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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________________
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`
`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 No. IPR2021-01028
`U.S. Patent No. 9,793,299
`_____________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,793,299
`
`

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`Inter Partes Review
`U.S. Patent No. 9,793,299
`TABLE OF CONTENTS
`
`I.
`II.
`
`Preliminary Statement ..................................................................................... 1
`Precise Relief Requested ................................................................................. 1
`A.
`Claims for Which Review Is Requested ............................................... 1
`B.
`Statutory Grounds.................................................................................. 2
`III. THE ’299 PATENT ......................................................................................... 3
`IV. Level of Ordinary Skill .................................................................................... 6
`V.
`Claim Construction .......................................................................................... 6
`VI. The Board Should Not Exercise Discretion to Deny Institution ..................... 6
`A.
`The Board Should Not Deny Institution Under 35 U.S.C. § 314 ......... 6
`B.
`The Board Should Not Deny Institution Under 35 U.S.C. § 325 .......13
`VII. Claims 1-11, 15, and 16 Are Unpatentable Over the Prior Art .....................15
`A. Ground 1: Maekawa in combination with Takahata render
`obvious claims 1, 3-6, and 8-11 ..........................................................17
`1.
`Independent Claim 1 .................................................................17
`2.
`Claim 3 ......................................................................................49
`3.
`Claim 4 ......................................................................................52
`4.
`Claim 5 ......................................................................................53
`5.
`Independent Claim 6 .................................................................54
`6.
`Claim 8 ......................................................................................59
`7.
`Claim 9 ......................................................................................60
`8.
`Claim 10 ....................................................................................61
`9.
`Claim 11 ....................................................................................62
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`B. Ground 2: Maekawa and Takahata in combination with
`Nakanishi render obvious claims 2 and 7 ...........................................62
`1.
`Claim 2 ......................................................................................62
`2.
`Claim 7 ......................................................................................65
`C. Ground 3: Maekawa and Takahata in combination with Nagano
`render obvious claims 15 and 16 .........................................................65
`1.
`Claim 15 ....................................................................................65
`2.
`Claim 16 ....................................................................................72
`VIII. GROUNDS FOR STANDING ......................................................................72
`IX. MANDATORY NOTICES ...........................................................................72
`A.
`Real Party-in-Interest Under 37 C.F.R. § 42.8(b)(1) ..........................72
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ...................................72
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................73
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) .............................73
`CERTIFICATION UNDER 37 C.F.R. § 42.24(d) ........................................73
`X.
`XI. CONCLUSION ..............................................................................................74
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`Inter Partes Review
`U.S. Patent No. 9,793,299
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`LIST OF EXHIBITS
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`
`Description
`Exhibit
`Ex. 1001 U.S. Patent No. 9,793,299 to Koichi Fukuda.
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`Ex. 1002 Declaration of Mr. Richard Flasck.
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`Ex. 1003 Curriculum Vitae of Mr. Richard Flasck.
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`Ex. 1004 File History for U.S. Patent No. 9,793,299.
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`Ex. 1005 U.S. Patent Application Publication No. 2005/0158665 to Maekawa et al.
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`Ex. 1006 U.S. Patent Application Publication No. 2004/0239641 to Takahata et al.
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`Ex. 1007 U.S. Patent Application Publication No. 2005/0099402 to Nakanishi et al.
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`Ex. 1008
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`Japanese Patent Application No. JP 2004272059 A to Hiroyuki Nagano et
`al. with certified translation.
`
`Ex. 1009 U.S. Patent No. 4,281,406 to Eiichiro Tanaka et al.
`
`Ex. 1010 Active Matrix Liquid Crystal Displays, Fundamentals and Applications,
`Willem den Boer, Elsevier Inc., First Edition (2005).
`
`Ex. 1011 U.S. Patent No. 6,933,991 to Joseph J. Sanelle et al.
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`Ex. 1012 U.S. Patent No. 6,181,394 to Joseph J. Sanelle et al.
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`Ex. 1013 U.S. Patent No. 7,405,779 to Joseph J. Sanelle et al.
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`Ex. 1014 U.S. Patent Application Publication No. 2004/0247918 to Kiyokazu
`Hashimoto.
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`Ex. 1015 U.S. Patent Application Publication No. 2007/0040816 to Naohito
`Toyomaki.
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`Ex. 1016 U.S. Patent No. 5,594,574 to Manuel Lara et al.
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`Ex. 1017 U.S. Patent No. 7,663,607 to Steve Hotelling et al.
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`U.S. Patent No. 9,793,299
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`Description
`Exhibit
`Ex. 1018 Korean Patent Application Publication No. 10-2004-0079535 to Ji Seon
`Yang with certified translation.
`
`Ex. 1019 Complaints for Patent Infringement filed in Japan Display Inc. f/k/a
`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics
`Co., Ltd., 2:20-cv-00283, -00284, -00285 (EDTX).
`
`Ex. 1020 Plaintiff’s Infringement Contentions served in Japan Display Inc. f/k/a
`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics
`Co., Ltd., 2:20-cv-00283 (EDTX).
`
`Ex. 1021 P.R. 4-3 Joint Claim Construction and Prehearing Statement filed in
`Japan Display Inc. f/k/a Hitachi Electronic Devices (USA), Inc. et al. v.
`Tianma Microelectronics Co., Ltd., 2:20-cv-00283 (EDTX).
`
`Ex. 1022 Order Consolidating Proceedings in Japan Display Inc. f/k/a Hitachi
`Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics Co.,
`Ltd., 2:20-cv-00283 (EDTX).
`
`Ex. 1023 Docket Control Order in Japan Display Inc. f/k/a Hitachi Electronic
`Devices (USA), Inc. et al. v. Tianma Microelectronics Co., Ltd., 2:20-cv-
`00283 (EDTX).
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`v
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`I.
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`Inter Partes Review
`U.S. Patent No. 9,793,299
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`Preliminary Statement
`Petitioner Tianma Microelectronics Co. Ltd. requests inter partes review of
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`claims 1-11, 15, and 16 of U.S. Patent No. 9,793,299, purportedly assigned to Patent
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`Owner Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.
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`The ’299 patent relates to a display of an electronic device. ’299 patent, Title,
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`Abstract. As the ’299 patent recognizes, it was well-known before December 26,
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`2005, the ’299 patent’s earliest claimed priority date, to reduce the thickness of
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`electronic devices by reducing the thickness of the display. ’299 Patent, 1:55-58
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`(“With the recent tendency toward the reduction in thickness of the hand-held
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`electronic device, the liquid crystal display used therein has also been becoming
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`more and more thin.”); see also id., 1:58-2:3.
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`The ’299 patent purports to reduce the thickness of a display by providing a
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`well-known feature of displays—a protective member—with a thickness of at least
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`0.2 mm and no greater than 1.0 mm. But as the prior art demonstrates, and Mr. Flasck
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`testifies, it was well-known in 2005 to implement displays with protective members
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`of this thickness. Accordingly, Petitioner requests that the Board institute inter-
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`partes review and cancel claims 1-11, 15, and 16 of the ’299 patent.
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`II.
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`Precise Relief Requested
`A. Claims for Which Review Is Requested
`Petitioner respectfully requests inter partes review under 35 U.S.C. § 311 of
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`claims 1-11, 15, and 16 of the ’299 patent, and the cancellation of those claims as
`1
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`unpatentable.
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`Inter Partes Review
`U.S. Patent No. 9,793,299
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`Statutory Grounds
`B.
`Each asserted reference identified in the table below published and/or was
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`filed before December 26, 2005, the earliest purported priority date of the ’299
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`patent. Thus, each asserted reference is prior art under at least one of pre-AIA 35
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`U.S.C. §§ 102(a), (b), and/or (e).
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`Prior Art References
`
`Maekawa, U.S. Patent Application Publication No. 2005/0158665, published
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`July 21, 2005, and filed Jan. 3, 2005. Ex. 1005.
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`Takahata, U.S. Patent Application Publication No. 2004/0239641, published
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`Dec. 2, 2004, and filed Sep. 5, 2002. Ex. 1006.
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`Nakanishi, U.S. Patent Application Publication No. 2005/0099402, published
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`May 12, 2005, and filed Oct. 19, 2004. Ex. 1007.
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`Nagano, JP Patent Application Publication No. 2004272059 A, published Sept.
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`30, 2004. Ex. 1008, 9, 25 (certified translation).
`
`Claims 1-11, 15, and 16 of the ’299 patent are unpatentable under pre-AIA 35
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`U.S.C. § 103 based on the following grounds:
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`2
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`Inter Partes Review
`U.S. Patent No. 9,793,299
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`Grounds of Unpatentability
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`1
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`2
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`3
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`Maekawa in combination with Takahata renders obvious claims 1, 3-6,
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`and 8-11.
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`Maekawa and Takahata in combination with Nakanishi render obvious
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`claims 2 and 7.
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`Maekawa and Takahata in combination with Nagano render obvious
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`claims 15 and 16.
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`III. THE ’299 PATENT
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`The ’299 patent relates to a display of an electronic device. ’299 Patent, Title,
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`Abstract. As shown below in annotated FIG. 2, the ’299 patent describes a liquid
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`crystal display panel including a thin film transistor (“TFT”) substrate 1 (pink), a
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`counter substrate 2 (navy), a liquid crystal layer 3 (yellow), a sealing member 7
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`(orange) that surrounds the liquid crystal layer, a lower polarizing plate 4 (gray), and
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`an upper polarizing plate 5 (red). Id., 10:15-27, 11:24-29. The counter substrate is
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`disposed between the TFT substrate and the upper polarizing plate. Id., 10:28-41.
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`3
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`’299 Patent, FIG. 2 (annotated).
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`Disposed on a front side of the display (closest to an observer) is a resin film
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`6 (green), such as an acrylic resin film or an epoxy resin film, which provides a
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`protective cover of the electronic device. Id., 11:24-25 (“The resin film 6 is a film
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`member disposed on the most front side when viewed from the observer side.”),
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`11:28-29 (“For example, an acrylic resin film or an epoxy resin film may be used as
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`the resin film 6.”), 13:25-34 (“the resin film 6 is endowed with the function of the
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`conventional protective cover.”), FIGS. 6-7. Although not shown, the ’299 patent
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`describes that the “resin film 6 is affixed in contact with the upper polarizing plate
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`through a pressure-sensitive adhesive for example.” Id., 11:29-31; see also id.,
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`14:29-33.
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`The ’299 patent describes that the resin film overlaps with the sealing member
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`4
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`(see red dashed lines) in a plan view and may have a thickness T6 (green arrow) of
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`0.2 mm or more and 1.0 mm or less. Id., 11:32-39; see also id. (“it is preferable that
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`the resin film 6 have a thickness, T6, of 0.2 mm or more and 1.0 mm or less. If the
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`thickness T6 of the resin film 6 is 0.2 mm or more, a sufficient strength of the liquid
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`crystal panel can be ensured.”).
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`The ’299 specification describes that the TFT substrate 1 includes a glass
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`substrate 101 (pink) and a multi-thin film layer 102 (purple), and that the multi-thin
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`film layer may include “a laminate of plural insulating layers, conductive layer,
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`semiconductor layer and the like.” Id., 10:42-46; see also id., 10:46-49 (describing
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`one example in which “a scanning signal line (also called a gate signal line), a video
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`signal line (also called a drain signal line), TFT and pixel electrodes are formed in
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`the multi-thin film layer 102”).
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`The ’299 specification further describes that the counter substrate 2 includes
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`a glass substrate 201 (navy) and a multi-thin film layer 202 (light blue), and that the
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`multi-thin film layer may include “a laminate of plural insulating layers and
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`conductive layer, forming a color filter for example.” Id., 10:50-54; see also id.,
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`1:46-48 (“a counter substrate [] for example, compromises a glass substrate and a
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`color filter, etc. formed thereon”). The ’299 specification also explains that “[a]ny
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`of various combinations applied to conventional liquid crystal display panels may
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`be adopted for the combination of the configuration of the multi-thin film layer 102
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`5
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`of the TFT substrate and the multi-thin film layer 202 of the counter substrate 2.”
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`Id., 10:63-67.
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`IV. Level of Ordinary Skill
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`A skilled artisan would have had at least a four-year undergraduate degree in
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`electrical engineering or physics or a closely related field and four years of
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`experience in the design and implementation of flat panel display devices or
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`components thereof. Flasck, ¶41 (Ex. 1002). Additional education could substitute
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`for professional experience and vice versa. Id.
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`V. Claim Construction
`The Board construes claims in accordance with 37 C.F.R. § 42.200(b) and
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
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`§ 42.200(b). Claims only need to be construed to the extent necessary to resolve a
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`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017). Here, no terms need construction because the claims
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`encompass the prior-art mappings provided below under any construction consistent
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`with Phillips.
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`VI. The Board Should Not Exercise Discretion to Deny Institution
`A. The Board Should Not Deny Institution Under 35 U.S.C. § 314
`The ’299 patent was asserted against Petitioner in Japan Display Inc. f/k/a
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`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics Co., Ltd.,
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`No. 2:20-cv-00283 (E.D. Tex.) (the “related district court litigation”). See Section
`6
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`IX.B. The -00283 case is only one of three cases filed against Petitioner by Patent
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`Owner on the same day. Ex. 1019. Patent Owner has asserted fifteen patents across
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`the three now-consolidated cases. Ex. 1022.
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`The most relevant Fintiv factors demonstrate that the Board should not deny
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`institution under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). The current docket control
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`order (Ex. 1023) in the related district court litigation sets trial in February 2022,
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`before the statutory deadline for Final Written Decision, but this is not determinative.
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`Taken as a whole, Factors 4 (lack of overlap) and 6 (strong merits) outweigh the
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`other relevant factors, and the Board should therefore institute.
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`Regarding Factor 1, where, as here, a stay has been neither requested nor
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`granted, “[t]his factor does not weigh for or against discretionary denial.” Apple Inc.
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`v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020). Nor should
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`the Board, in the absence of specific evidence, speculate how the district court will
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`proceed with respect to any motion. See, e.g., Sand Revolution II, LLC, v. Cont’l
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`Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
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`2020) (“In the absence of specific evidence, [the Board] will not attempt to predict
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`how the district court in [a] related district court litigation will proceed”); Dolby
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`Laboratories, Inc., v. Intertrust Technologies Corp., IPR2020-00664, Paper 10 at
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`10-11 (PTAB Dec. 8, 2020) (declining to speculate whether the district court may or
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`may not grant any motion to stay). Moreover, it remains uncertain when and where
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`the related district court litigation will even be tried because Petitioner is moving to
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`transfer the litigation. See, e.g., Quantile Technologies Limited, v. TriOptima AB,
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`CBM2020-00012, Paper 11 at 17 (PTAB Oct. 5, 2020) (Petitioner’s pending motion
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`to change venue in related district court litigation relevant to weighing factor 1
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`neutrally). Thus, Factor 1 is, at best, neutral.
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`Regarding Factor 2, the current docket control order (Ex. 1023) in the related
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`district court litigation sets trial in February 2022, and thus before the Board’s
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`anticipated statutory deadline for final written decision. Given Petitioner’s motion
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`to transfer, however, that trial date is speculative. See, e.g., Quantile Technologies,
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`Paper 11 at 18 (Petitioner’s pending motion to change venue in a related district
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`court litigation relevant to weighing factor 2); Dish Network L.L.C., v. Broadband
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`iTV, Inc., IPR2020-01359, Paper 15 at 13-16 (PTAB Feb. 12, 2021) (Petitioner’s
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`pending motion to transfer in a related district court litigation relevant to weighing
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`factor 2). Moreover, in light of the Board’s holistic analysis balancing all the Fintiv
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`factors, the trial date of the related district court litigation is not determinative but
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`weighed in concert with the other relevant factors. See, e.g., Samsung Electronics
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`Co., Ltd., v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47 (PTAB Feb.
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`10, 2021) (instituting review when related district court litigation trial date more than
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`ten months before final written decision date); Consentino S.A.U. et al. v. Cambria
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`Co. LLC, PGR2021-00010, Paper 11 at 10-11, 16 (PTAB May 18, 2021) (same by
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`seven months); Medtronic Corevalve LLC, v. Colibri Heart Valve LLC, IPR2020-
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`01454, Paper 11 at 12-13, 18-19 (PTAB Mar. 10, 2021) (same by six months); Lego
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`Systems, Inc. et al. v., MQ Gaming LLC, IPR2020-01443, Paper 12 at 16-17 (PTAB
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`Feb. 17, 2021) (same by five months).
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`Regarding Factor 3, although there has been some investment by the parties
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`in the related district court litigation, based on the current docket control order (Ex.
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`1023), a substantial portion of work and trial is yet to come after institution. By
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`institution, the primary investment by the district court will be through any claim
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`construction ruling, but any such ruling will be limited in scope on the present IPR
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`as the only dispute is whether the preambles of independent claims 1 and 6 are
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`limiting (Ex. 1021, 10, 21), and this Petition addresses the preambles as limiting.
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`See, e.g., Sand Revolution II, Paper 24 at 10-11 (finding the district court’s two-page
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`Markman Order demonstrating a limited level of investment of time and resources
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`relevant to weighing factor 3); Lego Systems, Paper 12 at 10-11 (finding the lack of
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`any proposed claim terms for construction in the district court litigation relevant to
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`weighing factor 3).
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`Moreover, Petitioner moved with speed and diligence in bringing this
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`challenge—the Petition is being filed five months after Patent Owner served its
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`infringement contentions—mitigating against the investment of the parties. See, e.g.,
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`Dolby Laboratories, Paper 10 at 17-18 (finding Petitioner acted diligently in filing
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`petition about three months after Patent Owner served its infringement contentions
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`identifying the asserted claims); Fintiv, Paper 11 at 11 (“If the evidence shows that
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`the petitioner filed the petition expeditiously, such as promptly after becoming aware
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`of the claims being asserted, this fact has weighed against exercising the authority
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`to deny institution under NHK.”). To be sure, “preparing a petition for [IPR] requires
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`substantial effort even after the references and basic theories have been identified.”
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`Lego Systems, Paper 12 at 11. And this is particularly true in view of the large
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`number of patents and claims challenged in this and Petitioner’s other upcoming
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`related petitions for IPR. See id.; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
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`01019, Paper 12 at 17 (PTAB Dec. 1, 2020) (“[W]e find that Petitioner’s explanation
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`for the timing of the Petition is reasonable, notwithstanding the closeness to the
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`statutory deadline, particularly in view of the large number of patents and claims
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`challenged in this and Petitioner’s other related petitions for inter partes review.”).
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`Moreover, in its complaints, Patent Owner asserted “at least claim 1” from
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`each of fifteen asserted patents, totaling over 170 claims, against five products. Ex.
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`1019. And Patent Owner refused to narrow the number of claims and issues until
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`service of its infringement contentions (Ex. 1020). And then, when Patent Owner
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`did identify the full set of asserted claims in its contentions, it accused infringement
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`of over 2,400 products, imposing a vastly greater burden on Petitioner to assess the
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`10
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`dispute and evaluate which patents to request IPR. Ex. 1020. See, e.g., Fintiv, Paper
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`11 at 11 (“[I]t is often reasonable for a petitioner to wait to file its petition until it
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`learns which claims are being asserted against it in the parallel proceeding.”);
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`Samsung Electronics, Paper 17 at 40 (“We recognize that much work has been done
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`by the parties in the District Court. However, we also find, as a countervailing
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`consideration, that Petitioner acted diligently in filing this and the other IPRs. The
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`record reflects that Patent Owner did not identify the full set of claims being asserted
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`in the District Court until March 9, 2020 [], and that Petitioner filed this Petition,
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`and nine others, in less than four months”); Dish Network, Paper 15 at 19-20
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`(Petitioner filing petition within three months after receiving Patent Owner’s
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`infringement positions for all asserted claims (including those not specifically
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`identified originally in the complaint) and prior to completion of Markman briefing);
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`Lego Systems, Paper 12 at 11-12. “Because Petitioner acted diligently and without
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`much delay, this mitigates against the investment of the parties.” Dolby
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`Laboratories, Paper 10 at 17 (citing Apple Inc. v. Seven Networks, LLC, IPR2020-
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`00156, Paper 10 at 11-12 (PTAB June 15, 2020)).
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`Regarding Factor 4, Petitioner stipulates that, if this IPR is instituted, it will
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`not pursue in the related district court litigation any ground that it raised or
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`reasonably could have raised in this Petition. Thus, there will not be any overlap
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`between this Petition and potential invalidity grounds in the related district court
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`11
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`litigation, strongly weighing in favor of institution. See Sotera Wireless, Paper 12,
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`at 18-19 (precedential as to § II.A) (finding that because the stipulation “mitigates
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`any concerns of duplicative efforts” and “potentially conflicting decisions,” this
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`factor strongly favors institution); see also Consentino, Paper 11 at 13-15
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`(“Considering that Petitioner has agreed to be bound by a stipulation that is
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`substantively the same as the stipulation addressed in Sotera, we follow the Sotera
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`precedent in finding that this factor weighs strongly against exercising discretion to
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`deny.”); Boston Scientific et al. v. Nevro Corp., IPR2020-01562, Paper 14 at 24
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`(PTAB Mar. 16, 2021); Medtronic Corevalve, Paper 11 at 17; Lego Systems, Paper
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`12 at 12-15.
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`Factor 6 favors institution because the merits of this Petition are strong. The
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`Petition relies upon materially different and non-cumulative references not applied
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`during prosecution that teach the very features that Patent Owner argued, and the
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`Examiner found missing, and which led to the allowance of the independent
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`claims—i.e., a protective member having a thickness of at least 0.2 mm and no
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`greater than 1.0 mm. See Section VI.B, infra. This is also Petitioner’s only challenge
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`to the ’299 patent that has ever been or is currently before the Board, making
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`considerations related to follow-on petitions moot.
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`At bottom, this first and only IPR challenge on the ’299 patent raises different
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`issues than the related district court litigation (Factor 4) and the petition is strong on
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`the merits (Factor 6), which outweighs other applicable factors, including the current
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`trial date in the related district court litigation. Moreover, Petitioner expeditiously
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`filed this IPR Petition—and other related upcoming petitions—five months after
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`Patent Owner’s infringement contentions. The Board should therefore institute this
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`IPR. See Samsung Electronics, Paper 17 at 47 (“We determine that Petitioner’s
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`stipulation has minimized any overlap with the parallel district court litigation such
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`that both the duplication of efforts and the potential for conflicting decisions are
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`minimized. Although the parties have invested in the litigation, Petitioner filed this
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`proceeding on a timely basis after learning which of the eighty-four claims were
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`being asserted. Accordingly, we conclude that the minimization of overlap and the
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`strength of the merits of the first challenge outweigh the upcoming trial date. As
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`such, we decline to exercise discretion to deny inter partes review.”); see also Lego
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`Systems, Paper 12 at 16-17; Boston Scientific, Paper 14 at 25; Medtronic Corevalve,
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`Paper 11 at 18-19; Consentino, Paper 11 at 16; Sotera Wireless, Paper 12 at 20-21.
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`The Board Should Not Deny Institution Under 35 U.S.C. § 325
`B.
`The factors in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-
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`01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) also favor institution. See also
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6 (PTAB Feb. 13, 2020) (precedential).
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`During prosecution of the ’299 patent, the Examiner applied Maekawa (the
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`primary reference for all three proposed Grounds) to address all features except the
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`adhesive member, which the Examiner addressed with Hashimoto (U.S. Patent No.
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`9,013,653, Ex. 1014). In particular, the Examiner found, and the Patent Owner
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`agreed, that 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. Ex. 1004, 26
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`(“A thickness of a protective member at least .2 mm and no greater than 1.0 mm was
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`not found in the prior art.”), 34-37, 39-41.
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`The undisputed teachings of Maekawa are not in dispute here. The current
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`Petition, however, demonstrates that the allegedly missing element of the protective
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`member thickness requirement was also in the prior art, as evidenced in Takahata
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`(Ex. 1006), a reference the Examiner never cited or applied during prosecution. Ex.
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`1004; Ex. 1001, cover page. Other references, Nakanishi (Ex. 1007) and Nagano
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`(Ex. 1008), relied on for the dependent claims were also not cited or considered
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`during prosecution. See id.
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`Thus, although this Petition relies on Maekawa, it does so only for the
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`majority of claim features the Examiner, the Patent Owner, and Petitioner all agree
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`on. The Petition presents combinations with other references, as supported by the
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`declaration testimony of Mr. Flasck, that cure the alleged deficiencies of Maekawa,
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`including the thickness requirements of the independent claims as well as features
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`of claims 15 and 16 that the Examiner also found missing from Maekawa and
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`Hashimoto. Takahata is also relied upon to evidence the well-known use of an
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`adhesive member. Such combinations were never considered by the Examiner and
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`are not cumulative to those references the Examiner did consider during prosecution.
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`Becton, Dickinson factors thus favor institution. See also Microsoft Corporation v.
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`Uniloc 2017 LLC, IPR2019-01251, Paper 7 at 11-14 (PTAB Dec. 20, 2019)
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`(declining to deny institution under section 325(d) where the petition “present[ed]
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`evidence that the asserted prior art [taught] the claim limitations that the [a]pplicant
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`argued were missing from the prior art applied by the Examiner.”).
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`VII. Claims 1-11, 15, and 16 Are Unpatentable Over the Prior Art
`The challenged claims are unpatentable based on combinations of prior art.
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`As discussed above, with respect to independent claims 1 and 6, Maekawa discloses
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`all features except an adhesive member, and the protective member thickness. In
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`particular, Maekawa discloses a display for a hand-held electronic device which, as
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`shown below in annotated FIG. 16, includes an active-matrix (or TFT) substrate
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`1601 (pink) with a pixel portion 160 (purple), a counter substrate 1602 (navy) with
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`a colored layer 1605 (light blue), a liquid crystal layer 1604 (yellow), a sealant 1600
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`(orange) that surrounds the liquid crystal layer, and a polarizer 1606 (red). Maekawa,
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`¶¶26, 297-298, 328, 340-341, FIG. 19B. The counter substrate is disposed between
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`the active-matrix substrate and the polarizer. Id.
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`Maekawa, FIG. 16 (annotated).
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`Like the ’299 patent, the front side of Maekawa’s display includes a protective
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`film 1616 (green), formed of an acrylic or epoxy resin, which provides a protective
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`cover of the electronic device. Maekawa, ¶¶297-298; ’299 Patent, 11:24-25, 13:25-
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`34. The protective film overlaps with the sealant (see red dashed lines) in a plan
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`view.
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`As shown below in annotated FIG. 2, Takahata, like Maekawa and the ’299
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`patent, also discloses a display device with a protective plate 8 (green) (formed of,
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`e.g., an acrylic or epoxy resin) disposed on a polarizing plate 10 (red). Takahata,
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`¶¶2-3, 36, 47-48. Takahata further discloses the well-known use of an adhesive
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`member (yellow) in a display device between a protective member and a polarizing
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`plate, and a protective member having a thickness (green arrow) of at least 0.2 mm
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`and no greater than 0.8 mm (independent claims 1 and 6). Takahata, ¶¶35, 37, 41-
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`42, 44. Flasck, ¶47.
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`Takahata, FIG. 2 (annotated).
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`The remaining cited references (Nakanishi and Nagano) demonstrate other
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`well-known elements of display devices present in the art, namely use of a protective
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`member having a surface pencil hardness of at least 3H (claims 2 and 7), and an edge
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`of the protective member disposed outside an edge of the polarizing plate in a plan
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`view (claims 15 and 16). Flasck, ¶48.
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`A. Ground 1: Maekawa in combination with Takahata render
`obvious claims 1, 3-6, and 8-11
`Independent Claim 1
`1.
`1[preamble]: “A display device comprising display
`area and used in a hand-held electronic device
`comprising;”
`Maekawa discloses claim 1’s preamble. Maekawa discloses “various
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`electronic apparatuses” incorporating a display module or device. Maekawa, ¶¶26,
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`328. The “various electronic apparatuses” include hand-held apparatuses, such as,
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`e.g., a video camera, a digital camera, a goggle type display, an audio reproducing
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`apparatus, a mobile computer, a portable phone, a portable game machine, and an
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`electronic book. Id., ¶328. Annotated FIG. 19B below depicts an example of a hand-
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`held digital camera incorporating a display device with a monitor 1312 (green)
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`having a display area. Id., ¶¶340-341.
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`Maekawa, FIG. 19B (annotated).
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`Maekawa discloses that the display device may include, e.g., a liquid crystal
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`display (“LCD”) device, among other devices. Id., ¶25, 43, 67, 257, 273, 296, 327.
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`Annotated FIG. 16 below depicts an example of Maekawa’s LCD device. Id., ¶296
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`(“Here, a liquid crystal module is described as an example of the display module
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`with reference to FIG. 16.”), ¶67 (“FIG. 16 is a view showing a structure of a liquid
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`crystal display module according to the invention.”).
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