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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BLUEHOUSE GLOBAL LTD.
`Petitioner
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`v.
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`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
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`Case IPR2018-01393
`Patent 9,293,545
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`PATENT OWNER’S
`PRELIMINARY RESPONSE
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`

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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`TABLE OF CONTENTS
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`Pages
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` 
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`INTRODUCTION ........................................................................................... 1 
`PETITIONER’S PROPOSED GROUND 1 FAILS TO SHOW A
`REASONABLE LIKELIHOOD THAT CLAIMS 1, 5, 7-11, 15, AND 17-20
`ARE ANTICIPATED BY TOYOTA .............................................................. 2 
`A. 
`Background of the ’545 Patent .............................................................. 4 
`B. 
`Ground 1 Fails Because Petitioner Does Not Show That Toyota
`Discloses a Step in a Lower End Portion of a Side Surface of a Metal
`Film of the Source or Drain Electrode .................................................. 9 
`Ground 1 Fails With Respect to Claims 5 and 15 Because Petitioner
`Does Not Show That Toyota, Alone or in Combination with Chung,
`Discloses the Claimed Angle Between the Side Surface of the Metal
`Film and an Upper Surface of the Glass Substrate ............................. 12 
`PETITIONER’S PROPOSED GROUND 2 FAILS TO SHOW A
`REASONABLE LIKELIHOOD THAT CLAIMS 3, 4, 13, AND 14 ARE
`RENDERED OBVIOUS BY TOYOTA IN VIEW OF AKIMOTO ............ 18 
`A.  Ground 2 Fails With Respect to Claims 3 and 13 Because Petitioner
`Does Not Provide “an adequate evidentiary basis” and “a satisfactory
`explanation” That Toyota in view of Akimoto Teaches the Source and
`Drain Electrodes Being in Contact with the Gate Insulating Film ..... 18 
`Ground 2 Fails With Respect to Claims 4 and 14 for Relying Only on
`Conclusory Statements to Support Its Proposed Combination of
`Toyota and Akimoto ............................................................................ 23 
`  CLAIM CONSTRUCTION .......................................................................... 26 
`LEVEL OF ORDINARY SKILL .................................................................. 27 
`  THE FLASCK STATEMENT SHOULD BE GIVEN LITTLE OR NO
`WEIGHT ........................................................................................................ 27 
`A.  Mr. Flasck’s Statement Is Not a Declaration or a Sworn Testimony
`Under 37 C.F.R. §1.68 ........................................................................ 27 
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`C. 
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`B. 
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`i
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`Case IPR2018-01362
`Attorney Docket No: 12732-1920IP1
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`TABLE OF CONTENTS (cont’d)
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`Pages
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`The Flasck Statement Merely Repeats Attorney Argument ............... 31 
`B. 
`  CONCLUSION .............................................................................................. 36 
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`ii
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`
`TABLE OF AUTHORITIES
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`CASES
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`PAGE(S)
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`Apple Inc. v. Chestnut Hill Sound Inc., IPR2015-01464 ......................................... 32
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
`(Fed. Cir. 1985)) ................................................................................................ 32
`Bumble Bee Foods v. Kowalski, IPR2014-00224 .................................................... 29
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) ........ 3
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00048 ............................................. 31
`Fedex v. Katz, CBM2015-00053 ............................................................................. 28
`General Electric Co. v. TAS Energy Inc., IPR2014-00163 ..................................... 32
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956
`(Fed. Cir. 2000) .................................................................................................. 16
`IBM Corporation v. Intellectual Ventures II LLC, IPR2015-01323 ........................ 29
`In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) .................................................. 2, 18
`In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380
`(Fed. Cir. 2016) ...................................................................................... 24, 25, 31
`In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) .................. 18, 23, 26, 31
`In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) ........................................................ 3
`In re Olson, 212 F.2d 590, 592, 101 USPQ 401, 402 (CCPA 1954) ...................... 16
`In re Preda, 401 F.2d 825, 826 (CCPA 1968) ........................................................... 3
`In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) ................. 16
`In re: Nuvasive, No. 2015-1670 at 10 (Fed. Cir. Dec. 7, 2016) .............................. 24
`Microsoft v. Enfish, No. 2015-1734 at 14-15 (Fed. Cir. Nov. 30, 2016) ................. 24
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) ....... 3, 18
`See Zimmer Biomet Holdings, Inc., v. Four Mile Bay, LLC, IPR2016-00011 ........ 26
`Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) ..... 2, 18
`Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) ................................... 26
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`iii
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`STATUTES
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`PAGE(S)
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`28 U.S.C. § 1746 ...................................................................................................... 30
`35 U.S.C. § 102 ................................................................................................ 2, 3, 17
`35 U.S.C. § 103 ........................................................................................................ 17
`35 U.S.C. § 312 .................................................................................................... 4, 18
`35 U.S.C. § 314 .......................................................................................................... 1
`35 U.S.C. § 316 ........................................................................................................ 31
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`OTHER
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`PAGE(S)
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`37 C.F.R. § 1.68 ................................................................................................. 28, 30
`37 C.F.R. § 42.2 ................................................................................................. 28, 30
`37 C.F.R. § 42.53 ..................................................................................................... 28
`37 C.F.R. § 42.104 ................................................................................................... 17
`37 C.F.R. § 2.20 ....................................................................................................... 30
`
`Manual of Patent Examining Procedure § 2125 (1998) ......................................... 16
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`EXHIBIT LIST
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`SEL2001 Declaration of Michael Lebby, Ph.D.
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`SEL2002 Curriculum Vitae of Michael Lebby, Ph.D.
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`SEL2003
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`Prosecution History of U.S. Application Serial No. 13/763,874
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`v
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`INTRODUCTION
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`Pursuant to 37 C.F.R. §42.107(a), Semiconductor Energy Laboratory Co.,
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`Ltd. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“IPR”) of U.S. Patent No. 9,293,545 (“the ’545 patent”) filed by
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`Bluehouse Global Ltd. (“Petitioner”).
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`Under 35 U.S.C. §314(a), in order for an IPR to be instituted, the petition
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`must establish that there is a reasonable likelihood that at least one of the
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`challenged claims is unpatentable. The petition fails to make such a showing with
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`respect to any of its grounds of unpatentability.
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`Ground 1, which is an anticipatory ground, is deficient because Petitioner
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`fails to establish that claims 1, 5, 7-11, 15, and 17-20 are disclosed by Toyota. In
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`particular, Petitioner fails to show that Toyota discloses that “each of the side
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`surface of the first metal film and the side surface of the second metal film has a
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`step in a lower end portion thereof” (emphasis added) as recited in each of claims
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`1, 5, 7-11, 15 and 17-20. Petitioner further fails to show that Toyota alone or in
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`combination with Chung discloses the “first angle” and the “second angle” recited
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`in each of claims 5 and 15.
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`Turning to Ground 2, which is an obviousness ground, Petitioner fails to
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`establish that claims 3 and 13 are rendered obvious by Toyota in view of Akimoto
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`1
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`Attorney Docket No: 12732-1924IP1
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`because no proper combination of Akimoto and Toyota results in a device having
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`“the first metal film and the second metal film [being] in contact with the gate
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`insulating film” (emphasis added). Moreover, in addressing claims 4 and 14,
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`Petitioner relies only on conclusory statements to support its proposed combination
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`of Akimoto and Toyota, failing to provide the articulated reasoning necessary to
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`establish prima facie obviousness.
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`Each of these deficiencies is fatal to the petition and justifies denial of
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`institution. Accordingly, the Board should decline to institute the IPR proceeding
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`requested by the petition.
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`PETITIONER’S PROPOSED GROUND 1 FAILS TO SHOW A
`REASONABLE LIKELIHOOD THAT CLAIMS 1, 5, 7-11, 15, AND
`17-20 ARE ANTICIPATED BY TOYOTA
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`To anticipate a claim under 35 U.S.C. §102, “each and every element as set
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`forth in the claim [must be] found, either expressly or inherently described, in a
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`single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
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`631 (Fed. Cir. 1987). Moreover, the elements must be arranged as required by the
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`claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). However, “it is proper
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`to take into account not only specific teachings of the reference but also the
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`inferences which one skilled in the art would reasonably be expected to draw
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`2
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`therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Still, the Federal Circuit
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`has stated:
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`unless a reference discloses within the four corners of the document not
`only all of the limitations claimed but also all of the limitations arranged
`or combined in the same way as recited in the claim, it cannot be said
`to prove prior invention of the thing claimed and, thus, cannot anticipate
`under 35 U.S.C. §102.
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`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
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`Indeed, if the prior art reference does not expressly set forth a particular
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`element of the claim, that reference still may anticipate if that element is “inherent”
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`in its disclosure. In re Robertson, 169 F.3d 743 (Fed. Cir. 1999). However, to
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`establish inherency, extrinsic evidence “must make clear that the missing
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`descriptive matter is necessarily present,” or inherent, in the single anticipating
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`reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
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`1991) (emphasis added). “Inherency, however, may not be established by
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`probabilities or possibilities. The mere fact that a certain thing may result from a
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`given set of circumstances is not sufficient.” Id. at 1269 (quoting In re Oelrich, 666
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`F.2d 578, 581 (CCPA 1981)) (emphasis added).
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`An IPR petition must “identif[y], in writing and with particularity, each
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`claim challenged, the grounds on which the challenge to each claim is based, and
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`3
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`Attorney Docket No: 12732-1924IP1
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`the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C.
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`§312(a)(3). However, in the instant IPR challenge, Petitioner has not shown that
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`the proposed disclosure of Toyota meets “each and every element” of the claim
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`language.
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`A. Background of the ’545 Patent
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`The ’545 patent is directed to a novel semiconductor device having, inter
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`alia, an oxide semiconductor layer. Ex. 1001 at 1:44-56, 2:37-43, 3:13-26, 11:13-
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`15. Semiconductor devices can be used in flat-panel displays such as those used in
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`televisions and smartphones. SEL2001 at ¶18. The semiconductor devices used in
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`displays include thin-film transistors (TFTs). Id. TFTs are formed using thin films
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`of semiconductor on an insulating substrate. Id.
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`Semiconductors are classified according to the polarity of their majority
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`charge carriers. Id. at ¶19. Semiconductors having majority carriers with negative
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`charge (electrons) are called n-type semiconductors, and those having majority
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`carriers with positive charge (holes) are called p-type semiconductors. Id. The
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`majority carrier type is controlled by impurity doping. Id.
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`An oxide semiconductor exhibits different characteristics from a silicon
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`semiconductor. SEL2001 at ¶21. In a silicon semiconductor, the number of
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`electrons or holes can be increased by doping the silicon semiconductor with an
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`impurity. Id. at ¶20. For example, when silicon is doped with boron (B) atoms,
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`the majority carriers are holes, and the silicon becomes a p-type semiconductor.
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`Id. When silicon is doped with donors, such as phosphorus (P) atoms, the majority
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`carriers are electrons, and the silicon becomes an n-type semiconductor. Id. A
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`transistor can be formed with an n-type silicon semiconductor, a p-type silicon
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`semiconductor, or both. Id. Complementary metal-oxide-semiconductor (CMOS)
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`transistors can also be formed using a silicon semiconductor. Id. In addition,
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`heavy doping of regions of a silicon semiconductor is performed to create an
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`ohmic contact of a metal to the semiconductor. Id.
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`Unlike a silicon semiconductor, an oxide semiconductor is difficult to dope
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`with impurities to control the majority carrier type or to create metal-
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`semiconductor ohmic contacts. Id. at ¶21. Currently, a transistor with favorable
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`characteristics can be formed with an n-type oxide semiconductor, but is difficult
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`to form with a p-type oxide semiconductor. Id. Therefore, it is difficult to form
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`CMOS transistors with an oxide semiconductor. Id.
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`In a conventional TFT, electric field intensity may be concentrated in the
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`oxide semiconductor layer at and near either the boundary separating the source
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`electrode from the channel formation region of the oxide semiconductor layer or
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`the boundary separating the drain electrode from the channel formation region of
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`the oxide semiconductor layer. Id. at ¶22. A representation of this is shown in
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`Patent Owner’s Fig. 1A.
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`Patent Owner’s Fig. 1A
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`In practice, an upper part of an area where the electric field concentration occurs
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`may be narrower than a lower part of the area where the electric field concentration
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`occurs. Id. This effect is depicted pictorially in Patent Owner’s Fig. 1B.
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`Patent Owner’s Fig. 1B
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`The increased concentration of charge carriers induced at the location of the
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`concentrated electric field intensity can affect movement of the charge carriers in
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`the channel formation region and cause deterioration of the TFT’s switching
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`characteristics and transistor performance. Id.
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`The inventors of the ’545 patent advanced the state of the art by configuring
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`a bottom-gate TFT having an oxide semiconductor layer that is capable of relaxing
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`electric field concentration in the oxide semiconductor layer and suppressing
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`deterioration of the TFT’s switching characteristics. Ex. 1001 at 1:38-43, 2:63-
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`3:12, 3:34-59, 6:38-48, 10:5-54, 12:13-20; SEL2001 at ¶23. In particular, the TFT
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`is configured such that the two side surfaces of the source and drain electrodes,
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`which face each other, each have a tapered portion so that the distance from the top
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`to the bottom of the side surface of each electrode is increased. Ex. 1001 at 3:34-
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`45, 12:13-20; SEL2001 at ¶23.
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`The ’545 patent discloses that a TFT with such a configuration may allow
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`the region of the oxide semiconductor layer at and near either the boundary
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`separating the source electrode from the channel formation region of the oxide
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`semiconductor layer or the boundary separating the drain electrode from the
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`channel formation region of the oxide semiconductor layer to function as an
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`electric-field relaxation region that relaxes the electric field concentration. Ex.
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`1001 at 3:9-12; SEL2001 at ¶23. An example of a TFT with such a configuration
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`is shown in FIG. 2 of the ’545 patent, which is reproduced below and annotated to
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`highlight the source electrode (red layer), the drain electrode (blue layer), and the
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`oxide semiconductor (purple layer).
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`7
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`’545 Patent (Ex. 1001), FIG. 2 (annotated)
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`
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`For the transistor shown above, a bottom portion of the side surface of the source
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`electrode is tapered such that the angle formed between the surface of the substrate
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`and the bottom portion of the side surface of the source electrode is different from
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`the angle formed between the surface of the substrate and the top portion of the
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`side surface of the source electrode. Ex. 1001 at 4:30-34. In addition, a bottom
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`portion of the side surface of the drain electrode is tapered such that the angle
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`formed between the surface of the substrate and the bottom portion of the side
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`surface of the drain electrode is different from the angle formed between the
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`surface of the substrate and the top portion of the side surface of the drain
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`electrode. Id. at 4:34-39; SEL2001 at ¶24.
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`8
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`B. Ground 1 Fails Because Petitioner Does Not Show That
`Toyota Discloses a Step in a Lower End Portion of a Side
`Surface of a Metal Film of the Source or Drain Electrode
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`In Ground 1, regarding “each of the side surface of the first metal film and
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`the side surface of the second metal film [having] a step in a lower end portion
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`thereof,” as recited in claims 1 and 11, Petitioner alleges that “Toyota identically
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`discloses this feature.” Pet. at 24, 41. In advancing this assertion, Petitioner
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`clarifies how it maps Toyota’s transistor structure to this feature by providing the
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`following annotated version of FIG. 8B, with annotations depicting the alleged
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`correspondence between Toyota’s transistor structure and the recited “step[s]”:
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`Pet. at 25
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`As illustrated in the annotated version of FIG. 8B, Petitioner’s annotations depict a
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`“first metal film step” and a “second metal film step” that each include two risers
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`and one tread on the side surface of the corresponding metal film.
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`
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`However, the “first metal film step” and the “second metal film step”
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`identified by Petitioner in the annotated version of Toyota’s FIG. 8B do not satisfy
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`the claim language because each of the “first metal film step” and the “second
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`metal film step” is not “in a lower end portion [of each of the side surface of the
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`first metal film and the side surface of the second metal film]”. Instead, by
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`including two risers and one tread as shown in Petitioner’s annotation of FIG. 8B,
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`Petitioner’s alleged “step” is formed on the entirety of the side surface of the
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`corresponding metal film. A comparison of the “side surface(s)” identified in the
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`petition on page 23 with the “step(s)” identified in the petition on page 25 shows
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`that each identified “step” is indeed formed in the entirety of a side surface rather
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`than “in a lower end portion thereof”:
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`Pet. at 23
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`Pet. at 25
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`This is further reinforced by how Petitioner alleges that the features of
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`claims 5 and 15 are satisfied. In advancing challenges against claims 5 and 15, the
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`Petitioner asserts that the “first angle of the step” recited in claims 5 and 15 is
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`satisfied as shown in the following annotated version of Fig. 8B:
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`
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`Pet. at 27
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`Notably, the alleged satisfaction of the recited “first angle of the step” feature
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`relies on the “step” being formed in the entirety of the side surface of the
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`corresponding metal film, indicating once more that the alleged “step” identified in
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`the petition is not formed “in a lower end portion” of the corresponding metal film,
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`as recited in claims 1 and 11. Pet. at 27, 44.
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`Because each of the “first metal film step” and the “second metal film step,”
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`as identified in the petition, is not “in a lower end portion [of each of the side
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`surface of the first metal film and the side surface of the second metal film],” the
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`11
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`Petitioner has failed to satisfy its prima facie burden of showing that Toyota
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`anticipates claims 1 and 11. Accordingly, Petitioner fails to show a reasonable
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`likelihood that it would prevail against claims 1 and 11 based on Toyota.
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`C. Ground 1 Fails With Respect to Claims 5 and 15 Because
`Petitioner Does Not Show That Toyota, Alone or in
`Combination with Chung, Discloses the Claimed Angle
`Between the Side Surface of the Metal Film and an Upper
`Surface of the Glass Substrate
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`For claims 5 and 15, Petitioner alleges that “Toyota identically discloses”
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`“wherein a first angle of the step that is made between the side surface of the first
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`metal film and an upper surface of the glass substrate is greater than or equal to
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`20° and smaller than or equal to 90°, and wherein a second angle of the step that
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`is made between the side surface of the second metal film and the upper surface of
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`the glass substrate is greater than or equal to 20° and smaller than or equal to
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`90°,” or alternatively, that these limitations are obvious over Toyota in view of
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`Chung. Pet. at 25, 28, 44.
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`In particular, Petitioner provides an annotated version of Toyota’s FIG. 8B
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`(reproduced below) and contends that “[a]s shown by the red line (which extends
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`the angle of the step of the source electrode for easy visualization), the angle
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`formed by the step at the end of the source electrode (the step) and the upper
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`surface of the substrate SUB1 (the glass substrate), which is represented by a blue
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`arc is clearly greater or equal to 20° and less than or equal to 90°.” Pet. at 27.
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`Pet. at 27
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`Petitioner makes a similar argument for the angle formed by the step at the end of
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`the drain electrode. Pet. at 30.
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`Petitioner’s arbitrarily drawn red line added to Toyota’s FIG. 8B does not
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`show an angle between the side surface of the metal film and an upper surface of
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`the glass substrate. As discussed above in section II.B, the “step” identified in the
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`petition both at page 25 and at page 27 does not satisfy the claim language, as the
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`identified “step” is not in “a lower end portion” of the side surface. Even if
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`Petitioner had identified the “step” as rising from the top of the IN layer and
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`ending at a tread at the top of the ST(D) layer as being the step “in a lower end
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`portion thereof,” which it did not, the angle shown in Petitioner’s annotated FIG.
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`13
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`Case IPR2018-01393
`Attorney Docket No: 12732-1924IP1
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`8B would not satisfy the claimed “angle of the step” because Petitioner’s identified
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`angle depends on a structure, i.e., the thickness of the ST(U) layer, that is
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`independent from and not part of the structure of the step rising from the top of the
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`IN layer to the tread at the top of the ST(D) layer and, accordingly, cannot properly
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`be the “angle of the step.”
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`To illustrate this, consider the following two figures, labeled Patent Owner’s
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`Figs. 2A and 2B. As shown in these figures, Petitioner’s identified angle changes
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`with the thickness of the ST(U) layer despite the “angle of the step” remaining the
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`same when the “step” is identified as the structure rising from the top of the IN
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`layer and ending at a tread at the top of the ST(D) layer.
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`Patent Owner’s Fig. 2A
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`14
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`Attorney Docket No: 12732-1924IP1
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`Patent Owner’s Fig. 2B
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`As an alternative argument, Petitioner provides another annotated version of
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`Toyota’s FIG. 8B (reproduced below) and contends that “Toyota’s FIG. 8B shows
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`that the angle formed between the surface of the substrate and the side surface of
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`the source electrode is equal to 90°.” Pet. at 28.
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`Pet. at 28
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`Petitioner relies on the same argument for the angle formed by the step at the end
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`of the drain electrode. Pet. at 31 (fn. 1). Petitioner’s alternate position also is
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`flawed.
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`Toyota does not indicate that its drawings are to scale and does not
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`otherwise explicitly describe the angle between the side surface of the metal film
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`and the upper surface of the glass substrate. Thus, Toyota does not expressly or
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`inherently disclose the claimed angle. As stated by the Federal Circuit in
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`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir.
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`2000):
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`Under our precedent, however, it is well established that patent
`drawings do not define the precise proportions of the elements and may
`not be relied on to show particular sizes if the specification is
`completely silent on the issue. See In re Wright, 569 F.2d 1124, 1127,
`193 USPQ 332, 335 (CCPA 1977) (“Absent any written description in
`the specification of quantitative values, arguments based on
`measurement of a drawing are of little value.”); In re Olson, 212 F.2d
`590, 592, 101 USPQ 401, 402 (CCPA 1954); cf. Manual of Patent
`Examining Procedure § 2125 (1998).
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`Petitioner further contends that “if this limitation refers to the taper angle
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`and is deemed not anticipated by Toyota’s FIG. 8B, it would at least have been
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`obvious to one skilled in the art based on Toyota’s FIG. 8B and Chung.” Pet. at
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`28-29. However, Chung also does not indicate that its drawings are to scale and
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`does not otherwise explicitly describe the angle between the tapered sides of the
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`source/drain electrodes and the upper surface of the glass substrate. Therefore,
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`Petitioner’s reliance on Chung does not cure the deficiencies of Toyota.
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`Additionally, Petitioner improperly relies on Chung in an anticipation
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`challenge based on Toyota. The petition is defective with respect to an
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`obviousness ground based on Toyota in view of Chung because it fails to properly
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`identify the prior art status of Chung (35 U.S.C. §102(a), (b), or (e)) and the
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`specific statutory authority upon which the ground is based (35 U.S.C. §103(a)) as
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`required by 37 C.F.R. §42.104 (b)(2).
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`For at least the above reasons, Petitioner has failed to show that Toyota
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`expressly or inherently discloses “wherein a first angle of the step that is made
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`between the side surface of the first metal film and an upper surface of the glass
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`substrate is greater than or equal to 20° and smaller than or equal to 90°, and
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`wherein a second angle of the step that is made between the side surface of the
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`second metal film and the upper surface of the glass substrate is greater than or
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`equal to 20° and smaller than or equal to 90°,” as recited in each of claims 5 and
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`15. Petitioner also improperly relies on Chung, which does not cure the
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`deficiencies of Toyota. Consequently, Petitioner has failed to satisfy its prima
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`facie burden to show that Toyota expressly anticipates claims 5 and 15. See e.g.,
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`Verdegaal Bros., Inc., 814 F.2d at 631; In re Bond, 910 F.2d at 832; Net MoneyIN,
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`Inc., 545 F.3d at 1371.
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` PETITIONER’S PROPOSED GROUND 2 FAILS TO SHOW A
`REASONABLE LIKELIHOOD THAT CLAIMS 3, 4, 13, AND 14 ARE
`RENDERED OBVIOUS BY TOYOTA IN VIEW OF AKIMOTO
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`An IPR petition must “identif[y], in writing and with particularity, each
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`claim challenged, the grounds on which the challenge to each claim is based, and
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`the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C.
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`§312(a)(3). However, in the instant IPR challenge, Petitioner has not shown with
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`any particularity or specificity how the proposed combinations meet the claim
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`language. Moreover, the Federal Circuit has emphasized that an obviousness
`analysis under 35 U.S.C. §103(a) may not consist of mere “conclusory
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`statements,” and instead “must be supported by a reasoned explanation.” In re
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`Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016). Rather, such analysis
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`requires both “an adequate evidentiary basis” and “a satisfactory explanation for . .
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`. a rational connection between the facts found and the choice made.” Id. at 1382.
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`A. Ground 2 Fails With Respect to Claims 3 and 13 Because
`Petitioner Does Not Provide “an adequate evidentiary basis”
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`and “a satisfactory explanation” That Toyota in view of
`Akimoto Teaches the Source and Drain Electrodes Being in
`Contact with the Gate Insulating Film
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`In Ground 2, Petitioner points to the combination of Toyota and Akimoto as
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`allegedly disclosing that “the first metal film and the second metal film are in
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`contact with the gate insulating film” as recited in claims 3 and 13. Pet. at 49-51,
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`53-54. In particular, Petitioner acknowledges that “Toyota does not expressly
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`disclose this limitation, i.e., Toyota does not show in FIG. 8B (or the
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`accompanying text) that the two-layer source electrode ST (the first metal film) or
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`the two-layer drain electrode DT (the second metal film) is physically touching (in
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`contact with) the gate insulating film GI” but contends that “Akimoto teaches that
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`the lower layers of the source electrode and drain electrode 415b/416b can be in
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`contact with the gate insulating film (not numbered in the FIGS., but the layer
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`immediately below the oxide semiconductor layer 409) in those areas where they
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`are not in contact with the oxide semiconductor layer 409.” Pet. at 49-50.
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`Petitioner contends that a POSITA would have been motivated to combine Toyota
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`and Akimoto to “eliminate the extraneous portion of the insulating film IN
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`between the gate insulating film GI and the lower layers of the source electrode
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`ST(D) and drain electrode DT(D), such that the film and these layers would now
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`be in contact with one another” (emphasis added). Pet. at 51. A comparison of
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`Toyota’s FIG. 8B and Akimoto’s FIG. 5C is provided below.
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`Toyota (Ex. 1004), FIG. 8B
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`Akimoto (Ex. 1005), FIG. 5C
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`Petitioner’s analysis fails to address the fact that Toyota describes an
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`example of interconnected devices where Toyota’s insulating film IN layer
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`between the lower layers of the source/drain electrodes and the gate insulating film
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`GI is being used for formation of a capacitance element Cstg, and, as a
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`consequence, cannot be dismissed as merely “an extraneous portion” that can be
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`readily eliminated without consequence. SEL2001 at ¶¶30-31. Specifically,
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`Toyota discloses that:
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`The source electrode ST is formed on the insulating film IN so
`as to overlap the electrode CT of the capacitance signal line CL as well
`as is formed to extend toward the central side of the pixel region. A
`portion of the source electrode ST overlapping the electrode CT is
`formed as the capacitance element Cstg using the insulating films
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`IN and GI as a dielectric film. Further, a portion corresponding to an
`end of the extended portion of the source electrode ST serves as a
`connection portion to the after-mentioned pixel electrode PX.
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`Ex. 1004 at [0071] (emphasis added). As shown in the following annotated
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`version of Toyota’s Fig. 8A and Fig. 8B, the capacitance element Cstg is formed
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`by the overlapping of a portion of the source electrode ST (green) and the electrode
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`CT (blue) with layers of the insulating films IN and GI being used as the
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`capacitance element’s dielectric film:
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`capacitance element Cstg
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`alleged “first metal film”
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`alleged “second
`metal film”
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`Toyota (Ex. 1004), FIG. 8A (annotated)
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