UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`SHARP CORPORATION
`Petitioner
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00021
`Patent 7,202,843
`
`_______________
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`PRELIMINARY RESPONSE
`
`

`

` 
`
`
`
` 
`
`TABLE OF CONTENTS
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 2
`a. About U.S. Patent No. 7,202,843 (the “‘843 patent” or “Shen”) ..................... 2
`b. Petitioner’s Grounds of Challenge ................................................................... 7
`III. Claim Construction ........................................................................................... 9
`IV. Argument ........................................................................................................ 14
`a. Discussion of Jinda (Ex. 1002) ....................................................................... 14
`i.
`Jinda Fails to Disclose All Features of the Challenged Claims and Does
`Not Anticipate Shen ........................................................................................... 15
`b. Discussion of Miyai (Ex. 1003) ..................................................................... 22
`i. There is Inadequate Basis to Combine Jinda and Miyai ............................. 23
`ii. Any Combination Still Fails to Disclose All Features of the Challenged
`Claims ................................................................................................................ 28
`c. Discussion of Adachi (Ex. 1004) ................................................................... 29
`i. Adachi Fails to Disclose All Features of the Challenged Claims ............... 30
`d. Discussion of Ham (Ex. 1005) ....................................................................... 34
`i. Ham Fails to Disclose All Features of the Challenged Claims ................... 35
`e. The Board Should Exercise Its Discretion to Dismiss All Challenges Based
`on Previously-Considered Art .............................................................................. 36
`V. Conclusion ......................................................................................................... 37
` 
`
`
`
`
`
`ii 
` 
`
`

`

`TABLE OF AUTHORITIES
`
`
`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000) . 24
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.
` 713 F.3d 1369 (Fed. Cir. 2013) ..................................................................... 25, 26
`Callcopy, Inc. v. Verint Americas, Inc.,
` IPR 2013-00486 paper 11 (PTAB 2/5/2014) ........................................................ 19
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) ................ 16
`Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365 (Fed. Cir. 2006) ........................... 24
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
` IPR2013-00183, paper 12 (PTAB 7/31/2013) ...................................................... 27
`In re Bigio, 381 F.3d 1320 (Fed Cir. 2004) ............................................................. 10
`In re Oelrich, 666 F.2d 578 (CCPA 1981) .............................................................. 16
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) .......................................................... 10
`In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) .......................................................... 16
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 9
`In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) ................................................... 10
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................... 27
`MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362 (Fed. Cir. 1999) ............. 16
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ........ 15, 20, 32
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987) .... 15
`VMware, Inc. v. Electronics and Telecommunications Research Institute,
` PR2014-00901, paper 7 (PTAB 7/14/2014) ........................................................... 2
`Zenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007) .. 24
`Statutes
`
`35 U.S.C. § 312(a)(3) ........................................................................................ 19, 34
`35 U.S.C. § 314(a) .................................................................................. 1, 14, 19, 37
`35 U.S.C. § 325(d) .............................................................................................. 7, 36
`Other Authorities
`
`M.P.E.P. § 2112(IV) ................................................................................................ 16
`M.P.E.P. § 2131 ....................................................................................................... 15
`
`iii 
` 
`
`

`

`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ................. 9
`Rules
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
`37 C.F.R. § 42.22(a)(2) ....................................................................................... 2, 20
`37 C.F.R. § 42.65(a) ................................................................................................... 1
`37 C.F.R. § 42.100(b) ......................................................................................... 9, 10
`37 C.F.R. § 42.104(b)(4) ......................................................................... 2, 19, 20, 34
`37 C.F.R. § 42.104(b)(5) ............................................................................... 2, 20, 32
`
`
`
`
`
`iv 
` 
`
`

`

`
`
`Exhibit
`
`2001
`
`
`2002
`
`
`2003
`
`
`2004
`
`
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`
`
`Description
`
`U.S. Patent No. 5,090,794, issued to Akitsugu et al., assigned to
`Sharp Kabushiki Kaisha
`
`U.S. Patent No. 5,457,551, issued to Culter et al., assigned to
`Planar Systems, Inc.
`
`U.S. Patent No. 6,091,392, issued to Yoichi, assigned to Seiko
`Epson Corporation
`
`U.S. Patent No. 6,184,951, issued to Harrold et al., assigned to
`Sharp Kabushiki Kaisha
`
`
`v 
` 
`
`

`

`
`
` 
`
`I.
`
`Introduction
`
`The Petition for inter partes review of U.S. Patent No. 7,202,843 (“the ’843
`
`patent”) should be denied and no trial instituted because there is no “reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a).
`
`The Petition presents grounds for challenge against claims 1, 4, 8, and 9 of
`
`the ‘843 patent based on anticipation and obviousness. But Petitioner fails to
`
`consider the full claim language of the challenged claims, and instead invites the
`
`Board to create its own basis for rejection by citing broadly to many portions of the
`
`prior art without pinpointing Petitioner’s allegations for rejection, in violation of
`
`the Board’s rules. Additionally, Petitioner improperly relies on the doctrine of
`
`inherency for many claim elements without establishing any factual support as
`
`required under law. Moreover, Petitioner’s obviousness-based challenges not only
`
`fail to reach every feature of the challenged claims; they also lack sufficient
`
`rationale for why a person of ordinary skill in the art would have modified the prior
`
`art to reach the claimed invention. And Petitioner does not include any expert
`
`testimony, resulting in numerous instances of attorney argument that lacks any
`
`“underlying facts or data” on which it is based, in violation of 37 C.F.R. § 42.65(a)
`
`Finally, the claim charts presented in the Petition are replete with attorney
`1 
`
` 
`
`

`

`argument and characterizations, once again in violation of the Board’s rules, and
`
`all such argument should be disregarded by the Board.1
`
`Further, the Petition is incomplete and in violation of the Board’s governing
`
`requirements set forth at least in 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4), and
`
`42.104(b)(5). Patent Owner also reserves its right to challenge Petitioner’s proper
`
`naming of all the real parties in interest, as required by 37 C.F.R. § 42.8(b)(1), and
`
`to seek additional discovery in support of this challenge.
`
`For these reasons and more, the Petition fails to meet its burden in
`
`establishing a reasonable likelihood of success on any challenged claim.
`
`Background
`
`a. About U.S. Patent No. 7,202,843 (the “‘843 patent” or “Shen”)
`
`II.
`
` 
`
` 
`
`The ‘843 patent was filed as U.S. Patent application no. 10/707,741 on
`
`January 8, 2004 and claims foreign priority to and the benefit of Taiwan
`
`                                                            
`1 “If there is any need to explain how a reference discloses or teaches a limitation,
`
`that explanation must be elsewhere in the petition—not in a claim chart.” VMware,
`
`Inc. v. Electronics and Telecommunications Research Institute, PR2014-00901,
`
`paper 7 (PTAB 7/14/2014) (Order to Correct Non-Compliant Petition by APJ
`
`Quinn, for a panel consisting of APJs McNamara, Quinn, and Anderson). 
`
`2 
` 
`
`

`

`application no. 92132122 A, filed on November 17, 2003. The title of the ‘843
`
`patent is “DRIVING CIRCUIT OF A LIQUID CRYSTAL DISPLAY PANEL
`
`AND RELATED DRIVING METHOD.” Indeed, the ‘843 patent discloses a
`
`driving circuit for a liquid crystal display (“LCD”) panel and a method of driving.
`
`A conventional LCD panel includes a source driver connected to data lines
`
`arranged in a first direction, a gate driver connected to scan lines arranged in a
`
`second direction, and a matrix of pixels arranged at the intersection of each scan
`
`line and data line. Shen at Fig. 4. The LCD panel is driven by driving circuitry that
`
`applies “data impulses, scan voltages, and timing signals” according to frame data
`
`for the pixels. Id. at 1:29. The data impulses are applied to the pixels according to
`
`the appropriate grey levels required for a given frame. Id. at 1:50-52. However, as
`
`Shen explains, there is a “time delay when charging liquid crystal molecules” when
`
`applying a data impulse in order to allow the molecules to twist and achieve the
`
`correct gray levels for a pixel. Id. at 1:62-65. Therefore, Shen discloses a technique
`
`referred to as overdriving the pixel. This technique includes “applying a higher or a
`
`lower data impulse to the pixel electrode to accelerate the reaction speed of the
`
`liquid crystal molecules, so that the pixel can reach the predetermined gray level in
`
`a predetermined frame period.” Id. at 2:3-7.
`
`3 
` 
`
`

`

`In one embodiment, the driving circuit includes a blur clear converter, a
`
`source driver, and a gate driver. An embodiment of driving circuit 10 is shown
`
`below from Fig. 3.
`
`
`
`In this driving circuit 10, Shen shows that the blur clear converter 14 is
`
`distinct from and arranged upstream of the gate driver 20 and source driver 18, and
`
`receives frame signals G and control signals C of signal controller 12.
`
`Embodiments of the blur clear converter are shown in further detail in Fig. 7 and
`
`Fig. 8. As Shen explains with respect to Fig. 7, “two pieces of pixel data of each
`
`pixel in every frame period are generated by the blur clear converter 14.” Id. at
`
`4:41-43. And according to the driving method, overdriven pulses are provided
`
`twice per frame. See, e.g., Id. at Fig. 5.
`
`4 
` 
`
`

`

`Petitioner challenges the validity of claims 1, 4, 8, and 9 of the ‘843 patent.
`
`Of these challenged claims, claims 1 and 4 are independent.
`
`According to its preamble, claim 1 is directed to a “driving circuit for
`
`driving an LCD panel.” Claim 1 is presented below, with features relevant to claim
`
`construction in bold for the Board’s reference:
`
`1. A driving circuit for driving an LCD panel, the LCD panel
`comprising:
`a plurality of scan lines;
`a plurality of data lines; and
`a plurality of pixels, each pixel being connected to a
`corresponding scan line and a corresponding data line, and each
`pixel comprising a liquid crystal device and a switching device
`connected to the corresponding scan line, the corresponding
`data line, and the liquid crystal device,
`the driving circuit comprising:
`a blur clear converter for receiving frame data every
`frame period, each frame data comprising a plurality of pixel
`data and each pixel data corresponding to a pixel, the blur clear
`converter delaying current frame data to generate delayed frame
`data and generating a plurality of overdriven pixel data within
`every frame period for each pixel;
`a source driver for generating a plurality of data
`impulses to each pixel according to the plurality of overdriven
`pixel data generated by the blur clear converter and applying
`the data impulses to the liquid crystal device of the pixel via the
`
`5 
` 
`
`

`

`scan line connected to the pixel within one frame period in
`order to control transmission rate of the liquid crystal device;
`and
`
`a gate driver for applying a scan line voltage to the
`switch device of the pixel so that the data impulses can be
`applied to the liquid crystal device of the pixel.
`
`
`
`Claim 4 differs from claim 1 in that claim 4 is directed to a method for
`
`“driving a liquid crystal display (LCD) panel.” Claim 4 is shown below in full,
`
`with elements relevant to claim construction in bold for the Board’s reference:
`
`4. A method for driving a liquid crystal display (LCD) panel, the LCD
`panel comprising:
`a plurality of scan lines;
`a plurality of data lines; and
`a plurality of pixels, each pixel being connected to a
`corresponding scan line and a corresponding data line, and each
`pixel comprising a liquid crystal device and a switching device
`connected to the corresponding scan line, the corresponding
`data line, and the liquid crystal device, and
`the method comprising:
`receiving continuously a plurality of frame data;
`generating a plurality of data impulses for each pixel
`within every frame period according to the frame data; and
`applying the data impulses to the liquid crystal device of one
`of the pixels within one frame period via the data line
`
`6 
` 
`
`

`

`connected to the pixel in order to control a transmission rate of
`the liquid crystal device of the pixel.
`The Petitioner argues that claims 4, 8, and 9 require the “generation of a
`
`plurality of data impulses within a single frame” but not “overdriven pixel data.”
`
`See Pet. at 4. Even assuming that Petitioner’s argument on this point is accurate
`
`(which Patent Owner does not concede), Petitioner’s challenge cannot succeed and
`
`trial should not be instituted for the reasons explained below. However, Patent
`
`Owner expressly reserves the right to respond more fully to Petitioner’s assertion
`
`about the scope of claim 4, and to provide evidence in support in its full Response
`
`(should one be necessary) as to whether claims 4, 8, and 9 also require overdriven
`
`pixel data. b. Petitioner’s Grounds of Challenge
`
` 
`
`The asserted grounds identified in the Petition rely upon four prior art
`
`references, two of which were already considered by the examiner during
`
`prosecution. Notably, the Petition fails to inform the Board that the Jinda and Ham
`
`references (defined below) were considered by the examiner, and that claims were
`
`properly allowed over these references. Thus, even if the Petition were not
`
`deficient in its grounds of challenge based on Jinda and Ham for the reasons
`
`discussed below, 35 U.S.C. § 325(d) gives the Board statutory discretion to dismiss
`
`these grounds: “[i]n determining whether to institute or order a proceeding under
`
`7 
` 
`
`

`

`this chapter, chapter 30, or chapter 31, the Director may take into account whether,
`
`and reject the petition or request because, the same or substantially the same
`
`prior art or arguments previously were presented to the Office.” (emphasis
`
`added). The claims of the ‘843 patent were rightfully allowed over both Jinda and
`
`Ham during examination. The Board should not disturb the examiner’s correct
`
`conclusion.
`
` Petitioner did not submit and does not rely upon any expert declaration in
`
`support of the grounds of rejection presented in its Petition.
`
`The purported grounds of rejection are as follows:
`
`Ground Basis
`
`Reference
`
`1
`
`2
`
`3
`
`Anticipation of
`
`U.S. Patent Application Publication No.
`
`claims 1, 4, 8, and 9
`
`2002/0044115 to Jinda et al. (Ex. 1002) (“Jinda”)
`
`Obviousness of
`
`Jinda + Japanese Patent Laid-Open Publication
`
`claims 1, 4, 8, and 9
`
`No. HEI 6-62355 to Miyai (Ex. 1003) (“Miyai”)
`
`Anticipation of
`
`U.S. Patent Application Publication No.
`
`claims 1, 4, 8, and 9
`
`2001/0038369 to Adachi et al. (Ex. 1004)
`
`(“Adachi”)
`
`4
`
`Anticipation of
`
`U.S. Patent Application Publication No.
`
`claims 4, 8, and 9
`
`2004/0196229 to Ham (Ex. 1005) (“Ham”)
`
`
`
`8 
` 
`
`

`

`Throughout this Preliminary Response, for ease of understanding, Patent
`
`Owner will refer to these prior art references by the names indicated above, rather
`
`than by exhibit number. These prior art references are described below at Section
`
`IV, in conjunction with the arguments presented in this Preliminary Response.2
`
`III. Claim Construction
`
` 
`
`The standard for construing claim terms in this proceeding is not in dispute.
`
`Since the ‘843 patent is not expired, the Board will interpret claims using the
`
`broadest reasonable interpretation as understood by one of ordinary skill in the art
`
`and consistent with the disclosure. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO should
`                                                            
`2 Patent Owner reserves its right to present further argument and evidence related to
`
`these prior art references and the content of the Petition and supporting Exhibits if
`
`Inter Partes Review is instituted, consistent with the Board’s Rules and practice.
`
`No waiver is intended by any argument withheld by Patent Owner at this stage of
`
`the proceeding. 
`
`9 
` 
`
`

`

`only limit the claim based on the specification . . . when [it] expressly disclaim[s]
`
`the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). Further,
`
`“[a]lthough an inventor is indeed free to define the specific terms used to describe
`
`his or her invention, this must be done with reasonable clarity, deliberateness, and
`
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The Board will not
`
`read a particular embodiment appearing in the written description into the claim, if
`
`the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d
`
`1181, 1184 (Fed. Cir. 1993).
`
`Petitioner contends that “the terms of Claims 1, 4, 8 and 9 of the ‘843 Patent
`
`are generally clear on their face, and should be given their broadest reasonable
`
`construction in light of the specification of the ‘843 Patent.” Pet. at 18 (citing to 37
`
`C.F.R. § 42.100(b)). To simplify this Preliminary Response only, and without
`
`waiving its right to identify terms for construction, or present constructions or
`
`evidence in support in a Response (should one be necessary), Patent Owner
`
`Surpass will mostly respond to the challenges based on Petitioner’s constructions.3
`
`There are, however, two exceptions. For two terms, Petitioner purports to apply the
`
`broadest reasonable constructions, but actually interprets the terms inconsistent
`
`                                                            
`3 Patent Owner, like Petitioner, notes that the standards of construction applied in
`
`this proceeding are different from the standards applied in the related litigation. 
`
`10 
` 
`
`

`

`with that standard. As a result, Petitioner improperly fails to consider every
`
`claimed feature in its challenges. These two terms are:
`
`1. “Blur clear converter” – Petitioner proposes no construction for this
`
`term in Section VII of the Petition, the section dedicated to Claim
`
`Construction. However, in Section VIII, Petitioner generally
`
`characterizes the “blur clear converter” of claim 1 as a “circuit that
`
`generates two or more overdriven impulses for each frame period, for
`
`each pixel” without further explanation. Petitioner’s purported
`
`construction appears to be based on a selected portion of claim 1’s
`
`language for the “blur clear converter,” without regard for its
`
`remaining claimed features. What’s more, in Petitioner’s claim charts
`
`and related argument, Petitioner makes no effort to identify the
`
`portion(s) of the prior art that allegedly correspond to the “blur clear
`
`converter” in the ‘843 patent’s claim 1. Instead, Petitioner merely
`
`lumps the “blur clear converter” together with a “drive circuit” or
`
`“driving circuit” from the prior art. See, e.g., Pet. at 29, 35, and 42.
`
`This is not appropriate, since the claimed features of claim 1 require
`
`the blur clear converter to, inter alia, generate “a plurality of
`
`overdriven pixel data within every frame period for each pixel,” and
`
`the source driver to generate “a plurality of data impulses to each
`
`11 
` 
`
`

`

`pixel according to the plurality of overdriven pixel data generated by
`
`the blur clear converter … .” For the Board to be able to determine
`
`whether those features exist in the prior art (which Patent Owner
`
`contends they do not), both the “blur clear converter” and “source
`
`driver” must be specifically identified in the prior art, and it must be
`
`shown that they interact with each other in the manner recited in the
`
`claims. The Petition fails to do this. Accordingly, to the extent the
`
`Board agrees with Petitioner that the “blur clear converter” should be
`
`given its broadest reasonable interpretation (“BRI”), the BRI should
`
`not be so broad as to render this term’s construction indistinguishable
`
`from the construction of a “drive circuit” or “driving circuit.” As a
`
`result, Petitioner’s failure to specifically identify a “blur clear
`
`converter,” rather than just a driving circuit, in any of the asserted
`
`prior art is fatal to each challenge of claim 1.
`
`2. “generating” – this term appears in both claim 1 and claim 4. In claim
`
`1, as discussed above, the term appears as “generating a plurality of
`
`overdriven pixel data within every frame period for each pixel,” and
`
`“generating a plurality of data impulses to each pixel according to the
`
`plurality of overdriven pixel data generated by the blur clear
`
`converter.” ‘843 patent at 6:8-17. In claim 4, the term appears within
`
`12 
` 
`
`

`

`the phrase “generating a plurality of data impulses for each pixel … .”
`
`Id. at 7:13-15. While Petitioner asserts that “generating” should be
`
`given its BRI, Petitioner fails to address this term in every challenge.
`
`For example, in the challenge based on Adachi, Petitioner alleges that
`
`“Adachi teaches applying a plurality of overdriven data impulses to
`
`the LCD panel.” Pet. at 38 (emphasis added). Even assuming
`
`Petitioner is correct with this characterization, a complete challenge of
`
`claim 1 requires consideration of both the “applying” and
`
`“generating” features recited in the claims. Specifically, claim 1
`
`recites, in relevant part, “a source driver for generating a plurality of
`
`data impulses … and applying the data impulses to the liquid crystal
`
`device of the pixel … .” (emphasis added). Similarly, claim 4 recites
`
`“generating a plurality of data impulses for each pixel within every
`
`frame period according to the frame data” and “applying the data
`
`impulses to the liquid crystal device.” (emphasis added). Petitioner’s
`
`remaining argument on Adachi, spanning pages 38-44 of the Petition,
`
`never addresses how or even whether Adachi generates the data
`
`impulses as required by claims 1 and 4. While Petitioner contends that
`
`it is construing “generating” according to its BRI, Petitioner should
`
`not be permitted to disregard this feature entirely in its challenges.
`
`13 
` 
`
`

`

`IV. Argument
`
` 
`
`The institution of an inter partes review requires Petitioner to establish that
`
`there is a “reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). This requires
`
`an element-by-element analysis of the claims at issue. But rather than presenting
`
`the necessary element-by-element analysis, Petitioner has focused on the few
`
`similarities between the prior art and Shen (for example, pixels and data impulses)
`
`without addressing other elements such as the “blur clear converter” and
`
`“generating.” None of Petitioner’s challenges meet the required threshold and the
`
`Board should deny the Petition and decline to institute the inter partes review.
`
`a. Discussion of Jinda (Ex. 1002)
`
` 
`
`Petitioner fails to inform the Board in the Petition that Jinda was considered
`
`by the examiner during prosecution of the ‘843 patent, and that the ‘843 patent was
`
`properly allowed over Jinda. According to its face, Jinda was published on April
`
`18, 2002, and discloses a set of frame memories and an arithmetic unit as part of a
`
`driving circuit. Jinda at Fig. 1; ¶36. Fig. 1 below is shown for example:
`
`14 
` 
`
`

`

`Although a liquid crystal display device is also shown as a block in Figs. 1,
`
`8, 10, 13, and 15, Petitioner concedes that no details are provided in Jinda on the
`
`
`
`specific arrangement of pixels, scan lines, data lines, switching devices, source
`
`driver, or gate driver. Pet. at 27.
`
`i.
`
`Jinda Fails to Disclose All Features of the Challenged
`Claims and Does Not Anticipate Shen
`
` 
`
` “A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” M.P.E.P. § 2131, quoting Verdegaal Bros. v. Union Oil Co. of
`
`California, 814 F.2d 628, 631 (Fed. Cir. 1987). Furthermore, an anticipatory
`
`reference must not only “disclose all elements of the claim within the four corners
`
`of the document,” it must disclose the structure “arranged as in the claim.” Net
`
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`
`In arguing anticipation of claims 1, 4, 8, and 9 of the ‘843 patent based on
`
`Jinda, the Petition hits a number of stumbling blocks. Among the clearest of errors,
`
`15 
` 
`
`

`

`the Petition improperly relies upon the theory of inherency for most elements of
`
`claims 1, 4, and 8. Specifically, Petitioner argues that Jinda “inherently” discloses
`
`no fewer than ten features (out of sixteen charted features) in the claim charts
`
`spanning pages 28-32 of the Petition. But not only does the Petition fail to support
`
`each argument of inherency according to the standards in place under U.S. law, it
`
`also clearly misapplies the doctrine of inherency.
`
`For a theory of inherency to succeed, it is not enough that the missing
`
`disclosure could be present. Rather, the missing disclosure must necessarily be
`
`present in the cited reference. “The fact that a certain result or characteristic may
`
`occur or be present in the prior art is not sufficient to establish the inherency of that
`
`result or characteristic.” M.P.E.P. § 2112(IV) quoting In re Rijckaert, 9 F.3d 1531,
`
`1534 (Fed. Cir. 1993); see also MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d
`
`1362, 1365 (Fed. Cir. 1999). Inherency may not be established by probabilities or
`
`possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). For establishing
`
`inherency, that which is missing in the express description must necessarily be
`
`present and would be so recognized by one with ordinary skill in the art.
`
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The
`
`Petition lacks any evidence on this point, and therefore cannot possibly meet its
`
`burden for reliance on inherency.
`
`16 
` 
`
`

`

`Although Jinda discloses a block drawing of a liquid crystal display panel at
`
`Figs. 1, 8, 10, 13, and 15, the Petition lacks any evidence that this block drawing
`
`necessarily discloses all allegedly inherent features of the LCD panel recited in
`
`claims 1 and 4. Moreover, the Petition lacks any factual support (such as by expert
`
`declaration) that these missing features must necessarily be present in Jinda and
`
`would be so recognized by one with ordinary skill in the art. At page 28, the
`
`Petition contends that it would be impossible to apply a desired voltage to a pixel
`
`“without a scan line, a data line, and a switching device (e.g., a TFT) connected to
`
`each pixel” but even this statement is mere attorney argument and is not supported
`
`with evidence or citation. Most importantly, Petitioner’s statement is not even true.
`
`Patent Owner’s Exhibits 2001, 2002, 2003, and 2004 each show or describe a
`
`matrix LCD structure in which each pixel does not include a switching device. See
`
`Ex. 2001 at 1:54-61; Ex. 2002 at 1:14-30; Ex. 2003 at Fig. 3; Ex. 2004 at 4:25-32.
`
`Thus, Jinda does not inherently teach a switching device because a switching
`
`device is not necessarily included in every LCD panel.
`
`Ex. 2004 further discloses replacement of a TFT with a thin film diode
`
`arrangement. So Petitioner’s attorney argument--that a TFT is inherent--is simply
`
`untrue. Additionally, two of these exhibits that directly undercut Petitioner’s
`
`argument are assigned to Petitioner Sharp itself.
`
`17 
` 
`
`

`

`Petitioner makes much of the fact that the European Patent Office rejected
`
`the foreign counterpart application to Shen, and allegedly concluded that the
`
`components of an LCD display “(e.g. scan lines, data lines, switching devices)” are
`
`“implicitly” disclosed in Jinda. Pet. at 25 (citing to Ex. 1007 at 41). But this is not
`
`the standard under U.S. law, and does not cure Petitioner’s inherency
`
`shortcomings. Jinda does not disclose scan lines, data lines, or switching devices,
`
`and Petitioner has not presented even a scintilla of evidence that such features are
`
`inherently and necessarily disclosed under U.S. law discussed above. The EPO’s
`
`conclusion is neither relevant nor binding on the Board.
`
`Accordingly, the theory of inherency cannot be used to shore up Petitioner’s
`
`deficient challenge of anticipation by Jinda. This reason is enough for the Board to
`
`deny Petitioner’s challenges against claims 1, 4, 8, and 9 based on Jinda alone.
`
`However, it is not the only flaw in Jinda.
`
`Petitioner’s challenge of claim 1 based on Jinda suffers also from the flaw
`
`discussed above regarding the proper construction of the “blur clear converter.” In
`
`Petitioner’s claim chart, Petitioner fails to address each element of claim 1.
`
`Specifically, the claimed features of the “driving circuit comprising: a blur clear
`
`converter … “ are treated by Petitioner as one in the same. Petitioner relies upon
`
`Jinda’s “drive circuit” to disclose both the “driving circuit” and the “blur clear
`
`converter” of claim 1. Pet. at 29. Petitioner also never makes any effort to pinpoint
`
`18 
` 
`
`

`

`Jinda’s structure that corresponds to claim 1’s “source driver.” Id. Instead,
`
`Petitioner merely argues that “Jinda discloses generating a plurality of data
`
`impulses to each pixel … “ without addressing the “source driver” feature of claim
`
`1. Id. Essentially, Petitioner is inviting the Board to figure out which of Jinda’s
`
`components should be characterized as the “blur clear converter” and the “source
`
`driver” of claim 1. But Jinda does not disclose adequate details for this
`
`characterization to occur, and in any case it would be improper for the Board to
`
`substitute its own analysis for Petitioner’s. See Callcopy, Inc. v. Verint Americas,
`
`Inc., IPR 2013-00486 paper 11 at 10 (PTAB 2/5/2014) (Decision Denying
`
`Institution of Inter Partes Review by APJ Weatherly, for a panel consisting of
`
`APJs Bisk, Weatherly, and Bouche) (citing to 35 U.S.C. § 312(a)(3); 37 C.F.R. §
`
`42.104(b)(4)). The burden of establishing a “reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in the
`
`petition” is Petitioner’s burden alone to carry. 35 U.S.C. § 314(a).
`
`Additionally, even assuming that Petitioner had properly identified a
`
`structure within Jinda’s driving