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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Tianma Microelectronics Co. Ltd.,
`
`Petitioner
`
`v.
`
`Japan Display Inc.
`
`Patent Owner
`
`
`Patent No. 9,310,654
`Case No. IPR2021-01029
`
`
`DECLARATION OF E. FRED SCHUBERT, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,310,654
`
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`Page 1 of 78
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`Tianma Exhibit 1002
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`TABLE OF CONTENTS
`
`
`I.
`Introduction ...................................................................................................... 1
`II. Qualifications and Background ....................................................................... 2
`III. Materials Considered ....................................................................................... 7
`IV. Legal Standard ................................................................................................. 8
`A.
`Claim Construction................................................................................ 8
`B. Anticipation Under 35 U.S.C. § 102 ..................................................... 9
`C.
`Requirement for determining entitlement to priority to prior-filed
`application under 35 U.S.C. § 120 ......................................................10
`D. Written description requirement under pre-AIA § 112, ¶1 or
`post-AIA 35 U.S.C. § 112(a)...............................................................10
`V. Overview of the ’654 Patent ..........................................................................11
`A. Overview .............................................................................................11
`B.
`Parent Application ...............................................................................15
`C.
`Effective Filing Date ...........................................................................24
`D.
`Person of Ordinary Skill in the Art .....................................................24
`VI. Claim Construction ........................................................................................26
`VII. Overview of Prior Art: Atarashiya-267 .........................................................26
`VIII. Atarashiya-267 Anticipates Claims 1-7 and 12-14 of the ’654 Patent .........32
`A.
`Claim 1 ................................................................................................32
`B.
`Claim 2 ................................................................................................52
`C.
`Claim 3 ................................................................................................53
`D.
`Claim 4 ................................................................................................56
`E.
`Claim 5 ................................................................................................59
`2
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`F.
`Claim 6 ................................................................................................62
`Claim 7 ................................................................................................62
`G.
`Claim 12 ..............................................................................................62
`H.
`Claim 13 ..............................................................................................63
`I.
`Claim 14 ..............................................................................................64
`J.
`IX. Conclusion .....................................................................................................75
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`3
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`I.
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`
`
`Introduction
`I, E. Fred Schubert, Ph.D., submit this declaration to state my
`1.
`
`opinions on the matters described below.
`
`2.
`
`I have been retained by Petitioner Tianma Microelectronics Co. Ltd.
`
`as an independent expert in this proceeding before the United States Patent and
`
`Trademark Office.
`
`3.
`
`I understand that this proceeding involves U.S. Patent No. 9,310,654
`
`(“the ’654 patent”), and I have been asked to provide my opinions as to the
`
`patentability of the claims of the ’654 patent. I have been informed that a copy of
`
`the ’654 patent is attached to the petition as Exhibit 1001.
`
`4.
`
`This declaration sets forth the opinions that I have formed in this
`
`proceeding based on my study of the evidence, my understanding as an expert in
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`the field, and my education, training, research, knowledge, and personal and
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`professional experience.
`
`5.
`
`I am being compensated for my time at the rate of $500 per hour for
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`my work. This compensation is not contingent in any way upon the nature of my
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`findings, the presentation of my findings in testimony, or the outcome of this
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`proceeding, nor does it affect the substance of my statements in this declaration.
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`6.
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`I have no financial interest in the Petitioner, the Patent Owner Japan
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`Display Inc., or the ’654 Patent, and I have not had any contact with the named
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`inventors of the ’654 Patent, Takao Atarashiya and Hayato Kurasawa.
`
`II. Qualifications and Background
`Based upon my educational and work experience, I believe I am well
`7.
`
`qualified to serve as a technical expert in this matter.
`
`8.
`
`I expect to testify further, if requested, regarding the subject matter set
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`forth in this declaration.
`
`9.
`
`I am currently an active tenured full professor in the Department for
`
`Electrical, Computer, and Systems Engineering at the Rensselaer Polytechnic
`
`Institute (RPI) located in Troy, New York.
`
`10.
`
`I also held other positions at RPI. For example, from 2002 to 2012, I
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`was a professor in the Department of Physics, Applied Physics, and Astronomy. In
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`2008-2009, I served as the founding director for RPI’s Engineering Research
`
`Center for Smart Lighting, which was funded by the National Science Foundation
`
`(NSF).
`
`11. Before I moved to RPI, I was a professor in the Department of
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`Electrical and Computer Engineering at Boston University, from 1995 to 2002. I
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`also served as the director of Boston University’s Semiconductor Devices
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`Research Laboratory.
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`12. Prior to my university career, I was a member of the technical staff,
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`principal investigator, and member of management at AT&T Bell Laboratories
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`Murray Hill, New Jersey, from 1988 to 1995.
`
`13.
`
`I earned my Ph.D. in 1986, Master of Science in 1981, and Bachelor’s
`
`degree in 1978, all in Electrical Engineering, at the University of Stuttgart,
`
`Germany.
`
`14. My curriculum vitae (“CV”) is attached to this Declaration. As shown
`
`by my CV, I have extensive experience in the design and implementation of flat
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`panel display devices, including the design, fabrication, processing, and packaging
`
`of the electrodes and semiconductor devices that are commonly used in liquid
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`crystal displays (LCDs) and light emitting diode (LED) displays.
`
`15.
`
`I have published over 300 technical articles, most at highly
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`competitive refereed conferences and rigorously reviewed journals. These papers
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`relate to Liquid Crystal Displays (LCDs), LEDs, semiconductor electronics (e.g.,
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`field-effect transistor, insulated-gate bipolar transistor, thyristor, etc.),
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`semiconductor lasers, photo-detectors, etc., the technologies of which are the
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`foundations of the flat panel display devices.
`
`16. As an example of my research activities in the field of LCDs, I refer
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`to a US patent issued in 2012: Jaehee Cho, E. Fred Schubert, and Xing Yan
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`“Liquid crystal display with refractive index matched electrodes” US Patent No.
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`3
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`
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`8,164,727; filed on April 28, 2010; issued on April 24, 2012. During my tenure in
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`industry (AT&T Bell Laboratories), I was part of a working group on LCDs. I have
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`also performed technical consulting services in the field of LCDs and associated
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`TFTs (thin film transistors). One project concerned the enhancement of the carrier
`
`mobility in amorphous silicon TFTs. At my university (RPI), I regularly teach
`
`courses on microelectronic devices and displays, including TFTs and LCDs. Light
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`emitting diodes are routinely used as a back lighting source for LCDs and I have
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`worked on and developed LEDs for backlighting units.
`
`17.
`
`I am also the author or editor of several books. For example, I
`
`authored the textbook “Light-Emitting Diodes,” 1st, 2nd, and 3rd editions, published
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`by Cambridge University Press, Cambridge, UK. In this book, I provide a
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`comprehensive review of the state-of-art technologies for designing, fabricating,
`
`processing, and manufacturing LEDs, which are highly relevant and similar to
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`those used in the back-lighting unit of LCDs.
`
`18.
`
`In addition to my research, I have been teaching for more than 25
`
`years. I have taught numerous undergraduate and advanced graduate classes in
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`integrated optoelectronics, microelectronics technology, solid-state devices,
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`semiconductor devices, display devices, and light-emitting diodes, all pertinent to
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`the subject matter in this case. I have also advised close to 50 Ph.D. and M.S.
`
`4
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`students while at the RPI and Boston University, in areas such as LEDs,
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`semiconductor electronics, semiconductor lasers, solar cells, etc.
`
`19.
`
`I am the co-inventor of more than 35 issued U.S. patents and
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`numerous foreign patents. I was identified as one of the top 1% inventors in the
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`field of optoelectronics, in a 2011 study conducted by Professor Erica Fuchs of
`
`Carnegie Mellon University under the support of NSF. Examples of my issued
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`U.S. patents include:
`
`• U.S. Patent No. 7,560,746; issued on July 14, 2009, titled “Light
`
`emitting diodes and display apparatuses using the same.”
`
`• U.S. Patent No. 8,164,727, issued on April 24, 2012, titled “Liquid
`
`crystal display with refractive index matched electrodes.”
`
`20.
`
`I have been actively involved in multiple technical communities,
`
`including the American Physical Society (APS), Institute of Electrical and
`
`Electronics Engineers (IEEE), Optical Society of America (OSA), Society for
`
`Optical Engineering (SPIE), etc. I have served in the organizing committee of
`
`many technical conferences, including, for example:
`
`• Program committee member and chair of “Display and Solid-State
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`Lighting Devices” conference for OSA/IEEE Conference on Lasers
`
`and Electro-Optics (CLEO), 2003 – 2005.
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`• Member on the International Advisory Committee of First
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`International Conference on Display LEDs (ICDL), Seoul, Korea,
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`January 31 – February 2, 2007.
`
`• Sub-Committee Chair of Track 6: Displays, Solid-State Lighting,
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`Photovoltaics, and Energy-Efficient Photonics of Asia
`
`Communications and Photonics Conference (ACP), Shanghai, China,
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`November 11 – 14, 2014. ACP is the largest and the most influential
`
`conference in Asia and Pacific Rim for communications and
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`photonics technologies.
`
`21. My research has been recognized by multiple organizations,
`
`universities, and institutions. The following is a small set of honors and awards that
`
`I have received:
`
`• Elected to Fellow of the IEEE in 1999. According to the IEEE
`
`definition, “the grade of Fellow is one of unusual professional
`
`distinction conferred by the Board of Directors only upon a person of
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`extraordinary qualifications and experience.”
`
`• Elected Fellow of the SPIE in 1999. According to the Society’s
`
`bylaws, a Fellow “shall be distinguished through his achievements
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`and shall have made outstanding contributions in the field of optics, or
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`optoelectronics, or in a related scientific, technical, or engineering
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`field.”
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`• Elected to Fellow of the OSA in 2001. OSA Fellows are elected by the
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`OSA Board of Directors.
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`• Elected to Fellow of the APS in 2001.
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`• Honored with RPI Medal as Senior Constellation Chair in 2002.
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`• Recipient of “SCIENTIFIC AMERICAN 50 AWARD” of 2007, as published
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`in the January 2008 issue of Scientific American.
`
`• Received “2008 Rensselaer Polytechnic Institute Trustee Faculty
`
`Achievement Award” in 2008.
`
`• Received “Rensselaer Polytechnic Institute Trustee Faculty
`
`Achievement Award” in 2002 and 2012.
`
`III. Materials Considered
`In forming my opinions, I have reviewed the following documents.
`22.
`
`Exhibit
`Ex. 1001
`
`Ex. 1004
`
`Description
`U.S. Patent No. 9,310,654 ( “the ’654 patent”).
`
`U.S. Patent Application Publication No. 2009/0225267 to
`Atarashiya et al. (“Atarashiya-267”).
`
`Ex. 1006
`
`U.S. Patent Application No. 12/397,408 ( “the ’408 application”).
`
`Ex. 1007
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`Japanese Patent Application No. 2008-055867.
`
`Ex. 1008
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`Japanese Patent Application No. 2009-009615.
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`23.
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`I also reviewed the prosecution history of the application that led to
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`the ’654 patent.
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`24.
`
`I have further relied upon my education, experience, background, and
`
`knowledge in forming and providing my opinions for this expert declaration.
`
`IV. Legal Standard
`
`A. Claim Construction
`
`25.
`
`I understand that the United States Patent and Trademark Office
`
`interprets claim terms in an inter-partes review proceeding under the same claim
`
`construction standard that is used in a United States federal court. I understand that
`
`under this standard, the meaning of claim terms is considered from the viewpoint
`
`of one of ordinary skill in the art at the time of the alleged invention.
`
`26.
`
`I have been informed that claim terms are generally given their
`
`ordinary and customary meaning as understood by one of ordinary skill in the art
`
`in light of the specification and the prosecution history pertaining to the patent. I
`
`understand, however, that claim terms are generally not limited by the
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`embodiments described in the specification.
`
`27.
`
`I understand that in addition to the claims, specification, and
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`prosecution history, other evidence may be considered to ascertain the meaning of
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`claim terms, including textbooks, encyclopedias, articles, and dictionaries. I have
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`been informed that this other evidence is often less significant and less reliable
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`than the claims, specification, and prosecution history.
`
`B. Anticipation Under 35 U.S.C. § 102
`
`28.
`
`I have been told that, in an inter partes review proceeding, a patent
`
`claim may be deemed unpatentable if it is shown by a preponderance of the
`
`evidence that the claim was anticipated by a prior art reference under § 102.
`
`29.
`
`I have been informed by counsel that for a claim to be anticipated
`
`under § 102, every limitation of the claimed invention must be found in a single
`
`prior art reference. I have also been informed that there is a set process as follows:
`
`a) the claims of a patent are properly construed, b) then, you must compare the
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`claim language to the prior art on a limitation-by-limitation basis. I understand that
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`an anticipatory reference does not have to recite word for word what is in the
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`anticipated claims. Rather, anticipation can occur when a claimed limitation is
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`“inherent” in the relevant reference. I have been advised that if the prior art
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`necessarily functions in accordance with, or includes, the claim limitations, it can
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`anticipate even though a limitation is not expressly recited.
`
`30.
`
`I have been informed that in inter partes review proceedings, such as
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`this one, the party challenging the patent bears the burden of proving
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`unpatentability by a preponderance of the evidence. I understand that a
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`preponderance of the evidence means “more likely than not.”
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`C. Requirement for determining entitlement to priority to prior-filed
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`application under 35 U.S.C. § 120
`
`31.
`
`I have been informed that a claim in a U.S. application is not entitled
`
`to the benefit of the filing date of an earlier filed U.S. application unless the subject
`
`matter of the claim is disclosed in the manner provided by pre-AIA § 112, ¶1 or
`
`post-AIA 35 U.S.C. § 112(a), in the earlier filed application.
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`D. Written description requirement under pre-AIA § 112, ¶1 or
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`post-AIA 35 U.S.C. § 112(a)
`
`32.
`
`I have been informed that, to satisfy the written description
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`requirement, an application must reasonably convey to those of ordinary skill in
`
`the art that the inventor had possession of and actually invented the claimed subject
`
`matter.
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`33.
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`I have also been informed that the test for adequate written description
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`support requires an objective inquiry into the content of the specification, as
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`understood by a person of ordinary skill in the art. I understand that the
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`specification must describe an invention in a manner understandable to that skilled
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`artisan and show that the inventor actually invented the claimed invention.
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`34. Furthermore, I understand that the disclosure must describe the
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`claimed invention and all its limitations. I also understand that the specification
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`need not recite the claim language verbatim, but also that a description that merely
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`renders the invention “obvious” does not satisfy the written description
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`requirement.
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`V. Overview of the ’654 Patent
`A. Overview
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`35. The ’654 patent has 14 claims, of which claims 1 and 14 are
`
`independent and reproduced below. I understand that Petitioner challenges claims
`
`1-7 and 12-14.
`
`1.
`
`[1.0] 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 data lines or 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,
`wherein:
`
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`[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
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`14.
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`[1.13] wherein the light shielding film is
`configured to overlap with the second electrode which is
`bent in plan view.
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`[14.0] A liquid crystal device, comprising:
`[14.1] 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;
`[14.2] a liquid crystal layer that is sandwiched
`between the first substrate and the second substrate;
`[14.3] a plurality of sub-pixels arranged along
`long-axis and short-axis directions in a matrix over the
`first substrate;
`[14.4] a first electrode provided in the respective
`sub-pixels;
`[14.5] a second electrode provided in the
`respective sub-pixels, the second electrode including a
`plurality of linear electrodes that are disposed with gaps
`therebetween; and
`[14.6] a light shielding film configured to overlap
`with at least one of the data lines or 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;
`wherein:
`[14.7] at least one of the linear electrodes or at
`least one of the gaps has a plurality of bent portions, the
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`plurality of bent portions provided in a central portion of
`the respective sub-pixels;
`[14.8] the plurality of bent portions in the
`respective sub-pixels are aligned along the long-axis
`direction,
`[14.9] the first and second electrodes are a
`combination of either
`[14.9.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
` [14.9.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
`[14.10] wherein the light shielding film is
`configured to overlap with the second electrode which is
`bent in plan view.
`
`36. When elements [1.12] and [1.13] are read together, and elements
`
`[14.9] and [14.10] are read together, independent claims 1 and 14 both recite the
`
`same two alternatives:
`
`[Alternative A] a pixel electrode . . . including the linear
`electrodes and gaps . . . provided over a common
`electrode . . . , wherein the light shielding film is
`
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`configured to overlap with the pixel electrode which is
`bent in plan view.
`
`[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.
`
`B.
`
`Parent Application
`
`37. On its face, the ’654 patent claims priority to U.S. Patent Application
`
`No. 12/397,408. ’654 patent, p. 1 and 1:7-14. In the following discussion, I will
`
`refer to the ’408 application (Ex. 1006) as the “parent application.” The ‘408
`
`application was published in 2009 as the US 2009/0225267 patent application
`
`publication, which I understand is provided by Petitioner as Exhibit 1004
`
`(Atarashiya-267). I have been asked to consider whether the parent application
`
`provides written description support for the claims of the ’654 patent.
`
`1.
`
`
`The priority application does not provide written
`description support for the claims of the ’654 patent
`
`38. The description of the parent application is organized as five
`
`embodiments: “first embodiment” (’408 application, ¶¶ [0037]-[0052]), “second
`
`embodiment” (id., ¶¶ [0053]-[0055]), “third embodiment” (id., ¶¶ [0056]-[0060]),
`
`“fourth embodiment” (id., ¶¶ [0061]-[0073]), and “modification” (id., ¶¶ [0074]-
`
`[0080]). In the following discussion, I will refer to these five embodiments as
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`“Embodiment 1,” “Embodiment 2,” “Embodiment 3,” “Embodiment 4,” and
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`“Embodiment M,” respectively.
`
`39. The parent application does not provide written description support
`
`for Alternative A recited in each of independent claims 1 and 14:
`
`[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.
`
`40. As I explain below, among the five embodiments in the parent
`
`application, only the first three embodiments discuss “a pixel electrode . . .
`
`including the linear electrodes and gaps . . . provided over a common electrode,”
`
`but none of them disclose “wherein the light shielding film is configured to overlap
`
`with the pixel electrode which is bent in plan view.” Therefore, no embodiment
`
`disclose Alternative A.
`
`41. Specifically, embodiments 1-3 describe liquid crystal devices with
`
`similar structures, with the main difference lying in the structure of the pixel
`
`electrode. For example, regarding the “third embodiment,” the parent application
`
`states:
`
`. . . A basic configuration of the liquid crystal device
`according to this embodiment is the same as that of the
`first and second embodiments, except that the pixel
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`electrode is configured differently from that of the first and
`second embodiments. . . .
`’408 application, ¶ [0056] (emphases added).
`
`42. The structures in Embodiments 4 and M are different from those in
`
`Embodiments 1-3 with respect to the relative positions of the pixel electrode and
`
`common electrode. In particular, when discussing Embodiment 4, the parent
`
`application states:
`
`In the first to third embodiments, the common electrode
`was provided on a lower surface side (substrate body side)
`of the element substrate, and the pixel electrode was
`provided on an upper layer side (liquid crystal layer side)
`of the element substrate. To the contrary, in the liquid
`crystal device according
`to
`this embodiment, as
`illustrated
`in FIG. 7, a pixel
`electrode
`(first
`electrode) 61 is provided on a lower surface side (a side
`close to the substrate body 33) of an element substrate
`(first substrate) 68, and common electrode (second
`electrode) 67 are provided on an upper layer side (a side
`close to the liquid crystal layer 30) of the element
`substrate 68. Therefore, as illustrated in FIG. 6, the
`common electrode 67 includes linear electrodes 64 and
`slits 63.
`Id., ¶ [0062] (emphases added). The underlined portion above explains that
`
`Embodiments 1-3 all have “a pixel electrode . . . including the linear electrodes
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`and gaps . . . provided over a common electrode,” as required by Alternative A. In
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`contrast, the italicized and bolded portion above explains that Embodiment 4
`
`differs by having the common electrode provided over the pixel electrode, and thus
`
`does not meet the requirement of Alternative A.
`
`43. Moreover, when discussing Embodiment M, the parent application
`
`states:
`
`In the first to third embodiments, the common electrode
`was provided on a lower surface side (substrate body side)
`of the element substrate, and the pixel electrode was
`provided on an upper layer side (liquid crystal layer side)
`of the element substrate. To the contrary, in the liquid
`crystal device according
`to
`this modification, as
`illustrated
`in FIG. 9, a pixel
`electrode
`(first
`electrode) 61 is provided on a lower surface side (a side
`close to the substrate body 33) of an element substrate
`(first substrate) 68, and common electrode (second
`electrode) 67 are provided on an upper layer side (a side
`close to the liquid crystal layer 30) of the element
`substrate 68.
`Therefore,
`the
`common
`electrode 67 includes linear electrodes 64 and slits 63.
`Id., ¶ [0075]. Again, the underlined portion above confirms that Embodiments 1-3
`
`all have “a pixel electrode . . . including the linear electrodes and gaps . . .
`
`provided over a common electrode,” as required by Alternative A. And the
`
`italicized and bolded portion above explains that Embodiment M has the common
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`electrode provided over the pixel electrode, which is similar to Embodiment 4 but
`
`different from Embodiments 1-3, and does not meet the requirement of Alternative
`
`A.
`
`44. Accordingly, only Embodiments 1-3 disclose “a pixel electrode . . .
`
`including the linear electrodes and gaps . . . provided over a common electrode,”
`
`as required by elements Alternative A. Embodiments 1-3, however, do not discuss
`
`any “light shielding film,” let alone describe “wherein the light shielding film is
`
`configured to overlap with the pixel electrode which is bent in plan view,” as
`
`required by Alternative A. Therefore, it is my understanding that Embodiments 1-3
`
`do not disclose the claimed combination.
`
`45. Only Embodiments 4 and M disclose a light shielding film (i.e., black
`
`matrix), but they do not disclose “wherein the light shielding film is configured to
`
`overlap with the pixel electrode which is bent in plan view.” Nor do they disclose
`
`“a pixel electrode . . . including the linear electrodes and gaps . . . provided over a
`
`common electrode.” Specifically, Embodiment 4 describes “the common
`
`electrode 67 overlaps with the black matrix 73 as viewed in plan view,” but it does
`
`not disclose the pixel electrode overlaps with the black matrix 73. Id., ¶ [0072]. In
`
`addition, Embodiment M describes “a black matrix 73 is formed on the first
`
`interlayer insulating film 71 so as to cover the data lines 13, the scan lines 14, the
`
`TFT elements 12, and the like,” but it does not disclose the black matrix 73 covers
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`or overlaps with either the pixel electrode or the common electrode. Id., ¶ [0076].
`
`In fact, the following annotated Figure 9, corresponding to Embodiment M, shows
`
`that the black matrix 73 does not overlap with the pixel electrode 61 or common
`
`electrode 67.
`
`
`
`’408 application, Fig. 9 (annotated).
`
`46. Accordingly, only Embodiment 4 discloses a light shielding film
`
`overlapping with an electrode. But that electrode is a common electrode.
`
`Embodiment 4 is silent about whether the “the light shielding film is configured to
`
`overlap with the pixel electrode which is bent in plan view,” as required by
`
`Alternative A. Moreover, as discussed above, Embodiment 4, as well as
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`Embodiment M, do not disclose “a pixel electrode . . . including the linear
`
`electrodes and gaps . . . provided over a common electrode,” as required by
`
`Alternative A. Therefore, Embodiments 4 and M also do not disclose the claimed
`
`combination.
`
`47.
`
`In sum, it is my opinion that none of the parent application’s five
`
`embodiments describes a liquid crystal device that has “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,” as required by Alternative A.
`
`2.
`
`
`The rest of the parent application does not provide written
`description support for the claims of the ’654 patent
`
`48. The remainder of the parent application does not provide written
`
`description support for the “overlapping light shielding film with pixel electrode”
`
`limitations.
`
`49.
`
`“Cross References to Related Applications” (paragraph [0001]) —
`
`The “Cross References” section states the application “contains subject matter
`
`related to Japanese Patent Application No. 2009-009615 filed . . . on January 20,
`
`2009, the entire contents of which are incorporated herein by reference.” ’408
`
`application, ¶ [0001]. I reviewed the English translation of the Japanese patent
`
`application and found it, like the parent application, does not disclose a liquid
`
`crystal device that meet both “a pixel electrode . . . including the linear electrodes
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`and gaps . . . provided over a common electrode” and “wherein the light shielding
`
`film is configured to overlap with the pixel electrode which is bent in plan view,”
`
`as required by Alternative A. Exhibit, 1008.
`
`50.
`
`“Background” (paragraphs [0002]-[0006]) — The Background
`
`section is completely silent about “light shielding film” or “black matrix,” and thus
`
`cannot provide any written description support for Alternative A.
`
`51.
`
`“Summary” (paragraphs [0007]-[0024]) — The Summary section
`
`does not provide written description support for the “overlapping light shielding
`
`film with pixel electrode” limitations. The majority of the Summary section is
`
`directed to describing ways of arranging bent linear electrodes and slits
`
`therebetween. Id., ¶¶ [0007]-[0020]. The end of the section describes features
`
`related to a “light shielding film.” Id., ¶¶ [0021]-[0023]. But the description only
`
`mentions the “light shielding film [can be] configured to overlap with the data line
`
`(or the scan line).” Id., ¶ [0023]. There is no description or suggestion about
`
`overlapping the light shielding film with an electrode, let alone a pixel electrode
`
`provided over a common electrode. Finally, paragraph [0024] of the Summary
`
`section only states that the disclosed liquid crystal device is “capable of achieving
`
`a high display luminance and a wide viewing angle.” It is also sile