`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 7
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` Entered: April 24, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`CHIMEI INNOLUX CORPORATION
`Petitioner
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`v.
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.1
`Patent Owner
`_______________
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`Case IPR2013-00068(SCM)
`Patent 8,068,204 B2
`_______________
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`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
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`EASTHOM, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`1 See Paper 5 at 1-2 (counsel for Semiconductor Energy Laboratory Co.,
`Ltd., referring to a USPTO recorded assignment of application number
`09/165,628, at reel 009581, frame 0943, as evidence of ownership of the
``204 patent).
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`Case IPR2013-00068
`Patent 8,068,204 B2
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`I. BACKGROUND
`Petitioner, Chimei Innolux Corp. (“CMI”), filed a Petition2 to institute an
`inter partes review of 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 U.S. Patent 8,068,204 B2
`owned by Semiconductor Energy Laboratory Co., Ltd. (“SEL”). See 35 U.S.C.
`§ 311. In response, Patent Owner, SEL, filed a Preliminary Response.3 The
`standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a):
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`Pursuant to the defined threshold under 35 U.S.C. § 314(a), the Board
`institutes an inter partes review of 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.
`A. The `204Patent
`The `204 patent describes LCD (liquid-crystal display) devices having two
`opposing substrates bonded together with a sealant material. (See Ex. 1001,
`Abstract.) According to the `204 patent, prior art LCD devices have non-uniform
`seals which create an uneven gap between the two opposing substrates. The
`uneven gap ultimately results in deteriorated LCD image quality. (See Ex. 1001,
`Fig. 14A; col. 1, ll. 34-49; col. 2, ll. 53-63.) The uneven seal and consequent gap
`occur because peripheral drive circuits and conducting lines extend under the
`sealing region in a non-uniform manner, for example, only in some locations or
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`2 Petition for Inter Partes Review of U.S. Patent No. 8,068,204 Under 35 U.S.C.
`§§ 311-319 and 37 C.F.R. § 42.100 Et Seq. (Nov. 30, 2012).
`3 Patent Owner Preliminary Response Under 37 C.F.R. § 42.107 (Mar. 6, 2013).
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`Case IPPR2013-00068
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`Patent 88,068,204 BB2
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`with varrying width and denssity. (Id. aat Fig. 14AA; col. 1, ll.
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` 46-49; co
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`col. 3, l. 3.) The `204 patentt discloses a solutionn to the seaal problem
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`which
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`includess employinng adjustmment wiringg lines that
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`and spacing as extternal condducting linnes and auxxiliary liness. The linees extend
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`under thhe sealant rrelatively uuniformly in one or mmore of thiickness, wiidth, and
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`sing substrrates
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`spacingg in order too render thhe seal and consequennt gap betwween oppo
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`more unniform. (Idd. at col. 3,, ll. 52-57; col. 4, ll. 665-67; col
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`. 6, ll. 24-440; and Figgs.
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`4A, 4B..)
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`, through ccontact holles in a firsst
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`TThe `204 paatent also ddescribes cconnecting
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`insulatinng film, twwo conductting lines inn parallel tto minimizze the total
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`the lines. (Id. at ccol. 3, ll. 577-63; col. 88, ll. 42-511.) To accoommodate
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`for such liines
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`extendinng under thhe sealant, the `204 ppatent desccribes usingg overlappping
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`adjustmment layers adjacent thhe conductting lines uunder the ssealant. (Idd. at col. 3
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`52-63; ccol. 9, ll. 20-46; Figs. 4A; 4B.)
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`and connnection linnes, and the adjustmeent layers:
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`l. 2, l. 25 ––
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`have the ssame thicknness, widthh,
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`FFigures 4A and 4B, wwhich followw, illustratte the paralllel conneccted auxiliaary
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`electricaally connected togethher. As thee figure shhows, the liines extendd under seaalant
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`FFigure 4A ddepicts external connnection 4033 and auxilliary 401 liines
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`le printed
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`105. Fiigure 4A allso depictss the flexib
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`circuit 1077 (FPC) eleectrically
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`connectted to an inndium tin ooxide (ITOO) transpareent conducctive film 1114 which
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`connectted throughh contact hholes in inssulating filmm layer 11
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`lines 4003. (Id. at ccol. 8, ll. 552-60.)
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`FFigure 4B, bbelow, deppicts first aand secondd adjustmennt layers 4
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`02 and 4044
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`employed to rendeer the sealaant height and conseqquent subsstrate-to-suubstrate gapp
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`more unniform as eexplained ssupra.
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`3 to externnal connecction
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`TThe adjustmment layerss 402 and 4404 may bee electricallly isolatedd from the
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`electricaally connected auxiliiary 401 annd externall connectioon 403 linees. (Id. at ccol.
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`-48.)
`4, ll. 45
`FFigure 5 reppresents annother vieww which emmploys thee same connnection
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`7 connecteed to
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`scheme representeed in Figurres 1, 4A, aand 4B andd depicts thhe FPC 10
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`externall connectioon lines 108 which exxtend undeer the sealaant 105 andd connect tto
`103. (See
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`the peripheral drivving circuitt 509 and aactive matrrix circuit
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`ll.55-655.)
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`Patent 8,068,204 B2
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`B. Illustrative Claim
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`Claim 31 follows:
`31. A liquid crystal display device comprising:
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` a
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` substrate having thin film transistors;
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`pixel electrodes each electrically connected to one of the
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`thin film transistors;
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` counter substrate facing the substrate;
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` liquid crystal material provided between the substrate and the
`counter substrate;
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` sealant provided between the substrate and the counter substrate,
`and surrounding the liquid crystal material;
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`an auxiliary line;
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`an external connection line overlapping the auxiliary line with a first
`insulating film interposed therebetween, at least part of the
`external connection line and at least part of the auxiliary line
`extending under the sealant;
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`an adjustment layer, at least part of the adjustment layer extending
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`under the sealant;
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` a
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` second insulating film interposed between the sealant and the
`external connection line;
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`and a flexible printed circuit over and in electrical contact with the
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`external connection line through a transparent conductive film;
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`wherein the sealant is in direct contact with the second insulating film;
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`wherein the external connection line is electrically connected to the
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`auxiliary line;
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`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.
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`C. Related Proceedings
`The `204 patent and several other related CMI patents are the subject of in
`inter partes review filings before the PTAB and are also alleged by SEL to be
`infringed by CMI and several other co-defendants in litigation as styled as
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al.,
`SACV12-0021-JST (C.D. Cal.) (filed Jan. 5, 2012) [hereinafter the CMI Case].
`(See Pet. 1-2; Prelim. Resp. 4.)
`D. The Asserted Grounds
`CMI asserts the following obviousness grounds of unpatentability under 35
`U.S.C. § 103:
`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 based on Shiba, U.S. 5,684,555 (Nov. 4, 1997),
`Watanabe, U.S. 5,504,601 (Apr. 2, 1996), and Sukegawa, U.S. 5,636,329 (June 3,
`1997).
`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 based on Zhang, H9-179130 (July 11, 1997)4 and
`Sukegawa.
`(Pet.14-15.)
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`4 CMI and SEL refer to this patent publication document as Zhang, which the
`Board adopts for consistency. However, the translation lists the inventor as
`Hiroisa Hari. (See Ex. 1006, 1.)
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`II. ANALYSIS
`A. Preliminary Request
`CMI requests the Board to intercede in SEL’s pending patent application,
`13/304,660, an application that is a progeny of the `204 patent for which CMI
`seeks inter partes review, and other related SEL applications, and further
`encourages the Board to “take immediate jurisdiction over all involved [SEL]
`applications.” (Pet. 2.) “To this end, the Petitioner requests that the PTAB issue a
`standing order in this proceeding, once instituted. . . . [which] 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).” (Pet. 4.) CMI also requests 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.” (Id.)
`We treat the request as a motion.5 The motion is DENIED.
`As SEL points out, CMI does not show that the claims in the pending
`application (or other applications) are patentably indistinct from claims at issue
`here. (See Prelim. Resp. 2.) Without such a showing, CMI fails to show why the
`Board should intercede. The Board has considered and denied a similar request by
`CMI in a related proceeding. (See IPR2013-00038, Paper No. 7, Decision – CMI
`Motion – 37 C.F.R. § 42.3(a).) That decision is incorporated and adopted herein
`by reference. Primarily, as the decision explains, the pending patent applications
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`5 The Board exercises its discretion to treat the request as a motion. See 37 C.F.R.
`§§ 42.1(b) and 42.5(b). Ordinarily, a party requesting relief must seek Board
`authorization to file a motion. 37 C.F.R. § 42.20(b).
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`specifically and generally mentioned by SEL are not “involved” under 37 C.F.R. §
`42.2, and as such, the Board lacks jurisdiction over those applications.
`Notwithstanding CMI’s characterization of SEL’s conduct in unrelated
`proceedings which transpired over thirteen years ago, CMI has not shown that such
`past conduct establishes a “history of especially egregious conduct” that would
`warrant the standing order CMI requests. CMI has not shown persuasively that a
`standing order is necessary based on the facts presented. (See Pet. 4.)
`B. Statutory Threshold Issues
`1. Prosecution History of the `204 Patent
`SEL contends that CMI’s Petition for Inter Partes Review of the `204 patent
`is improper under 35 U.S.C. § 325(d) because during prosecution of the application
`leading to the `204 patent, the PTO examiner who allowed the `204 patent to issue
`previously considered two of the same prior art references under consideration
`here, Shiba and Sukegawa. (See Prelim. Resp. 38.)
`That the documents were considered as prior art listed in the prosecution
`record of the `204 patent application is a factor which the Board “may take into
`account” according to 35 U.S.C. § 325(d). However, SEL does not show that the
`examiner of the `204 patent application considered “substantially the same . . .
`arguments,” as CMI presents here, another factor which the Board “may take into
`account” according to 35 U.S.C. § 325(d).
`Absent a showing of “substantially the same . . . arguments,” id., and
`considering that CMI includes evidence not considered before the `204 patent
`examiner, including Watanabe and the declaration of Miltiadis Hatalis, Ph.D.
`(“Hatalis Declaration”) (Ex. 1007), SEL does not show that the inter partes review
`of the `204 patent would be improper under 35 U.S.C. § 325(d).
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`2. Real Parties-In-Interest
`SEL also contends that this review should be denied because the Petition
`fails to identify all of the real parties-in-interest as required by 35 U.S.C. § 312
`(a)(2) and 37 C.F.R. § 42.8(b)(1). (Prelim. Resp. 3-10.) The Trial Practice Guide
`provides guidance regarding factors to consider in determining whether a party is a
`real party-in-interest. As SEL acknowledges, a primary consideration includes
`whether a non-party exercises control over a petitioner’s participation in a
`proceeding. (See Prelim. Resp. 3, citing Office Patent Trial Practice Guide, 77
`Fed. Reg. 48756, 48759 (August 14, 2012).) Other considerations may include
`whether a non-party, in conjunction with control, funds the proceeding and directs
`the proceeding. (Trial Practice Guide at 60.)
`SEL asserts that co-defendants with CMI, “CMO USA,” “Acer America,”
`“ViewSonic,” “VIZIO,” and “Westinghouse”, in the pending CMI Case (see supra
`§ IC), represented to the district court in the CMI Case (see section IC supra) that
`the co-defendants all participated in filing the instant Petition in support of a
`district court motion to stay, and that the co-defendants all agreed to be bound by
`the inter partes review. (See Prelim. Resp. 4-9.) SEL focuses on statements to the
`district court in which the co-defendants refer to “‘their’” Petition which
`“‘Defendants have moved expeditiously to prepare and file.’” (Prelim. Resp. 5
`(quoting CMI Case motion, Ex. 2002 at 2, 17, emphasis by SEL).)
`Notwithstanding SEL’s assertions, SEL does not set forth persuasive
`evidence that the district court co-defendants CMO USA, Acer America,
`ViewSonic, VIZIO, and Westinghouse necessarily have any control over this
`proceeding. The statements that SEL refer to do not show that these other co-
`defendants had control over the Petition or will exert control over the proceeding.
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`The statements made in connection with the joint motion to stay may have been a
`short-hand explanation (e.g., speaking as one unified voice as opposed to
`explaining in great length who controlled the contents of the Petition, etc.) to the
`district court of the events leading up to the filing of the instant Petition. Toward
`that end, only lead counsel for CMI, Scott A. McKeown, signed the Petition (see
`Pet. 5, 60) which “certifies that CMI is the real party-in-interest” (Pet. 1).
`Accordingly, the collective filing of a motion to stay and other assertions do not
`prove control by each party.
`SEL has not shown, for example, that the co-defendants CMO USA, Acer
`America, ViewSonic, VIZIO, and Westinghouse necessarily co-authored the
`Petition or otherwise exerted control over its contents, or will exert any control
`over the remaining portions of this proceeding. SEL has failed to provide
`persuasive evidence that each of the co-defendants in the CMI Case provided
`funding for the instant Petition, let alone exercised control and funding. That the
`co-defendants agreed to be bound by the decision of this inter partes review
`insofar as the co-pending litigation is concerned does not dictate that each of the
`co-defendants are real parties-in-interest in this proceeding. Accordingly, SEL has
`not demonstrated that CMI has failed to list all the real parties-in-interest under 35
`U.S.C. § 312 (a)(2) and 37 C.F.R. § 42.8(b).
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`C. Claim Construction
`The Board interprets each claim in an inter partes review using the
`“broadest reasonable construction in light of the specification of the patent in
`which it appears.” 37 C.F.R. § 42.100(b). See also Patent Trial Practice Guide,
`77 Fed. Reg. at 48766 (Claim Construction). “Generally speaking, we indulge a
`‘heavy presumption’ that a claim term carries its ordinary and customary
`meaning.” See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
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`Cir. 2002). Tempering the presumption, “claims ‘must be read in view of the
`specification, of which they are a part. . . .’ [T]he specification ‘is always highly
`relevant to the claim construction analysis. Usually, it is dispositive; it is the single
`best guide to the meaning of a disputed term.”’ See Phillips v. AWH Corp., 415
`F.3d 1303, 1317 (Fed. Circ. 2005) (en banc) (citations omitted).
`The following phrase carries an ordinary meaning which is consistent with
`the `204 patent specification.
`“Contact through an opening” - the phrase at issue appears in claims 54, 61,
`68, and 76: “the second conductive line and the transparent conductive layer are in
`direct contact through an opening in the second insulating film.”
`SEL maintains that in light of the `204 patent, the phrase “contact through an
`opening” carries an ordinary meaning of contact “because of the opening, that is,
`the opening enables the contact to occur.” (Prelim. Resp. 28.) SEL points to the
`opening in interlayer insulation film 113 (Fig. 4A) and states that “the external
`connection lines 403 would not be in direct contact with ITO film 114 but for the
`opening shown in resin inter-layer film 113.” (Prelim. Resp. 28.)
`CMI does not explicitly propose a definition. The term “through” has
`several ordinary definitions:
`1. In one side and out the opposite or another side of. 2. Among or
`between; in the midst of: a walk through the flowers. 3. By way of.
`4. By the means or agency of: “they preserved their individuality
`through men and not by opposition to them” (F. Scott Fitzgerald). 5.
`Here and there in; around: a tour through France. . . . 9. Because of .
`. . .
`The American Heritage Dictionary of the English Language, 1341 (1975).
`SEL’s proposed definition of “through” as meaning “enabling” or “because
`of” is consistent with at least the third, fourth and ninth definitions quoted supra.
`SEL’s proposed definition is also consistent with the `204 patent specification. For
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`example, Figure 4A of the `204 patent (see supra) shows an opening or contact
`hole in the second insulating film 113 which facilitates electrical contact between
`the ITO metal film 114 and external connection line 403. As described in the `204
`patent, “[r]eferring 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, col. 8, ll. 52-60.)
`Alternatively, the ordinary meaning of “through,” according to the
`definitions listed supra, tempered by its use in the `204 patent specification and
`claim 54 phrase at issue, “electrical contact through an opening,” does not preclude
`the “electrical contact” from occurring between the vertical limits of the claimed
`opening or through-hole defined by the surrounding insulation layer. Figure 4A of
`the `204 patent depicts electrical contact between the ITO film 114 and line 403 as
`occurring at the bottom boundary of the opening in the resin inter-layer film 113,
`such that “between” includes that bottom boundary of the opening. Accordingly,
`“contact through an opening” means contact which occurs because of or by virtue
`of the opening, or which occurs between the vertical limits of the opening.
`The parties do not contend that any claim terms or phrases, including those
`discussed supra, should be given a meaning other than the ordinary and customary
`meaning that the terms or phrases would have to a person of ordinary skill in the
`art in light of the `204 patent specification. See Ayst Technologies Inc. v. Emap,
`Inc., 268 F.3d 1364, 1369 (Fed. Cir. 2001) (there is “no reason to depart from the
`position consistently taken on this issue by the parties”).
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` D. Asserted Grounds of Unpatentability
`1. Shiba, Watanabe, and Sukegawa
`CMI relies on the Hatalis Declaration (Ex. 1007), Shiba (Ex. 1003),
`Sukegawa (Ex. 1005), and Watanabe (Ex. 1004) to set forth its obviousness
`challenge to the claims. (See Pet. 15-38.) In response, SEL focuses attention on
`“[t]wo representative independent claims, claims 31 and 54.” (Prelim. Resp. 15.)
`CMI persuasively shows that Shiba discloses or renders obvious a liquid
`crystal display device comprising a substrate having thin film transistors, pixel
`electrodes, a counter substrate, a liquid crystal material, a sealant, an auxiliary line,
`an external connection line, first and second insulating layers, an adjustment layer,
`and a flexible printed circuit board primarily as set forth in representative claim 31.
`Representative claim 54 recites similar elements and an additional limitation
`discussed further below. (See Pet. 16-18; 26-31.) SEL contends that the prior art
`combination of Shiba, Watanabe, and Sukegawa does not render obvious certain
`structural relationships between the claim elements as discussed below.
`A. Adjustment Layer
`SEL contends that Shiba does not disclose an adjustment layer as set forth in
`claim 31 because Shiba’s adjustment layer is not “‘electrically isolated’” from
`“‘the auxiliary line, the external connection line, the thin film transistors and the
`flexible printed circuit.’” (Prelim. Resp. 21-22.) SEL acknowledges that CMI
`relies on Watanabe to teach electrically isolated adjustment layers. (Id. at 22.) SEL
`also argues that Watanabe’s connection lines and Shiba’s connection lines extend
`in different directions across a sealant, thereby undermining a valid reason for
`employing Watanabe’s connection layers with Shiba’s external connection lines.
`(See Prelim. Resp. 33.)
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`CMI’s Petition reproduces Watanabe’s Figure 5 which shows electrically
`isolated adjustment layers extending along external connection lines of a display
`device. (Pet. 18 (also citing Hatalis Decl., Ex. 1007 at ¶¶ 122-126).) As Dr.
`Hatalis explains, Watanabe teaches that the gap adjusting layers should be isolated
`to prevent short circuiting of the scanning and signal lines. (Ex. 1007, ¶ 123
`(citing Watanabe).)
`Watanabe also teaches using such gap adjusting layers to form “an equal gap
`between two substrates so as to improve display image quality.” (Ex. 1004,
`Abstract.) In a fashion similar to the `204 patent, Watanabe generally teaches
`creating a uniform surface with uniformly spaced adjustment layers under a sealant
`surrounding four sides of a liquid display substrate to accommodate different
`conducting line thicknesses crossing under the sealant and which otherwise would
`render a substrate-to-substrate bonding gap uneven. (See Ex. 1004, Abstract, col.
`2, ll. 30-55.; col. 3, ll. 40-52; col. 5, l. 8 to col. 6, l. 27; Figs. 1, 4.)
`Watanabe’s general teachings, directed toward uniformity of the sealant
`bonding surface, are not limited by specific relative directions of the external
`conducting lines which cross under the sealant. For example, Watanabe teaches
`that the gap adjusting layers may be “in parallel with or perpendicular to the
`[conducting] lines,” (id. at col. 5, ll. 13-14) and that “any pattern may be used” (id.
`at l. 23), provided that if the gap adjusting layer is “formed of a conducting
`material, it should be patterned so that it is not short-circuited with the scanning
`lines and signal lines” (id. at ll. 54-56).
`While these teachings relate specifically to all types of patterns of gap
`adjusting layers, they also do not place a restriction on the relative directions in
`which the scanning lines or signal lines extend relative to the direction in which the
`sealant extends. As an example, Watanabe’s Figure 1 shows adjustment layers 21
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`and 23 running perpendicularly to the leads 13 and 15. As another example,
`Watanabe’s Figure 5 shows portions of lines 17 crossing the sealant in both
`directions, that is, parallel and orthogonal to the long side of the rectangular-
`shaped sealant region. Similar to Watanabe’s conducting lines, Shiba’s conducting
`lines cross sealant 111 in a similar fashion, both parallel and orthogonal to long
`sides of the rectangular-shaped sealant region. (See Ex. 1003, Fig. 3.)
`Accordingly, Watanabe suggests employing electrically isolated gap
`adjusting layers along conducting lines in similar display devices such as Shiba’s
`in order to render the substrate-to-substrate gap more even and consequently to
`improve image quality.
`B. Transparent Conductive Film
`SEL contends that Shiba does not disclose a transparent conductive film as
`set forth in claim 31. (Prelim. Resp. 25.) The claim 31 limitation in dispute
`follows: “a flexible printed circuit over and in electrical contact with the external
`connection line through a transparent conductive film.” CMI relies on the Hatalis
`Declaration and the combination of Shiba and Sukegawa to show that the disputed
`claim phrase would have been obvious. (Pet. 17-18 (reproducing Shiba’s Figs. 3, 4
`and citing Shiba’s col. 6, ll. 37-42; reproducing Sukegawa’s Fig. 2C; citing Ex.
`1007 at ¶¶ 66-71).)
`Shiba does not disclose a transparent conductive film connected to a flexible
`printed circuit, while Sukegawa does as explained further below. Dr. Hatalis
`explains that Shiba discloses flexible printed circuit 711 connected to pad 751
`through anisotropic film 881. (Ex. 1007, ¶ 67 (citing Shiba Figs. 3, 4).) Figure 3,
`reproduced further below, indicates that the pad 751 is exposed through a slit 243
`in top insulating film 241. (See Prelim. Resp. 28-29 (discussing slit 243, film 241,
`and pad 751 of Shiba).)
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`SShiba’s Figgure 4, illusstrating thee connectioon, followss:
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`FFigure 4 shoows anisottropic film
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`881 (on thhe left) exttending froom flexiblee
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`printed circuit 7111 through sslit 743 in iinsulating
`layer 741,
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`circuit to ppad 751. SShiba descrribes a connnection too similarly
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`situated paads
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`as followws: “As shhown in FIIG. 3, the ddata line paads 761 to
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`764 are exxposed
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`throughh a slit 243 formed in the protecctive overc
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`764 elecctrically coonnected too output leads 821 off a wiring ffilm 711 viia an
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`anisotroopic film 881 (FIG. 44).” (Ex. 1
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`003, col. 44, l. 66 to ccol. 5, l.3.)
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`SShiba’s Figgure 3 (fromm which thhe cross-secctional vieew of Figurre 4 supra
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`lit 243 witth
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`taken allong line a-a’), showss the outpuut pad 751
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`the abovve-described data padds 761-7644:
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`oat 241. TThe data linne pads 7661 to
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`Turning to Sukegawa’s flexible printed board connection, Dr. Hatalis
`explains that Sukegawa’s Figure 2C depicts a flexible printed wiring circuit
`connected to an underlying display substrate “through a transparent conductive
`film that provides connectivity and a layer of protection against corrosion.” (Ex.
`1007, ¶ 70.) Based on Shiba and Sukegawa, Dr. Hatalis opines that “[o]ne of
`ordinary skill in the art would have included the transparent conductive film of
`Sukegawa in the common pad [751] of Shiba, thus creating a reliable electrical
`connection as the transparent conductive film was well known to form a layer of
`protection from oxidation.” (Ex. 1007, ¶ 71.)
`Notwithstanding SEL’s argument (see Prelim. Resp. 25 (citing Ex. 1003 at
`col. 5, ll. 24-28)) that a transparent ITO electrode 541 has a relatively high
`resistance (as compared to other materials) which would render a transparent
`contact layer unobvious, and other related arguments about hypothetical double or
`triple layers in Shiba’s contact pad (see Prelim. Resp. 23-27), the record supports
`Dr. Hatalis’s opinion. While Shiba does describe “a counter electrode 541 made of
`ITO [which] has a relatively high resistance” (Ex. 1003, col. 5, ll. 26-27), Shiba,
`nonetheless, employs the ITO transparent material for that electrode, and
`Sukegawa employs the same transparent material as a contact material.
`Further, Sukegawa’s system connects a flexible printed circuit board to an
`anisotropic film 10 using such a transparent conductive film 8 which attaches to an
`underlying metal film 7, thereby protecting the underlying metal film from
`corrosion. (Ex. 1005, col. 6, ll. 9-26.) Therefore, using Sukegawa’s transparent
`film to connect, via the anisotropic attachment film, Shiba’s similar flexible printed
`circuit via to a pad on a display substrate, amounts to using a known contact
`material for its intended purpose of making a reliable contact connection.
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`SEL also argues that the prior art combination does not render obvious a
`related claim recitation appearing in claim 54, “wherein the second conductive line
`and the flexible printed circuit are in electrical contact through the transparent
`conductive layer.” (Prelim. Resp. 29-30.) SEL maintains that if a transparent
`conductive layer were formed at the top layer of the Shiba’s conductive pad 751, it
`“would be located under (i.e., not in) the slit 243 formed in the protective overcoat
`241. . . . In other words contact between the second conductive line and the
`hypothetical transparent conductive layer is not through the slit 243.” (Prelim.
`Resp. 30.)
`SEL’s argument relies on an ordinary definition of “through” in light of the
``204 patent as discussed supra in the claim construction section. Nonetheless, at
`the time of the invention, skilled artisans knew how to make through-hole contacts
`as Sukegawa’s Figure 3B verifies by showing contact between metal wiring layers
`7 and 2 through holes in an insulation layer 3. (See Ex. 1005.) While Sukegawa
`shows the transparent layer 8 under the hole in the top insulation layer 9, the
`transparent layer extends through the holes in insulation layer 3. Therefore, CMI
`shows that it would have been obvious to employ the known contact structure as
`set forth in representative claim 54, for example, by forming Sukegawa’s
`transparent ITO layer 8 through Shiba’s slit 243 to create a reliable circuit board to
`substrate contact between an anisotropic layer and an underlying pad as described
`supra.
`C. External Connection and Auxiliary Line
`Claim 31 further defines structural relationships between the “external
`connection line” and the “auxiliary line,” as follows: the “external connection line
`overlap[s] the auxiliary line with a first insulating film interposed therebetween,”
`at least part of each line “extend[s] under the sealant,” and an “electrical
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`connection” exists between the two lines. CMI relies on Shiba’s two-layered
`wiring lines 127 as described at column 6, lines 37-42 to show how Shiba teaches
`or renders obvious the listed limitations. (See Pet. 16-18) (copying Shiba Fig. 3
`and citing the Hatalis Declaration).) At the cited portion in column 6, Shiba
`describes the wiring lines 127 as “formed in the step of forming the scanning lines
`Yj and the data lines Xi, respectively, thereby constituting a two-layered structure.
`In this case, if the layers are partially connected to each other, the wiring defect can
`be prevented and the manufacturing yield can be improved.” (Ex. 1003, col. 6, ll.
`37-42.)
`SEL responds that “[f]rom this cited portion of Shiba [i.e., column 6, quoted
`supra], a person of ordinary skill in the art does not know whether an insulating
`film (first insulating film) is formed between the bottom layer of the first wiring
`line 127 (formed in the step of forming the scanning lines Yj) and the top layer of
`the first wiring line 127 (formed in the step of forming the data lines Xi).” (Prelim.
`Resp. 31.) According to SEL, Shiba’s “‘two-layered structure’” might be
`“sequentially stacked” without an insulating layer therebetween. (Id.) As noted,
`claim 31 requires such an interven
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