Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Entered: December 14, 2021
`
`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.
`
`IPR2021-01028
`Patent 9,793,299 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`IPR2021-01028
`Patent 9,793,299 B2
`
`I.
`INTRODUCTION
`Tianma Microelectronics Co. Ltd. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–11, 15, and 16 (the “challenged
`claims”) of U.S. Patent No. 9,793,299 B2 (“the ’299 patent,” Ex. 1001).
`Paper 2 (“Pet.”). Japan Display Inc. and Panasonic Liquid Crystal Display
`Co., Ltd. (collectively, “Patent Owner”) filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”). With Board authorization, Petitioner filed a
`Reply to the Preliminary Response (“Reply,” Paper 8), and Patent Owner
`filed a Sur-reply to Petitioner’s Reply (“Sur-reply,” Paper 10).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314
`(2018); see also 37 C.F.R. § 42.4 (2021). Upon consideration of the
`Petition, the Preliminary Response, the Reply, the Sur-reply, and the
`evidence of record, we determine that Petitioner has established a reasonable
`likelihood of prevailing with respect to the unpatentability of at least one
`claim of the ’299 patent, and we decline to exercise our discretion to deny
`institution. Accordingly, for the reasons that follow, we institute an inter
`partes review of claims 1–11, 15, and 16 of the ’299 patent.
`A. Real Parties-in-Interest
`Each party identifies itself as the real party-in-interest. Pet. 72;
`Paper 6, 1.
`B. Related Proceedings
`The parties indicate that the ’299 patent is asserted in Japan Display
`Inc. and Panasonic Crystal Display Co., Ltd. v. Tianma Microelectronics
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`IPR2021-01028
`Patent 9,793,299 B2
`Co. Ltd., No. 2:20-cv-00283 (E.D. Tex.) (the “District Court Action”).
`Pet. 72; Paper 6, 1.
`C. The ’299 Patent
`The ’299 patent, titled “Display Device and Hand-Held Electronic
`Device,” relates to a liquid crystal display, and, in particular, “is concerned
`with a technique applicable effectively to a liquid crystal display (module)
`used in a hand-held electronic device such as a mobile telephone terminal.”
`Ex. 1001, code (54), 1:30–34. The ’299 patent explains that, “[i]n the liquid
`crystal display, when the thickness of the glass substrate used in the [thin
`film transistor (“TFT”)] substrate or the counter substrate is reduced by
`polishing in order to reduce the thickness of the liquid crystal display panel,”
`the strength of both the glass substrate and the liquid crystal display panel is
`deteriorated, and “poses the problem that it is difficult to attain both
`thickness reduction and ensuring of a sufficient strength.” Id. at 2:8–17.
`The ’299 patent further explains that using a plastic substrate instead of a
`glass substrate “poses the problem that the heat resistance and solvent
`resistance (chemicals resistance) of the plastic substrate are low in
`comparison with the glass substrate,” handling the plastic substrate “in the
`step of forming TFT onto the glass substrate” is difficult, and unevenness in
`the display easily occurs when a glass substrate is used as the TFT substrate
`and a plastic substrate is used as the counter substrate “because the
`substrates differ in the amount of deformation caused by changes of
`environmental conditions such as temperature and humidity.” Id. at 2:18–
`29. The ’299 patent, therefore, seeks “to provide a technique able to attain
`both thickness reduction of a liquid crystal display panel and ensuring of a
`sufficient strength of the panel,” and “to reduce the thickness of a hand-held
`electronic device such as a liquid crystal display (module).” Id. at 2:30–36.
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`IPR2021-01028
`Patent 9,793,299 B2
`Figure 2 of the ’299 patent is reproduced below.
`
`
`Figure 2 is a sectional view of a configuration of a liquid crystal display
`panel according to one embodiment described in the ’299 patent. Id.
`at 8:66–67. The liquid crystal display panel includes TFT substrate 1,
`counter substrate 2, and liquid crystal material 3, polarizing plates 4, 5, and
`resin film 6. Id. at 10:14–21. Annular sealing member 7 bonds TFT
`substrate 1 to counter substrate 2, and liquid crystal material 3 “is sealed and
`held within the space enclosed by the TFT substrate 1, counter substrate 2
`and sealing member 7.” Id. at 10:23–27. TFT substrate 1 includes glass
`substrate 101 and multi-thin film layer 102, which “is a laminate of plural
`insulating layers, conductive layer, semiconductor layer and the like.” Id. at
`10:42–46. Counter substrate 2 includes glass substrate 201 and multi-thin
`film layer 202, which “is a laminate of plural insulating layers and
`conductive layer, forming a color filter for example.” Id. at 10:50–54. A
`pressure-sensitive adhesive affixes lower polarizing plate 4 to glass substrate
`101, upper polarizing plate 5 to glass substrate 201, and resin film 6 to upper
`polarizing plate 5. Id. at 11:3–8, 11:29–31.
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`IPR2021-01028
`Patent 9,793,299 B2
`The ’299 patent teaches that “resin film 6 is a film member disposed
`on the most front side viewed from the observer side,” and “it is preferable
`that a film with a high light transmittance, especially a colorless, transparent
`film be used as the resin film 6” that preferably has “a thickness, T6, of
`0.2 mm or more and 1.0 mm or less.” Id. at 11:24–34. “If the thickness T6
`of the resin film 6 is 0.2 mm or more, a sufficient strength of the liquid
`crystal panel can be ensured” even if glass substrate 101 and glass
`substrate 201 “are each made as thin as 0.5 mm or less.” Id. at 11:34–39.
`Therefore, according to the ’299 patent, sufficient strength in the liquid
`crystal display panel “can be ensured even if the total panel thickness, TP, is
`2 mm or less.” Id. at 11:39–41.
`D. Illustrative Claim
`Petitioner challenges claims 1–11, 15, and 16 of the ’299 patent.
`Pet. 2–3. Claims 1 and 6 are independent. Claim 1 is illustrative of the
`claimed subject matter, and is reproduced below.
`
`1. A display device comprising display area and used in a
`hand-held electronic device comprising:
`[a] a TFT substrate;
`[b] a counter substrate;
`[c] a multi-thin layer film;
`[d] a liquid crystal layer;
`[e] a seal member;
`[f] a polarizing plate;
`[g] an adhesive member;
`[h] a protective member;
`[i] wherein the multi-thin film layer disposed on the TFT
`substrate,
`[j] wherein the liquid crystal layer disposed on the multi-
`thin layer;
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`IPR2021-01028
`Patent 9,793,299 B2
`[k] wherein the seal member surrounds the liquid crystal
`layer;
`[l] wherein the counter substrate is disposed between the
`TFT substrate and the polarizing plate;
`[m] wherein the polarizing plate is a separate member
`from the protective member and disposed between the
`counter substrate and the protective member;
`[n] wherein the adhesive member overlaps with the
`display area in a plan view, and is between the
`protective member and the polarizing plate; and
`[o] wherein the protective member is a protective cover
`of the hand-held electronic device,
`[p] wherein the protective member overlaps with the
`sealing member in a plan view, and
`[q] wherein a thickness of the protective member is at
`least 0.2 mm and no greater than 1.0 mm.
`Ex. 1001, 22:62–23:24 (bracketed material added).
`E. References Relied Upon
`Petitioner relies on the references listed below (Pet. 1–2):
`Reference
`Date
`Exhibit No.
`US Patent App. Pub.
`July 21, 2005
`1005
`No. 2005/0158665 A1 (“Maekawa”)
`US Patent App. Pub.
`No. 2004/0239641 A1 (“Takahata”)
`US Patent App. Pub.
`No. 2005/0099402 A1 (“Nakanishi”) May 12, 2005
`JP Patent App. Pub. No. P2004–
`Sept. 30, 2004
`272059A (“Nagano”)
`
`Dec. 2, 2004
`
`1006
`
`1007
`
`1008
`
`
`
`F. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
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`IPR2021-01028
`Patent 9,793,299 B2
`References
`35 U.S.C. §
`Claims Challenged
`Maekawa, Takahata
`103
`1, 3–6, 8–11
`Maekawa, Takahata, Nakanishi
`103
`2, 7
`Maekawa, Takahata, Nagano
`103
`15, 16
`Pet. 2–3. Petitioner relies on the Declaration of Richard Flasck (“Flasck
`Declaration,” Ex. 1002) in support of its contentions. Patent Owner submits
`the Declaration of Thomas L. Credelle (“Credelle Declaration,” Ex. 2010) in
`support of its Preliminary Response.
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”); SAS Inst. v Iancu,
`138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with
`discretion on the question whether to institute review.”); Harmonic v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted,
`but never compelled, to institute an IPR proceeding.”).
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 314(a), the Board considers the trial date in related litigation as
`part of an assessment of all relevant circumstances of the case, including the
`merits, in an effort to balance considerations such as system efficiency,
`fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11, 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see
`also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8,
`19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in
`part, on § 314(a) because the parallel district court proceeding was
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`IPR2021-01028
`Patent 9,793,299 B2
`scheduled to finish before the Board reached a final decision). In particular,
`the Board evaluates the following factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv Order, 5–6. In evaluating these factors, “the Board takes a holistic
`view of whether efficiency and integrity of the system are best served by
`denying or instituting review.” Id. at 6.
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution. Prelim. Resp. 1–16; Sur-reply 1–6.
`We have considered the circumstances and facts before us in view of the
`Fintiv factors and determine that the circumstances presented here weigh
`against exercising discretion under § 314(a) to deny institution of inter
`partes review.
`1. Factor 1: Likelihood of a Stay
`If a petitioner has sought and obtained a stay of related litigation
`pending resolution of an inter partes review, that generally weighs against
`exercising discretion to deny institution. Fintiv Order, 6. The parties
`indicate that Petitioner has not requested a stay of the District Court Action.
`Pet. 7; Prelim. Resp. 4. We decline to speculate on how the court in the
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`Patent 9,793,299 B2
`related proceeding would rule on a stay, if one were requested. See Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020)
`(informative) (explaining that factor 1 generally “does not weigh for or
`against discretionary denial” when neither party has requested a stay). Thus,
`we find this factor to be neutral.
`2. Factor 2: Proximity of Trial Date to the Board’s
`Projected Statutory Deadline
`Trial in the District Court Action is scheduled to begin on February 7,
`2022. Pet. 8; Prelim. Resp. 7; Ex. 2001. If trial is instituted, the statutory
`deadline for issuance of a final written decision in this proceeding would be
`in December 2022. 35 U.S.C. §§ 314(c), 316(a)(11); see also 37 C.F.R.
`§ 42.100(c). Thus, our final written decision would issue approximately ten
`months after the start of the trial. We determine that this factor weighs in
`favor of exercising our discretion to deny institution. See Fintiv Order, 9
`(“If the court’s trial date is earlier than the projected statutory deadline, the
`Board generally has weighed this fact in favor of exercising authority to
`deny institution under NHK.”).
`3. Factor 3: Investment in the Proceedings
`Fintiv provides the following guidance with respect to factor 3:
`[I]f, at the time of the institution decision, the district court has
`issued substantive orders related to the patent at issue in the
`petition, this fact favors denial. Likewise, district court claim
`construction orders may indicate that the court and parties have
`invested sufficient time in the parallel proceeding to favor
`denial. If, at the time of the institution decision, the district
`court has not issued orders related to the patent at issue in the
`petition, this fact weighs against exercising discretion to deny
`institution under NHK.
`Fintiv Order, 9–10. Fintiv explains that “[t]his investment factor is related
`to the trial date factor, in that more work completed by the parties and the
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`Patent 9,793,299 B2
`court in the parallel proceeding tends to support the arguments that the
`parallel proceeding is more advanced, a stay may be less likely, and
`instituting would lead to duplicative costs.” Id. at 10.
`Patent Owner contends that “[b]y the time an institution decision
`issues in this proceeding, fact and expert discovery will be complete; expert
`reports and dispositive motions will have been filed; and the parties will
`have filed their motions in limine and be preparing for trial.” Prelim.
`Resp. 9 (citing Ex. 2001). Therefore, Patent Owner contends, the District
`Court Action “is far along enough that the parties and the Court have
`invested significant resources in this case.” Id. We recognize that much
`work has been done by the parties and the District Court.
`In the investment factor, Fintiv further addressed the matter of petition
`timing, noting that “notwithstanding that a defendant has one year to file a
`petition, it may impose unfair costs to a patent owner if the petitioner, faced
`with the prospect of a looming trial date, waits until the district court trial
`has progressed significantly before filing a petition at the Office.” Fintiv
`Order, 11. Patent Owner contends that “Petitioner waited nine months from
`the filing of the complaint to file this Petition,” and this “unexplained delay .
`. . also weighs in favor of the Board exercising discretion to deny
`institution.” Prelim. Resp. 10. As Petitioner notes, however, Patent Owner
`filed its infringement contentions in the District Court Action on January 6,
`2021, and Petitioner filed this Petition five months later on June 8, 2021.
`Pet. 9–10; see also Ex. 1020 (infringement contentions served on January 6,
`2021); Paper 3, 1 (according the Petition a filing date of June 8, 2021).
`Petitioner asserts that it “moved with speed and diligence in bringing the
`present—and six related IPRs—approximately five months after Patent
`Owner served its infringement contentions,” because, even after Patent
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`Patent 9,793,299 B2
`Owner filed its infringement contentions, “Patent Owner still asserted 135
`claims from 15 patents against more than 2,400 accused products, imposing
`a vastly greater burden on Petitioner to assess the dispute and evaluate which
`patents to request IPR.” Reply 2–3.
`We find that Petitioner’s diligence in filing the Petition five months
`after receiving Patent Owner’s infringement contentions in the District Court
`Action is a countervailing consideration to the amount of work done by the
`parties in the District Court Action, considering that Patent Owner’s
`infringement contentions included 135 claims from 15 patents. See Fintiv
`Order, 11 (“If the evidence shows that the petitioner filed the petition
`expeditiously, such as promptly after becoming aware of the claims being
`asserted, this fact has weighed against exercising the authority to deny
`institution under NHK.”); see also Samsung Electronics, Ltd. v. Acorn Semi,
`LLC, IPR2020-01183, Paper 17 at 40 (PTAB Feb. 10, 2021) (“[W]e also
`find, as a countervailing consideration, that Petitioner acted diligently in
`filing this and the other IPRs” less than four months after Patent Owner
`identified “the full set of claims being asserted in the District Court.”). For
`these reasons, we determine that this factor is neutral.
`4. Factor 4: Overlap of Issues
`Patent Owner argues that “Petitioner challenges the same claims and
`relies on the same references in its Invalidity Contentions [in the District
`Court Action] as in the Petition” and that Petitioner was subsequently
`allowed to amend its invalidity contentions “to include references ‘raised in
`Inter Partes Review (IPR) petitions that Tianma Microelectronics filed in
`June.’” Prelim. Resp. 11–12 (citing Ex. 2002, Chart D-1; Ex. 2007, 1;
`Ex. 2012). Patent Owner argues that any stipulation that Petitioner offers “is
`a hollow promise since expert reports are due on October 1, 2021, prior to
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`Patent 9,793,299 B2
`the institution deadline for this Petition.” Id. at 13 (citing Ex. 2001).
`According to Patent Owner, “[b]ecause there is complete overlap of issues
`raised in the Petition and the district court case, this factor weighs heavily in
`favor of denial.” Id. at 14.
`In the Petition, Petitioner states that it “stipulates that, if this IPR is
`instituted, it will not pursue in the related district court litigation any ground
`that it raised or reasonably could have raised in this Petition.” Pet. 11.
`Petitioner’s stipulation is similar to that provided in Sotera Wireless,
`Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1,
`2020) (precedential), which was found to mitigate concerns of duplicative
`efforts and possibly conflicting decisions between the Board and the district
`court, thus ensuring that the inter partes review is a “true alternative” to the
`district court proceeding. We also note that Patent Owner recently narrowed
`the claims of the ’299 patent that it is asserting in the District Court action to
`include only claims 6, 7, and 16. Ex. 2026, 1; see also Ex. 2025, 2–3
`(ordering Patent Owner to narrow the number of patents and claims asserted
`in the District Action). Because the District Court Action will not address
`all of the claims challenged in this proceeding, and Petitioner agrees to be
`bound by a stipulation substantively similar to that in Sotera, we find that
`this factor weighs strongly against exercising discretion to deny institution.
`5. Factor 5: Whether the Petitioner and the Defendant in the
`Parallel Proceeding are the Same Party
`There is no dispute that Petitioner is a party to the District Court
`Action. Pet. 72; Prelim. Resp. 14. Accordingly, we determine that this
`factor weighs in favor of exercising discretion to deny institution.
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`Patent 9,793,299 B2
`6. Factor 6: Other Circumstances, Including the Merits
`Patent Owner argues that “the merits of this Petition are not strong”
`because “Petitioner has failed to show how the combination of Maekawa
`with Takahata renders obvious claims 1, 3–6, and 8–11.” Prelim. Resp. 14.
`We have reviewed Petitioner’s unpatentability arguments and Patent
`Owner’s responses thereto, and we find that Petitioner has shown a
`reasonable likelihood of success on the merits as discussed herein. Although
`Petitioner has met its burden for institution, we do not find that Petitioner’s
`showing is “particularly strong” so as to weigh against exercising discretion
`to deny institution. See Fintiv Order, 14–15 (noting that the merits favor
`institution under factor 6 “if the merits of a ground raised in the petition
`seem particularly strong”). Accordingly, we determine that this factor is
`neutral.
`7. Holistic Assessment of Factors
`We have considered the circumstances before us in view of the Fintiv
`factors. Because our analysis is fact driven, no single factor is determinative
`of whether we exercise our discretion to deny institution under § 314(a).
`Evaluating the Fintiv factors with a “holistic view of whether the efficiency
`and integrity of the system are best served by denying or instituting review”
`(Fintiv Order, 6), we decline to exercise our discretion under 35 U.S.C.
`§ 314(a) to deny the Petition.
`B. Discretionary Denial Under 35 U.S.C. § 325(d)
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny institution because prior art relied on by
`Petitioner was previously considered during prosecution of the ’299 patent.
`Prelim. Resp. 16–27.
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`1. Legal Framework
`Section 325(d) provides that, in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” The Board uses a
`two-part framework for evaluating arguments under § 325(d):
`(1) determining whether the same or substantially the same art previously
`was presented to the Office, or whether the same or substantially the same
`arguments previously were presented to the Office; and (2) if either
`condition of the first part of the framework is satisfied, determining whether
`the petitioner has demonstrated that the Office erred in a manner material to
`the patentability of the challenged claims. Advanced Bionics, LLC v. MED-
`El Elektromedizinische Geräte GmBH, IPR2019-01469, Paper 6 at 8 (PTAB
`Feb. 13, 2020) (precedential). In applying this framework, we consider the
`Becton, Dickinson1 factors that address discretion to deny when a petition
`present the same or substantially the same prior art or arguments previously
`presented to the Office, including:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in
`which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional
`
`
`1 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).
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`evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.
` Becton, Dickinson, Paper 8 at 17–18. If, after review of factors (a), (b), and
`(d), we determine that the same or substantially the same art or arguments
`previously were presented to the Office, then factors (c), (e), and (f) relates
`to whether the petitioner demonstrates that the Office erred in a manner
`material to the patentability of the claims. Advanced Bionics, Paper 6 at 10.
`2. Analysis
`Patent Owner contends that “Maekawa, the primary reference in the
`present inter partes review petition, was also the primary reference used
`against independent claims 1 and 6, and was the sole reference used against
`all of dependent claims 3–6 and 8–11 during prosecution of the ’299 patent.”
`Prelim. Resp. 17 (citing Ex. 1004). Patent Owner argues that “Petitioner
`applies Takahata as a secondary reference for claims 1 and 6 whereas the
`Examiner applied Hashimoto (U.S. Pat. Publ. No. 2004/02479187) as the
`secondary reference during prosecution,” but “Petitioner has not pointed to
`any substantive differences between Takahata and Hashimoto as a basis for
`unpatentability, and, therefore, little weight can be given to the fact that
`these are different references.” Id. at 17–18 (citing Ex. 1004; Becton,
`Dickinson, Paper 8 at 21). Patent Owner also argues that Petitioner relies on
`Takahata as disclosing an adhesive member, for which the Examiner relied
`on Hashimoto during prosecution, and “has not pointed to any substantive
`differences between the obviousness arguments presented in the Petition
`compared with the obviousness argument presented during prosecution.” Id.
`at 19.
`Petitioner contends that, during prosecution, the Examiner found
`“Maekawa and Hashimoto disclosed all features of independent claims 1
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`and 6 except for the thickness requirement for the protective member.”
`Pet. 14 (citing Ex. 1004, 34–37, 39–41). Petitioner contends that the
`Petition “demonstrates that the allegedly missing element of the protective
`member thickness requirement was also in the prior art, as evidenced in
`Takahata (Ex. 1006), a reference the Examiner never cited or applied during
`prosecution.” Id. (citing Ex. 1004; Ex. 1001). Petitioner further contends
`that although the Petition relies on Maekawa “for the majority of claim
`features the Examiner” relied upon, it
`presents combinations with other references, as supported by
`the declaration testimony of Mr. Flasck, that cure the alleged
`deficiencies in Maekawa, including the thickness requirements
`of the independent claims as well as features of claims 15 and
`16 that the Examiner also found missing from Maekawa and
`Hashimoto. Takahata is also relied upon to evidence the well-
`known use of an adhesive member. Such combinations were
`never considered by the Examiner and are not cumulative to
`those references the Examiner did consider during prosecution.
`Id. at 14–15.
`Although Maekawa was considered by the Office during prosecution
`and is relied upon by Petitioner as the primary reference in the Petition
`(Advanced Bionics, Paper 6 at 8), there is not complete overlap between the
`arguments made during examination and the manner in which Petitioner
`relies on Maekawa here (id.). Petitioner argues that Takahata, in
`combination with Maekawa, discloses “an adhesive member” and “wherein
`the thickness of the protective member is at least 0.2 mm and no greater than
`1.0 mm.” Pet. 24–35, 44–49; Section II.E.3, infra. As Patent Owner
`recognizes, the Examiner allowed the claims because “[a] thickness of a
`protective member at least 0.2 mm and no greater 1.0 mm was not found in
`the prior art because rejection relied on a protective member as a hard coat.”
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`Prelim. Resp. 19–20 (quoting Ex. 1004, 2). Patent Owner does not contend
`that Petitioner’s arguments regarding how the combined teachings of
`Maekawa and Takahata disclose the thickness of the protective member
`were previously considered by the Office. Id.
`Accordingly, although Petitioner’s contentions that the challenged
`claims would have been obvious over the combined teachings of Maekawa
`and Takahata includes some cumulative art and arguments (Becton,
`Dickinson Factor (a)), Petitioner’s contentions also include art and
`arguments that are not cumulative of those previously considered by the
`Office (Becton, Dickinson Factor (b)). Because Petitioner relies on Takahata
`with respect to a limitation that the Examiner determined was not found in
`the art, there are material differences between the asserted art here and the
`prior art involved during examination. Thus, overall, we find that
`substantially the same art and arguments were not previously presented.
`When considering the Petition as a whole, we find that it does not
`sufficiently implicate the concerns addressed by § 325(d) to warrant
`discretionary denial, and we decline to exercise our discretion to deny
`institution under § 325(d).
`C. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art would
`have had “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.” Pet. 6 (citing Ex. 1002 ¶ 41). Patent Owner’s declarant,
`Mr. Credelle, testifies that a person having ordinary skill in the art “would
`have had the equivalent of an undergraduate degree in electrical engineering,
`materials science, physics, or a related field and at least two years of work
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`experience (or a graduate degree) in LCD display technology.” Ex. 2010
`¶ 28. Mr. Credelle also states that, although he disagrees with Petitioner’s
`proposed level of ordinary skill in the art, his opinions “apply equally under
`either proposed level.” Id. ¶ 30.
`We agree with the parties that a person of ordinary skill in the art
`would have had the equivalent of a four-year undergraduate degree in
`electrical engineering or a similar field, and experience in the field of flat
`panel displays or liquid crystal display technology, which appears to be
`consistent with the level of skill in the art at the time of the invention as
`reflected in the prior art in this proceeding. Our determination regarding
`Petitioner’s challenge does not turn on the differences between Petitioner’s
`and Patent Owner’s definitions, and we note that our conclusion would be
`the same under either definition.
`D. Claim Construction
`We construe each claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b). Under this standard, claim terms are generally given their plain
`and ordinary meaning as would have been understood by a person of
`ordinary skill in the art at the time of the invention and in the context of the
`entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`Cir. 2005) (en banc). Only those terms in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
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`Neither party proposes an explicit construction for any claim term.
`See Pet. 6; Prelim. Resp. For purposes of this Decision, based on the record
`before us, we determine that no claim term requires an explicit construction.
`E. Obviousness over Maekawa and Takahata
`Petitioner contends that claims 1, 3–6, and 8–11 would have been
`obvious over the combined teachings of Maekawa and Takahata. Pet. 17–
`62.
`
`1. Overview of Maekawa
`Maekawa discloses a method of manufacturing a semiconductor
`device. Ex. 1005, codes (54), (57), ¶¶ 2, 11. According to Maekawa, the
`semiconductor device can be, for example, a display device that includes a
`liquid crystal display device. Id. ¶¶ 25, 43.
`Maekawa’s Figure 16 is reproduced below.
`
`
`Figure 16 “is a view showing a structure of a liquid crystal display module”
`described in Maekawa. Id. ¶ 67. Active matrix substrate 1601 and substrate
`1602 are fixed with sealant 1600, with pixel portion 1603 and liquid crystal
`layer 1604 “interposed therebetween which form a display region.” Id.
`¶ 297. “[C]olored layer 1605 is required in the case of performing a color
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`display.” Id. ¶ 298. Polarizers 160