UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`Case IPR2013-00068 (SCM)
`Patent 8,068,204 B2
`
`PATENT OWNER’S REQ QUEST FOR REHEARING OF DECISION TO
`INSTITUTE INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.71
`
`

`

`TABLE OF CONTENTS
`
`PATENT OWNER’S REQUEST FOR REHEARING OF DECISION TO
`INSTITUTE INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.71 .... ..I
`
`I.
`
`THE CLAIM CONSTRUCTION OF “CONTACT THROUGH AN
`
`OPENING” IS UNREASONABLE .............................................. ..I
`
`A.
`
`The Board Followed Incorrect Claim Construction Procedure ....... ..2
`
`B.
`
`The Board Definition is Broad Beyond Reasonable Bounds .......... . .6
`
`1.
`
`The Claims Use “Through” in Different Contexts .............. ..6
`
`The Claims Also Distinguish Between “Contact” and “Contact
`2.
`Through an Opening” ............................................................... ..7
`
`/None of the Specification Uses of “Throug ” Support the
`3.
`Board’s Alternate Construction ....................... .'. ........................... ..8
`
`‘The Board’s Construction of “Through” Is Divorced From the
`4.
`Correct Context .................................................................... ..lO
`
`C.
`
`Conclusion re the Board’s Alternate Construction .................... ..l4
`
`II.
`
`68 AND 76 DEFINE OVER
`61,
`INDEPENDENT CLAIMS 54,
`SUKEGAWA ....................................................................... ..14
`
`CONCLUSION ............................................................................ .. 15
`
`

`

`-1-
`
`PATENT OWNER’S RES QUEST FOR REHEARING OF DECISION TO
`INSTITUTE INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.71
`
`The Decision to Institute inter partes review, mailed April 24, 2013, has
`
`been carefully considered. This Request for Rehearing on behalf of the Patent
`
`Owner (“SEL”) is filed within 14 days of the Decision (Paper 7) and is timely
`
`under 37 C.F.R. § 42.71. SEL respectfully requests rehearing because the Board
`
`incorrectly construed the claim language and improperly interpreted what the
`
`asserted prior art U.S. Patent 5,636,329 to Sukegawa disclosed.
`
`I.
`
`THE CLAIM CONSTRUCTION OF “CONTACT THROUGH AN
`
`OPENING” IS UNREASONABLE
`
`In Paper 7, pp. 10-12, the Board construed the phrase “. .. contact through an
`
`opening,” which the Board noted appears in claims 54, 61, 68, and 76. The same or
`
`substantially the same phrase also appears in claims 14 (“contact
`
`through
`
`openings”), 24 (same), 36, 43, 51, 59, 66, 73, and 81. The Board cited an English
`
`language dictionary and reproduced “several ordinary definitions” from it for the
`
`word “through.” Id., p. ll. SEL had proposed a definition that in the context of
`
`this phrase and patent specification, “contact through an opening” means contact
`
`made possible by the opening or by virtue of the opening. The Board agreed that
`
`SEL’s definition is consistent with the specification of U.S. Patent 8,068,204 (“the
`
`‘204 patent”) and three of the dictionary definitions which the Board cited.
`
`In its “alternatively” paragraph, however, the Board made further comments
`
`

`

`- 2 -
`
`lPR20’|3—OO068
`
`on the ordinary meaning of “through” according to these dictionary definitions,
`
`“tempered by its use in the ‘204 patent specification and claim 54 phrase at issue
`
`...” Ia’. p. 12. It concluded that these dictionary definitions do not preclude
`
`electrical contact from occurring “between” the Vertical limits of the claimed
`
`contact opening or through-hole defined by the surrounding insulation film, even if
`
`the opening does not cause or permit the contact
`
`to be made.
`
`The Board
`
`referenced Figure 4A of the ‘204 patent which shows that the electrical contact
`
`between ITO film 114 and external connection lies 403 occurs at the bottom
`
`boundary of the opening in the resin inter—layer insulating film 113 such that
`
`“between” includes that bottom boundary at the opening in insulating film 113.
`
`Id., p. 12.
`
`It ruled, “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.” Ia’. [emphasis added]. SEL respectfully submits that
`
`the ruling wrongly includes the alternate definition, reproduced here in italics.
`
`Everything beginning with “or” should be stricken.
`
`A.
`
`The Board Followed Incorrect Claim Construction Procedure
`
`The Board cited The American Heritage Dictionary of the English Language
`
`(1975),
`
`id. p. 11, and then developed a construction of “contact through an
`
`opening” based on some of the general definitions it found there “tempered by the
`
`meaning in light of the ‘204 patent specification and claim phrase at issue.”
`
`

`

`— 3 —
`
`lPR2013-00068
`
`The Board followed a procedure similar to one overruled en banc in Phillips
`
`v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005). That Court specifically addressed
`
`the use of dictionaries at 415 F.3d 1303, 1319-1324.
`
`It cited (and abrogated) the
`
`panel decision in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
`
`(Fed. Cir. 2002). Texas Digital had ruled that words often have multiple dictionary
`
`meanings so the intrinsic record must be consulted to determine which of the
`
`different possible meanings is most consistent with the use of the term in question
`
`by the inventor. The Texas Digital court had added that the patent specification
`
`and file history must be consulted to determine Whether the patentee has used the
`
`Words of the claim in a manner clearly inconsistent with the ordinary meaning
`
`reflected,
`
`for example,
`
`in a dictionary definition. Phillips at 1319 [internal
`
`quotation marks omitted]. Texas Digital stated that the presumption in favor of a
`
`dictionary definition is overcome where the patentee acts as a lexicographer or has
`
`made a disavowal or disclaimer of claim scope. Id.
`
`The reason given by the Texas Digital panel for this modus operandi Was to
`
`avoid importing limitations into the claims. The Federal Circuit agreed in Phillips
`
`that the goal expressed in Texas Digital was Valid but the methodology adopted to
`
`achieve that goal “placed too much reliance on extrinsic sources such as
`
`dictionaries,
`
`treatises, and encyclopedias and too little on intrinsic sources,
`
`in
`
`particular the specification and prosecution history.” Phillips, at 1320. It explained,
`
`

`

`— 4 -
`
`lPR2013~OOO68
`
`“In effect, the Texas Digital approach limits the role of the specification in claim
`
`construction to serving as a check on the dictionary meaning of a claim term if the
`
`specification requires the court to conclude that fewer than all the dictionary
`
`definitions apply, or if the specification contains a sufficiently specific alternative
`
`definition or disavowal.” Id. The Phillips Court explicitly rejected that limitation:
`
`The main problem with elevating the dictionary to such
`prominence is that
`it
`focuses the inquiry on the abstract
`meaning of words rather than on the meaning of claim terms
`within the context of the patent. Properly viewed, the “ordinary
`meaning” of a claim term is its meaning to the ordinary artisan
`after reading the entire patent. Yet heavy reliance on the
`dictionary
`divorced
`from the
`intrinsic
`evidence
`risks
`transforming the meaning of the claim term to the artisan into
`the meaning of the term in the abstract, out of its particular
`context, which is the specification.
`
`Phillips at l32l. Considering Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876),
`
`Phillips explained, “The use of a dictionary definition can conflict with that
`
`directive because the patent’s applicant did not create the dictionary to describe the
`
`invention. Thus, there may be a disconnect between the patentee’s responsibility to
`
`describe and claim his invention, and the dictionary editors’ objective of
`
`aggregating all possible definitions for particular words.” Phillips at 1321. Phillips
`
`explained, “The risk of systematic overbreadth is greatly reduced if the court
`
`instead focuses at the outset on how the patentee used the claim terms in the
`
`claims, specification, and prosecution history, rather than starting with a broad
`
`

`

`— 5 —
`
`|PR20’l 3—0O068
`
`definition and Whittling it down.” Ia’. General usage dictionaries cannot overcome
`
`art-specific evidence of the meaning.
`
`Id. at 1322. A particularly apropos
`
`admonition states:
`
`A claim should not rise or fall based upon the preferences of a
`particular dictionary editor, or the court’s independent decision,
`uninformed by the specification, to rely on one dictionary rather
`than another. Finally, the authors of dictionaries or treatises
`may simplify ideas to communicate them most effectively to
`the public and may thus choose a meaning that is not pertinent
`to the understanding of particular claim language. See
`generally Ellen P. Aprill, The Law of the Word: Dictionary
`Shopping in the Supreme Court, 30 Ariz. St. L] 275, 293-314
`(1998). The resulting definitions therefore do not necessarily
`reflect
`the inVentor’s goal of distinctly setting forth his
`invention as a person of ordinary skill in that particular art
`Would understand it.
`
`Ia’. [emphasis added].
`
`Here, the Board’s general purpose dictionary is completely unrelated to
`
`semiconductor technology. The Board selected several different usages of the Word
`
`“through.” That process took the Word “throug ” away from the phrase where it
`
`appears in the patent. In support of an expanded definition, the Board relied on
`
`alternate definitions Where the context (from the dictionary) is “a walk through the
`
`flowers,” and “a tour through France ...” Paper 7, p. 11. These alternate
`
`definitions are utterly unrelated to semiconductor manufacturing technology, and
`
`the Board followed the Wrong path in construing a term of art in the semiconductor
`
`industry.
`
`

`

`— 6 —
`
`IPR2013-00068
`
`B.
`
`The Board Definition is Broad Beyond Reasonable Bounds
`
`In IPRS, a claim term has “the broadest reasonable construction in light of
`
`the specification of the patent in which it appears.” 37 CFR §42.100(b) [emphasis
`
`added]. However, the task is not to find the broadest abstract meaning of Words in
`
`a phrase. Rather, it is to find the broadest construction that is reasonable in light of
`
`the specification of the patent in which it appears. The Federal Circuit requires that
`
`USPTO claim interpretations must be reasonable and in harmony with the
`
`specification.
`
`It has
`
`reversed the Board for applying unreasonably broad
`
`interpretations of claim language to support rejections.1
`
`Phillips ’ admonitions apply even when seeking the broadest reasonable
`
`interpretation. First, the Rule still specifies “in light of the specification.” Second,
`
`the Federal Circuit crafted no carVe—out for USPTO claim constructions.
`
`1.
`
`The Claims Use “Through” in Different Contexts
`
`The claims use the word “through” in different contexts. Claims 36, 43, 51,
`
`59, 66, 73, and 81 refer to “electrical contact through an opening,” and claims 14
`
`and 24 use a substantially similar phrase, “electrical Contact through openings.”
`
`1In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012); In re Rehrig
`Pacific Co, 461 Fed. Appx 942 (Fed. Cir. 2012) (non-precedential); In re Suitco
`Surface, 603 F.3d 1255 (Fed. Cir. 2010); In re Vaidyanathan, 381 Fed. Appx. 985,
`96 USPQ2d 1507 (Fed. Cir. 2010) (non—precedential); In re Wheeler, 304 Fed.
`Appx. 867 (Fed. Cir. 2008) (non-precedential); In re Buszara’, 504 F.3d 1364 (Fed.
`Cir. 2007).
`
`

`

`- 7 -
`
`|PR2013-00068
`
`Claims 5, 20, and 30 recite contact “through a contact hole.” Some of the claims
`
`use “through” in other phrases, e.g., claim 31 (flexible printed circuit in “electrical
`
`contract with the external connection line through a transparent conductive layer.”)
`
`Ex. 1001, p. 20, col. 17, 11. 53-55. See also, claim 38, id. col. 18, 11. 36-38 (same);
`
`claim 46, id. p. 21, col. 19, 11. 27-29 (electrical contact with second conductive line
`
`through transparent conductive film). Claim 54 recites “direct contact through an
`
`opening in the second insulating film” and that the second conductive line and the
`
`flexible printed circuit are “in electrical contact through the transparent conductive
`
`layer.” Id. col. 20, 11. 21-26. Claims 61, 68, and 76 have the same two uses.
`
`In all of these contexts, the word “through” fits with SEL’s definition of
`
`“because of’ or “by virtue of.” However, the Board’s construction of “between” or
`
`“around” is inapposite and inapplicable.
`
`2.
`
`The Claims Also Distinguish Between “Contact” and
`6
`‘Contact Through an Opening”
`
`When the inventors meant to call for contact unrelated to a contact opening,
`
`they used appropriate language for that. This is ubiquitous in the claims. See claim
`
`1 (direct contact with the first insulating film; direct contact with the two second
`
`conductive layers; direct contact with the two transparent conductive layers; direct
`
`contact with the second insulating film)?
`
`2 Accord, claims 5, 10 (direct contact with the second insulating film; Contact with
`the first insulating film; portion the first insulating film and a respective portion of
`
`

`

`— 8 -
`
`lPR2013—OOO68
`
`The phrase at issue here, contact through an opening, always denotes that a
`
`contact is made via the opening. Something has to reach into the opening to
`
`establish the contact. The contact occurs because the opening permits it. For
`
`example, if auxiliary line/first conductive line and external connection line/second
`
`conductive line are separated by an insulating film disposed between them, these
`
`conductive lines can only be in contact with one another because of an opening in
`
`the insulating film. Without going through the opening, there is no contact.
`
`3.
`
`None of the Specification Uses of “Through” Support the
`Board’s Alternate Construction
`
`Nothing in the ‘204 patent supports a claim construction that contact
`
`through an opening can mean contact everywhere, including at the bottom of the
`
`opening, but not because of, or by virtue of, the opening. In every use of Contact
`
`
`
`the second insulating film...direct contact; direct contact with the respective
`portions of the transparent conductive layer; electrical contact with the flexible
`printed circuit), 21 (direct contact with the portions of the second conductive layer;
`direct Contact with the first
`insulating film; direct contact with the second
`insulating film; direct contact with the portions of the transparent conductive layer;
`electrical contact with the flexible printed circuit), 31 (“a flexible printed circuit
`over and in electrical contact with the external connection line through a
`transparent conductive film; wherein the sealant is in direct contact with the second
`insulating film”), 38 (same), 46 (contact with the sealant; a flexible printed circuit
`over and in electrical contact with the external connection line through a
`transparent conductive film; in direct contact with the second insulating film), 54
`(direct contact with the second insulating film; the first conductive line and the
`second conductive line are in direct contact; the second conductive line and the
`flexible printed circuit are in electrical contact through the transparent conductive
`layer), 61, 68, and 76 (same).
`
`

`

`- 9 -
`
`IPRZO13-00068
`
`through an opening in the specification, SEL’s construction applies.
`
`The ‘204 patent uses “through” in various contexts.
`
`In one context,
`
`“through” means that contact occurs via the opening. Another usage is:
`
`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. In the present
`embodiment, the ITO film 114 is fabricated at the same step as
`for an ITO film that forms pixel electrodes connected to the
`TFTs of the active matrix display circuit. The ITO film 114 is
`electrically connected to external circuits through the FPC 107.
`
`Ex. 1001, p. 15, col. 8, 11. 52-60 [emphasis added]. The specification speaks of
`
`through contact holes, through an ITO film, and through the FPC 107. The context
`
`in this passage shows that “through” denotes “because of’ or “by virtue of.”
`
`The ‘204 patent also uses “through” in describing how film 113 is made in
`
`Example 1. It states, “The resin inter-layer film 113 is made of organic resin such
`
`as acrylic or polyimide and is formed through deposition using a spin coating
`
`process or the like.” Io’., page 15, col. 7, 11. 3-5 [emphasis added].
`
`Another use found in the patent is in the causality sense:
`
`FIG. 15E shows a rear type projector in which light emitted
`by a light source 2402 provided in a main body 2401 is
`refiected and modulated by a pixel portion in a reflection type
`liquid crystal display device 2403. The refiected light
`is
`projected through a mirror 2404 and 2405 upon a screen 2406
`to be displayed thereon as an image.
`
`Id., p. 18, col. 14, lines 24-29. This usage together with Fig. 15E itself clearly
`
`

`

`- 10 -
`
`IPR2013-00068
`
`indicate that the mirrors cause the projecting.
`
`These examples from the ‘204 patent show that sometimes the context of
`
`“through” is causation (as in by means of the deposition/mirrors). Hence, when
`
`determining the meaning, the entire phrase must be examined and understood.
`
`‘
`
`Importantly, no usage of “through” in the specification supports the View
`
`that “(contact) through an opening” means that contact occurs at the opening but
`
`not because of or via the opening. In all instances where “through an opening” is
`
`used, it is clear that the opening causes the contact, Without exception.
`
`4.
`
`The Board’s Construction of “Through” Is Divorced From
`the Correct Context
`
`When the Board consulted a general purpose dictionary for definitions of
`
`“through,” it found some definitions beyond the context of the ‘204 patent
`
`specification. The fact that such definitions exist does not make them “reasonable
`
`in light of the Specification.” The dictionary had to account for instances Where
`
`“through” is used in Very different contexts, as in “a Walk through the flowers” and
`
`“a tour through France.” These are different from making contact through an
`
`opening in a semiconductor device. The dictionary definitions relied on by the
`
`Board for its alternate construction use the word “through” to mean “among or
`
`between; in the midst of’ (definition 2) or “here and there in; around” (definition
`
`5). Such usages do not appear to occur in the ‘204 patent claims or specification.
`
`The Board’s first interpretation of “through” is in the proper context: the
`
`

`

`-11-
`
`IPR201300068
`
`phrase means “contact which occurs because of or by virtue of the opening.” This
`
`makes sense in the context of how “contact through an opening” is used in the
`
`specification and drawings. The Board’s second interpretation of “through” is that
`
`it means “between the vertical limits of the opening.”
`
`It is unclear how the
`
`dictionary explanations cited by the Board are even relevant to this phrase at issue,
`
`and if they are, how they lead to the Board’s alternate definition.
`
`SEL respectfully submits that it is unreasonable to apply these meanings of
`
`“through” to “contact through an opening” in a semiconductor technology. The
`
`Board’s alternate definition fiindamentally changes the entire concept of “contact
`
`through an opening” from what was explained in the ‘204 patent specification.
`
`Figure 4A of the ‘204 patent shows that the electrical contact occurs at the
`
`bottom of the opening in resin inter-layer film 113, as the Board notes. However,
`
`that is unavailing. Such contact occurs due to the @ definition, not the second.
`
`The contact occurs “because of or by virtue of’ the opening in resin inter-layer
`
`film 113 to expose the top surface of external connection lines 403. Hence, it is
`
`105 SEALENT
`
`H3 RESIN INTER—I_AYER FILM
`
`~ 1--..FPC
`_’////
`
`A
`..
`ms. 4A_ ............,
`.\\\\ \\\\\\\\ ‘\\\\\\\ w
`“2F‘R5T'NTER
`1 1—\
`‘:
`.\
`
`LAYER FILM
`‘I11 UNDERLYING
`FILM
`X 101SUBSTRATE
`
`_
`
`401 AUXILIARY LINES
`403
`EXTERNAL CONNECTION LINES
`
`the
`
`first
`
`definition that
`
`describes the structure here.
`
`The Board’s second
`
`.
`.
`definition
`
`.
`is merely
`
`a
`
`

`

`~ 12 —
`
`IPRZO13-00068
`
`byproduct of the first definition. In Figure 4A, a structure is shown which indicates
`
`that an intermediate structure was formed having lines 403 as an uppermost
`
`structure. Following that, resin inter-layer film 113 was added on top of it.
`
`Because resin inter-layer film 113 covers the top of lines 403, a subsequent layer
`
`(such as ITO) added later, after film 113 is added, the ITO would not touch or
`
`contact the external connection lines 403. Film 113 prevents it.
`
`To permit that contact to be made, an opening had to be provided before
`
`depositing the ITO 114. That opening is shown at the right side of Figure 4A --
`
`which the Board itself cites. Having created that opening,
`
`ITO 114 was
`
`subsequently added. Part of it contacts the top surface of external connection lines
`
`403 whose upper surface had been exposed by the opening. Subsequently, flexible
`
`printed circuit 107 is added on top of ITO 114.
`
`It is only because of the opening
`
`through resin inter-layer film 113 that contact could be made between ITO 114 and
`
`external connection lines 403. Without the opening, ITO 114 could not contact
`
`lines 403 buried below resin inter-layer film 113. The actual Contact occurs at the
`
`bottom of the opening where external connection lines 403 are located.
`
`This relationship is referred to in the last element of claim 1 which states,
`
`“wherein the second wiring and the transparent conductive layer are in direct
`
`contact through an opening in the second insulating film.” [Emphasis added.] The
`
`sense in which this phrase is used in the claim, as fully supported by Figure 4A, is
`
`

`

`- 13 -
`
`IPRZO13-00068
`
`that Without the contact opening, the “direct contact through [the] opening in the
`
`film” would not occur.
`
`It is only because of and by virtue of the opening that
`
`the direct contact occurs. That the contact occurs at the bottom of the opening is
`
`only because the opening permitted the contact to occur.
`
`When searching for the broadest reasonable interpretation, the Board turned
`
`to the second and fifth dictionary definitions relating to walking through flowers
`
`and touring through France. These are not reasonable to apply here because they
`
`are completely outside the context of semiconductor device manufacturing. The
`
`issue is not merely the isolated Word “through,” but rather it is making electrical
`
`contact or direct contact in a semiconductor device “through an opening.”
`
`The Board’s,alternate definition changes the meaning of “through” to “at.”
`
`This is clearly unreasonable and not What
`
`is understood when artisans in the
`
`semiconductor device industry use the phrase “contact through an opening.” This
`
`alternative definition is unreasonable because it encompasses situations where the
`
`contact is made wholly independently of the opening. Such a situation is not
`
`described in the claim language or the ‘ZO4 patent specification.
`
`Also, it is plainly unsound to describe a preexisting contact that happens to
`
`be located under an opening as “contact through an opening” because “through”
`
`has no sensible meaning in that context. The Board’s claim construction
`
`unreasonably expands the meaning of “through” in this phrase and context.
`
`

`

`- 14 -
`
`|PR2013-00068
`
`C.
`
`Conclusion re the Board’s Alternate Definition
`
`The Board adopted a two—part construction of “through,” but its second part
`
`does not reflect the context of the ‘Z04 patent specification, the claims, nor the
`
`phrase in which the word‘ is used. That loss of context is the danger explained by
`
`the en banc Federal Circuit in Phillips. SEL respectfully requests the Board to
`
`reconsider its claim construction and give “contact through an opening” the
`
`construction provided by SEL and adopted correctly in the Board’s f1rst—part claim
`
`construction. The second part is an anomaly unrelated to the semiconductor device
`
`fabrication industry and should be stricken.
`
`II.
`
`INDEPENDENT CLAIMS 54, 61, 68 AND 76 DEFINE OVER
`SUKEGAWA
`
`Under the broadest reasonable claim interpretation, Sukegawa falls short of
`
`independent claims’ 54, 61, 68, and 76 feature that “the second conductive line and
`
`the transparent conductive layer are in direct contact through an opening in the
`
`second insulating film.” See SEL’s Prelim. Resp. pp. 36-38. Briefly, Sukegawa’s
`
`transparent conductive film 8 sits directly upon upper layer metal wiring 7. The
`
`opening in protective insulating film 9 beneath CMI’s red arrow shows that contact
`
`between layers 7 and 8 extends broadly, including below the remaining parts of
`
`film 9. Such contact preceded the opening which uncovered some of film 8. At the
`
`right side of Sukegawa Fig. 2C, the opening allows anisotropic conductive film 10
`
`to contact film 8. At the left side, silicone resin 13 covers the remaining, otherwise-
`
`

`

`— 15 —
`
`lPR2013-00068
`
`exposed, top surface of film 8. Clearly, this opening in Sukegawa fails to permit
`
`the contact between wiring 7 and film 8, as it preexisted. The contact is clearly not
`
`via the opening; it is beneath the opening and elsewhere.
`
`The Board ruling at p. 18 (2nd para.) appears to address claim element 54.19
`
`without mentioning it. The Board acknowledges that transparent conductive film 8
`
`- extends under the opening 14 in protective insulating film 9 but asserts that film 8
`
`extends through the through holes 6 in Sukegawa Fig. 3B. While one may say that
`
`film 8 extends into the opening 14, it clearly does not extend through the opening
`
`14 and certainly does not extend through the hole to make contact with the upper
`
`layer metal wiring 7-1. Hence the ruling is unsupported by the evidence.
`
`CONCLUSION
`
`The Board should withdraw its decision and issue a new decision based on a
`
`correct claim interpretation.
`
`Respectfully submitted,
`
`
`
`
`
`
`No. 34,1225“
`Mark J.
`Edward Manzo, Reg. No. 28,135
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`Husch Blackwell LLP
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`120 South Riverside Plaza
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`Chicago, Illinois 60606
`(312) 526-1533
`Customer No. 24628
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`lPR2013-00068
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`CERTIFICATE OF SERVICE
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`the foregoing PATENT OWNER’S REQUEST FOR
`certify that
`I
`REHEARING OF DECISION TO INSTITUTE INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. § 42.71 was served on the Petitioner by Federal
`Express Standard Overnight at the following addresses on May 8, 2013.
`
`Scott A. MoKeoWn
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`Oblon, Spivak, McClel1and, Maier & Neustadt, L.L.P.
`1940 Duke Street
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`Alexandria, VA 22314
`
`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`
`Irvine, CA 92614-2592
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` if/ff/' , » ,3,” r,«"‘»f . V :
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`Attorneysl‘for1“Ratent Owner \k\
`
`