`
`See Hatalis Declaration (Ex. 1005), ¶¶ 34-36.
`APA: See Fig. 14A, showing a second insulating
`film (resin interlayer film 1513) over the second
`wiring (external connection line 1508
`
`1.6 a transparent conductive
`layer over a first region of the
`second wiring
`
`
`See Hatalis Declaration (Ex. 1005), ¶¶ 34-36.
`Sukegawa: See Fig. 2C, showing a transparent
`conductive layer (transparent conductive film 8)
`over a first region of the second wiring (upper layer
`metal wiring 7). “[A] transparent conductive film 8
`made of Indium-Tin-Oxide (ITO)” (Col. 3:17-19).
`
`
`
`The ‘413 patent is directed to providing conductive
`lines to connect to external circuits outside a
`sealant (Col. 1:17-47). As illustrated by Sukegawa,
`it was known in the art to provide connectivity to
`
`-18-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`external circuits through a transparent conductive
`film of indium tin oxide which provides a layer of
`protection. See Hatalis Declaration (Ex. 1005), ¶¶
`37-39, 88.
`APA: See Fig. 13, showing a flexible printed
`circuit (FPC 1507) over a first region of the second
`wiring (external connection line 1508)
`
`1.7 a flexible printed circuit
`over the first wiring and the
`first region of the second
`wiring; and
`
`
`Sukegawa: See Fig. 2C, showing a flexible printed
`circuit (flexible wiring substrate 31) over the first
`wiring (lower layer metal wiring 2) and the first
`region of the second wiring (upper layer metal
`wiring 7-2).
`
`
`The ‘413 patent is directed to providing conductive
`lines to connect to external circuits outside a
`sealant (Col. 1:17-47). As illustrated by the APA
`and Sukegawa, it was known in the art to connect
`to external circuits through a conductive line and
`an FPC. See Hatalis Declaration (Ex. 1005), ¶¶ 40-
`43, 88.
`APA: See Fig. 13, showing a sealant (sealant 1505)
`over the first wiring (short ring 1509) and a second
`region of the second wiring (external connection
`line 1508).
`
`-19-
`
`1.8 a sealant over the first
`wiring and a second region of
`the second wiring
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`
`“…external connection lines 1508 for electrically
`connecting those circuits and circuits outside the
`sealant to transmit signals therebetween” (Col.
`1:55-58)
`
`“There is further provided short rings 1509 which
`are formed by extending scanning lines and signal
`lines.” (Col. 1: 61-62)
`
`See Hatalis Declaration (Ex. 1005), ¶¶ 44-46.
`APA: “FIG. 14A shows sections of a region under
`the sealant 1505 where the external connection
`lines 1508 are provided and a region where no line
`is provided.” (Col. 2:7-9).
`
`See Fig. 14A showing a second insulating film
`(resin interlayer film 1513) above the external
`connection line (external connection line 1508),
`which is a region under sealant 1505.
`
`1.9 wherein the sealant is in
`direct contact with the second
`insulating film
`
`1.10 wherein the second
`wiring overlaps at least part
`of the first wiring
`
`
`See Hatalis Declaration (Ex. 1005), ¶¶ 50-51.
`Sukegawa: See Fig. 2C, showing the second
`wiring (upper layer metal wiring 7) overlapping at
`least part of the first wiring (lower layer metal
`wiring 2)
`
`-20-
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`
`The ‘413 patent is directed to providing external
`connection lines having reduced resistance (Col.
`8:33-35). As illustrated by Sukegawa, it was
`known in the art to provide a second wiring line
`overlapping a first wiring so as to lower the
`resistance of the second line and to provide a more
`secure connection. See Hatalis Declaration (Ex.
`1005), ¶¶ 53-55, 88.
`Sukegawa: See Fig. 2C, showing the first wiring
`(lower layer metal wiring 2) and the second wiring
`(upper layer metal wiring 7) in electrical contact
`through an opening in the first insulation film.
`
`1.11 wherein the first wiring
`and the second wiring are in
`electrical contact through an
`opening in the first insulating
`film
`
`
`
`The ‘413 patent is directed to providing
`connections between circuits inside and outside of
`a sealant by running lines under the sealant (Col.
`1:17-47). As illustrated by Sukegawa, it was
`known in the art to provide electrical contact
`between external connection lines and auxiliary
`lines through an opening in an insulating film so as
`to provide a more secure connection. See Hatalis
`Declaration (Ex. 1005), ¶¶ 56-58, 88.
`APA: “The external connection lines 1508 are
`connected to the external circuits through an FPC
`(flexible printed circuit)” (Col. 1:61-62).
`
`-21-
`
`1.12 wherein the second
`wiring and the flexible
`printed circuit are in
`
`
`
`Inter Partes Review of U.S. Patent No. 7,876,413
`
`electrical contact through the
`transparent conductive layer;
`and
`
`
`Sukegawa: See Fig. 2C, showing the second
`wiring (upper layer metal wiring 7-2) and the
`flexible printed circuit (flexible wiring substrate
`31) in electrical contact through the transparent
`conductive layer (transparent conduc
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
