`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BLUEHOUSE GLOBAL LTD.
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-01405
`Patent 9,298,057
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`

`

`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`
`TABLE OF CONTENTS
`
`Pages
`
`ii. 
`
`iii. 
`
`Introduction ...................................................................................................... 1 
`Petitioner’s proposed Grounds 1 and 2 fail to show a reasonable likelihood
`that the challenged claims are obvious over Yamazaki .................................. 2 
`A.  Ground 1 - Petitioner’s Alleged Motivation for a Person of Ordinary
`Skill in the Art (POSITA) to Combine Yamazaki’s Embodiments is
`Fatally Flawed ....................................................................................... 4 
`i. 
`Petitioner Fails to Establish “an adequate evidentiary basis” and
`Provide “a satisfactory explanation” that Yamazaki’s Pixel
`Electrode Layer 4030 is a “Metal Pixel Electrode” .................. 10 
`Petitioner Fails to Establish “an adequate evidentiary basis” and
`Provide “a satisfactory explanation” that a POSITA Would
`Have Wanted to Protect Insulating Layer 4021 From Impurities
` ................................................................................................... 17 
`Petitioner Fails to Establish “an adequate evidentiary basis” and
`Provide “a satisfactory explanation” that Yamazaki’s Pixel
`Electrode Layer 4030 Would “react” With Organic Material in
`Layer 4021 ................................................................................ 23 
`Ground 2 - Petitioner Provides Only Conclusory Statements as to
`Why a POSITA would be Motivated to Combine the Teachings of
`Morimoto with Yamazaki, Falling Far Short of the Required
`“Reasoned Explanation” to Support Prima Facie Obviousness ......... 27 
`i. 
`Claim 2 ...................................................................................... 27 
`ii. 
`Claim 13 .................................................................................... 29 
`  Claim construction ......................................................................................... 34 
`  Level of ordinary skill ................................................................................... 35 
`The Flasck statement should be given little or no weight ............................. 35 
`A.  Mr. Flasck’s Statement Is Not a Declaration or a Sworn Testimony
`Under 37 C.F.R. §1.68 ........................................................................ 35 
`
`B. 
`
`
`
` 
`
` 
`
` 
`
`
`
`i
`
`

`

`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`
`TABLE OF CONTENTS (cont’d)
`
`Pages
`
`
`
`B.  Mr. Flasck’s Statement Merely Repeats Attorney Argument ............. 39 
`  Conclusion ..................................................................................................... 48 
`
`
`
`
`
`ii
`
`

`

`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGES
`
`Apple Inc. v. Chestnut Hill Sound Inc., IPR2015-01464 ......................................... 40
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
`(Fed. Cir. 1985) .................................................................................................. 40
`Bumble Bee Foods v. Kowalski, IPR2014-00224 .................................................... 37
`Complex Innovations, LLC v. Astrazeneca AB, IPR2017-00631 .............................. 9
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00048 ............................................. 40
`Fedex v. Katz, CBM2015-00053 ............................................................................. 37
`General Electric Co. v. TAS Energy Inc., IPR2014-00163 ....................................... 9
`General Electric Co. v. TAS Energy Inc., IPR2014-00163 ..................................... 40
`IBM Corporation v. Intellectual Ventures II LLC, IPR2015-01323 .................. 37, 38
`In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ................. 9
`In re Kahn, 441 F.3d 977, 988 (CA Fed. 2006) ......................................................... 3
`In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380
`(Fed. Cir. 2016) ................................................................................ 16, 23, 26, 39
`In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) ..........3, 8, 12, 28, 31, 39
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) .... 3, 4, 8, 12, 18, 19, 25, 29
`Microsoft v. Enfish, No. 2015-1734 at 14-15 (Fed. Cir. Nov. 30, 2016) ................. 29
`Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1339
`(Fed. Cir. 2010) .................................................................................................. 29
`
`
`
`
`
`iii
`
`

`

`
`
`STATUTES
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`PAGES
`
`18 U.S.C. § 1001 ...................................................................................................... 38
`
`28 U.S.C. § 1746 ...................................................................................................... 38
`
`35 U.S.C. § 312 ........................................................................................ 2, 17, 23, 26
`
`35 U.S.C. § 314 ...................................................................................................... 2, 9
`
`
`
`REGULATIONS
`
`PAGES
`
`37 C.F.R. § 1.68 ....................................................................................................... 37
`
`37 C.F.R. § 2.20 ....................................................................................................... 38
`
`37 C.F.R. § 42.2 ....................................................................................................... 38
`
`37 C.F.R. § 42.65 ........................................................................................... 9, 21, 24
`
`37 C.F.R. § 42.53 ..................................................................................................... 38
`
`
`
`iv
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`EXHIBIT LIST
`
`SEL2001 Declaration of Dr. Michael Lebby, Ph.D
`
`SEL2002 Curriculum Vitae of Dr. Lebby
`
`SEL2003 RESERVED
`
`SEL2004
`
`John F. Wager, et al., Transparent Electronics, Springer (2010)
`(“Wager”)
`
`SEL2005 U.S. Patent No. 6,809,390 to Takemoto Toda, et al. (“Toda”)
`
`SEL2006 U.S. Patent No. 8,409,891 to Takeshi Kuriyagawa, et al.
`(“Kuriyagawa”)
`
`SEL2007 U.S. Patent No. 8,487,308 to Noriaki Ikeda, et al. (“Ikeda”)
`
`SEL2008
`
`S.M. Sze, Physics of Semiconductor Devices, Second Edition, John
`Wiley & Sons (1981) (“Sze”)
`
`SEL2009
`
`J.P. Colinge, et al., Physics of Semiconductor Devices, Kluwer
`Academic Publishers (2003) (“Colinge”)
`
`SEL2010 A Dictionary of Chemistry, 6th Ed., Oxford University Press (2008)
`
`SEL2011 McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Ed.
`McGraw-Hill (2003)
`
`SEL2012 Declaration of Robert Munford (Authentication of SEL2004,
`SEL2008, SEL2009, SEL2010, and SEL2011)
`
`
`
`v
`
`

`

`
`
`
`
`INTRODUCTION
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`Pursuant to 37 C.F.R. §42.107(a), Semiconductor Energy Laboratory Co.,
`
`Ltd. (“Patent Owner”), submits this Preliminary Response to the petition for Inter
`
`Partes Review (“IPR”) of U.S. Patent No. 9,298,057 (“the ’057 patent”) filed by
`
`Bluehouse Global Ltd. (“Petitioner”).
`
`Under 35 U.S.C. § 314(a), in order for an IPR to be instituted, Petitioner
`
`must establish that there is a reasonable likelihood that at least one of the
`
`challenged claims is unpatentable. Here, Petitioner fails to make such a showing
`
`with respect to any of its grounds of unpatentability.
`
`Ground 1, which is an obviousness ground, is deficient because Petitioner
`
`fails to establish that claims 1, 3-7, 9-12, and 14-19 are rendered obvious by
`
`Yamazaki. In particular, Petitioner fails to provide an adequate evidentiary basis
`
`and a rational explanation as to why one of ordinary skill in the art would combine
`
`two separate and distinct embodiments of Yamazaki. Instead, Petitioner relies only
`
`on conclusory statements to support its proposed combination of Yamazaki’s
`
`different embodiments, thus, failing to provide the articulated reasoning necessary
`
`to establish prima facie obviousness.
`
`Ground 2 challenges only dependent claims 2 and 13 which depend from
`
`claims 1 and 12, respectively. The deficiencies of Ground 1, consequently, apply
`
`
`
`1
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`to Ground 2 as well. Moreover, Ground 2 is further deficient because Petitioner’s
`
`proposed combination omits treatment of various recited features and is both
`
`ambiguous and vague in identifying which elements are being combined and how
`
`they are being combined. Such incomplete and unclear reasoning falls well short
`
`of the “satisfactory explanation” required to establish prima facie obviousness.
`
`Each of these deficiencies is fatal to the petition and justifies denial of
`
`institution. Accordingly, the Board should decline to institute the IPR proceeding
`
`requested by Petitioner.
`
`
`PETITIONER’S PROPOSED GROUNDS 1 AND 2 FAIL TO SHOW A
`REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`OBVIOUS OVER YAMAZAKI
`
`Under 35 U.S.C. § 314(a), in order for an IPR to be instituted, Petitioner
`
`must establish that there is a reasonable likelihood that at least one of the
`
`challenged claims is unpatentable. Furthermore, an IPR petition must “identif[y],
`
`in writing and with particularity, each claim challenged, the grounds on which the
`
`challenge to each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3). However, in the instant IPR
`
`challenge, Petitioner has not shown with any particularity how the proposed
`
`combinations would render the challenged claims obvious and has failed to offer
`
`any evidence other than the conclusory testimony of Mr. Flasck, Petitioner’s
`
`2
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`alleged expert, to support its proposed combinations. Importantly, the Federal
`
`Circuit has emphasized that an obviousness analysis under 35 U.S.C. § 103 may
`
`not consist of mere “conclusory statements,” and instead “must be supported by a
`
`reasoned explanation.” In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016);
`
`see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
`
`Kahn, 441 F.3d 977, 988 (CA Fed. 2006))(“[R]ejections on obviousness grounds
`
`cannot be sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness”). Indeed, such analysis requires both “an adequate
`
`evidentiary basis” and “a satisfactory explanation for . . . a rational connection
`
`between the facts found and the choice made.” In re Nuvasive, Inc., 842 F.3d at
`
`1382. Petitioner has failed to satisfy both of these requirements.
`
`With respect to Ground 1, Petitioner fails to show that independent claims 1
`
`and 12 are rendered obvious by Yamazaki because Petitioner fails to provide a
`
`“reasoned explanation” for the proposed combination of the embodiment of FIG.
`
`11B and the embodiment of FIG. 15A of Yamazaki. Instead, as discussed in
`
`Section II(A) below, Petitioner’s proposed motivation relies entirely on
`
`conclusions arrived at without explanation and without citation to support in the
`
`disclosure of Yamazaki. Such conclusory reasoning falls well short of the
`
`3
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`“articulated reasoning with some rational underpinning” required to show prima
`
`facie obviousness. KSR, 550 U.S. at 418. And Mr. Flasck, in repeating
`
`Petitioner’s arguments verbatim, fails to remedy this deficiency.
`
`Ground 2 is deficient for the same reasons noted with respect to Ground 1
`
`and for the additional reason that the Petitioner’s explanation for the proposed
`
`combination of Yamazaki with Morimoto is conclusory, ambiguous and
`
`incomplete. And Mr. Flasck again mimics Petitioner’s deficient arguments, neither
`
`clarifying nor making those arguments any less conclusory. Section II(B) below
`
`explains in further detail why Petitioner’s explanation for its proposed combination
`
`falls well short of the “reasoned explanation” necessary to establish prima facie
`
`obviousness.
`
`A. Ground 1 - Petitioner’s Alleged Motivation for a Person of
`Ordinary Skill in the Art (POSITA) to Combine Yamazaki’s
`Embodiments is Fatally Flawed 
`In advancing Ground 1, Petitioner contends that it would have been obvious
`
`for a POSITA to combine the teachings of two different embodiments of Yamazaki
`
`(the embodiment of FIG. 15A with the embodiment of FIG. 11B) in order to
`
`achieve the structure of “a third insulating film covering the second insulating
`
`film,” as recited in claims 1 and 12. Specifically, Petitioner attempts to import an
`
`additional insulating layer (protective insulating layer 7035) from Yamazaki’s FIG.
`
`4
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`15A embodiment into Yamazaki’s FIG. 11B embodiment. However, Petitioner’s
`
`rationale for combining these two embodiments is legally and factually deficient
`
`for several reasons.
`
`Petitioner attempts to justify this modification by asserting that (with
`
`emphasis added):
`
`Petition at 19
`One skilled in the art would have
`
`Dr. Flasck (Ex. 1003 at ¶64)
`One skilled in the art would have
`
`recognized
`
`the potential
`
`for
`
`recognized
`
`the potential
`
`for
`
`impurities from the metal pixel
`
`impurities from the metal pixel
`
`electrode 4030 reacting with
`
`electrode 4030 reacting with
`
`such an organic material and
`
`such an organic material and
`
`would have sought to eliminate
`
`would have sought to eliminate
`
`this possibility by placing an
`
`this possibility by placing an
`
`additonal [sic] insulating layer
`
`additonal [sic] insulating layer
`
`(i.e. a third insulating film) made
`
`(i.e.a [sic] third insulating film)
`
`of
`
`a non-reactive material
`
`made of a non-reactive material
`
`between the pixel electrode 4030
`
`between the pixel electrode 4030
`
`and insulating layer 4021, i.e. on
`
`and insulating layer 4021, i.e. on
`
`top of insulating layer 4021 (the
`
`5
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`second insulating film). Ex. 1003
`
`top of insulating layer 4021 (the
`
`at ¶ 64.
`
`second insulating film).
`
`
`
`As such, Petitioner’s obviousness rationale hinges on the contention that, without
`
`incorporating protective insulating layer 7035 from FIG. 15A into the embodiment
`
`of FIG. 11B (both reproduced below), impurities from “the metal pixel electrode
`
`4030” would undesirably react with the organic material of the insulating layer
`
`4021. Stated differently, Petitioner concludes that Yamazaki’s pixel electrode
`
`4030 is a “metal pixel electrode” that produces impurities that cause reactions
`
`within the insulating layer 4021 that are so undesirable that a POSITA would have
`
`been justified in spending valuable semiconductor fabrication time and resources
`
`to add an additional insulating layer, i.e., protective insulating layer 7035, between
`
`Yamazaki’s pixel electrode 4030 and insulating layer 4021 to prevent such
`
`reactions.
`
`
`
`6
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`
`
`
`
`
`
`Notably lacking in Petitioner’s assertions is an explanation or a citation to
`
`Yamazaki or to any extrinsic evidence to support the conclusions that: (1)
`
`Yamazaki’s pixel electrode 4030 is a “metal pixel electrode”; (2) the noted
`
`reactions would occur in Yamazaki’s device; (3) the noted reactions are bad for
`
`Yamazaki’s device; (4) the noted reactions are so bad for Yamazaki’s device that
`
`the benefit of eliminating them outweighs the costs of the proposed additional
`
`processing to add the insulating layer to Yamazaki’s device; and (5) adding the
`
`7
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`proposed insulating layer would have been deemed to be a reasonable solution to
`
`prevent these purported reactions in the context of Yamazaki’s disclosure.
`
`Importantly, the proposed additional processing takes time, thereby reducing
`
`manufacturing throughput, and can reduce yield by increasing the likelihood of
`
`contamination and processing error that can lead to defect formation. SEL2001 at
`
`¶32. Incurring the costs of such additional processing, therefore, needs to be
`
`justified both in light of the purported negative impact of the identified reactions
`
`and other possible and perhaps more reasonable options for addressing such
`
`reactions in the context of Yamazaki’s disclosure.
`
`Yet Petitioner provides no justification, relying instead on bare, unexplained
`
`and unsupported conclusory statements to advance obviousness. The caselaw,
`
`however, is settled that such conclusory statements are insufficient to establish
`
`prima facie obviousness. In re Nuvasive, Inc., 842 F.3d at 1383; KSR, 550 U.S. at
`
`418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness”).
`
`While Petitioner relies on the testimony of Mr. Flasck, that testimony is a
`
`carbon-copy of the attorney argument (even including identical typographical
`
`errors) providing no further explanation or citation to corroborating evidence. As
`
`8
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`such, Mr. Flasck’s testimony is as conclusory as the attorney argument found in the
`
`petition. Such conclusory expert opinions are accorded little to no weight. 37
`
`C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`
`data on which the opinion is based is entitled to little or no weight.”); Complex
`
`Innovations, LLC v. Astrazeneca AB, IPR2017-00631, Paper 13 at 11-13 (PTAB
`
`July 24, 2017) (denying institution where expert testimony lacked evidence to
`
`support assumptions underlying calculations); General Electric Co. v. TAS Energy
`
`Inc., IPR2014-00163 Paper 11 at 11 (PTAB May 13, 2014) (the “Declaration
`
`includes only conclusory statements … but does not provide any evidence
`
`establishing such a system was conventional … we note that the Declaration does
`
`not disclose sufficiently the underlying facts or data forming the basis for the
`
`opinion, and thus, we give these statements little weight.”). Providing support for
`
`expert opinions has long been required at the Federal Circuit as well. In re Am.
`
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“the Board is
`
`entitled to weigh the declarations and conclude that the lack of factual
`
`corroboration warrants discounting the opinions expressed in the declarations”).
`
`Consequently, Petitioner’s entire rationale for combining Yamazaki’s two different
`
`embodiments is completely inadequate for meeting the standard for IPR institution
`
`under 35 U.S.C. § 314(a).
`
`9
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`The following sections consider each of the five conclusions advanced by
`
`Petitioner in more detail, explaining how the conclusions are not only unsupported
`
`and unexplained in the petition but also are not supported by Yamazaki’s
`
`disclosure, even running directly counter to that disclosure in many instances.
`
`i. Petitioner Fails to Establish “an adequate evidentiary
`basis” and Provide “a satisfactory explanation” that
`Yamazaki’s Pixel Electrode Layer 4030 is a “Metal
`Pixel Electrode”
`
`Turning to conclusion (1) noted in Section II(A), Petitioner and Mr. Flasck
`
`both conclude that Yamazaki’s pixel electrode 4030 is metal. See, Pet. at 19
`
`(citing Ex. 1003 at ¶64). Yet, Petitioner’s only reference to Yamazaki’s pixel
`
`electrode 4030 being metal is found on page 19 of the petition, which cites to
`
`paragraph 64 of Mr. Flasck’s statement. Yet neither the petition nor Mr. Flasck’s
`
`statement cites to a single statement in Yamazaki to support that conclusion. The
`
`very fact that neither Petitioner nor Mr. Flasck even attempts to explain, much less
`
`support with evidence, their conclusion that Yamazaki’s pixel electrode 4030 is
`
`metal demonstrates Petitioner’s failure to provide the “rational underpinning”
`
`necessary to establish prima facie obviousness.
`
`Petitioner’s failure is further exacerbated by the fact that Yamazaki does
`
`NOT state anywhere that pixel electrode 4030 is a “metal pixel electrode.” See,
`
`Ex. 1004 at ¶¶305-306; SEL2001 at ¶23. Rather, Yamazaki explicitly states that
`
`10
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`pixel electrode 4030 is either “formed using a light-transmitting conductive
`
`material such as [various conductive oxide materials1],” Ex. 1004. at ¶305 , or
`
`using a “conductive polymer.” Id. at ¶306; SEL2001 at ¶23.
`
`The disconnect between Yamazaki’s disclosure and Petitioner’s obviousness
`
`rationale demands explanation and yet neither Petitioner nor Mr. Flasck provides
`
`any such explanation in the face of this disconnect, instead both conclusorily assert
`
`that Yamazaki’s pixel electrode 4030 is metal without a single citation to
`
`Yamazaki or to any corroborating extrinsic evidence for support. See Pet. at 19-
`
`20; Ex. 1003 at ¶¶64-65. Additionally, as noted above, Mr. Flasck’s statement
`
`itself cannot properly be considered evidence on this point because Mr. Flasck
`
`does not explain how Yamazaki supports his opinion. 37 C.F.R. § 42.65(a).
`
`
`
`1 “The pixel electrode layer 4030 . . . can be formed using a light-
`
`transmitting conductive material such as indium oxide containing tungsten oxide,
`
`indium zinc oxide containing tungsten oxide, indium oxide containing titanium
`
`oxide, indium tin oxide containing titanium oxide, indium tin oxide (hereinafter,
`
`referred to as ITO), indium zinc oxide, or indium tin oxide to which silicon oxide
`
`is added.” Ex. 1004 at ¶305. These materials are commonly referred to as
`
`transparent conductive oxides (TCOs). SEL2001 at ¶24.
`
`11
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`Consequently, the petition does not provide any evidence or rational connection
`
`between Petitioner’s conclusory assertion that pixel electrode 4030 is metal and
`
`Yamazaki’s own disclosure. On this point alone, Petitioner fails to meet its burden
`
`to demonstrate prima facie obviousness of the claims over Yamazaki because
`
`Yamazaki’s disclosure of a metal pixel electrode is central to Petitioner’s
`
`obviousness theory. In re Nuvasive, Inc., 842 F.3d at 1383; KSR, 550 U.S. at 418
`
`(2007) (“[R]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness”).
`
`And Yamazaki’s disclosure, when considered from the vantage of a
`
`POSITA, runs counter to Petitioner’s conclusion because a POSITA would not
`
`have considered either the light-transmitting conductive materials or conductive
`
`polymers described in Yamazaki to be metals. SEL2001 at ¶¶24-26 (citing
`
`SEL2009 at 15-16). The materials that Yamazaki lists as examples of “light-
`
`transmitting conductive material[s]” in paragraph 305 are all electrically
`
`conductive oxides that are commonly referred to in the semiconductor industry as
`
`“transparent conductive oxides (TCOs), conductive glasses, or conductive
`
`ceramics.” Id. at ¶24 (citing SEL2004 at 2-3; SEL2008 at 819). These materials,
`
`while considered electrically conductive, exhibit electrical properties of semi-
`
`12
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`conductive materials rather than metals. Id. at ¶25 (citing SEL2009 at 15-16).
`
`Even more distinct from metals, the conductive polymers disclosed by Yamazaki
`
`are formed from chains of organic materials; “carbon and hydrogen.” Id. at ¶26.
`
`Furthermore, these conductive polymer materials are generally considered to be
`
`plastics. Id. Consequently, and contrary to Petitioner’s blind assertion, a POSITA
`
`would not have considered any of these materials expressly disclosed by Yamazaki
`
`to be metals. Id. at ¶¶24-26.
`
`Regarding conductive polymers, the following two scientific dictionaries
`
`and Yamazaki’s disclosure itself are demonstrative of the fact that a POSITA
`
`would have considered these materials to be distinct from metals. Id. at ¶26;
`
`SEL2010 at 138; SEL2011 at 495. First, the McGraw-Hill Dictionary of Scientific
`
`and Technical Terms defines a conducting polymer as “A plastic having high
`
`conductivity, approaching that of metals.” SEL2011 at 459 (emphasis added). A
`
`POSITA would clearly not consider a plastic material to be a metal. Second, the
`
`Oxford Dictionary of Chemistry describes a conducting polymer as: “An organic
`
`polymer that conducts electricity. Conducting polymers have a crystalline
`
`structure in which chains of conjugated unsaturated carbon-carbon bonds are
`
`aligned.” SEL2010 at 138 (emphasis added). Similarly, Yamazaki explains that
`
`the electrical conductive property of conducting polymers results from the “so-
`
`13
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`called π-electron conjugated” structure of the conductive polymer. See e.g., Ex.
`
`1004 at ¶307. Thus, this extrinsic evidence further demonstrates that a POSITA
`
`would have considered Yamazaki’s expressly disclosed conductive polymers to be
`
`plainly distinct from metals.
`
`Regarding the TCO materials, the semiconductor literature cited below
`
`further demonstrates the fact that a POSITA would have recognized that
`
`Yamazaki’s light-transmitting conductive materials (i.e., TCOs) belong to a class
`
`of electrically conductive materials distinct from metals as well. SEL2001 at ¶¶27-
`
`29; SEL2004 at 2-3; SEL2005 at 1:66-2:32; SEL2006 at 2:1-9; SEL2007 at 4:20-
`
`54; SEL2008 at 819. For instance, Dr. John Wager, in his Transparent Electronics
`
`textbook, identifies “TCOs as an unusual class of materials” distinct from metals.
`
`SEL2004 at 2. Wager distinguishes TCOs from metals, identifying “the low
`
`conductance of TCOs compared to metals.” Id. at 3. Wager even further amplifies
`
`this distinction stating that although TCOs “are considered to be ‘good’ conductors
`
`from the perspective of a semiconductor, they are actually very poor conductors
`
`compared to metals.” Id. at 2. Thus, contrary to Petitioner’s bare conclusions, a
`
`POSITA would have understood from Wager that TCOs are not properly
`
`considered metals. SEL2001 at ¶27.
`
`14
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`The Toda patent also distinguishes “electrically conductive oxides” from
`
`metals and metal alloys. SEL2005 at 1:66-2:5. Indeed, Toda uses a TCO, namely
`
`indium tin oxide (ITO), to prevent contamination of a liquid crystal or an
`
`“electroluminescent material” caused by “an impurity dissolv[ing] from [a] metal.”
`
`SEL2005 at 4:49-54. Specifically, Toda applies an “ITO layer” over a layer of an
`
`APC (Ag (silver), Pd (palladium), and Cu (copper)) metal alloy to prevent “the
`
`APC from corroding and peeling, while preventing an impurity from dissolving
`
`from the [APC layer] at the same time.” SEL2005 at 11:1-4. Consequently, not
`
`only are electrically conductive oxides, TCOs, considered to be different from
`
`metals, but Toda shows that they can be used to protect other layers from metal
`
`impurities. SEL2001 at ¶¶28, 33.
`
`Continuing further, the Kuriyagawa and Ikeda patents also distinguish
`
`conductive oxides from metals. SEL2006 at 2:1-9; SEL2007 at 4:20-54.
`
`Kuriyagawa even notes that it is “preferable to use the light transmitting
`
`conductive film such as ITO (Indium Tin Oxide) [for] corrosion resistance.”
`
`SEL2006 at 2:7-9. In other words, Kuriyagawa recognizes that conductive oxides
`
`such as ITO are less likely to corrode than metal films. SEL2001 at ¶¶28, 29.
`
`Ikeda also distinguishes between conductive “oxide materials” and metals.
`
`SEL2007 at 4:20-54. Ikeda describes electrodes with “a stacked layer having the
`
`15
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`above mentioned conductive oxide material and a metal thin film.” Id. at 4:40-42.
`
`Moreover, another textbook, Sze’s Physics of Semiconductor Devices,
`
`characterizes conductive oxides such as indium oxide and ITO as “conducting
`
`glasses,” not metals. SEL2008 at 819; SEL2001 at ¶27
`
`In view of the weight of this sampling of extrinsic evidence provided above,
`
`a POSITA would undoubtedly not have considered any of the materials—either
`
`the conductive polymers or the TCOs—that Yamazaki expressly discloses for
`
`forming pixel electrode 4030 to be metals. SEL2001 at ¶¶26-30. Hence, because
`
`Petitioner and Mr. Flasck provide no evidence or explanation to corroborate their
`
`bare conclusions, it is undisputed that Yamazaki’s pixel electrode 4030 is NOT
`
`metal, but either a polymer (e.g., a plastic material) or an oxide (e.g., a TCO).
`
`SEL2001 at ¶¶23-29. Therefore, Petitioner’s obviousness rationale fails because it
`
`is entirely irrelevant to Yamazaki, Petitioner’s own cited prior art reference, and,
`
`thus, has no rational connection to the facts disclosed in Yamazaki. SEL2001 at
`
`¶30; KSR, 550 U.S. at 418.
`
`These failures in Petitioner’s obviousness analysis are unrecoverable.
`
`Petitioner simply does not “articulate specific reasoning, based on evidence of
`
`record” and thus does not provide “sufficient evidence on which to base its legal
`
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380
`
`16
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`(Fed. Cir. 2016). Moreover, the above flaws are fatal to the present petition
`
`because the IPR petition itself must “identif[y], in writing and with particularity,
`
`each claim challenged, the grounds on which the challenge to each claim is based,
`
`and the evidence that supports the grounds for the challenge to each claim.”
`
`35 U.S.C. § 312(a)(3). For at least these reasons, the petition should be denied.
`
`Furthermore, because Petitioner fails to show a reasonable likelihood that it
`
`will prevail against independent claims 1 and 12, Petitioner also fails to show a
`
`reasonable likelihood that it will prevail against the dependent claims under either
`
`Ground 1 or 2. Therefore, the petition should be denied.
`
`ii. Petitioner Fails to Establish “an adequate evidentiary
`basis” and Provide “a satisfactory explanation” that a
`POSITA Would Have Wanted to Protect Insulating
`Layer 4021 From Impurities
`
`Turning to conclusion (3) noted in Section II(A), Petitioner and Mr. Flasck
`
`both conclude without any supporting explanation or evidence that reactions
`
`between “metal pixel electrode” impurities and insulating layer 4021 are bad for
`
`17
`
`
`
`

`

`
`
`Case IPR2018-01405
`Attorney Docket No: 12732-1925IP1
`
`Yamazaki’s device. See Pet. at 19-20; Ex. 1003 at ¶¶64-65.2 Even assuming
`
`arguendo that such reactions were to occur (conclusion (2) noted in Section II(A)),
`
`both Petitioner and Mr. Flasck fail to explain why these reactions would be
`
`undesirable such that a POSITA would want to prevent them from occurring.
`
`Instead, both Petitioner and Mr. Flasck, at best, implicitly assert that these
`
`reactions are undesirable without any explanation or justification. That is, neither
`
`Petitioner nor Mr. Flasck identifies any property of Yamazaki’s insulating layer
`
`4021 or device that would be negatively impacted by the identified reactions.
`
`Petitioner, therefore, fails to provide the requisite “articulated reasoning with a
`
`rational underpinning” to establish prima facie obviousness. KSR, 550 U.S. at 418.
`
`Petitioner and Mr. Flasck also conclude without any supporting explanation
`
`or evidence that the noted reactions between a metal pixel electrode and insulating
`
`layer 4021 would be so harmful to Yamazaki’s device that the benefit of
`
`eliminating them outweighs the costs of any additional processing to add the
`
`insulating layer to Yamazaki’s device (conclusion (4) noted in Section II(A)). As
`
`
`
`2 As noted above