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.,
`Patent Owner.
`
`IPR2021-01029
`Patent 9,310,654 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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`IPR2021-01029
`Patent 9,310,654 B2
`
`I.
`INTRODUCTION
`Tianma Microelectronics Co. Ltd. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–7 and 12–14 (the “challenged
`claims”) of U.S. Patent No. 9,310,654 B2 (“the ’654 patent,” Ex. 1001).
`Paper 2 (“Pet.”). Japan Display Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). With Board authorization, Petitioner
`filed a Reply to the Preliminary Response (“Reply,” Paper 7), and Patent
`Owner filed a Sur-reply to Petitioner’s Reply (“Sur-reply,” Paper 9).
`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 ’654 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 1–7 and 12–14 of the ’654 patent.
`A. Real Parties-in-Interest
`Each party identifies itself as the real party-in-interest. Pet. 64;
`Paper 4, 3.
`B. Related Proceedings
`The parties indicate that, pursuant to the district court’s order
`(Ex. 1016), the ’654 patent is no longer at issue in Japan Display Inc. v.
`Tianma Microelectronics Co. Ltd., No. 2:20-cv-00284 (E.D. Tex.) (the
`“District Court Action”). Paper 11, 1; Paper 13, 3; Ex. 1017.
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`Patent 9,310,654 B2
`C. The ’654 Patent
`The ’654 patent, titled “Liquid Crystal Device and Electronic
`Apparatus,” is directed to “a liquid crystal device having a high pixel
`aperture ratio, a high display luminance and a wide viewing angle and an
`electronic apparatus using the liquid crystal device.” Ex. 1001, 2:48–51.
`The liquid crystal device includes: (1) a first substrate and a second substrate
`with a liquid crystal layer sandwiched in between; (2) a first electrode on the
`liquid crystal layer side of the first substrate; (3) an insulating layer on the
`liquid crystal layer side of the first electrode; and (4) a second electrode on
`the liquid crystal layer side of the insulating layer. Id. at 2:53–60. The first
`substrate has a plurality of intersecting data lines and scan lines formed
`thereon, with sub-pixels formed at regions surrounded by data lines and scan
`lines. Id. at 2:61–64. The second electrode has a plurality of linear
`electrodes disposed with a gap in between, each linear electrode extending in
`a long-axis direction of the sub-pixels, and has at least one bent portion. Id.
`at 2:64–67. The bent portion is shaped such “that both sides thereof are
`inclined in opposite directions with respect to the long-axis direction of the
`sub-pixels; and the data lines or scan lines are bent in an extending direction
`of the linear electrodes having the bent portion.” Id. at 2:67–3:5.
`The ’654 patent explains that, because
`each of the linear electrodes constituting the second electrode is
`generally arranged to extend in the long-axis direction of the
`sub-pixels and includes at least one bent portion, and the bent
`portion has such a shape that both sides thereof are inclined in
`opposite directions with respect to the long-axis direction of the
`sub-pixels, a multi-domain structure is formed, and thus, it is
`possible to achieve a wide viewing angle. Moreover, since the
`data line is bent in the extending direction of the linear
`electrodes having the bent portion, it is possible to suppress
`dead spaces which do not contribute to display from generating
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`IPR2021-01029
`Patent 9,310,654 B2
`along the longer sides of the sub-pixel, and thus, a high aperture
`ratio can be maintained.
`Id. at 3:10–23. The ’654 patent also teaches that the first electrode may be a
`pixel electrode and the second electrode may be a common electrode, and
`because the insulating layer is formed on the pixel electrode and the
`common electrode is formed on the surface of the insulating layer so as to
`cover the entire sub-pixels, “it is possible to maximize the aperture ratio of
`the sub-pixels.” Id. at 3:24–32.
`D. Illustrative Claim
`Petitioner challenges claims 1–7 and 12–14 of the ’654 patent.
`Pet. 19. Claims 1 and 14 are independent. Claim 1 is illustrative of the
`claimed subject matter, and is reproduced below.
`
`1. A liquid crystal device, comprising:
`[1.1] a first substrate and a second substrate that are
`disposed to face each other, the first substrate
`including a plurality of data lines and a plurality of
`scan lines which intersect each other;
`[1.2] a liquid crystal layer that is sandwiched between the
`first substrate and the second substrate;
`[1.3] a first electrode that is provided on a liquid crystal
`layer side of the first substrate;
`[1.4] an insulating layer that is provided on the liquid
`crystal layer side of the first electrode;
`[1.5] a second electrode that is provided on the liquid
`crystal layer side of the insulating layer; and
`[1.6] a light shielding film configured to overlap with at
`least one of the scan lines which is at least bent in plan
`view, the light shielding film being provided on the
`second substrate
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`Patent 9,310,654 B2
`wherein:
`[1.7] sub-pixels are formed at regions surrounded by the
`data lines and the scan lines;
`[1.8] the second electrode has a plurality of linear
`electrodes that are disposed with gaps therebetween;
`[1.9] each of the plurality of linear electrodes extends in a
`long-axis direction of the sub-pixels, and at least one
`of the linear electrodes or at least one of the gaps has
`at least one bent portion, the bent portion provided in a
`central portion of the respective sub-pixels;
`[1.10] the bent portion has such a shape that both sides
`thereof are inclined in opposite directions with respect
`to the long-axis direction of the sub-pixels; and
`[1.11] the data lines or the scan lines are bent in an
`extending direction of the linear electrodes having the
`bent portion,
`[1.12] wherein the first and second electrodes are a
`combination of either
`[1.12.a] a pixel electrode as the second electrode
`including the linear electrodes and gaps, and that is
`provided over a common electrode as the first
`electrode, or
`[1.12.b] a common electrode as the second electrode
`including the linear electrodes and gaps, and that is
`provided over a pixel electrode as the first electrode,
`and
`[1.13] wherein the light shielding film is configured to
`overlap with the second electrode which is bent in plan
`view.
`Ex. 1001, 15:36–16:10 (bracketed material added).
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`Patent 9,310,654 B2
`E. Asserted Ground
`Petitioner asserts that claims 1–7 and 12–14 of the ’654 patent are
`unpatentable under post-AIA1 35 U.S.C. § 102 as anticipated by Atarashiya.2
`Pet. 14, 19. Atarashiya is the publication of the parent application to which
`the ’654 patent claims the benefit as a continuation. Pet. 2; Ex. 1001,
`code (63); Ex. 1004, code (21). As further discussed below, Petitioner
`contends that the challenged claims are anticipated by Atarashiya, but not
`supported by its written description, because Atarashiya discloses only one
`of two alternatives recited in the claims. Pet. 1–3. Petitioner relies on the
`Declaration of E. Fred Schubert, Ph.D. (“Schubert Declaration,” Ex. 1002)
`in support of its contentions. Patent Owner submits the Declaration of
`Thomas L. Credelle (“Credelle Declaration,” Ex. 2003) in support of its
`Preliminary Response.
`
`II. ANALYSIS
`A. 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.18 (citing Ex. 1002 ¶ 59). 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,
`
`
`1 Petitioner relies on the version of 35 U.S.C. § 102 that applies as of the
`March 16, 2013, effective date of the Leahy-Smith America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011).
`2 US Patent App. Pub. No. 2009/0225267 A1, published Sep. 10, 2009
`(Ex. 1004).
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`Patent 9,310,654 B2
`materials science, physics, or a related field and at least two years of work
`experience (or a graduate degree) in LCD display technology.” Ex. 2010
`¶ 32. 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. ¶ 34.
`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.
`B. 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. 18; see generally Prelim. Resp. For purposes of this Decision,
`based on the record before us, we determine that no claim term requires an
`explicit construction.
`C. Earliest Effective Filing Date of the ’654 Patent
`The ’654 patent issued from U.S. Patent Application No. 14/549,189
`(“the ’189 application”), which was filed on November 20, 2014 as a
`continuation of Application No. 12/397,408 (“the Parent Application”),
`which was filed on March 4, 2009. Ex. 1001, codes (63), (65). The Parent
`Application was published as Atarashiya on September 10, 2009. Ex. 1004,
`codes (21), (43); see also Pet. 14 (“Atarashiya is the publication of, and thus
`contains the same disclosures as, the Parent Application.”). Petitioner
`contends that the challenged claims are not entitled to the priority date of the
`Parent Application “because the subject matter of the challenged claims was
`not disclosed in the manner required by 35 U.S.C. § 112 in the Patent
`Application.” Id. at 8. Therefore, Petitioner contends, “the challenged
`claims are not entitled to a filing date earlier than the November 20, 2014
`filing date of” the ’189 application.” Id.
`“It is elementary patent law that a patent application is entitled to the
`benefit of the filing date of an earlier filed application only if the disclosure
`of the earlier application provides support for the claims of the later
`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile
`USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also
`Research Corps. Techs. v. Microsoft Corp., 627 F.3d 859, 871–72
`(Fed. Cir. 2010) (holding the later-filed application, with claims that were
`not limited to a “blue noise mask,” was not entitled to the priority filing date
`of the parent application, which was “limited to a blue noise mask”); ICU
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`Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377–78 (Fed. Cir. 2009)
`(holding that “spikeless” claims “added years later during prosecution” were
`not supported by the specification which “describe[d] only medical valves
`with spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir.
`1998) (holding the generic shaped cup claims of the later-filed child
`application were not entitled to the filing date of the parent application that
`“disclosed only a trapezoidal cup and nothing more”). “To satisfy the
`written description requirement the disclosure of the prior application must
`convey with reasonable clarity to those skilled in the art that, as of the filing
`date sought, [the inventor] was in possession of the invention.” PowerOasis,
`522 F.3d at 1306 (citations omitted). The sufficiency of written description
`support is based on “an objective inquiry into the four corners of the
`specification from the perspective of a person of ordinary skill in the art.”
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc).
`“In an inter partes review, the burden of persuasion is on the
`petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . .
`and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v.
`Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35
`U.S.C. § 316(e)). The burden of production can shift to the patent owner,
`however. See id. at 1379. This shift happens where it is “warranted because
`the patentee affirmatively seeks to establish a proposition not relied on by
`the patent challenger and not a necessary predicate for the unpatentability
`claim asserted—effectively an affirmative defense.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
`Here, Petitioner asserts that (1) Atarashiya discloses each limitation of
`claims 1–7 and 12–14, and (2) Atarashiya qualifies as prior art because the
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`Parent Application does not provide written description support for those
`same claims. Petitioner ultimately has the burden of persuasion, based on all
`of the evidence, on both of these assertions. See Dynamic Drinkware, 800
`F.3d at 1378. At this stage of the proceeding, we assess whether Petitioner
`has presented evidence and argument sufficient to show that it is reasonably
`likely to prevail on its contentions.
`Petitioner’s contentions regarding lack of written description are
`focused on limitations [1.12] and [1.13] of independent claim 1, which recite
`a liquid crystal device:
`[1.12] wherein the first and second electrodes are a
`combination of either
`[1.12.a] a pixel electrode as the second electrode
`including the linear electrodes and gaps, and that is
`provided over a common electrode as the first
`electrode, or
`[1.12.b] a common electrode as the second electrode
`including the linear electrodes and gaps, and that is
`provided over a pixel electrode as the first electrode,
`and
`[1.13] wherein the light shielding film is configured to
`overlap with the second electrode which is bent in
`plan view.
`Ex. 1001, 16:1–10 (bracketed material added). Independent claim 14
`includes similar limitations. Id. at 18:8–16. Petitioner asserts that “when
`these recitations are read together, the claims recite two alternatives with
`respect to the” first and second electrodes (Alternatives A and B). Pet. 2.
`More particularly, Petitioner defines these two alternatives as:
`[Alternative A] a pixel electrode . . . including the linear
`electrodes and gaps . . . provided over a common electrode . . . ,
`wherein the light shielding film is configured to overlap with
`the pixel electrode which is bent in plan view.
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`[Alternative B] a common electrode . . . including the linear
`electrodes and gaps . . . provided over a pixel electrode . . . ,
`wherein the light shielding film is configured to overlap with
`the common electrode which is bent in plan view.
`Id. Petitioner contends that, “[t]o benefit from an earlier priority date, the
`priority document must disclose both alternatives,” and the Parent
`Application does not provide support for a liquid crystal device where the
`second electrode is a pixel electrode and the first electrode is a common
`electrode (“Alternative A”) that also includes the “light shielding film being
`provided on the second substrate” additionally recited by the independent
`claims. Pet. 1, 10–12.
`Petitioner acknowledges that the Parent Application discloses, in
`Embodiments 1–3, a pixel electrode including linear electrodes and gaps
`provided over a common electrode, but contends that Embodiments 1–3 “do
`not discuss any ‘light shielding film,’ let alone a ‘light shielding film . . .
`configured to overlap with the pixel electrode which is bent in plan view,’ as
`required by Alternative A.” Pet. 10–11 (citing Ex. 1006 ¶¶ 37–60).
`Therefore, Petitioner contends, “Embodiments 1–3 do not disclose
`Alternative A.” Id. at 11 (citing Ex. 1002 ¶ 44). Petitioner contends that
`“Embodiment 4 discloses an arrangement of pixel and common electrode
`opposite of Alternative A, such that a common electrode with linear
`electrodes and gaps (‘slits’) is provided over the pixel electrode, as required
`by Alternative B.” Id. (citing Ex. 1006 ¶ 62). Petitioner further contends
`that the Parent Application “specifically discloses that, in Embodiment 4,
`‘the common electrode 67 overlaps with the black matrix 73 as viewed in
`plan view.’” Id. (citing Ex. 1006 ¶ 72). Because black matrix 73 is a light
`shielding film that overlaps with the common electrode, Petitioner contends
`that the Parent Application discloses Alternative B. Id.; Ex. 1002 ¶ 45.
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`Petitioner asserts that the fifth embodiment described by the Parent
`Application, which Petitioner calls “Embodiment M,” “discloses the same
`pixel electrode and common electrode disposition as Embodiment 4.”
`Pet. 12 (citing Ex. 1006 ¶ 75). Petitioner contends that, because
`“Embodiment M does not meet the requirement of ‘light shielding film
`being provided on the second substrate’” that is required by the challenged
`claims, “it does not correspond to either Alternative A or Alternative B of
`the ’654 patent claims.” Id. (citing Ex. 1002 ¶ 45). Accordingly, Petitioner
`contends, “the Parent Application discloses Alternative B (in Embodiment
`4), but not Alternative A.” Id. (citing Ex. 1002 ¶¶ 47, 56).
`Patent Owner responds that “the narrow issue before the Board is
`whether the disclosure of the Parent Application reasonably conveys to those
`skilled in the art that the inventor had possession of a liquid crystal device
`with a light shielding film configured to overlap with the pixel electrode
`which is bent in plan view.” Prelim. Resp. 18. Patent Owner argues that
`“the Parent Application’s original claims disclose a ‘light shielding film’
`used in conjunction with a pixel electrode in the second electrode
`configuration.” Id. at 22. In that regard, Patent Owner argues that, “like
`claim 1 of the ’654 patent, original claim 1 of the Parent Application
`discloses a ‘second electrode’ that is provided over the ‘first electrode’ (with
`an insulating layer in between),” and “the Parent Application also discloses
`that the ‘first electrode’ and ‘second electrode’ terms can be either a ‘pixel
`electrode’ and ‘common electrode,’ respectively, or vice versa.” Id. at 19
`(citing Ex. 1004 ¶¶ 41, 50, 64, claim 1; Ex. 1006, 46–53).
`Patent Owner then points to original claim 10, which recites: “The
`liquid crystal device according to Claim 1, further comprising a light
`shielding film configured to overlap with the data line (or the scan line)
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`which is at least bent in plan view, the light shielding film being provided on
`the second substrate.” Id. (quoting Ex. 1006, 56). Patent Owner argues that,
`“[t]aken together, original claims 1 and 10 show that the Parent Application
`discloses a ‘light shielding film’ formed on the second substrate (as
`illustrated in Fig. 7) used in conjunction with a ‘pixel electrode’ in the
`‘second electrode’ configuration (as disclosed in Embodiments 1–3).” Id.
`at 20 (citing Ex. 2003 ¶¶ 43–44). According to Patent Owner, “while the
`portions of the Parent Application’s specification describing
`Embodiments 1–3 may not specifically discuss a ‘light shielding film,’ the
`original claims of the Parent Application do, in fact, disclose a ‘light
`shielding film’ used with the electrode configuration disclosed in the those
`embodiments.” Id. (citing Ex. 2003 ¶ 48).
`Patent Owner also argues that “[t]he Parent Application’s
`specification also discloses how the light shielding film can be formed on
`either the first or second substrates (without regard to whether the pixel
`electrode or common electrode is on top) and the benefits related to doing
`so.” Prelim. Resp. 22–23 (citing Ex. 1006 ¶¶ 23–25). Patent Owner argues
`that the Parent Application also details how the light shielding film (also
`called a “black matrix”) is formed on the counter substrate, and “discloses
`the relationship between the ‘common electrode 67 and the black matrix 73,’
`including how the ‘black matrix’ overlaps with the ‘common electrode,’ but
`not the ‘slits’ of the common electrode,’ and the rationale for doing so.” Id.
`at 23 (citing Ex. 1006 ¶¶ 69, 74–75). Patent Owner further argues that the
`Parent Application “discloses in detail how to form the ‘black matrix’ on the
`‘element substrate 68’ (i.e., the ‘first substrate’) and the advantages related
`to that configuration.” Id. (citing Ex. 1006 ¶¶ 78, 81–82). Patent Owner
`argues that, “[t]aken together, these disclosures demonstrate how, where,
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`and for what purposes the ‘light shielding layer’ is formed and reasonably
`convey an understanding of the claimed invention to a person of skill in the
`art.” Id. (citing Ex. 2003 ¶ 45).
`Upon review of the disclosures in the Parent Application, and based
`on the current record, we find that Petitioner has sufficiently met its burden
`to show, for purposes of institution, that the Parent Application does not
`reasonably convey to a person of ordinary skill in the art that the inventor
`was in possession of a liquid crystal device that has both (1) a pixel
`electrode as the second electrode and a common electrode as the first
`electrode, and (2) a light shielding film configured to overlap with the
`second electrode (i.e., the pixel electrode) which is bent in plan view, as
`required by independent claims 1 and 14.
`Our reading of the Parent Application leads us to find, preliminarily,
`that its description of the use of a light shielding film in a liquid crystal
`device is limited to the configuration in which the pixel electrode is the first
`electrode and the common electrode is the second electrode. Ex. 10043
`¶¶ 12, 23–25, 63–64, 69, 74, 77–78. For example, the Summary section of
`the Parent Application describes a liquid crystal display device where “the
`first electrode may be a pixel electrode and the second electrode may be a
`common electrode.” Ex. 1004 ¶¶ 11–12. It goes on to state that “[t]he liquid
`crystal device according to the above aspect may further include a light
`shielding film configured to overlap with the data line (or the scan line)
`which is at least bent in plan view, the light shielding film being provided on
`
`
`3 Atarashiya (Ex. 1004) is the published version of the Parent Application
`(Ex. 1006), therefore, the disclosures are the same. Because Patent Owner
`cites to Atarashiya when discussing whether the challenged claims have
`written description support, we do as well.
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`the first substrate.” Id. ¶ 23. The Summary, however, does not state that the
`first electrode may be a common electrode and the second electrode may be
`pixel electrode. See id. ¶¶ 9–26.
`The Parent Application does not mention a light shielding film again
`until it describes Embodiment 4, which describes a liquid crystal device
`where the pixel electrode is the first electrode and the common electrode is
`the second electrode. Ex. 1004 ¶¶ 64, 69. The Parent Application describes
`the relationship between “the common electrode 67 and the black
`matrix 73,” and states that “the common electrode 67 overlaps with the black
`matrix 73 as viewed in plan view.” Id. ¶ 74. Embodiment M similarly
`describes a liquid crystal display with a light shielding film where the pixel
`electrode is the first electrode and the common electrode is the second
`electrode. Id. ¶ 77–78. Embodiments 1–3, in contrast, disclose liquid
`crystal devices where the pixel electrode is the second electrode and the
`common electrode is the first electrode, but the Parent Application does not
`explicitly state that a light shielding film is part of the configuration of
`Embodiments 1–3. Ex. 1004 ¶¶ 39–62.
`The Parent Application, therefore, discloses liquid crystal display
`devices that include (1) a pixel electrode as the second electrode and the
`common electrode as the first electrode (Ex. 1004 ¶¶ 39–62), and (2) a
`common electrode as the second electrode and the pixel electrode as the first
`electrode (id. ¶¶ 63–75). That the Parent Application describes using a light
`shielding film when the pixel electrode is the first electrode, but does not
`describe a light shielding film when the pixel electrode is the second
`electrode, indicates that the inventors were not in possession of a liquid
`crystal device where the common electrode is the first electrode, the pixel
`electrode is the second electrode, and a light shielding film is configured to
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`overlap with the second (pixel) electrode which is bent in plan view as
`required by claims 1 and 14.
`Patent Owner argues that “a person of ordinary skill in the art would
`have no difficulty discerning a limitation regarding the ‘overlap’ of the light
`shielding film for an electrode configuration with the pixel electrode on top,
`when the same ‘overlap’ is explained with regard to an electrode
`configuration with the counter electrode on top.” Prelim. Resp. 21.
`Similarly, Mr. Credelle testifies that the Parent Application’s disclosure of
`“a light shielding film overlapping the common electrode (configured as the
`upper electrode) is sufficient to reasonably convey to a [person of ordinary
`skill in the art] that the inventor had possession of the invention when the
`pixel electrode is used as the upper electrode.” Ex. 2003 ¶ 46. However,
`neither Patent Owner nor Mr. Credelle adequately explain, on this record,
`why disclosure of a light shielding film in one configuration is sufficient to
`show possession of a light shielding film in the other configuration,
`particularly in light of the fact that the Parent Application discloses
`embodiments of both configurations. Moreover, Patent Owner appears to be
`arguing that a person of ordinary skill in the art would have found it obvious
`to configure a liquid crystal device with a pixel electrode as the second
`electrode and a light shielding film configured to overlap with the pixel
`electrode, based on the disclosure of a liquid crystal device with a common
`electrode as the second electrode and a light shielding film configured to
`overlap with the common electrode. Although the written description
`requirement does not require “that the specification recite the claimed
`invention in haec verba, a description that merely renders the invention
`obvious does not satisfy the requirement.” Ariad Pharms., Inc. v. Eli Lilly
`
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`Patent 9,310,654 B2
`and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (citing Lockwood v. Am.
`Airlines, 107 F.3d 1565, 1571–1572 (Fed. Cir. 1997).
`We have also considered Patent Owner’s argument that original
`claims 1 and 10 as filed with the Parent Application “disclose a ‘light
`shielding film’ used in conjunction with a pixel electrode in the second
`electrode configuration.” Prelim. Resp. 22. Original claim 1 recites a first
`electrode and a second electrode, but does not include limitations directed to
`the alternative configurations of the pixel electrode and the common
`electrode that appear in limitations [1.12] and [1.13] of the ’654 patent.
`Ex. 1004, 43–45. Original claim 10 depends from original claim 1 and
`further recites a light shielding film configured to overlap with the data line
`(or the scan line) provided on the second substrate, but, like claim 1, does
`not identify the configuration of the pixel electrode and common electrode.
`Id. at 46. “While it is true that original claims are part of the original
`specification, In re Gardner, 480 F.2d 879, 879 (CCPA 1974), that truism
`fails to address the question whether the original claim language necessarily
`discloses the subject matter that it claims.” Ariad, 598 F.3d at 1349. The
`written description requirement, therefore, applies to all claims, and requires
`that the specification demonstrate that the inventors were in possession of
`the claimed subject matter. Id. Original claims 1 and 10 do not include
`limitations directed to the configuration of the pixel electrode, the common
`electrode, and the light shielding film, and, as discussed above, the
`specification of the Parent Application only describes a light shielding film
`configured to overlap with the second electrode when the common electrode
`is the second electrode. As a result, we cannot say, on this record, that
`original claims 1 and 10 show that the inventors recognized and were
`claiming a liquid crystal device where the pixel electrode is the second
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`electrode, the common electrode is the first electrode, and the light shielding
`film is configured to overlap with the second (pixel) electrode as recited in
`one of the alternatives of claims 1 and 14 of the ’654 patent. See Mentor
`Graphics Corp. Eve-USA, Inc., 851 F.3d 1275, 1296–1297 (Fed. Cir. 2017).
`On the present record, we are persuaded that Petitioner has made a
`sufficient threshold showing that limitations [1.12] and [1.13] in independent
`claim 1 (and the similar limitations in independent claim 14) lack written
`description support in the Parent Application. Accordingly, we determine
`that Petitioner has established a reasonable likelihood that it would prevail in
`showing that the challenged claims in the ’654 patent are not entitled to the
`benefit of the March 4, 2009 filing date of the Parent Application. This
`determination is preliminary in nature and based on the record at this stage
`of the proceeding. We invite the parties to develop these arguments further
`at trial, to the extent permitted under our rules.
`D. Anticipation by Atarashiya
`Petitioner contends that claims 1–7 and 12–14 are unpatentable under
`35 U.S.C. § 102 as anticipated by Atarashiya. Pet. 14, 26–64. Atarashiya
`published on September 10, 2009. Ex. 1004, code (43). As set forth above,
`we determine that Petitioner establishes a reasonable likelihood of prevailing
`in showing that the ’654 patent is not entitled to the March 4, 2009 filing
`date of the Pa