CMI CORP.
`
`Petitioner
`
`V.
`
`PATENT OF YOSHIHARU HIRAKATA and
`
`SHUNPEI YAMAZAKI
`
`Patent Owner
`
`CASE IPR 2013-00068
`
`PATENT 8,068,204
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`UNDER 37 CFR § 42.107
`
`
`
`Petitioner
`
`V.
`
`PATENT OF YOSHIHARU HIRAKATA and
`
`SHUNPEI YAMAZAKI
`
`Patent Owner
`
`CASE IPR 2013-00068
`
`PATENT 8,068,204
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`UNDER 37 CFR § 42.107
`
`
`
`A.
`
`“External Connection Line” and “Auxiliary Line” ............................. .. 11
`
`B.
`
`“Adjustment Layer”.................................................................................. 12
`
`C.
`
`Positional Relationship Between the Transparent Conductive Layer
`
`and the Sealant Over the External Connection Line .................................... .. 14
`
`III. Claims of the ‘204 Patent .......................................................................... .. 15
`
`IV. The Petition Fails to Establish a Reasonable Likelihood that at Least
`
`One Challenged Claim Is Unpatentable Over Shiba in View of Watanabe and
`Sukegawa ................................................................................................................ 19
`
`A.
`
`Shiba ......................................................................................................... .. 20
`
`B.
`
`The ‘204 Patent Differs From Shiba ...................................................... ..21
`
`1.
`
`2.
`
`3.
`
`Shiba Does Not Disclose an “Adjustment Layer” ............................. .. 21
`
`Shiba Does Not Disclose a “Transparent Conductive Layer/Film” .. 23
`
`Shiba Does Not Disclose “Direct Contact Through an Opening in the
`
`Second Insulating Film” ............................................................................... .. 28
`
`4.
`
`Shiba Does Not Disclose a “First Insulating Film” ........................... .. 31
`
`C. A Person of Ordinary Skill in the Art Would Not Combine Shiba With
`
`Watanabe and Sukegawa................................................................................. .. 32
`
`1.
`
`2.
`
`One Would Not Combine Shiba With Watanabe ............................. .. 32
`
`One Would Not Combine Shiba With Sukegawa ............................. .. 34
`
`D.
`
`Even Combined, Shiba, Watanabe, and Sukegawa Would Not Meet the
`
`‘204 Patent Claim Elements ............................................................................ .. 36
`
`
`
`B.
`
`The ‘204 Patent Differs From Zhang ......................................................41
`
`Zhang Does Not Disclose an “Auxiliary Line” and an “External
`1.
`Connection Line” .......................................................................................... .. 41
`
`2.
`
`Zhang Does Not Disclose a “Transparent Conductive Layer/Film”.44
`
`Zhang Does Not Disclose an “External Connection Line Under the
`3.
`Sealant” and a “Sealant Over a Second Region of the Second Conductive
`Line” ............................................................................................................... .. 47
`
`Zhang Does Not Disclose “Direct Contact Through an Opening in the
`4.
`Second Insulating Film” ............................................................................... .. 50
`
`C. A Person of Ordinary Skill in the Art Would Not Combine Zhang
`With Sukegawa ................................................................................................... 51
`
`Even Combined, Zhang and Sukegawa Would Not Meet the ‘204
`D.
`Patent Claim Elements..................................................................................... .. 53
`
`The Counterpart U.S. Patent of Zhang and Sukegawa Have Already
`E.
`Been Considered by the Office .......................................................................... 59
`
`VI. Conclusion................................................................................................... .. 60
`
`
`
`Partes Review, Semiconductor Energy Laboratory Co., Ltd.‘
`
`v. Chimei
`
`Innolux Corp., et al.
`
`Exhibit 2003 — Supplemental Declaration of Gregory S. Cordrey in Support of
`Defendants‘ Motion for Stay, Semiconductor Energy Laboratory Co., Ltd. v.
`
`Chimei Innolux Corp., et al.
`
`Exhibit 2004 — Defendants’ Reply in Support of their Motion to Stay,
`Semiconductor Energy Laboratory Co., Ltd. V. Chimei Innolux Corp, et al.
`
`Joinder,
`of
`Exhibit 2005 —- Defendant Westinghouse Digital's Notice
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp, et al.
`
`Exhibit 2006 — Prosecution File History of U.S. application serial no. 13/009,980
`(US. Patent No. 8,068,204) Excerpt - Prior Art considered by the Office
`
`Exhibit 2007 —— U.S. Patent No. 5,995,189 (Zhang)
`
`iii
`
`
`
`U.S. Patent No. 8,068,204 (“the ‘204 patent”) filed on November 30, 2012.
`
`The Board appears to have incorrectly identified inventors Yoshiharu
`
`Hirakata and Shunpei Yamazaki as the Patent Owner in the caption of the NOTICE
`
`OF FILING DATE ACCORDED TO PETITION AND TIME FOR FILING
`
`PATENT OWNER PRELIMINARY RESPONSE mailed December 7, 2012.
`
`However, SEL is the Patent Owner and real party-inéinterest, by virtue of an
`
`assignment recorded with the Patent and Trademark Office at reel 009581, frame
`
`0943. See, MPEP § 306. Accordingly, the Patent Owner requests correction of the
`
`caption and that future mailings properly reflect SEL as the Patent Owner.
`
`In the Petition, Petitioner Chimei Innolux Corp. (“CMI”) attempts to smear
`
`the Patent Owner at pp. 4 and 5 of the Petition, referring to a case from 13 years
`
`ago. This case on an unrelated matter from over a decade ago has utterly no
`
`bearing on the merits of the Petition at bar. Petitioner raises another unrelated
`
`matter concerning how the Patent Owner allegedly derives
`
`its
`
`revenue.
`
`Petitioner’s assertion is neither accurate nor
`
`relevant
`
`to any issue in this
`
`proceeding.
`
`
`
`the Patent Owner’s currently pending patent application are patentably indistinct
`
`from the challenged claims of the involved ‘204 patent. The rules do not permit
`
`Petitioner to interfere with a pending application that is not involved in the present
`
`request for IPR. Nor is it necessary for the Board to interj ect itself into a pending
`
`application with respect to this Petition.
`
`Putting these issues aside, the Patent Owner respectfully requests that the
`
`Board deny the Petition. As will be explained in more detail infra, the Petition
`
`should be denied for failing to identify all the real parties-in-interest pursuant to 35
`
`U.S.C.
`
`§ 312 (a)(2) and because it does not meet
`
`the elevated “reasonable
`
`likelihood” standard1 that at least one claim of the ‘204 patent is unpatentable.
`
`1 In enacting the “reasonable likelihood” standard in 35 U.S.C. § 314, Congress set
`forth a substantially higher standard than the “substantial new question” under
`previous law, in order to deliberately reduce the number of inter partes requests
`that are ultimately granted. See, H.R. Rep. No. 112-98 (part 1), at 47 (2011) (“The
`threshold for initiating an inter partes review is elevated fiom ‘significant new
`question of patentability’— a standard that currently allows 95% of all requests to
`be granted—to a standard requiring petitioners to present information showing that
`their challenge has a reasonable likelihood of success”). Thus, the new standard
`makes inter partes review unavailable but for exceptional cases where “serious
`doubts” about the patent’s validity are raised and a “prima facie case” has been
`established by the petitioner. See, 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement
`of Sen. Jon Kyl (D—Ariz)).
`
`
`
`(a) REQUIREMENTS OF A PETITION.——-A petition filed under
`
`section 311 may be considered only if___...
`
`(2) the petition identifies all real parties in interest. @n
`
`(Emphasis added). Further, the Office rules require that the petitioner provide
`
`certain mandatory notices, including of the real parties—in—interest. 37 C.F.R. §
`
`42.8(b) (“Each of the following notices must be filed: (1) “Identify each real party-
`
`in—interest for the party.”). Here, the Petition fails to identify any of the real
`
`parties-in—interest other than Petitioner itself.
`
`Under 35 U.S.C. § 3l2(a)(2) and § 3l5(b), the term “real party-in—interest”
`
`generally means a party “that desires review of the patent.” See Office Patent Trial
`
`Practice Guide, 77 Federal Register 48759 (“Real Party—in-Interest or Privy,”
`
`stating that “the spirit of that formulation as to IPR and PGR proceedings means
`
`that, at a general level, the ‘real party-in—interest’ is the party that desires review of
`
`the patent”). One consideration in identifying a “real party—in-interest” is whether
`
`the non—party “‘has the actual measure of control or opportunity to control that
`
`might reasonably be expected between two formal coparties.’” (Office Patent Trial
`
`Practice Guide, 77 Federal Register 48759, citing Charles Alan Wright, Arthur R.
`
`Miller & Edward H. Cooper, Federal Practice & Procedure §§ 4451).
`
`3
`
`
`
`successive petitions by the same or related parties, to prevent parties from having a
`
`‘second bite at the apple,’ and to protect the integrity of both the USPTO and
`
`Federal Courts by assuring that all issues are promptly raised and vetted.” Id. As
`
`such, the statutory requirement to identify “all” real parties—in-interest is not a mere
`
`formality.
`
`The Petition fails to identify the following real parties-in-interest: Acer
`
`America Corporation (“Acer America”); Chi Mei Optoelectronics USA,
`
`Inc.
`
`(“CMO USA”); ViewSonic Corporation (“ViewSonic”); VIZIO, Inc. (“VIZIO”);
`
`and Westinghouse Digital, LLC (“Westinghouse”). Petitioner CMI and each of
`
`these additional real parties-in-interest are co—defendants in a currently pending
`
`litigation for infringement of the ‘204 patent brought by the Patent Owner,
`
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Inrzolux Corp, et al., Case
`
`No. SACV l2—002l—JST (C.D. Cal) (hereinafter the “CMI case”). See, Ex. 2001.
`
`All but Westinghouse are jointly represented in the CMI case by the same counsel,
`
`including Gregory Cordrey — named as Petitioner’s Backup Counsel
`
`in the
`
`Petition.
`
`(See, Ex. 2002 and Ex. 2003). CMI and all of the foregoing co-
`
`
`
`and Declaration of Gregory S. Cordrey in Support Thereof (the “Motion to Stay”)
`
`(Ex. 2002 and Ex. 2003).
`
`All the defendants in the CM case are real parties—in-interest because they
`
`all participated in filing the Petition. Thus, the co-defendants, in their joint Motion
`
`to Stay, collectively refer to an earlier Petition as “their” Petition that “Defendants
`
`filed.” (Ex. 2002, pp. 2, 5, and 6, emphasis added). Further, the defendants
`
`represented to the Court
`
`in the CMI case that the “Defendants have moved
`
`expeditiously to prepare and file a comprehensive petition for an IPR of the
`
`Asserted Patents.” (Id. at 17) (emphasis added). As noted, one of the “Asserted
`
`Patents” in the CMI case is the ‘204 patent. See also Id. at 6 (“Defendant§’
`
`petitions for IPR...”); Id. at 8 (“Defendants have presented the PTO with prior
`
`art. . .”) (emphasis added).
`
`Furthermore,
`
`in Defendants’ Reply in Support of Their Motion to Stay
`
`2 Although not included originally as one of the “Defendants” in the motion to
`stay, Westinghouse subsequently joined in the motion to stay, advising the Court
`that Westinghouse “hereby joins Defendants’ motion to stay” and “[a]dditionally,
`in the event that the Court grants the Motion and stays the litigation, Westinghouse
`agrees to be bound by the PTO’s determinations on the IPRS pursuant to the
`estoppel provisions of 35 U.S.C. § 3 l5(e)(2).” (EX. 2005, p. 2.)
`
`5
`
`
`
`the estoppel provisions of the IPRs proceedings.” Defendants’ Reply, at 2, n. 4; id.
`
`at 14 (Ex. 2004, pp. 2, 3, and 14). Thus, removing any possible doubt about their
`
`status, the defendants themselves have all expressly committed to be real parties-
`
`in—interest in order to obtain a stay of the co—pending CMI case.
`
`The existence of unidentified real parties—in—interest is further evidenced by
`
`a declaration submitted by Petitioner’s Backup Counsel, Gregory Cordrey,
`
`in
`
`support of Defendants’ Motion to Stay, which stated that “[o]n November 30,
`
`2012, Defendant; filed with the U.S. Patent and Trademark Office (“PTO”) its
`
`petition for IPR for U.S. Patent No. 8,068,204 (“’204 Patent”).” (Ex. 2003, p. 3,
`
`emphasis added). The Declaration identifies the Petition at issue as the collective
`
`“Defendant.g’ petition for IPR.” (Id., emphasis added). Thus, Petitioner’s Backup
`
`Counsel stated in his foregoing Declaration, “under penalty of perjury under the
`
`laws of the United States of America” (Id., p. 3), that on November 30, 2012, the
`
`Petition at issue here was filed on behalf of all the defendants. Thus, the Petition is
`
`not just CMl’s petition, but also the inter partes review petition of all five other co-
`
`defendants in the pending CMI case. Each of the other five co—defendants,
`
`according to their representations to the Court in the CMI case, participated in the
`
`
`
`opportunity to control the content of the Petition.
`
`Here, there is no concern that estoppel will apply against a party who was
`
`opposed to filing the Petition or had no control over the Petition.3 As CMO USA,
`
`Acer America, VIZIO, ViewSonic, and Westinghouse advised the Court in the
`
`CMI case, the Petition is theirs and CMI’s. They all are real-parties-in-interest not
`
`because they are co—defendants in a concurrent litigation, but because by virtue of
`
`it being their Petition, they each controlled or had the opportunity to control the
`
`content of the Petition, and they collectively caused the Petition to be filed.
`
`Although CMO USA, Acer America, VIZIO, ViewSonic, and Westinghouse
`
`informed the Court in the CMI case that they agree to be bound by the estoppel
`
`provisions of the IPR proceedings, such statement to the Court is not the equivalent
`
`of, and is a woefully inadequate substitute for, such parties being named in the
`
`Petition as real parties-in-interest. For example, under 35 U.S.C. § 315(e)(1) and
`
`3 See, e.g., In re Arviv, er al., Reexamination Proceeding Control No. 95/001,526,
`pages 5 and 6 of Decision Dismissing §1.182 and §1.183 Petitions, mailed April 18,
`2011 (The Office of Patent Legal Administration stated its concern that finding a
`co—defendant in a litigation to be zpsofacto a real party in interest could result in
`
`estoppel against a party who was opposed to filing the request for reexamination or
`a party who had no control over the request for reexamination.)
`
`7
`
`
`
`estoppel provisions of the IPR proceedings would not necessarily be known to the
`
`Office in future inter partes review proceedings involving the same patent.
`
`Therefore, the Office would have no practical way of enforcing the estoppel
`
`provisions of § 3 l5(e)(l), which provides that no real party-in-interest may request
`
`or maintain a proceeding before the Office with respect to a claim in a patent that
`
`results in a final written decision under § 318(a) on any ground that the petitioner
`
`raised or reasonably could have raised during that inter partes review. Similarly,
`
`with respect to estoppel under § 3l5(e)(2) in future civil actions, the extent to
`
`which unidentified real parties—in—interest will actually be bound by their statement
`
`to the Court in the CMI case is unclear.
`
`Moreover, unless real parties—in—interest are identified in the petition,
`
`potential conflicts of interest involving members of the Patent Trial and Appeal
`
`Board cannot readily be identified. The requirement to identify all real parties in
`
`interest pursuant to §3 l2(a)(2) serves the same purpose as a similar requirement to
`
`identify interested parties in litigation pursuant to Federal Rule of Civil Procedure
`
`7.1.
`
`It is critically important that the judges of the Patent Trial and Appeal Board
`
`not have a conflict created by a financial interest in the outcome of the cases under
`
`
`
`information necessary to identify potential conflicts.
`
`See Rules of Practice for
`
`Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent
`
`Trial and Appeal Board Decisions, 77 FR 48612, 48617 (Aug. 14, 2012). Thus, a
`
`prompt identification of all real parties-in-interest is required to allow judges of the
`
`Patent Trial and Appeal Board to recuse themselves from a proceeding that creates
`
`a conflict of interest.
`
`As such, all the defendants in the CA4] case, Acer America, CMO USA,
`
`ViewSonic, VIZIO, and Westinghouse, are real parties-in-interest with respect to
`
`the Petition. However, Section I(A) of the Petition merely states “Pursuant to 37
`
`C.F.R. § 42.8(b)(l), Petitioner certifies that CMI is the real party-in-interest”
`
`without identifying any other real parties-in-interest. Thus, the certification made
`
`in Section I(A) of the Petition is incorrect. As each of these additional parties has
`
`jointly acknowledged the collective effort to seek review of the ‘204 patent by
`
`filing their Petition, and all of them have represented to the Court in the CMI case
`
`that they moved expeditiously to prepare and file their Petition, they all are real
`
`parties-in-interest. Notwithstanding that each of the parties in the CMI case is a
`
`real party-in-interest with respect to the Petition, none of them except CMI was
`
`
`
`requests that the Petition be denied on this ground.
`
`II.
`
`The Invention of the ‘204 Patent
`
`The ‘204 patent, entitled “Electronic Apparatus With A Flexible Printed
`
`Circuit And A Transparent Conductive Layer,” relates to a liquid crystal display
`
`device. This invention provides a structure wherein the external connection lines
`
`such as 403 and auxiliary lines such as 401 overlap and are electrically connected
`
`in parallel.
`
`(Ex. 1001, col. 8, 11. 42-50 and Fig. 4A). One reason for, and result
`
`of, electrically connecting these lines is to lower electrical resistance. As
`
`explained in the ‘204 patent, even when the external connection lines 403 are
`
`made from a metal, the lines face a problem of high line resistance, which can
`
`cause propagation delay and deterioration of high frequency signals normally
`
`used in such LCD circuits and communicated via the flexible printed circuit
`
`referenced in the claim, thereby inhibiting optimal performance. (Id., col. 8, l. 61
`
`- col. 9, l. ll). The above structure in the patent reduces this electrical resistance.
`
`(Id., col. 8, ll. 42-50 and Fig. 4A).
`
`Furthermore,
`
`this invention provides a structure wherein the adjustment
`
`layer(s) such as 402/404 is provided under the sealant 105. The formation of an
`
`10
`
`
`
`Moreover, in order to improve the reliability of an electronic apparatus by
`
`providing for the sealant 105 to have favorable adhesion, this invention provides a
`
`structure wherein the sealant 105 and the indium tin oxide (“ITO”) film ll4 do not
`
`overlap each other and the sealant 105 is in direct contact with the second
`
`insulating film such as resin inter—layer film 113.
`
`(Id., Fig. 4A). Generally, a
`
`sealant has poor adhesion to a transparent conductive layer made of ITO. The
`
`above structure in the ‘204 patent provides favorable adhesion of the sealant.
`
`The structure of the ‘204 patent is further explained in detail below.
`
`A.
`
`“External Connection Line” and “Auxiliary Line”
`
`Fig. 4A of the ‘204 patent, which is reproduced below with annotations, is a
`
`cross sectionalview of Fig. l of the ‘204 patent. As shown in annotated Fig. 4A,
`
`the invented display device includes a first conductive line (e. g., auxiliary lines
`
`40l)4 over a substrate 101, a first insulating film (e. g., first inter—layer film 112)
`
`over the first conductive line and a second conductive line (e. g., external
`
`4 Auxiliary lines such as 401 correspond to “auxiliary line” or “first conductive
`
`line” in the claims.
`
`ll
`
`
`
`“external connection line’’ and “second conductive line.” See Pet., p. 13.
`
`
`
`105 SEALENT
`
`
`
`113 RESIN INTER~LAYER FILM
`
`
`
`V// ,
`\
`1o7I=Pc
`“auxiliaryline”/“first
`
`
`/4 nnn .‘
`conductiveline”
`9 o o'9'o‘¢‘o’v'¢V‘v‘ ‘.
`
`
`
`».o.o2o2o2o1o2oIo2o2o2 .
`ggooooooooo pnn
`ZFM7. 4A
`
`
`112 FIRST INTER-
`1
`.\\\‘ \\\\\\\\ \\\\\\\\\} ‘.'Qfi
`25
`LAYER FILM
`
`V/////////////////////////4'/////////////////,1,/7/‘//////////4
`
`
`
`
`111 UNDERLYING
`FILM
`
`X 101 SUBSTRATE
`
`The specification of the ‘204 patent states that “auxiliary lines 401 that
`
`
`
`“external connection
`
`line”/“second
`
`conductive line”
`
`401 AUXILIARY LINES
`
`403
`EXTERNAL CONNECTION LINES
`
`
`
`extend along external connection lines 403 are provided under the first inter-layer
`
`film 112 and the extemal connection lines 403 and auxiliary lines 401 are
`
`electrically connected in parallel by forming contact holes in the first inter-layer
`
`film 112 to reduce the electrical resistance as shown in FIG. 4A.” (Ex. 1001, col. 8,
`
`11. 45-50). As made clear by the figures and the specification of the ‘204 patent,
`
`one aspect of the invention of the ‘204 patent is that the first conductive line (e.g.,
`
`auxiliary line) and the second conductive line (e.g., external connection line)
`
`overlap and are in electrical contact in such a way as to reduce electrical resistance.
`
`B.
`
`“Adjustment Layer”
`
`As shown in Fig. 4B of the ‘204 patent, which is reproduced below with
`
`5 Extemal connection lines such as 403 correspond to “external connection line” or
`“second conductive line” in the claims.
`
`12
`
`
`
`“(first) adjustment layer,” ‘‘(first) conductive layer” and “third conductive line” and
`
`the adjustment layer 404 corresponds to the claimed “(second) adjustment layer,”
`
`“(second) conductive layer’’ and “fourth conductive line.” See Pet., p. 13.
`
` “(second) adjustment layer/(second) conductive layer/fourth conductive line”
`
`
`
`
`404 SECOND ADJUST-
`MENT LAYER
`
`402 FIRST
`ADJUSTMENT LAYER
`
`
`
`“(first) adjustment layer/(first) conductive layer/third conductive line”
`
`
`
`The adjustment layer 402 and the adjustment layer 404 are formed from the
`
`same layer as the auxiliary line 401 and the extemal connection line 403,
`
`respectively.
`
`(Ex. 1001, col. 6, 11. 24-32 and col. 9, 11. 20-28). As shown in Fig. 1
`
`of the 204 patent, the adjustment layers 402 and 404 are electrically isolated from
`
`the external connection line 403 and the auxiliary line 401.
`
`(Id., col. 4, ll. 45-52
`
`and 59-64). These adjustment layers are intended to reduce a height difference
`
`6 As explained in Section III below, the first and second adjustment layers such as
`402 and 404 are also called “third conductive line” and “fourth conductive line” or
`
`“first conductive layer” and “second conductive layer” in some of the claims of the
`
`‘204 patent, respectively.
`
`13
`
`
`
`difference in the seal region by forming the adjustment layer(s).
`
`C.
`
`Positional Relationship Between the Transparent Conductive
`Layer and the Sealant Over the External Connection Line
`
`As shown in Fig. 4A of the ‘204 patent, which is reproduced below with
`
`annotations, the invented display device includes a second insulating film (e. g.,
`
`resin inter-layer film 113), a transparent conductive layer (e. g., ITO film 114), a
`
`flexible printed circuit (e. g., FPC 107) and a sealant (e. g., sealant 105).
`
`(Ex. 1001,
`
`col. 8, 11. 33-60). As is clear from the reproduced Fig. 4A of the ‘204 patent below,
`
`the transparent conductive layer 114 (blue) and the sealant 105 (orange) are
`
`provided over the second conductive line (e. g., external connection lines 403).
`
`105 SEALENT
`
`“3 RES'N'NTER‘WERF'LM
`
`Further, since the FPC 107 is
`
`in
`
`electrical Contact with the second
`
`conductive line 403 through the
`
`transparent conductive layer 114,
`
`
`
`5
`
`1141To
`‘I12 FIRST INTER-
`LAYER FILM
`111 UNDERLYING
`FILM
`X 101 SUBSTRATE
`
`ZFIMIJ. 4A
`
`401 AUXILIARY LINES
`403
`EXTERNAL CONNECTION LINES
`
`the transparent conductive layer 114 is provided between the second conductive
`
`line 403 and the FPC 107. The sealant 105, on the other hand,
`
`is not formed
`
`between the second conductive line 403 and FPC 107;
`
`it is provided so as to
`
`directly contact the second insulating film 113. That is, the transparent conductive
`
`14
`
`
`
`invention provides a structure wherein the transparent conductive layer 114 and the
`
`sealant 105 are formed in different regions that do not overlap each other, and the
`
`sealant 105 is in direct contact with the second insulating film 113. Generally, the
`
`sealant has poor adhesion to the transparent conductive layer made of ITO, and
`
`therefore, this structure improves the adhesion of the sealant.
`
`III. Claims of the ‘204 Patent
`
`Petitioner contends that seven independent claims 31, 38, 46, 54, 61 , 68, and
`
`76 are invalid.
`
`(Pet., pp. 15—59).7 Two representative independent claims, claims
`
`31 and 54, of the ‘204 patent are recited below. Claims 38 and 46 are explained
`
`with reference to claim 31, and claims 61, 68 and 76 are explained with reference
`
`to claim 54.
`
`Independent claim 31 is recited in the following claim chart: 8
`
`7 The Petition also contends that dependent claims 33, 36, 40, 43, 45, 48, 51, 53, 56,
`59, 63, 66, 70, 73, 75, 78, 81, and 83 are invalid. (Pet., pp. 18, 19, 21, 22, 26, 31,
`33, 36, 38, 39, 43, 46, 47, 50, 51, 55, 56, 58, and 59).
`
`8 For convenience, the Patent Owner adopts the same element numbering system
`used in Petitioner’s claim tables and will refer to various claim elements as “claim
`31, row 10,” “claim 31, element 10,” or “31.10,” or the like. Each element number
`of claims 38 and 46 is shown in the parentheses where it corresponds to the
`elements recited in claim 31.
`
`15
`
`
`
`a counter substrate facing the substrate;
`
`
`
`
`
`(38.2, 46.2, 46.3
`31.3
`(38.3, 46.4)
`
`31.4
`
`
`
`
`
`pixel electrodes each electrically connected to one of the thin
`film transistors;
`
`
`(3 8.4, 46.5)
`a liquid crystal material provided between the substrate and
`31.5
` (38.5, 46.6)
`the counter substrate;
`a sealant provided between the substrate and the counter
`substrate, and surrounding the liquid crystal material;
`
`
`
`
`
`31.6
`
`(38.6, 46.7)
`
`9
`
`
`
`an auxiliary line;
`
`
`
`an external connection line") overlapping the auxiliary line
`with a first insulating film interposed therebetween,
`
`31.7
`
`(38.7)
`
`31.8
`
`
`
`(38.8, 46.10)
`
`
`
`
`n of the external connection line and @n the auxiliary
`line extending under the sealant;
`
`31.9
`
`
`
`(38.9, 46.8)
`
`
`
`31.10
`
`(38.10, 38.12,
`46.9
`
`at least part of the adjustment layer
`an adjustment layer,
`extending under the sealant;
`
`
`
`31.11
`
`(38.13, 46.12)
`
`
`
`a second insulating film interposed between the sealant and
`the external connection line; and
`
`a flexible printed circuit over and in electrical contact with the
`
`9 In claim 46, “an auxiliary line” of 31.7 is referred to as “a first conductive line.”
`
`10 In claim 46, “an external connection line” of 31.8 is referred to as “a second
`
`conductive line.”
`
`11 In claim 38, there are two elements, “a first adjustment layer” and “a second
`
`adjustment layer.” In claim 46, there are two elements, “a third conductive line”
`
`and “a fourth conductive line.”
`
`16
`
`
`
`
`
`
`
`to the auxiliary line; and
`
`wherein the adjustment layer is electrically isolated from the
`auxiliary line, the external connection line, the thin film
`transistors and the flexible printed circuit.
`
`__:j.J
`
`
`
`
`
`(38.16, 46.17)
`
`31.15
`
`(38.19, 46.18)
`
`Other than the above elements of claim 31, independent claims 38
`
`and 46 additionally recite:
`
`“a
`
`second adjustment
`
`layer overlapping the
`
`first
`
`adjustment
`
`layer with the first
`
`insulating film interposed
`
`therebetween” (38.11, 46.10, 46.11);
`
`“wherein the first adjustment layer is formed from a same
`
`layer as the auxiliary line;” (38.17, 46.15);
`
`“wherein the second adjustment layer is formed from a
`
`same layer as the external connection lineg” (38.18, 46.16).
`Independent claim 54 is recited in the following claim chart.”
`
`Claim element ,
`number
`
`6 Claim element ’
`1
`’
`
`54.1
`(61.1, 68.1, 76.1)
`54.2
`
`(61.2, 68.2, 76.2_)
`54.3
`
`A liquid crystal display device comprising:
`
`a substrate;
`
`thin film transistors over the substrate;
`
`12 Each element number of claims 61, 68, and 76 is shown in the parentheses where
`
`it corresponds to the elements recited in claim 54.
`
`17
`
`
`
`
`
`
`61.6, 68.6, 76.§L
`54.7
`
`61.7, 68.7, 76.7)
`54.8
`
`
`
`
`
`the counter substrate;
`a first conductive line” over the substrate;
`
`(61.8, 68.8, 76.8)
`54.9
`
`
`
`
`
`a first insulating film over the first conductive line;
`
`a second conductive linelfover the first insulating film;
`
`_
`
`S.
`
`a second insulating film over the second conductive line;
`
`a transparent conductive layer over a first region of the
`second conductive line;
`a flexible printed circuit over the first region of the second
`conductive line;
`a sealant over a second region of the second conductive
`line; and
`a conductive layer” over the substrate;
`
`wherein the sealant is in direct contact with the second
`
`insulating film;
`wherein the second conductive line overlaps at least part of
`the first conductive line;
`wherein the first conductive line and the second conductive
`
`line are in electrical contact;
`
`
`
`(61.10, 68.10, 76.10
`
`54.11
`
`
`
`
`
`
`
`(61.9, 68.9, 76.9
`
`54.10
`
`
`
`
`
`
`(61.16, 68.17, 76.17)
`54.17
`
`
`(61.11, 68.11, 76.11
`54.12
`
`(61.12, 68.12, 76.12)
`54.13
`
`61.13, 68.13, 76.13
`
`
`54.14
`
`(61.14)
`54.15
`
`
`
`
`
`
`
`
`(61.15, 68.16, 76.16)
`54.16
`
`(6_1.17, 68.18, 76.18)
`
`13 As explained in Section II.A, this element is supported by, for example, the
`auxiliary line 401 in Fig. 4A of the ‘204 patent.
`
`14 As explained in Section II.A, this element is supported by, for example, the
`external connection line 403 in Fig. 4A of the ‘204 patent.
`
`15 As explained in Section Il.B, this element is supported by, for example, the
`adjustment layer 402 or 404 in Fig. 4B of the ‘204 patent. In claims 68 and 76,
`there are two elements, “a first conductive layer” and “a second conductive layer.”
`
`l8
`
`
`
` 54.19
`
`54.20
`61.20, 68.21, 76.21)
`54.21
`(61.21, 68.24, 76.24)
`
`wherein the sealant overlaps at least part of the conductive
`layer; and
`wherein the conductive layer is electrically isolated from
`the first conductive line, the second conductive line, the
`thin film transistors and the flexible printed circuit.
`Other than the above elements of claim 54, independent claims 68 and 76
`
`additionally recite:
`
`“a first conductive layer formed from a same layer as the
`
`first conductive line over the substrate;” (68.14, 76.14);
`
`“a second conductive layer formed from a same layer as
`
`the second conductive line over the substrate,” (68.15, 76.15);
`
`“wherein the second conductive layer overlaps at least
`
`part of the first conductive layer;” (68.23, 76.23).
`
`IV. The Petition Fails to Establish a Reasonable Likelihood that at Least
`
`One Challenged Claim Is Unpatentable Over Shiba in View of
`Watanabe and Sukegawa
`
`The Petition has two, multi—page argumentative claim tables. The first
`
`combination raised in the Petition is Shiba (Ex. 1003) in view of Watanabe (Ex.
`
`1004) and Sukegawa (Ex. 1005). See Pet., pp. 16-39 and Hatalis Declaration at
`
`111131-139 (Ex. 1007). According to the Petition, that combination invalidates
`
`claims 31, 33, 36, 38, 40, 43, 45, 46, 48, 51, 53, 54, 56, 59, 61, 63, 66, 68, 70, 73,
`
`75, 76, 78, 81, and 83 of the ‘204 patent. As explained below this proposed
`
`19
`
`
`
`75, 78, 81, and 83 are also patentably distinct over Shiba in View of Watanabe and A
`
`Sukegawa on at least the same grounds, as they depend from their respective
`
`independent claims.
`
`A.
`
`Shiba
`
`Shiba illustrates in Fig. 1 (annotated below), for example, a first wiring line
`
`127 extending along three sides 201b, 201c, and 201d of the substrate.
`
`(Ex. 1003,
`
`col. 6, ll. 47-49). Fig. 3 of Shiba (annotated below) illustrates an enlarged View of
`
`region A shown in Fig. 1. Fig. 4 of Shiba (annotated below) illustrates a cross-
`
`sectional View taken along a line a-a’ shown in Fig. 3. As shown in Figs. 3 and 4,
`
`a common pad 751 is electrically connected to a wiring film 711.
`
`(Id., col. 5, ll.
`
`64-67). As shown in Fig. 3 and described in the specification, the first wiring line
`
`127 and the common pad 751 are formed from the same layer as one continuous
`
`pattern.
`
`(Id., col. 6, ll. 25-31). The one continuous pattern is formed in the same
`
`step of forming data lines Xi, scanning lines Yj or a two-layered structure of a
`
`layer of the data lines Xi and a layer of the scanning lines Yj so that the number of
`
`manufacturing steps does not increase.
`
`(Id., col. 6, 11. 25-38). Furthermore, Shiba
`
`discloses in Fig. 4 a structure in which the pixel electrode 251 (highlighted in blue)
`
`20
`
`
`
`source/drain electrodes 231/233 are formed from the same layer. (Id., col. 4, ll. 20-
`
`33).
`
`
`
`
`
`
`
`FIG.
`
`1
`
`B.
`
`The ‘204 Patent Differs From Shiba
`
`1.
`
`Shiba Does Not Disclose an “Adj ustment Layer”
`
`All the challenged independent claims 31, 38, 46, 54, 61, 68, and 76 recite
`
`the elements of “adjustment layer” (claim elements 31.10, 38.10, and 38.11),
`
`“third/fourth conductive line” (claim element 46.9), or “conductiVe layer” (claim
`
`21
`
`
` '1
`I
`
`
`
`Pnn I235:
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`132
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`I1‘
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`I1
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`
`‘ m|'#.FVlq.q':1'I'P—w
`
`
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`
`
`
`
`
`is “electrically isolated” from “the auxiliary line, the external connection line, the
`
`thin film transistors and the flexible printed circuit” (claim elements 31.15 and
`
`38.19) or “fi
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