UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND PANASONIC LIQUID CRYSTAL DISPLAY CO.,
`LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01028
`Patent No. 9,793,299
`_______________
`
`DECLARATION OF THOMAS L. CREDELLE
`UNDER 37 C.F.R. § 1.68
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND PANASONIC LIQUID CRYSTAL DISPLAY CO.,
`LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01028
`Patent No. 9,793,299
`_______________
`
`DECLARATION OF THOMAS L. CREDELLE
`UNDER 37 C.F.R. § 1.68
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Credelle Declaration for Inter Partes Review of U.S. Patent No. 9,793,299
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`IV.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 3
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
`THE PETITION FAILS TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM ....................................................................... 9
`A.
`The Petition Fails to Prove that Maekawa in Combination with
`Takahata Render Obvious Claims 1, 3-6, and 8-11 (Ground 1) ........... 9
`The Petition Fails to Prove that Maekawa and Takahata in
`Combination with Nakanishi Renders Obvious Claims 2 and 7
`(Ground 2) ...........................................................................................26
`The Petition Fails to Prove that Maekawa and Takahata in
`Combination with Nagano Render Obvious Claims 15 and 16
`(Ground 3) ...........................................................................................32
`CONCLUSION ..............................................................................................36
`
`C.
`
`B.
`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`I.
`
`INTRODUCTION
`
`1.
`
`I submit this declaration in support of the preliminary response
`
`submitted by of Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.
`
`(“Patent Owner”) in connect with the petition for Inter Partes Review of U.S. Patent
`
`No. 9,793,299 (“the ’299 patent”) filed by Tianma Microelectronics Co. Ltd.
`
`(“Petitioner”).
`
`2.
`
`I am not an employee of Japan Display Inc., Panasonic Liquid Crystal
`
`Display Co., Ltd., or of any affiliate or subsidiary thereof.
`
`3.
`
`I am being compensated for my work in this matter at the rate of
`
`$400/hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation.
`
`4.
`
`My compensation is not contingent on the outcome of this matter or the
`
`specifics of my testimony.
`
`5.
`
`I have been informed by Patent Owner’s counsel that Petitioner has
`
`challenged the validity of the ’299 patent. Specifically, I understand that Petitioner
`
`purports that claims 1-11, 15, and 16 (the “Challenged Claims”) are invalid for
`
`obviousness under 35 U.S.C. § 103.
`
`6.
`
`I understand that Petitioner relies on the expert declaration of Mr.
`
`Richard Flasck dated June 7, 2021 (Ex. 1002) to challenge the validity of the ’299
`
`patent.
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`7.
`
`Accordingly, I have been asked to provide certain opinions relating to
`
`the patentability of the ’299 patent. Specifically, I have been asked to provide my
`
`opinions regarding (i) the level of ordinary skill in the art to which the ’299 patent
`
`pertains, and (ii) whether the Challenged Claims are anticipated by the prior art.
`
`8.
`
`As set forth in detail below, it is my opinion that the Challenged Claims
`
`of the ’299 patent are valid as they are not obvious under 35 U.S.C. § 102.
`
`9.
`
`In the preparation of this declaration, I have studied:
`
`a. The ’299 patent, Ex. 1001;
`
`b. The prosecution history of the ‘299 patent, Ex. 1004;
`
`c. Declaration of Mr. Richard Flasck, Ex. 1002;
`
`d. U.S. Patent Publication No. 2005/0158665 to Maekawa et al., Ex.
`
`1005;
`
`e.
`
` U.S. Patent Publication No. 2004/0239641 to Takahata et al., Ex.
`
`1006;
`
`f. U.S. Patent Publication No. 2005/0099402 to Nakanishi et al., Ex.
`
`1007;
`
`g. Japanese Patent Application No. JP 2004272059 to Hiroyuki
`
`Nagano et al. with certified translation, Ex. 1008.
`
`h. U.S. Patent Application Publication No. 2004/0247918 to Kiyokazu
`
`Hashimoto, Ex. 1014.
`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`i. U.S. Patent Application Publication No. 2007/0040816 to Naohito
`
`Toyomaki, Ex. 1015.
`
`j. Claim Construction Memorandum Opinion and Order in Japan
`
`Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.; C.A.
`
`No. 2:20-cv-00283 (ED TX), Case No. 2:20-cv-00283 (Dkt. No.
`
`123), Ex. 2006.
`
`k. G. Walker, “Part 2: Fundamentals of Touch Technologies other than
`
`Projected Capacitive,” SID Display Week 2014, Ex. 2009.
`
`l. U.S. Patent No. 7,148,944 issued to Kinoshita et al. on 12/12/2006,
`
`Ex. 2008.
`
`10.
`
`In forming the opinions expressed below, I have considered the
`
`documents listed above and my own knowledge and experience in the field of liquid
`
`crystal displays (“LCDs”), as described below.
`
`II.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`11. My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in Ex. 2011. The following
`
`is a brief summary of my relevant qualifications and professional experience.
`
`12. As shown in my curriculum vitae, I have devoted my career to the
`
`research and development and product engineering of flat panel displays and
`
`materials/optics/electronics for flat panel displays. I have over 20 years of
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`involvement in active-matrix LCD R&D, starting in 1983 at RCA Labs and
`
`continuing at GE. I led the product development of active-matrix LCDs for
`
`notebook computers at Apple in the early 90’s and had close collaboration with many
`
`LCD developers in Asia. Later in my career, I made significant contributions to the
`
`design and implementation of new pixel architectures for LCDs and OLEDs while
`
`at Clairvoyante; both efforts involved TFT design modifications to achieve the
`
`desired goals of high pixel transmission and reduced circuit complexity. More
`
`recently, I have been involved in several patent litigation cases which required a
`
`detailed knowledge of TFT design and processing.
`
`13.
`
`I am currently the President of TLC Display Consulting and split my
`
`time between technical consulting and patent litigation support.
`
`14.
`
`I received my M.S. degree in Electrical Engineering from the
`
`Massachusetts Institute of Technology in 1970, with an emphasis on Electro optics
`
`and Solid-State Materials. I received my B.S. degree in Electrical Engineering in
`
`1969 from Drexel University.
`
`15.
`
`I was employed by RCA at Sarnoff Labs in Princeton, NJ from 1970
`
`through 1986 at first as a Member of the Technical Staff and later as a Group
`
`Manager in charge of all Active Matrix LCD research. During my time at RCA, I
`
`participated in research and development projects relating to optical materials and
`
`flat panel displays, including LCD devices. In 1983, I established the Thin Film
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`Transistor (“TFT”) LCD Program at Sarnoff Labs. As a Group Manager, I led a
`
`project that resulted in the development of the first poly silicon TFT LCD at Sarnoff
`
`Labs. I received the Sarnoff Outstanding Achievement Award for Large Area Flat
`
`Panel TV Developments.
`
`16.
`
`From 1986 to 1991, I was employed by GE as the Manager of TFT
`
`LCD Research and Development at the GE Research and Development Center in
`
`Schenectady, NY. My duties included contributing to and managing research and
`
`development efforts relating to TFT and LCD technology for avionics applications.
`
`While employed by GE, I led the team that built the world’s first 1-million-pixel
`
`color LCD device. I also led development of numerous other display devices
`
`utilizing LCD technology.
`
`17.
`
`From 1991 to 1994, I was employed by Apple Computer as the
`
`Manager of Display Engineering. In my role at Apple, I supervised all TFT-LCD
`
`design (in-house and at vendors), engineering, and qualification for the first
`
`PowerBook notebook computers introduced to market in the United States. A key
`
`part of my effort was the evaluation and development of active matrix LCDs with
`
`improved performance, such as viewing angle, contrast ratio and uniformity.
`
`18.
`
`From 1994 to 1996, I was employed as the Director of Advanced
`
`Product Marketing by Allied Signal, where I was involved with the design and
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`engineering of optical films and custom focusing backlight designs for improving
`
`the viewing angle performance of LCD devices.
`
`19.
`
`From 1996 to 1999, I was employed as the Director of Product
`
`Marketing for Motorola’s Flat Panel Display Division, where I worked in the
`
`development of new flat panel technology, and I also worked closely with Motorola
`
`groups responsible for integrating TFT-LCD technology into mobile phone
`
`products.
`
`20.
`
`From 1999 to 2001, I served as the Vice President of Operations of
`
`Alien Technology Corporation. During my time at Alien Technology, I was
`
`involved with the design and architecture of drive electronics packaging technology
`
`suitable for flexible LCD devices.
`
`21.
`
`From 2001 to 2007, I served as the Vice President of Engineering for
`
`Clairvoyante, Inc. My responsibilities as the VP of Engineering included managing
`
`research, development, engineering, and marketing of technologies for improving
`
`the resolution and power consumption of color flat panel displays, which required
`
`significant changes to the TFT-LCD layout. During my time at Clairvoyante, I was
`
`therefore heavily involved with the design of the active-matrix array and the LCD
`
`driving circuitry. My work resulted in the issuance of multiple patents relating to
`
`TFT-LCD and TFT-OLED display technology.
`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`22.
`
`From 2007 to 2008, I served as the Senior VP of Engineering for
`
`Puredepth, Inc. My responsibilities included the design of hardware and software to
`
`create 3D images on TFT-LCDs.
`
`23.
`
`From 2012 through 2015, I served as the Vice President of Application
`
`Engineering and Device Performance for Innova Dynamics, Inc., a nanotechnology
`
`company developing materials to be used in LCDs and touch sensors. In 2008, I
`
`founded TLC Display Consulting, a company that provides technical consulting in
`
`the areas of flat panel displays, liquid crystal displays, and related electronics. I
`
`currently serve as the President of TLC Display Consulting.
`
`24.
`
`I have been an active member of the Society for Information Display
`
`(“SID”) for over 40 years, having attended every SID Annual Technical Symposium
`
`since 1972. I was a member of the Society for Information Display’s Program
`
`Committee for 15 years, and the Director of the Society for Information Display’s
`
`Symposium Committee for 10 years. In 1984, I was awarded the title of Fellow of
`
`the Society for Information Display in recognition of my achievements and
`
`contributions to flat panel display technology.
`
`25.
`
`I am a named inventor on over 80 US patents relating to flat panel
`
`display and LCD technology. I have also authored several articles relating to LCD
`
`technology and flat panel displays that were published by industry periodicals such
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`as Information Display and peer reviewed journals such as the Society for
`
`Information Display’s Digest of Technical Papers.
`
`III.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`26.
`
`I am informed and understand that claim interpretation is from the
`
`perspective of a person of ordinary skill in the art at the time of the invention.
`
`27.
`
`I understand that a I understand that a hypothetical person of ordinary
`
`skill in the art is considered to have the normal skills and knowledge of a person in
`
`a certain technical field, as of the time of the invention at issue. I understand that
`
`factors that may be considered in determining the level of ordinary skill in the art
`
`include: (1) the education level of the inventor; (2) the types of problems
`
`encountered in the art; (3) the prior art solutions to those problems; (4) rapidity with
`
`which innovations are made; (5) the sophistication of the technology; and (6) the
`
`education level of active workers in the field. I also understand that “the person of
`
`ordinary skill” is a hypothetical person who is presumed to be aware of the universe
`
`of available prior art.
`
`28.
`
`In my opinion, a person of ordinary skill in the art relevant to the ’299
`
`patent at the time of the invention would have the equivalent of an undergraduate
`
`degree in electrical engineering, materials science, physics, or a related field and at
`
`least two years of work experience (or a graduate degree) in LCD display
`
`technology. Lack of work experience could have been remedied by additional
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`education, and vice versa. Such academic and industry experience would be
`
`necessary to appreciate what was obvious and/or anticipated in the industry and what
`
`a person of ordinary skill in the art would have thought and understood at the time.
`
`Based on these criteria, as of the relevant time frame for the ’299 patent, I possessed
`
`at least such experience and knowledge of a person of ordinary skill in the art, hence
`
`am qualified to opine on the ’299 patent.
`
`29.
`
`I am informed that Mr. Flasck has asserted a different level or ordinary
`
`skill. As I understand it, Mr. Flasck asserts that a person of ordinary skill in the art
`
`would have at least a four-year undergraduate degree in electrical engineering or
`
`physics or a closely related field and four years of experience in the design and
`
`implementation of flat panel display devices or components thereof.
`
`30. While I disagree with Mr. Flasck’s asserted level of ordinary skill, my
`
`opinions apply equally under either proposed level.
`
`IV.
`
`THE PETITION FAILS TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM
`A.
`The Petition Fails to Prove that Maekawa in Combination with
`Takahata Render Obvious Claims 1, 3-6, and 8-11 (Ground 1)
`
`31.
`
`The combination of Maekawa with Takahata, does not render obvious
`
`claims 1, 3-6, and 8-11. Petitioner states that Maekawa discloses “all features except
`
`an adhesive member, and the protective member thickness.” Pet., 15. Specifically,
`
`Petitioner states that Maekawa discloses “an active-matrix (or TFT) substrate,” “a
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`counter substrate,” “a liquid crystal layer,” “a sealant,” and “a protective film”
`
`overlapping with the sealant. Id. at 15-16.
`
`32.
`
`Petitioner attempts to combine Takahata with Maekawa to cure
`
`Maekawa’s lack of disclosure of the adhesive member and the protective member
`
`thickness. Id. at 14-15. For the reasons discussed in Sections 1-4 below, it is my
`
`opinion that the combination fails.
`1. Maekawa and Takahata are not analogous prior art to the
`’299 Patent
`33. Maekawa and Takahata are not analogous prior art references to the
`
`’299 Patent and, therefore, Takahata cannot be combined with Maekawa in an
`
`obviousness rejection. The references are not from the same field of endeavor, nor
`
`are they related to the problem addressed by the ’299 Patent.
`
`34.
`
`First, Petitioner’s attempt to liken Takahata to Maekawa, stating that
`
`the two references are analogous art to the ’299 Patent because “each is ‘from the
`
`same field of endeavor,’ display device, and in particular, LCD display devices,” is
`
`wrong. Pet., 34. The field of endeavor of the ’299 Patent is LCD display devices.
`
`Ex. 1001, 1:29-34 (“The present invention relates to a liquid crystal display and a
`
`display... used in a hand-held electronic device such as a mobile telephone
`
`terminal.”). In contrast, the field of endeavor of Maekawa is “a manufacturing
`
`method of semiconductor devices formed by using a droplet discharging method
`
`represented by an ink-jetting method, to a technique to form a mask pattern, a contact
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`hole, and a film of each portion of a semiconductor element.” Ex. 1005, ¶2. The
`
`Maekawa patent application discloses various methods to fabricate active-matrix
`
`layers for displays and other devices using ink jet processes and special material
`
`layers, and only in passing mentions a liquid crystal display as one embodiment that
`
`could use the proposed manufacturing invention. In fact, only one figure (Fig. 16)
`
`is dedicated to illustrating an LCD application and no details are disclosed regarding
`
`a protective film with no disclosure of thickness or how it is attached. Id. at ¶¶296-
`
`300. Clearly, Maekawa’s field of endeavor differs from that of the ’299 Patent.
`
`35. Next, Takahata’s field of endeavor is touch panels. Takahata (Ex.
`
`1006, ¶1) (“The present invention relates to a high-durability touch panel…used
`
`primarily for car navigation or the like.”). Takahata’s proposed invention is
`
`addressed at improving performance of touch panels used in automotive
`
`applications, especially where an upper electrode, which is separated from a lower
`
`electrode by an air gap, incorporates additional layers to reduce sunlight reflections.
`
`Id. at ¶¶2-4. Prior art solutions had problems with differential expansion of
`
`components when exposed to temperatures up to 70°C since the additional layers
`
`were only on one of the electrodes; this could lead to waviness or strain in the upper
`
`electrode, impairing antireflection properties. Id. at ¶¶4-5. Takahata discloses the
`
`addition of a “heat resistant transparent resin plate” to improve the antireflection
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`properties of the touch sensor, especially under high temperatures up to 70°C. Id. at
`
`¶10.
`
`36.
`
`I understand that the Markman Order issued in the district case found
`
`that the ’299 Patent preamble to claims 1 and 6 directed to a “hand-held electronic
`
`device” are limiting. See Japan Display, Case No. 2:20-cv-00283 (Dkt. No. 123)
`
`(Ex. 2006, 26-29). The limiting preambles of claims 1 and 6 further illustrate that
`
`Takahata and the ’299 Patent are from different fields of endeavor. The preamble
`
`of claim 1 of the ’299 Patent recites “A display device comprising display area and
`
`used in a hand-held electronic device comprising.”1 (emphasis added). Ex. 1001,
`
`22:62-63. Therefore, claim 1 encompasses only hand-held electronic devices, not
`
`affixed electronic devices. The Takahata reference specifically states that it is
`
`directed at touch panels “primarily for car navigation and the like.” Ex. 1006, ¶1.
`
`Affixed to a car’s dashboard, a car navigation touch panel is decidedly not a “hand-
`
`held electronic device.” The Takahata specification leaves little room for doubt that
`
`the purpose of the device is to create a touch panel specifically for the automobile
`
`environment. The function of the antireflective layer consisting of the quarter wave
`
`plate 9 and the polarizing plate 10 is specifically to deflect outdoor sunlight that
`
`1 The preamble of independent claim 6 is substantially similar: “A display device used in a hand-held electronic device
`comprising;” The same analysis applied to claim 1 applies to claim 6.
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`streams through a car’s window. Id. at ¶¶4-5. Further, the express purpose of
`
`bonding the glass plate 13 to the quarter wave plate 9 is to reduce or eliminate
`
`deformation of various device layers in an automobile interior which “with windows
`
`closed may undergo a high-temperature environment over 70° C.” Id. Takahata is
`
`focused on solutions to thermal issues in touch panels devices that are subjected to
`
`temperatures of 70°C; clearly these are not “hand held” devices!
`
`37. Additional description of car navigation systems appears in the
`
`specification. Ex. 1006 at ¶4 (“Recently, in the automobile industry, there have been
`
`wide-spreading car navigation systems…there is an essential need for a touch panel
`
`having the aforementioned antireflection filter….”); Id. at ¶5 (“Therefore, for use
`
`in car navigations, there has been provided a touch panel in which a glass plate 13 is
`
`disposed in the upper electrode plate 1 and bonded with the quarter wave plate 9 all
`
`over with a view to avoiding the above-described problems (see FIG. 7).”); Id. at
`
`¶37 (Bonding of the resin plate 8 with the quarter wave plate 9 “maintain[s] a stable
`
`state free from occurrence of waviness and strain under a high-temperature
`
`environment over 70 C, such as in a vehicle with its windows closed under summer’s
`
`direct sunlight…”). See also, id. at ¶¶53, 59. Such concerns related to a touch screen
`
`for a car’s navigational system are not the same as for a hand-held device, and
`
`therefore the ’299 Patent is not from the same field of endeavor as Takahata.
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`38.
`
`Second, Takahata and Maekawa solve different problems from the
`
`problems addressed by the ’299 Patent. Maekawa seeks to solve a manufacturing
`
`problem found in display devices in which the application of film pattern during
`
`semiconductor processing is inefficient, leading to waste and increased costs. Ex.
`
`1005, at ¶¶9-11, 50, 51. Only one figure (Fig. 16) out of thirty-four shows an
`
`application of the manufacturing method to an LCD device and nothing is disclosed
`
`regarding fabrication methods of the protective film. Takahata, on the other hand,
`
`seeks to solve the problem of creating a “high-durability touch panel” which is
`
`resistant to high temperatures over 70°C, through the bonding of layers of an upper
`
`electrode plate of the touch panel and use of a heat-resistant resin plate for car
`
`navigation systems. Ex. 1006 at ¶¶1-5, 30. The resin plate is preferably located
`
`between the polarizer and quarter-wave plate and is never referred to as a protective
`
`cover. Id. at ¶51. In fact, only protective member disclosed in Takahata is a “low
`
`reflection treatment, antifouling treatment or satin treatment” and is preferably 40-
`
`80 µm PET. Id. at ¶50. The problems addressed by Maekawa and Takahata are thus
`
`quite different from the problem of creating a thin and strong LCD panel and LCD
`
`display module described in the ’299 Patent. Ex. 1001, 2:7-39; 5:24-43; 5:59-6:12.
`
`39.
`
`Therefore, the Maekawa and Takahata references are not analogous to
`
`the ’299 Patent, and a person of ordinary skill in art would not find it obvious to
`
`combine Maekawa with Takahata.
`
`–14–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`2.
`
`A person of ordinary skill in the art would not find it obvious
`to combine Takahata with Maekawa
`Even if Maekawa and Takahata were analogous prior art to the ’299
`
`40.
`
`Patent, a person of ordinary skill in the art would not find it obvious to combine the
`
`two references. Petitioner incorrectly states that “Takahata discloses a display
`
`device.” Pet., 26, 47. To the extent that the Takahata reference discusses LCD
`
`display devices, it is only in passing. Petitioner cites to each of the three paragraphs
`
`(out of 66 total) of the specification that mention LCD display devices. For example,
`
`Petitioner points to a passage in the Background Art section that states that,
`
`conventionally, touch panels were positioned at the front of LCDs or other displays.
`
`Ex. 1006 at ¶2. In addition, Petitioner cites to passages which reference an
`
`underlying LCD display, which is not the subject of the Takahata disclosure. Id. at
`
`¶¶3, 47. Takahata discloses a touch panel:
`
`The present invention relates to a high-durability touch panel which is free
`from occurrence of deterioration of its antireflection characteristics due to
`retardation changes even if left under a high-temperature environment for a
`long time and which allows comfortable input operations to be done and yet
`which is successful in workability in assembly process. The panel is to be used
`primarily for car navigation or the like.
`
`Id. at ¶1 (emphasis added). The touch panel device sits above a liquid crystal display
`
`device. See Takahata, Fig. 2 (annotated below).
`
`–15–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`Touch panel
`
`LCD
`
`Takahata, Fig. 2 (annotated)
`
`The lower red box is added to represent a liquid crystal display device, such as the
`
`one described in Maekawa. The device surrounded by blue dashed lines is the touch
`
`panel disclosed as the invention in Takahata. See also, id. at ¶2 (“It has
`
`conventionally been practiced that a touch panel is disposed at frontage of LCD,
`
`organic EL, CRT, or other displays, which are widely used in such products as PDAs
`
`(Personal Digital Assistants), portable telephones, and personal computers.”). To
`
`the extent that the Takahata reference discusses LCD display devices, it is only with
`
`respect to how the invention disclosed by Takahata would interact with an LCD
`
`display device. Thus, Petitioner’s attempt to liken Takahata to Maekawa, stating
`
`that the two references are analogous art ‘from the same field of endeavor,’ is wrong.
`
`Pet., 34; Flasck Decl. (Ex. 1002, ¶¶ 76, 100).
`
`–16–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`41.
`
`Petitioner’s argument that Maekawa suggests a “display device with a
`
`touch panel” like that disclosed in Takahata further demonstrates how far Petitioner
`
`is willing to stretch its “field of endeavor” argument. In particular, Petitioner’s
`
`expert asserts that because Maekawa discloses “a capacitor” as a semiconductor
`
`element, Maekawa discloses a “capacitive touch screen.” Ex. 1002, ¶ 101. To be
`
`clear, Maekawa makes no mention of a touch screen element and Takahata does not
`
`disclose a capacitive touch panel. In fact, Takahata’s touch screen relies on direct
`
`contact between the two electrodes. See Ex. 1006 ¶2 (“[T]he two electrodes
`
`insulated from each other by the air layer can be put into contact with each other and
`
`thereby into conduction, thus allowing an input operation to be performed.”). It
`
`would have been well known to a person of skill in the art in 2005 that the touch
`
`panel disclosed is a “resistive” touch sensor. An example of such a touch panel is
`
`shown below.2 Ex. 2009, 219.
`
`2 G. Walker, “Part 2: Fundamentals of Touch Technologies other than Projected Capacitive,” SID Display Week 2014
`p.219
`
`–17–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`42. Because the resistive touch panel of Takahata has an air gap, it is
`
`sensitive to thermal warpage. For example, when sunlight hits the top surface of the
`
`touch panel, it will heat up more than the lower electrode; since they are separated
`
`only by an air gap, the upper electrode can “bow,” causing optical distortions. Ex.
`
`1006, ¶4.
`
`43.
`
`In addition, Petitioner asserts that one would have been “motivated to
`
`implement Maekawa’s display device with an adhesive member between its
`
`protective member and polarizer to provide a durable display that ‘suppress[es] the
`
`–18–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`thermal expansion of Maekawa’s polarizer….” Pet., 30. However, this assertion is
`
`incorrect.
`
`Maekawa, Fig. 16 (annotated)
`
`44.
`
`Polarizers 1606 and 1607 of Maekawa “are provided on outside the
`
`active matrix substrate 1601 and the counter substrate 1602.” Ex. 1005, ¶298; Fig.
`
`16. Because the polarizers are located on an active-matrix substrate and a counter
`
`substrate, they are not prone to thermal expansion differentials in the same way as
`
`the polarizers and quarter wave plates of Takahata. By contrast, in Takahata, the
`
`polarizers and quarter wave plates are located only on the upper electrode facing
`
`outwards, and are separated by an air gap (a thermal insulator) from the lower
`
`substrate. As the touch panel is only supported at the periphery, any thermal loading
`
`–19–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`on the front surface, e.g., from sunlight, makes these outside layers vulnerable to
`
`heat warpage. See Ex. 1006, Figs. 1-3. Thus, one of ordinary skill in the art would
`
`not have been motivated to combine Maekawa with Takahata to include an adhesive
`
`member between the protective member and the polarizer.
`
`45. Accordingly, a person of ordinary skill in the art would not be
`
`motivated to combine these references.
`
`3.
`
`The combination of Maekawa with Takahata fails to disclose
`the claimed “adhesive member”
`46. Claim 1[g] recites “an adhesive member” and claim 1[h] recites
`
`“wherein the adhesive member overlaps with the display area in a plan view, and is
`
`between the protective member and the polarizing plate.”3 Petitioner concedes that
`
`Maekawa does not disclose the claimed adhesive member. Pet., 14-15. In fact, LCD
`
`displays do not require the claimed adhesive member because they are less
`
`vulnerable to the differential thermal expansion problems, as described in paragraph
`
`44. Petitioner attempts to cure the deficiency with Takahata. Id. However,
`
`Petitioner’s argument on this point is misleading. Petitioner cites to the
`
`specification to support this contention:
`
`The quarter wave plate 9 and the polarizing plate 10, and/or the quarter wave
`plate 9 and the heat-resistant transparent resin plate 8, may be bonded together
`
`3 Independent claim 6 recites the same claim limitations and the same analysis applied to claim 1 would therefore
`apply to claim 6.
`
`–20–
`
`JDI/PLD - EX. 2010
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01028
`
`
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`directly all over (see FIGS. 1 to 3), or may be bonded together indirectly via
`an optically isotropic transparent resin
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