SEL EXHIBIT 2011
`
`INNOLUX CORPORATION V. PATENT OF SEMICONDUCTOR ENERGY
`
`LABORATORY CO, LTD.
`
`IF’R2013-00068
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO, LTD.
`Patent Owner
`
`CASE IPRZO‘I 3-00068
`
`PATENT 8,068,204
`
`DECLARATION OF MICHAEL J. ESCUTI
`
`

`

`1, Michael J. Eseuti, do hereby declare and state that all statements made herein are
`
`based on my own personal knowledge and that all statements made on information
`
`and belief are believed to be true. I further do hereby declare and state that these
`
`statements are made with the knowledge that willful false statements are
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`punishable by fine or imprisonment or both under 18 U.S.C. § 1001.
`
`Dated: 29/3:le 20,3
`
`g
`
`‘
`
`'5 Z M
`
`Mic ael J. Esouti
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................. 1
`
`A. BACKGROUND AND QUALIFICATIONS .............................................................. 1
`B. COMPENSATION ................................................................................................ 6
`C.
`INFORMATION CONSIDERED ............................................................................. 6
`
`II. LEGAL STANDARD OF PATENTABILITY .................................................. 6
`
`A. ANTICIPATION .................................................................................................. 7
`B. OBVIOUSNESS ................................................................................................... 7
`C. THE PERSON OF ORDINARY SKILL IN THE ART .............................................. 10
`
`D. CLAIM CONSTRUCTION .................................................................................. 11
`
`III. THE ’204 PATENT .......................................................................................... 12
`
`A. THE BACKGROUND OF THE ’204 PATENT ...................................................... 12
`
`B. THE INVENTION OF THE ’204 PATENT ............................................................ 13
`C.
`PROSECUTION HISTORY .................................................................................. 18
`D. THE CLAIMS ................................................................................................... 19
`
`IV. PATENTABILITY OF THE ’204 PATENT ................................................... 34
`
`A. THE SUKEGAWA PATENT (U.S. PATENT NO. 5,636,329) ................................ 34
`B. THE SHIEA PATENT (U.S. PATENT NO. 5,684,555) ........................................ 44
`C.
`SHIEA WITH SUKEGAWA ................................................................................. 52
`D. THE WATANABE PA’I‘ENT (U.S. PATENT NO. 5,504,601) ............................... 54
`E.
`SHIEA WITH WATANAEE ................................................................................ 56
`
`V. CONCLUSION ................................................................................................ 58
`
`APPENDIX A ......................................................................................................... 59
`
`APPENDIX B .......................................................................................................... 60
`
`

`

`INTRODUCTION
`
`I have been retained by Semiconductor Energy Laboratory Co., Ltd. in this
`
`proceeding as an expert in the relevant art.
`
`I have been asked to provide my opinions and views on the materials I have
`
`reviewed in this case related to U.S. Patent No. 8,068,204 (the “”204 patent”) (Ex.
`
`1001), and the scientific and technical subject matter at the time the ”204 patent
`
`was filed.
`
`My opinions and underlying reasoning for these opinions are set forth
`
`below.
`
`A.
`
`Background And Qualifications
`
`I am currently a tenured Associate Professor at North Carolina State
`
`University, in the Department of Electrical and Computer Engineering. As detailed
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`below, I have over 15 years of experience directly relevant to the ”204 patent, in
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`liquid crystal display (“LCD”) technologies,
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`fabrication, optical physics, and
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`electronic materials.
`
`I received my PhD.
`
`in Electrical Engineering from Brown University in
`
`Providence, RI, in 2002. My dissertation topic focused on novel liquid crystal
`
`display systems and devices,
`
`including both experimental
`
`fabrication and
`
`theoretical study. Upon earning my Ph.D., I apprenticed as a Post-Doctoral fellow
`
`

`

`Technology,
`
`in the Netherlands, where my research focused on liquid crystal
`
`displays, and polymer-based organic light emitting diodes (“LEDs”) and thinmfilm-
`
`transistors (“TFTs”). Following this, in 2004, I joined the faculty of North Carolina
`
`State University, where I established a research laboratory for “Optowelectronics
`
`and Lightwave Engineering,” with a focus on liquid crystal displays (LCDs) and
`
`related applications.
`
`In 2005,
`
`I co-founded the start-up ImagineOptix Corporation, which
`
`commercializes liquid crystal display components, systems, and optical thin-film
`
`technology developed within my academic laboratory. Since its inception, I have
`
`been a part-time advisor to the company with the title of Chief Scientific Officer,
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`and in 2013, ljoined the Board of Directors.
`
`1 have received numerous awards and distinctions, including the following:
`
`0
`
`(2011) Presidential Early Career Award for Scientists and Engineers
`
`(“PECASE”), the highest award by the US. Government for young
`
`researchers, nominated by the National Science Foundation and personally
`
`awarded by President Barack Obama at the White House.
`
`a
`
`(201 l) Alcoa Foundation Engineering Research Achievement Award,
`
`awarded to one faculty NCSU member annually recognizing outstanding
`
`research.
`
`

`

`I
`
`(2010) Faculty Early Career Development (CAREER) Award, from the
`
`National Science Foundation (“NSF”).
`
`o
`
`(2004) Glenn H. Brown Prize for Outstanding Ph.D. Dissertation, from the
`
`International Liquid Crystal Society (“ILCS”).
`
`I
`
`(2002) New Focus Award, Top Winner, from the Optical Society of
`
`America (“USA”).
`
`0
`
`(1999) Best Student Paper Award, Society for Information Display (“SID”).
`
`- Member of the Institute of Electrical and Electronics Engineers (“IEEE”),
`
`Society of Photo—optical and Instrumentation Engineers (“SPIE”), and SID.
`
`I have co-authored over
`
`88
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`peer—reviewed journal
`
`and conference
`
`publications, and 1 book chapter. [have offered 23 invited research presentations. I
`
`am a named inventor on 5 issued and 10 pending United States patents and
`
`applications, respectively, and several additional foreign patents and applications.
`
`I have supervised the graduation of five PhD. and three MS. students, and
`
`currently advise an additional three Ph.D. students and two Post-Doctoral fellows.
`
`I have also mentored seventeen undergraduate researchers. Furthermore,
`
`I have
`
`created and/or teach several undergraduate and graduate courses relevant to the
`
`’204 patent. For example, with NSF support, I developed a laboratory course on
`
`“Liquid Crystal Displays and Organic Electronics,” wherein both graduate and
`
`

`

`undergraduate students fabricate LCDs and TFTs, among other devices.
`
`I am
`
`currently also developing a new undergraduate course entitled “Introduction to
`
`Name-Science and Technology,” wherein thin-film transistors play a prominent
`
`role. For several years,
`
`I have also taught the undergraduate “Electromagnetic
`
`Fields” course required for all majors in our department.
`
`I also took classes in
`
`LCD, VLSI, and semiconductor
`
`fabrication and design when I was
`
`an
`
`undergraduate (1992-1997) and graduate student (1997-2002).
`
`it). My research at NCSU over the last nine years has been supported by
`
`approximately $5M in external research funds, in part from several government
`
`agencies,
`
`including the NSF, the United States Air Force Research Laboratory
`
`(AFRL), the Defense Advanced Research Projects Agency (DARPA), and the
`
`National Aeronautics and Space Administration (NASA). A further part of this
`
`support also comes from several strong partnerships with industry,
`
`including
`
`Raytheon, Lockheed Martin, Teledyne Scientific & Imaging, Boulder Nonlinear
`
`Systems, MZA Associates, and ImagineOptix.
`
`11. My central expertise via training and research experience is in LCD design,
`
`fabrication, and modeling,
`
`including electronics, optics, and materials. I began
`
`working with LCDs in 1998. My first journal article on this topic (MJ. Escuti, et
`
`a]., “Enhanced Dynamic Response of the In-plane Switching Liquid Crystal
`
`Display Mode Through Polymer Stabilization,” Applied Physics Letters, vol. 75,
`
`

`

`pp. 3264—3266 (1999)) addressed switching speeds of in~plane switching (IPS)
`
`mode. In 2002, I co-authored a chapter reviewing LCD technology (GP. Crawford
`
`and MJ. Escuti, Liquid Crystal Display Technology, in "Encyclopedia of Imaging
`
`Science and Technology," ed. J.P. Hornalc (John Wiley 8.: Sons, Inc., 2002)).
`
`Several of my projects involve high resolution active—matrix displays, and the
`
`techniques used to fabricate and design them — for example, R.K. Kornanduri, et
`
`al., “Late-News Paper: Polarization-Independent Liquid. Crystal Microdisplays,”
`
`Societyfor Information Display Symposium Digest, vol. 39, pp. 236-239, 2008. In
`
`this, and other more recent projects (unpublished), my students, industrial partners,
`
`and I designed, fabricated, and assembled systems involving electrical connections
`
`to LCD panels.
`
`12.
`
`In my academic research, I direct both applied and fimdamental research for
`
`applications including efficient liquid crystal displays, photonic switches, low-loss
`
`laser beam steering for high energy applications and laser communications,
`
`VIS/IR/MIR polarization imaging, and novel holographic elements. We routinely
`
`use and often fabricate our own liquid crystal devices, substrates, and fully
`
`functional systems for direct-view and projection-displays and other applications
`
`including telecommunications, remote sensing, and laser beam steering.
`
`13.
`
`A copy of my curriculum vitae is attached as Appendix A. This includes a
`
`list of my patents and publications and a list of my prior testimony.
`
`

`

`B.
`
`Compensation
`
`14.
`
`I am being compensated at my standard rate of $330 per hour for my work in
`
`this matter. My compensation has not influenced any of my opinions in this matter
`
`and does not depend in any way on the outcome of this case.
`
`C.
`
`Information Considered
`
`15.
`
`The information I have considered in forming my opinions for this matter is
`
`set forth throughout my report and includes the documents listed in Appendix B.
`
`LEGAL STANDARD OF PATENTABILITY
`
`16.
`
`In forming my opinions and considering the patentability of the claims of the
`
`’204 patent, I am relying upon certain legal principles that counsel has explained to
`
`me.
`
`17.
`
`I understand that for an invention claimed in a patent to be found patentable,
`
`it must be, among other things, new and not obvious in light of what came before
`
`it. Patents and publications which predated the invention are generally referred. to
`
`as “prior art.”
`
`18.
`
`I understand that in this proceeding the burden is on the party asserting
`
`unpatentability to prove it by a preponderance of the evidence. I understand that “a
`
`preponderance of the evidence” is evidence sufficient to show that a fact is more
`
`likely than not.
`
`

`

`19.
`
`I understand that in this proceeding, the claims must be given their broadest
`
`reasonable interpretation consistent with the specification. The claims after being
`
`construed in this manner are then to be compared to information that was disclosed
`
`in the prior art.
`
`A.
`
`Anticipation
`
`20.
`
`I understand that
`
`the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`I have applied these
`
`standards in my analysis of whether claims of the “204 patent were anticipated at
`
`the time of the invention.
`
`21.
`
`I understand that, for a patent claim to be “anticipated” by the prior art, each
`
`and every requirement of the claim must be found, expressly or inherently, in a
`
`single prior art reference in the manner recited in the claim.
`
`I understand that
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`claim limitations that are not expressly found in a prior art reference are inherent
`
`only if the prior art necessarily includes the claim limitations.
`
`22.
`
`I understand that it is acceptable to examine extrinsic evidence outside the
`
`prior art reference in determining whether a feature, while not expressly discussed
`
`in the reference, is necessarily present within that reference.
`
`13.
`
`Obviousness
`
`

`

`23.
`
`I understand that a claimed invention is not patentable if it would have been
`
`obvious to a person of ordinary skill in the field of the invention at the time the
`
`invention was made.
`
`24.
`
`I understand that the obviousness standard is defined at 35 U.S.C. § 103(a)
`
`as follows:
`
`A patent may not be obtained though the invention is not
`
`identically disclosed or described as set forth in section 102 of
`
`this title, if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a
`
`whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said
`
`subject matter pertains. Patentability shall not be negated by the
`
`manner in which the invention was made.
`
`25.
`
`I understand that the following tenets also govern the determination of
`
`whether a claim in a patent is obvious.
`
`I have applied these standards in my
`
`consideration of whether claims of the ”204 patent would have been considered
`
`obvious at the time of the invention.
`
`26.
`
`I understand that obviousness may be shown by considering more than one
`
`item of prior art but
`
`that
`
`the prior art must teach or suggest all
`
`the claim
`
`limitations.
`
`

`

`27.
`
`1 also understand that
`
`the relevant
`
`inquiry into obviousness requires
`
`consideration of four factors:
`
`The scope and content of the prior art;
`
`The differences between the prior art and the claims at issue;
`
`The knowledge of a person of ordinary skill in the pertinent art;
`
`1.
`
`2.
`
`3.
`
`and
`
`4.
`
`Whatever objective factors indicating obviousness or non—
`
`obviousness may be present
`
`in any particular case, such factors including
`
`commercial success of products covered by the patent claims; a longwfelt need
`
`for the invention; failed attempts by others to make the invention; copying of
`
`the invention by others in the field; unexpected results achieved by the
`
`invention; praise of the invention by the infringer or others in the field; the
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`taking of licenses under the patent by others; expressions of surprise by experts
`
`and those skilled in the art at the making of the invention; and that the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`28.
`
`I understand that for a claim to be obvious based on a combination of prior
`
`art,
`
`there must be some reason, either in the references themselves or in the
`
`knowledge generally available to one of ordinary skill in the art, to modify the
`
`reference or to combine such teachings.
`
`I also understand that the hypothetical
`
`

`

`person of ordinary skill
`
`in the art must have had a reasonable expectation of
`
`success in making such combinations or modifications. Obviousness can only be
`
`established by combining or modifying the teachings of the prior art to produce the
`
`claimed invention where there is some reason to do so found either explicitly or
`
`implicitly in the references themselves or in the knowledge generally available to
`
`one of ordinary skill in the art.
`
`“The test for an implicit showing is what the
`
`combined teachings, knowledge of one of ordinary skill in the art, and the nature of
`
`the problem to be solved as a whole would have suggested to those of ordinary
`
`skill in the art.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed.
`
`Cir. 2000). See also In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988);
`
`In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
`
`29.
`
`I understand that
`
`the ’204 patent
`
`is based on a series of continuation
`
`applications from an application (09/165,628) that was filed on October 1, 1998.
`
`I
`
`understand that the ”204 patent claims the benefit of the foreign priority date of
`
`October 6, 1997.
`
`C.
`
`The Person of Ordinary Skill In The Art
`
`30.
`
`I believe a person of ordinary skill in the art in the field of the ”204 patent
`
`would be aware of liquid crystal display structures,
`
`including techniques for
`
`providing connections therein and to circuits outside a sealant in 1997.
`
`

`

`31.
`
`I understand that a “person of ordinary skill is also a person of ordinary
`
`creativity, not an automaton” and that would be especially true of anyone
`
`developing liquid crystal display structures.
`
`D.
`
`Claim Construction
`
`32.
`
`As noted above,
`
`I understand that in this proceeding the claims must be
`
`given their broadest reasonable interpretation consistent with the specification.
`
`I
`
`understand that the “broadest reasonable interpretation” is based on giving words
`
`of a claim their “plain meaning” unless such meaning is inconsistent with the
`
`specification.
`
`I understand that the “plain meaning” of a term means the ordinary
`
`and customary meaning given to the term by those of ordinary skill in the art at the
`
`time of the invention and that the ordinary and customary meaning of a term may
`
`be evidenced by a variety of sources, including the words of the claims themselves,
`
`the specification, drawings, and prior art.
`
`33.
`
`I understand that
`
`in construing claims “[a]ll words in a claim must be
`
`considered in judging the patentability of that claim against the prior art.” (MPEP §
`
`2143.03, citing In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
`
`1970)).
`
`34.
`
`I understand that extrinsic evidence may be consulted for the meaning of a
`
`claim term as long as it is not used to contradict claim meaning that is
`
`unambiguous in light of the intrinsic evidence. Phillips v. AWH Corp, 415
`
`

`

`F.3d 1303, 1324 (Fed. Cir. 2005) (citing Vitronfcs Corp. v. Conceprronfc,
`
`Inc, 90 F.3d 1576, 1583-84 (Fed. Cir. 1996)). I also understand that in
`
`construing claim terms,
`
`the general meanings gleaned from reference
`
`sources must always be compared against the use of the terms in context,
`
`and the intrinsic record must always be consulted to identify which of the
`
`different possible dictionary meanings is most consistent with the use of the
`
`words by the inventor. See, cg, Ferguson Beauregard/Logic Controls v.
`
`Mega Systems, 350 F.3d 1327, 1338, 69 USPQ2d 1001, 1009 (Fed. Cir.
`
`2003)
`
`III.
`
`THE ’204 PATENT
`
`A.
`
`The Background Of The ’204 Patent
`
`35.
`
`The ’204 patent relates to an LCD device having, among other things, an
`
`auxiliary line, an external connection line, and structures patterned in specific
`
`locations of an LCD substrate to create a uniform gap between the LCD substrates.
`
`36.
`
`Structures exist under the sealant 105, mainly an insulating film, a plurality
`
`of external connections lines 403 or “second conductive line” and auxilia
`
`lines
`
`ry
`
`401 (or “first conductive line”). According to the ’204 patent and FIG. 4A, lines
`
`403 and 401 overlap and are electrically connected in parallel. Ex. 1001, col. 8, 11.
`
`42-50. This achieves the effect of lowering electrical resistance. These wiring
`
`

`

`structures under the sealant also create a height difference compared to regions
`
`under the sealant where such wiring structures are not present.
`
`37.
`
`The ’204 patent and FIG. 4B teach that a first adjustment layer (or first
`
`conductive layer or third conductive line) is provided in the same layer as the
`
`auxiliary lines and a second adjustment layer (or second conductive layer or fourth
`
`conductive line) is provided in the same layer as the external connection lines to
`
`solve the problem of height difference.
`
`13.
`
`The Invention of the ’204 Patent
`
`38.
`
`The ’204 patent discloses reducing the height difference under the sealant by
`
`adding an “adjustment
`
`layer” or “conductive layer.”
`
`The formation of an
`
`“adjustment
`
`layer” or “conductive layer” reduces the height difference that is
`
`caused by the formation of an auxiliary line and an external connection line. Ex.
`
`1001, ’204 Patent, at FIG. 4B, col. 3, 11. 22-24, col. 9, 11. 1261, col. 14, 11. 36-41.
`
`This results in a favorable display.
`
`It is my opinion that this advantage is achieved
`
`by the following limitation, in combination with the other limitations, found. in
`
`claim 31 (with similar limitations in the other independent claims 38, 46, 54, 61,
`
`68 and 76 involved in this IPR):
`
`an adjustment layer, at least part of the adjustment layer extending under the
`sealant;
`
`

`

`39.
`
`The invention of the ”204 patent also provides the advantage of achieving
`
`low electrical resistance and low power consumption. The ’204 patent achieves
`
`this effect with the following structure disclosed in the ’204 patent: a first wiring
`
`(an auxiliary line or a first conductive line) and a second wiring (an external
`
`connection line or a second conductive line), both of which are electrically
`
`connected to each other and at least partially overlapped with each other. The ’204
`
`patent explains that a signal
`
`is transmitted to both of the two wirings (i.e.,
`
`transmitted to two paths), which results in reducing the wiring resistance for
`
`transmitting the signal. Ex. 1001, “204 Patent, col. 8, 11. 42-50. This reduces power
`
`consumption by reducing the wiring resistance. Serious problems such as the
`
`delay and deterioration of signals in the case of transmitting the clock signal or
`
`video signal to the wirings can be avoided er minimized by lowering the wiring
`
`resistance. Ex. 1001, “204 Patent, col. 8, 1. 61-col. 9, l. 11.
`
`It is my opinion that
`
`this advantage is achieved by the following limitations in claim 31 (with similar
`
`limitations,
`
`in combination with the other limitations,
`
`in the other independent
`
`claims 38, 46, 54, 61, 68 and 76 involved in this IPR):
`
`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;
`
`wherein the external connection line is electrically connected to the
`auxiliary line;
`
`

`

`40.
`
`The ”204 patent also discloses an advantageous arrangement to minimize the
`
`failure of the bonding of the sealant to the substrate 101. A person of ordinary skill
`
`in the art would know that a sealant adheres poorly to a transparent conductive film
`
`made of ITO. For example, if the ITO of film 1 14 in FIG. 4A extends under the
`
`sealant 105, the adhesion of the sealant 105 becomes weak, which is likely to cause
`
`problems such as a decrease of moisture resistance and the peeling of the substrate.
`
`The ’204 patent teaches a structure such that the sealant and the transparent
`
`conductive film do not overlap with each other. The sealant is in direct contact
`
`with the insulating film. Thus, because the transparent conductive film of the “204
`
`patent is not under the sealant, the adhesion of the sealant is strongest.
`
`It is my
`
`opinion that
`
`this advantage is achieved by the following limitations,
`
`in
`
`combination with the other limitations, in claim 31 (with similar limitations in the
`
`other contested independent claims 38 and 46):
`
`a second insulating film interposed between the sealant and the external
`connection line; and
`
`wherein the sealant is in direct contact with the second insulating film.
`
`41.
`
`In addition,
`
`this advantage is achieved by the following limitations,
`
`in
`
`combination with the other limitations, in claim 54 (with similar limitations in the
`
`other contested independent claims 61, 68, and 76):
`
`a transparent conductive layer over a first region of the second
`
`

`

`a sealant over a second region of the second conductive line;
`
`wherein the sealant is in direct contact with the second insulating film.
`
`42.
`
`Sealants
`
`are generally made of acrylate, methacrylate, or
`
`epoxide
`
`chemistries, and are essentially different types of glues or adhesives.
`
`It is known
`
`that sealants adhere to a surface because of open chemical bonds on each surface
`
`that can “grab” each other, with a strength that is dependent both on the chemistry
`
`of the sealant and surface. This property of adhesion strength must be balanced
`
`with other properties that affect its use in LCD fabrication, including viscosity,
`
`elasticity, tensile strength, and resistance to humidity and oxygen degradation and
`
`permeability. As a result of balancing all of these properties, the most common
`
`sealants used by the LCD industry at the time of the ’204 patent were based on
`
`methacrylate chemistry, which generally bonds with highest strength to insulators
`
`and glass, and has a noticeably lower strength to metals and ITO. An additional
`
`consideration is that sealant failure occurs more often when there is a plurality of
`
`materials on the bonding surface. That is, the weakest part of a seal is usually the
`
`boundary between two different surface materials, where it tends to fail sooner
`
`than if the whole seal was formed on only one surface material or the other.
`
`It is
`
`therefore desirable to avoid sealing LCDs in such a way that the sealant is in
`
`contact with a conductor (e.g., ITO) in the terminal region and with another
`
`material (e.g., insulating resin) elsewhere.
`
`

`

`43. Another advantageous effect is that a connection with high reliability can be
`
`achieved by the ’204 invention because the entire region at the terminal portion
`
`where the transparent conductive film is formed can be used as the connection area
`
`with the PFC. This occurs in FIG. 4A because resin internlayer film 113 is formed
`
`under the ITO film 114, and there will be no layer blocking the ITO film from
`
`connecting with the FPC.
`
`The entire area where the ITO film is
`
`formed
`
`corresponds to the region where the FPC can be formed. Because the unobstructed
`
`connection area will increase, the connection reliability between the ITO film and
`
`the PFC will
`
`increase. Because no other
`
`layer will be deposited over the
`
`transparent conductive film, the transparent conductive film will not be damaged
`
`due to the deposition or etching process of any such layer. Such damage would
`
`include a change in film properties and overetching. This results in a reliable
`
`connection with the FPC. One of skill in the art, at the time of the invention, would
`
`have understood that the ’204 patent teaches this advantageous effect. This effect
`
`is achieved by the following limitation in combination with the other limitations, of
`
`claims 54, 61, 68, and 76: “wherein the second conductive line and the flexible
`
`printed circuit are in electrical contact through the transparent conductive layer?”
`
`and “wherein the second conductive line and the transparent conductive layer are
`
`in direct contact through an Opening in the second insulating film”.
`
`

`

`44.
`
`The ”204 patent teaches that the transparent conductive film does not extend
`
`to the sealant so that the sealant does not overlap the transparent conductive film.
`
`In the ’204 patent, the sealant only is in direct contact with the second insulating
`
`film, which an ordinarily skilled artisan would understand increases adhesion with
`
`the sealant compared to the transparent conductive layer. A person of ordinary
`
`sltill
`
`in the art would have understood that
`
`the ITO in the ’204 patent
`
`is
`
`intentionally discontinued before the sealant region so as not to extend under the
`
`sealant.
`
`C.
`
`Prosecution History
`
`45.
`
`I was advised that the application which ultimately issued as the “204 patent
`
`was filed on January 20, 2011, and is a continuation of U.S. Application No.
`
`12/252,793, filed on October 16, 2008, which is a continuation of U.S. Application
`
`No. 11/837,588,
`
`filed on August 13, 2007, which is a continuation of US.
`
`Application No. 10/384,943, filed on March 10, 2003, which is a continuation of
`
`US. Application No. 09/865,081, filed on March 24, 2001., which is a continuation
`
`of US. Application No. 09/481,278,
`
`filed on January 11, 2000, which is a
`
`continuation of US. Application No. 09/165,628,
`
`filed on October 1, 1998.
`
`The ’204 patent also claims priority to a foreign patent, Japanese Patent
`
`Application No. JP 9-289160, filed on October 6, 1997. See Ex. 1001, ’204 patent,
`
`atl.
`
`

`

`46.
`
`I understand the prosecution history of the ’204 patent to be part of the
`
`intrinsic record of the ”204 patent.
`
`D.
`
`The Claims
`
`47.
`
`Claim 31 requires an auxiliary line, an external connection line overlapping
`
`the auxiliary line with a first insulating film interposed therebetween, a sealant,
`
`with the external connection line and auxiliary line both extending under the
`
`sealant and wherein the external connection line and auxiliary line are electrically
`
`connected. A second insulating film is interposed between the sealant and the
`
`external connection line, and the sealant
`
`is in direct contact with the second
`
`insulating film. A flexible printed circuit (“FPC”) is over and in electrical contact
`
`with the external connection line though a transparent conductive film. Further,
`
`claim 31 requires an adjustment layer that at least partly extends under the sealant
`
`and that is electrically isolated from the auxiliary line, external connection line,
`
`thin. film transistors and FPC. Claims 38 and 46 also recite similar limitations.
`
`48.
`
`Claims 38 and 46 also recite “a second adjustment layer overlapping the first
`
`adjustment layer with the first insulating film interposed therebetween”; “wherein
`
`the first adjustment layer is formed from a same layer as the auxiliary line”; and
`
`“wherein the second adjustment layer is formed from a same layer as the external
`
`connection line.”
`
`

`

`49.
`
`Claim 54 recites a first conductive line with a first insulating film over it,
`
`then a second conductive line over the first insulating film and a second insulating
`
`film over the second conductive line. The second conductive line overlaps at least
`
`part of the first conductive line and they are in electrical contact with each other.
`
`A sealant is over the second region of the second conductive line and in direct
`
`contact with the second insulating film. The claim recites a transparent conductive
`
`layer over the first region of the second conductive line wherein the second
`
`conductive line and the transparent conductive layer are in direct contact through
`
`an opening in the second insulating film. The claim also recites a FPC over the
`
`first region of the second conductive line and wherein the second conductive line
`
`and the FPC are in electrical contact through the transparent conductive layer.
`
`Finally, the claim recites a conductive layer with at least part overlapped by the
`
`sealant and wherein the conductive layer is electrically isolated from the first
`
`conductive line, second conductive line, TFTs and FPC. Claims 61, 68, and 76 all
`
`recite similar limitations.
`
`50.
`
`Additionally, claims 68 and 76 recite the following limitations: “a first
`
`conductive layer formed from a same layer as the first conductive line over the
`
`substrate”; “a second conductive layer formed from a same layer as the second
`
`conductive line over the substrate”; and “wherein the second conductive layer
`
`overlaps at least part of the first conductive layer.”
`
`

`

`51. One of ordinary skill in the art, at the time of the invention, would have
`
`understood that the claims of the ’204 patent disclose a specific layering structure
`
`and that this layering structure contributes to the advantages 1 discussed above.
`
`First, the claims require that the external connection line overlap the auxiliary line,
`
`with a first insulating film (shown below in red in annotated FIG. 4A) interposed
`
`between them. The external connection line and auxiliary line are in electrical
`
`contact through holes in the first insulating film. Second, the external connection
`
`line and auxiliary line must extend under the sealant. Third, a second insulating
`
`film (shown below in purple in annotated FIG. 4A) is interposed between the
`
`external connection line and sealant and the sealant is in direct contact with the
`
`second insulating film. Finally, a transparent conductive film/layer (shown below
`
`in blue in annotated FIG. 4A) is over the external connection line and provides
`
`electrical contact between the external connection line and the flexible printed
`
`circuit. This layering structure is required to achieve all of the above discussed
`
`advantages of the “204 patent.
`
`

`

`105 SEALENT
`
`
`
`1'13 RESIN INTER-LAYER FILM
`.
`107 FPS
`
`
`
`114 ITO
`
`112 FIRST lNTER—
`
`LAYER FILM
`
`1'11 UNDERLYING
`FILM
`
`403
`401 AUXILIARY LINES
`X 101 SUBSTRATE
`EXTERNAL CONNECTION LINES
`
`52. An ordinarily skilled artisan understands that this terminal
`
`is fabricated
`
`generally from the bottom up, beginn