Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 1 of 39 PageID #: 3641
`
`
`
`JAPAN DISPLAY INC. and
`PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`
`
`Plaintiffs,
`
`Case No. 2:20-cv-0283-JRG
`(LEAD CASE)
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`v.
`
`
`
`TIANMA MICROELECTRONICS CO.
`LTD.,
`
`
`
`Defendant.
`
`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
`
`Before the Court is the opening claim construction brief of Japan Display Inc. and Panasonic
`
`Liquid Crystal Display Co., Ltd. (collectively “Plaintiffs”) (Dkt. No. 86, filed on June 30, 2021),1
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`Tianma Microelectronics Co. Ltd.’s (“Defendant”) response (Dkt. No. 96, filed on July 14, 2021),
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`and Plaintiffs’ reply (Dkt. No. 101, filed on July 21, 2021). On August 12, 2021, the Court held a
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`hearing on the issues of claim construction and claim definiteness. Having considered the
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`arguments and evidence presented by the parties at the hearing and in their briefing, and having
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`made subsidiary factual findings about the extrinsic evidence, the Court issues this Order. Teva
`
`Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
`
`
`
`
`
`
`1 Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites are to the page numbers
`assigned through ECF.
`
`
`
`1
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`

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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 2 of 39 PageID #: 3642
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`
`
`Table of Contents
`
`I.
`II.
`
`V.
`
`BACKGROUND ............................................................................................................... 3
`LEGAL PRINCIPLES ..................................................................................................... 6
`A.
`Claim Construction ................................................................................................. 6
`B.
`Departing from the Ordinary Meaning of a Claim Term ........................................ 9
`C.
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 10
`III. AGREED CONSTRUCTIONS ..................................................................................... 11
`IV. CONSTRUCTION OF DISPUTED TERMS ............................................................... 11
`A.
`“the connected second electrode,” “the second electrode,” and “the
`counter electrode” ................................................................................................. 11
`“one of the pair of transparent substrates having … a plurality of pixel
`regions … wherein the pixel region has … a first electrode [… and a
`second electrode … wherein the] second electrode is disposed between the
`first electrode and the one of the pair of transparent substrates” and “one
`of the pair of transparent substrates having … a plurality of pixel regions
`… wherein the pixel regions have … a pixel electrode [… and a counter
`electrode … wherein the] counter electrode is disposed between the pixel
`electrode and the one of the pair of transparent substrates” ................................. 17
`“the liquid crystal layer has mainly negative dielectric anisotropy” .................... 21
`“[a] liquid crystal display device … wherein … liquid crystal molecules
`are driven by applying a voltage between the lower electrode and the
`upper electrode,” “display device … used in a hand-held electronic
`device,” and “a reference electrode which causes an electric field
`controlling the liquid crystal molecule to form between the reference
`electrode and the pixel electrode” ......................................................................... 24
`“a spacer formed on an inner surface of the first substrate” ................................. 29
`E.
`“plane view”.......................................................................................................... 34
`F.
`“connection part” .................................................................................................. 36
`G.
`CONCLUSION ............................................................................................................... 38
`
`B.
`
`C.
`D.
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`
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`2
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
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`

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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 3 of 39 PageID #: 3643
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`I.
`
`BACKGROUND
`
`
`
`Plaintiff alleges infringement of eight U.S. Patents2: No. 7,385,665 (“’665 Patent”), No.
`
`7,636,142 (“’142 Patent”), No. 7,936,429 (“’429 Patent”), No. 8,218,119 (“’119 Patent”), No.
`
`9,715,132 (“’132 Patent”), No. 9,793,299 (“’299 Patent”), No. 10,018,859 (“’859 Patent”), and
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`No. 10,139,687 (“’687 Patent”) (collectively, the “Asserted Patents”).
`
`Each of the Asserted Patents claims to a Japanese patent application. The ’665 Patent states
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`an earliest priority claim to a Japanese patent application filed on October 31, 2005. The ’142
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`Patent states an earliest priority claim to a Japanese patent application filed on February 26, 2007.
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`The ’429, ’119, and ’687 Patents are related through continuation applications and each state an
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`earliest priority claim to a Japanese patent application filed on September 7, 1999. The ’132 and
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`’859 Patents are related through continuation applications and each state an earliest priority claim
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`to a Japanese patent application filed on December 18, 2000. The ’299 Patent states an earliest
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`priority claim to a Japanese patent application filed on December 26, 2005.
`
`In general, the Asserted Patents are directed to technology for electronic displays.
`
`The abstract of the ’665 Patent provides:
`
`A display device includes a display panel which includes an effective display
`section, a flexible board which supplies a driving signal to the effective display
`section, a connection part at which the display panel and the flexible board are
`connected, and a plurality of connection wiring lines which connect the connection
`part and the effective display section. The connection part includes a first
`connection section including at least two connection pad groups, which are
`composed of connection pads that are connected to the effective display section via
`the connection wiring lines, and a dummy pad group which is disposed between the
`connection pad groups, and is composed of dummy pads, and a second connection
`section including connection terminal groups, which are composed of connection
`terminals corresponding to the connection pads, and a dummy terminal group
`which is composed of dummy terminals corresponding to the dummy pads.
`
`
`2 Plaintiff alleges infringement of fifteen patents, but the parties present claim-construction disputes with respect to
`only eight of those fifteen. Dkt. No. 86 at 8.
`
`
`
`3
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 4 of 39 PageID #: 3644
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`
`
`The abstract of the ’142 Patent provides:
`
`A liquid crystal display device includes an upper electrode and a lower electrode
`interposing an insulation layer therebetween, wherein an electric field opening part
`for passing an electric field is formed in the upper electrode and liquid crystal
`molecules are driven by applying a voltage between the lower electrode and the
`upper electrode, wherein a window-shaped opening part formed by partially
`removing the lower electrode for connecting an upper electrode wiring and the
`upper electrode, which interpose an interlayer insulation film therebetween,
`together is disposed in a lower part of the lower electrode, and wherein one end
`portion of the electric field opening part in the longitudinal direction around the
`window-shaped opening part is disposed to be overlapped with the window-shaped
`opening part in a plan view.
`
`The abstract of the ’429 Patent provides:
`
`A liquid crystal display includes a pair of transparent substrates opposed to each
`other with liquid crystal therebetween. One of the pair of transparent substrates has
`a plurality of drain signal lines and a plurality of gate signal lines, and a plurality
`of pixel regions defined by the drain signal lines and the gate signal lines. The pixel
`regions have a TFT element, a pixel electrode formed of a transparent electrode
`having a plurality of slits, and a counter electrode formed of a trans- parent
`electrode. The counter electrode is disposed between the pixel electrode and the
`one of the pair of transparent substrates in overlapping relationship with the
`transparent electrode of the pixel electrode and the gate signal line, and the counter
`electrode is connected with the counter electrode of an adjacent pixel region.
`
`The abstract of the ’119 Patent provides:
`
`A liquid crystal display includes a pair of transparent substrates opposed to each
`other with liquid crystal therebetween, one of the pair of transparent substrates
`having a plurality of drain signal lines and a plurality of gate signal lines, and a
`plurality of pixel regions defined by the drain signal lines and the gate signal lines.
`The pixel region has a TFT element, a first electrode formed of a transparent
`electrode having a plurality of slits, a connection area that connects the first
`electrode to the TFT element, and a second electrode formed of a transparent
`electrode. The second electrode is disposed between the first electrode and the one
`of the pair of transparent substrates, the second electrode is connected with the
`second electrode of an adjacent pixel region, and the connected second electrode is
`arranged at a position overlapping with the gate signal line.
`
`The abstract of the ’132 Patent provides:
`
`There is provided a liquid crystal display (LCD) device that prevents light leaks
`near spacers. The LCD device controls the optical transmissivity of a liquid crystal
`layer interposed between substrates disposed opposite each other, by means of an
`electric field generated in the layer-thickness direction of the liquid crystal layer.
`
`
`
`4
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 5 of 39 PageID #: 3645
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`
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`The LCD device includes spacers on a liquid-crystal-side surface of one substrate,
`signal lines formed on a liquid-crystal-side surface of the other substrate, an
`insulating film formed to cover the signal lines, and electrodes on the insulating
`film's upper surface. Each electrode contributes to controlling the optical
`transmissivity of the liquid crystal layer. Each spacer has a vertex surface disposed
`opposite to the signal lines. A portion of each electrode extends to the upper surface
`of a corresponding signal line. The extended portion is opposite to a part of a
`spacer’s vertex surface disposed opposite to the corresponding signal line.
`
`The abstract of the ’299 Patent provides:
`
`An electronic device includes a liquid crystal display device having a first substrate,
`a second substrate bonded to the first substrate, with liquid crystal material held
`between the first substrate and the second substrate, and an upper polarizing plate
`affixed to the second substrate. A protective member is disposed over the upper
`polarizing plate, and an adhesive member is disposed between the protective
`member and the upper polarizing plate without an air layer between the protective
`member and the upper polarizing plate. The protective member is configured as a
`protective cover of the electronic device.
`
`The abstract of the ’859 Patent provides:
`
`There is provided a liquid crystal display (LCD) device that prevents light leaks
`near spacers. The LCD device controls the optical transmissivity of a liquid crystal
`layer interposed between substrates disposed opposite each other, by means of an
`electric field generated in the layer-thickness direction of the liquid crystal layer.
`The LCD device includes spacers on a liquid-crystal-side surface of one substrate,
`signal lines formed on a liquid-crystal-side surface of the other substrate, an
`insulating film formed to cover the signal lines, and electrodes on the insulating
`film's upper surface. Each electrode contributes to controlling the optical
`transmissivity of the liquid crystal layer. Each spacer has a vertex surface disposed
`opposite to the signal lines. A portion of each electrode extends to the upper surface
`of a corresponding signal line. The extended portion is opposite to a part of a
`spacer's vertex surface disposed opposite to the corresponding signal line.
`
`The abstract of the ’687 Patent provides:
`
`A liquid crystal display includes a first substrate and a second substrate opposed to
`each other with a liquid crystal layer between the first substrate and the second
`substrate. The first substrate has a plurality of drain signal lines and a plurality of
`gate signal lines, and a plurality of pixel regions are defined by the drain signal
`lines and the gate signal lines. Each of the pixel regions includes a first electrode
`having a plurality of strip-like portions extending in an extension direction of the
`drain signal lines, the strip-like portions having at least one bent portion so that
`extension directions of each two parts of the strip-like portions separated by the at
`least one bent portion are different from each other, and a second electrode formed
`
`
`
`5
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 6 of 39 PageID #: 3646
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`
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`between the first substrate and the first electrode, and being overlapped with the
`strip-like portions in plan view.
`
`Shortly before the start of the August 12, 2021 hearing, the Court provided the parties with
`
`preliminary constructions with the aim of focusing the parties’ arguments and facilitating
`
`discussion.
`
`II.
`
`LEGAL PRINCIPLES
`
`A.
`
`Claim Construction
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
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`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
`
`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
`
`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
`
`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
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`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
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`(vacated on other grounds).
`
` “The claim construction inquiry … begins and ends in all cases with the actual words of the
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`claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
`
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`6
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 7 of 39 PageID #: 3647
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`
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`all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
`
`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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`Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
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`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
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`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
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`adds a limitation to an independent claim, it is presumed that the independent claim does not
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`include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
`
`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
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`v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
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`improper to read limitations from a preferred embodiment described in the specification—even if
`
`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004).
`
`
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`7
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`JDI/PLD - EX. 2006
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`CO. LTD. v. JDI/PLD
`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 8 of 39 PageID #: 3648
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`
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
`
`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
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`history may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
`
`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
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`may aid a court in understanding the underlying technology and determining the particular
`
`meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
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`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
`
`and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has
`
`explained the role of extrinsic evidence in claim construction:
`
`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`
`
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
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`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 9 of 39 PageID #: 3649
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`
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`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva, 574 U.S. at 331–32.
`
`B.
`
`Departing from the Ordinary Meaning of a Claim Term
`
`There are “only two exceptions to [the] general rule” that claim terms are construed according
`
`to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
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`specification or during prosecution.”3 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
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`(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
`
`Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
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`2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
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`in two instances: lexicography and disavowal.”). The standards for finding lexicography or
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`disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
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`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
`
`of a claim term by including in the specification expressions of manifest exclusion or restriction,
`
`
`3 Some cases have characterized other principles of claim construction as “exceptions” to the general rule, such as the
`statutory requirement that a means-plus-function term is construed to cover the corresponding structure disclosed in
`the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
`9
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 10 of 39 PageID #: 3650
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`
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
`
`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`C.
`
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)
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`Patent claims must particularly point out and distinctly claim the subject matter regarded as
`
`the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
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`“inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus
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`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2
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`and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from
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`the perspective of one of ordinary skill in the art as of the time the application for the patent was
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`filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any claim in suit to
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`comply with § 112 must be shown by clear and convincing evidence. BASF Corp. v. Johnson
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`Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of law and in
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`effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed.
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`Cir. 2012).
`
`When a term of degree is used in a claim, “the court must determine whether the patent
`
`provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
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`F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
`
`used in a claim, “the court must determine whether the patent’s specification supplies some
`
`standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
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`F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of
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`skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
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`IPR2021-01028
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`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 11 of 39 PageID #: 3651
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`III. AGREED CONSTRUCTIONS
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`
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`The parties have agreed to constructions set forth in their Joint Claim Construction Chart (P.R.
`
`4-5(d)) (Dkt. No. 102). Based on the parties’ agreement, the Court hereby adopts the agreed
`
`constructions.
`
`IV. CONSTRUCTION OF DISPUTED TERMS
`
`A.
`
`“the connected second electrode,” “the second electrode,” and “the counter
`electrode”
`
`Disputed Term4
`
`“the connected second
`electrode”
`
`•
`
`’119 Patent Claim 1
`
`Plaintiffs’ Proposed
`Construction
`no construction necessary;
`plain and ordinary meaning
`
`“the second electrode”
`
`•
`
`’119 Patent Claim 2
`
`no construction necessary;
`plain and ordinary meaning
`
`Defendant’s Proposed
`Construction
`indefinite; this claim term, read in
`light of the patent’s specification
`and prosecution history, fails to
`inform, with reasonable certainty,
`those skilled in the art about its
`scope because it fails to specify
`whether it refers to the “second
`electrode formed of a transparent
`electrode” or the “second
`electrode of an adjacent pixel
`region”
`
`indefinite; this claim term, read in
`light of the patent’s specification
`and prosecution history, fails to
`inform, with reasonable certainty,
`those skilled in the art about its
`scope because it fails to specify
`whether it refers to the “second
`electrode formed of a transparent
`electrode” or the “second
`electrode of an adjacent pixel
`region.”
`
`
`4 For all term charts in this order, the claims in which the term is found are listed with the term
`but: (1) only the highest-level claim in each dependency chain is listed, and (2) only asserted claims
`identified in the parties’ Joint Claim Construction Chart (P.R. 4-5(d)) (Dkt. No. 102) are listed.
`11
`
`
`
`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`

`

`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 12 of 39 PageID #: 3652
`
`
`
`Disputed Term4
`
`“the counter electrode”
`
`•
`
`’429 Patent Claim 5
`
`Plaintiffs’ Proposed
`Construction
`no construction necessary;
`plain and ordinary meaning
`
`Defendant’s Proposed
`Construction
`indefinite; this claim term, read in
`light of the patent’s specification
`and prosecution history, fails to
`inform, with reasonable certainty,
`those skilled in the art about its
`scope because it fails to specify
`whether it refers to the “counter
`electrode formed of a transparent
`electrode” or the “counter
`electrode of an adjacent pixel
`region.”
`
`Because the parties’ arguments and proposed constructions with respect to these terms are
`
`related, the Court addresses the terms together.
`
`The Parties’ Positions
`
`Plaintiffs submit: In the context of the surrounding claim language and the description of the
`
`inventions in the ’429 and ’119 Patents, the meanings of these terms are reasonably certain. There
`
`is only one claimed “second electrode” in Claims 1 and 2 of the ’119 Patent and only one claimed
`
`“counter electrode” in Claim 5 of the ’429 Patent. Specifically: (1) “the connected second
`
`electrode” in Claim 1 of the ’119 Patent refers to the “second electrode formed of a transparent
`
`electrode” recited in that claim, (2) “the second electrode” in Claim 2 of the ’119 Patent refers to
`
`“the second connected electrode” in Claim 1, and (3) “the counter electrode” in Claim 5 of the
`
`’429 Patent refers to the “counter electrode formed of a transparent electrode” recited in Claim 1
`
`of the ’429 Patent. This configuration is described with reference to Figure 15 of the ’429 and ’119
`
`Patents, which describes multiple pixel regions sharing a common second/counter electrode. Dkt.
`
`No. 86 at 12–14, 17–22.
`
`In addition to the claims themselves, Plaintiffs cite the following intrinsic and extrinsic
`
`evidence to support their position: Intrinsic evidence: ’119 Patent Fig. 15, col.13 l.62 – col.14 l.6,
`
`
`
`12
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`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`

`

`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 13 of 39 PageID #: 3653
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`
`
`col.14 ll.31–34; ’429 Patent Fig. 15, col.13 l.59 – col.14 l.3, col.14 ll.27–33. Extrinsic evidence:
`
`Dkt. No. 86-105 ¶¶ 49–52, 58–61, 67–71.
`
`Defendant responds: There are two second electrodes recited in Claim 1 of the ’119 Patent
`
`and it is not clear which forms the antecedent basis for “the connected second electrode” in Claim
`
`1 and “the second electrode” in Claim 2. Similarly, there are two counter electrodes recited in
`
`Claim 1 of the ’429 Patent and it is not clear which forms the antecedent basis for “the counter
`
`electrode” in Claim 5. Contrary to Plaintiffs’ contention, the embodiment of Figure 15 of the ’429
`
`and ’119 Patents has multiple counter electrodes and does not support Plaintiffs’ single-second-
`
`electrode interpretation. Indeed, Plaintiffs’ expert testified that there are multiple pixel regions in
`
`a display and that each has a second electrode. Dkt. No. 96 at 6–9, 12–14.
`
`In addition to the claims themselves, Defendant cites the following intrinsic and extrinsic
`
`evidence to support its position: Intrinsic evidence: ’119 Patent Fig. 15, col.13 ll.32–37. Extrinsic
`
`evidence: Dkt. No. 96-26 at 56:7 – 59:3.
`
`Plaintiffs’ reply: As described in the ’429 and ’119 Patents, a “counter electrode covers
`
`multiple pixel regions.” Thus, and as explained by Plaintiffs’ expert, the second/counter electrodes
`
`of adjacent pixel regions are the same electrode. Dkt. No. 101 at 2–4.
`
`Plaintiffs cite further extrinsic evidence to support their position: Dkt. No. 96-2 at 57:22 –
`
`58:8, 58:22 – 59:1.
`
`Analysis
`
`The issue in dispute is whether the antecedent basis of each of these terms is reasonably certain
`
`in the context of the surrounding claim language and description of the invention. It is.
`
`
`5 Declaration of Aris K. Silzars Regarding Indefiniteness (May 25, 2021).
`6 Deposition of Aris K. Silzars (June 11, 2021).
`
`
`
`13
`
`JDI/PLD - EX. 2006
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`

`

`Case 2:20-cv-00283-JRG Document 123 Filed 09/03/21 Page 14 of 39 PageID #: 3654
`
`
`
`The claims provide significant context informing the meaning of the terms at issue. Claims 1,
`
`4, and 5 of the ’429 Patent provide:
`
`1. A liquid crystal display comprising:
`a pair of transparent substrates opposed to each other with liquid crystal
`therebetween;
`one of the pair of transparent substrates having a plurality of drain signal lines
`and a plurality of gate signal lines, and a plurality of pixel regions defined
`by the drain signal lines and the gate signal lines;
`wherein the pixel regions have:
`a TFT element;
`a pixel electrode formed of a transparent electrode having a plurality of
`slits; and
`a counter electrode formed of a transparent electrode;
`wherein the counter electrode is disposed between the pixel electrode and
`the one of the pair of transparent substrates in overlapping relationship
`with the transparent electrode of the pixel electrode and the gate signal
`line, and the counter electrode is connected with the counter electrode
`of an adjacent pixel region.
`
`4. The liquid crystal display according to claim 1, wherein a part of the pixel
`electrode is overlapped with the gate signal line.
`
`5. The liquid crystal display according to claim 4, wherein the counter
`electrode is disposed between the pixel electrode and the gate signal