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`Inter Partes Review
`United States Patent No. 9,310,654
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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
`Filing Date: November 20, 2014
`Issue Date: April 12, 2016
`
`Title: LIQUID CRYSTAL DEVICE AND ELECTRONIC APPARATUS
`
`
`Case No. IPR2021-01029
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`
`PETITION FOR INTER PARTES REVIEW
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`Inter Partes Review
`United States Patent No. 9,310,654
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`B.
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`2.
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`TABLE OF CONTENTS
`PRELIMINARY STATEMENT ...................................................................... 1
`I.
`II. OVERVIEW OF ’654 PATENT ..................................................................... 3
`A.
`Challenged Claims ................................................................................ 3
`1.
`Independent Claim 1 ................................................................... 3
`2.
`Independent Claim 14 ................................................................. 5
`The claims of the ’654 patent are not entitled to any priority
`date earlier than November 20, 2014 .................................................... 8
`1.
`Legal requirement for determining entitlement to priority
`to prior-filed application ............................................................. 8
`None of the five disclosed embodiments in the Parent
`Application contain the features of Alternative A. ...................10
`The disclosed embodiments cannot be combined to
`provide written description. ......................................................12
`The Japanese applications incorporated by the Parent
`Application by reference cannot provide written
`description support for the claims of the ’654 patent. ..............13
`III. ATARASHIYA DISCLOSES SECOND ALTERNATIVE BUT NOT
`THE FIRST ALTERNATIVE .......................................................................14
`IV. LEVEL OF ORDINARY SKILL ..................................................................18
`V.
`CLAIM CONSTRUCTION ..........................................................................18
`VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ..............................................................................19
`VII. THE BOARD SHOULD NOT EXERCISE DISCRETION TO DENY
`INSTITUTION UNDER 35 U.S.C. § 314 ....................................................19
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`3.
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`4.
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`Inter Partes Review
`United States Patent No. 9,310,654
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`2.
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`3.
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`4.
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`5.
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`VIII. CLAIMS 1-7 and 12-14 OF THE ’654 PATENT ARE
`UNPATENTABLE BECAUSE THEY ARE ANTICIPATED BY
`ATARASHIYA ................................................................................................26
`A.
`Claim 1 ................................................................................................27
`1.
`Element [1.0]: Atarashiya discloses “[a] liquid crystal
`device.”......................................................................................27
`Element [1.1]: Atarashiya discloses “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.” ..................27
`Element [1.2]: Atarashiya discloses “a liquid crystal
`layer that is sandwiched between the first substrate and
`the second substrate.” ................................................................29
`Element [1.3]: Atarashiya discloses “a first electrode that
`is provided on a liquid crystal layer side of the first
`substrate.” ..................................................................................30
`Element [1.4]: Atarashiya discloses “an insulating layer
`that is provided on the liquid crystal layer side of the first
`electrode.” .................................................................................31
`Element [1.5]: Atarashiya discloses “a second electrode
`that is provided on the liquid crystal layer side of the
`insulating layer.” .......................................................................32
`Element [1.6]: Atarashiya discloses “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.” ................................................................33
`Element [1.7]: Atarashiya discloses “sub-pixels are
`formed at regions surrounded by the data lines and the
`scan lines.” ................................................................................35
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`6.
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`7.
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`8.
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`ii
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`United States Patent No. 9,310,654
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`9.
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`Element [1.8]: Atarashiya discloses “the second electrode
`has a plurality of linear electrodes that are disposed with
`gaps therebetween.” ..................................................................36
`10. Element [1.9]: Atarashiya discloses “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.” ..............................................................38
`11. Element [1.10]: Atarashiya discloses “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.” .....................................................................39
`12. Element [1.11]: Atarashiya discloses “the data lines or
`the scan lines are bent in an extending direction of the
`linear electrodes having the bent portion.” ...............................40
`13. Element [1.12 and 1.12.b]: Atarashiya discloses “wherein
`the first and second electrodes are a combination of . . . 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.” .......................................42
`14. Element [1.13]: Atarashiya discloses “wherein the light
`shielding film is configured to overlap with the second
`electrode which is bent in plan view.” ......................................43
`Claim 2: Atarashiya discloses “The liquid crystal device
`according to claim 1, wherein each of the plurality of linear
`electrodes is linearly symmetric about a short-axis direction of
`the bent portion.” .................................................................................45
`Claim 3 ................................................................................................46
`1.
`Element [3.1]: Atarashiya discloses “The liquid crystal
`device according to claim 1, wherein two adjacent linear
`electrodes include a bent portion.” ...........................................46
`
`B.
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`C.
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`United States Patent No. 9,310,654
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`2.
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`2.
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`Element [3.2]: Atarashiya discloses “wherein a region
`disposed between the bent portions of said two linear
`electrodes in a short-axis direction of the sub-pixels is
`one of the gaps that is between the two adjacent linear
`electrodes.” ................................................................................48
`Claim 4 ................................................................................................48
`1.
`Element [4.1]: Atarashiya discloses “The liquid crystal
`device according to claim 1, wherein two adjacent linear
`electrodes include a bent portion.” ...........................................48
`Element [4.2]: Atarashiya discloses “wherein a
`connection portion is provided to a region disposed
`between bent portions of said two linear electrodes in a
`short-axis direction of the sub-pixels so as to connect the
`two adjacent linear electrodes with each other.” ......................48
`Claim 5: Atarashiya discloses “The liquid crystal device
`according to claim 1, wherein among the plurality of linear
`electrodes and the gaps alternately arranged in a short-axis
`direction of the sub-pixels, the linear electrode and the gap
`disposed at a region located close to one of the bent data lines
`or one of the bent scan lines has a width larger than a width of
`the linear electrode and the gap disposed at a region located
`distant from said bent data line or said bent scan line.” ......................51
`Claim 6: Atarashiya discloses “The liquid crystal device
`according to claim 1, wherein among the linear electrodes
`arranged in a short-axis direction of the sub-pixels, the linear
`electrode disposed at a region located close to one of the bent
`data lines or one of the bent scan lines has a width larger than a
`width of the linear electrode disposed at a region located distant
`from said bent data line or said bent scan line.” .................................54
`Claim 7: Atarashiya discloses “The liquid crystal device
`according to claim 1, wherein among a plurality of the gaps
`arranged in a short-axis direction of the sub-pixels, the gap
`disposed at a region located close to one of the bent data lines
`or one of the bent scan lines has a width larger than a width of
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`D.
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`E.
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`F.
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`G.
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`iv
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`the gap disposed at a region located distant from said bent data
`line or said bent scan line.” .................................................................54
`Claim 12: Atarashiya discloses “The liquid crystal device
`according to claim 1, wherein the light shielding film is
`arranged to extend in parallel with the gaps.” .....................................54
`Claim 13: Atarashiya discloses “The liquid crystal device
`according to claim 12, wherein the light shielding film is
`formed so as not to overlap with the gaps.” ........................................55
`Claim 14 ..............................................................................................56
`1.
`Element [14.0]: Atarashiya discloses “[a] liquid crystal
`device.”......................................................................................56
`Element [14.1]: Atarashiya discloses “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.” .........57
`Element [14.2]: Atarashiya discloses “a liquid crystal
`layer that is sandwiched between the first substrate and
`the second substrate.” ................................................................57
`Element [14.3]: Atarashiya discloses “a plurality of sub-
`pixels arranged along long-axis and short-axis directions
`in a matrix over the first substrate.” ..........................................57
`Element [14.4]: Atarashiya discloses “a first electrode
`provided in the respective sub-pixels.” .....................................59
`Element [14.5]: Atarashiya discloses “a second electrode
`provided in the respective sub-pixels, the second
`electrode including a plurality of linear electrodes that
`are disposed with gaps therebetween.” .....................................60
`Element [14.6]: Atarashiya discloses “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
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Inter Partes Review
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`8.
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`9.
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`in plan view, the light shielding film being provided on
`the second substrate.” ................................................................61
`Element [14.7]: Atarashiya discloses “at least one of the
`linear electrodes or at least one of the gaps has a plurality
`of bent portions, the plurality of bent portions provided in
`a central portion of the respective sub-pixels.”.........................62
`Element [14.8]: Atarashiya discloses “the plurality of
`bent portions in the respective sub-pixels are aligned
`along the long-axis direction.” ..................................................64
`10. Element [14.9 and 14.9.b]: Atarashiya discloses “the first
`and second electrodes are a combination of . . . 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.” .......................................64
`11. Element [14.10]: Atarashiya discloses “wherein the light
`shielding film is configured to overlap with the second
`electrode which is bent in plan view.” ......................................64
`IX. MANDATORY NOTICES ...........................................................................64
`A.
`Real Party-in-Interest ..........................................................................64
`B.
`Related Matters ....................................................................................65
`C.
`Lead and Back-Up Counsel, and Service Information .......................65
`CERTIFICATION UNDER 37 C.F.R. § 42.24(d) ........................................66
`X.
`XI. GROUNDS FOR STANDING ......................................................................67
`XII. CONCLUSION ..............................................................................................67
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`Exhibit 1001.
`Exhibit 1002.
`Exhibit 1003.
`Exhibit 1004.
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`Exhibit 1005.
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`Exhibit 1006.
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`Exhibit 1007.
`Exhibit 1008.
`Exhibit 1009.
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`Exhibit 1010.
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`Exhibit 1011.
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`Exhibit 1012.
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`Exhibit 1013.
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`Inter Partes Review
`United States Patent No. 9,310,654
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`LIST OF EXHIBITS
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`U.S. Patent No. 9,310,654 (“the ’654 patent”).
`Declaration of Dr. E. Fred Schubert.
`Curriculum Vitae of Dr. E. Fred Schubert.
`U.S. Patent Application Publication No. 2009/0225267 to
`Atarashiya et al. (“Atarashiya”).
`Redline comparison between written descriptions of the ’654
`Patent and Atarashiya.
`U.S. Patent Application No. 12/397,408 (“the ’408
`application”)
`Japanese Patent Application No. 2008-055867.
`Japanese Patent Application No. 2009-009615.
`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).
`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-00284 (EDTX).
`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).
`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).
`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-00284 (EDTX).
`
`vii
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`I.
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`Inter Partes Review
`United States Patent No. 9,310,654
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`PRELIMINARY STATEMENT
`Petitioner Tianma Microelectronics Co. Ltd. requests inter partes review of
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`claims 1-7 and 12-14 of the ’654 patent (Ex. 1001), currently assigned to Japan
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`Display Inc. These claims are anticipated by the very earlier application to which
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`the ’654 patent claims priority.
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`The oddity of the situation arose from the fact that the claims of the ’654
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`patent recite two alternative features. To benefit from an earlier priority date, the
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`priority document must disclose both alternatives. On the other hand, a prior art
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`reference only needs to disclose one of the two alternatives to render the claims
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`unpatentable. The alleged priority document discloses one, but not both,
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`alternatives. Thus, the publication of the alleged priority application, Atarashiya,
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`constitutes prior art to the ’654 patent and anticipates all challenged claims.
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`More specifically, each independent claim of the ’654 patent recites a first
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`and a second electrode, the second electrode having “linear electrodes and gaps.”
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`The first and second electrodes are, respectively, a common electrode and a pixel
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`electrode, or vice versa:
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`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
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`Inter Partes Review
`United States Patent No. 9,310,654
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`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.
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`Ex. 1001, 16:3-8, 18:9-14. The independent claims further impose a restriction on
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`the second electrode, i.e.,
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`wherein the light shielding film is configured to overlap
`with the second electrode which is bent in plan view.
`
`Id., 16:9-10, 18:15-16. Thus, when these recitations are read together, the claims
`
`recite two alternatives with respect to the two electrodes:
`
`[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.
`
`[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.
`
`The ’654 patent claims priority to U.S. Patent Application No. 12/397,408
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`(“Parent Application”), which published as U.S. Patent Application Publication No.
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`2009/0225267 (“Atarashiya”). Id., p. 1; Ex. 1004, p. 1. But the Parent Application
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`2
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`Inter Partes Review
`United States Patent No. 9,310,654
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`only discloses Alternative B, not Alternative A. As a result, the Parent Application
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`fails to provide support for the claimed priority under 35 U.S.C. § 112, and
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`Atarashiya is therefore prior art to the ’654 patent. At the same time, Atarashiya’s
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`disclosure of one of the two claimed alternatives is sufficient to anticipate the
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`claim features, rendering them unpatentable under 35 U.S.C. § 102.
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`Aside from the failure to disclose both alternatives recited in the independent
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`claims, Atarashiya, which has a specification almost identical to that of the ’654
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`patent, discloses all limitations of dependent claims 2-7, 12, and 13. Ex. 1005
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`(comparing Atarashiya to the ’654 patent). Atarashiya thus also renders these
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`claims unpatentable under 35 U.S.C. § 102. Accordingly, the Board should institute
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`inter partes review of the ’654 patent and cancel claims 1-7 and 12-14.
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`II. OVERVIEW OF ’654 PATENT
`A. Challenged Claims
`Petitioner challenges claims 1-7 and 12-14 of the ’654 patent. Claims 1 and
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`14 are independent and presented below.
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`Independent Claim 1
`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;
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`[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:
`[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
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`[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.
`
`Independent Claim 14
`2.
`[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;
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`[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
`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,
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`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.
`
`When elements [1.12] and [1.13] are read together, and elements [14.9] and
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`[14.10] are read together, independent claims 1 and 14 both recite the same two
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`alternatives, as discussed above:
`
`[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.
`
`[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.
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`Inter Partes Review
`United States Patent No. 9,310,654
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`B.
`
`The claims of the ’654 patent are not entitled to any priority date
`earlier than November 20, 2014
`The ’654 patent issued from an application filed on November 20, 2014, as a
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`continuation of U.S. Patent Application No. 12/397,408 (“the ’408 application” or
`
`“the Parent Application”), which issued as U.S. Patent No. 8,922,741 and further
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`claims priority to Japanese Patent Application No. 2009-009615, filed January 20,
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`2009, and Japanese Patent Application No. 2008-055867, filed March 6, 2008. But
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`the challenged claims are not entitled to the priority dates of the Parent Application
`
`or the two Japanese applications because the subject matter of the challenged
`
`claims was not disclosed in the manner required by 35 U.S.C. § 112 in the Parent
`
`Application. Accordingly, the challenged claims are not entitled to a filing date
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`earlier than the November 20, 2014, filing date of application issuing as the ’654
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`patent.
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`1.
`
`Legal requirement for determining entitlement to priority
`to prior-filed application
`Under 35 U.S.C. § 120, a claim in a U.S. application is not entitled to the
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`benefit of an earlier filed U.S. application unless the subject matter of the claim is
`
`disclosed in the manner provided by 35 U.S.C. § 112 in the earlier filed
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`application. See, e.g., In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011). To
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`comply with the written description requirement under 35 U.S.C.§ 112, an
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`application must “reasonably convey [] to those skilled in the art that the inventor
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`United States Patent No. 9,310,654
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`had possession of” and “actually invented” the claimed subject matter. Ariad
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`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc);
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`accord Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir.
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`2018) (citing Ariad). “[T]he hallmark of written description is disclosure.” Ariad,
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`598 F.3d at 1351.
`
`The test for adequate written description support “requires an objective
`
`inquiry into the four corners of the specification from the perspective of a person
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`of ordinary skill in the art.” Id. Although the specification need not “recite the
`
`claimed invention in haec verba, a description that merely renders the invention
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`obvious does not satisfy the [written description] requirement.” Id. at 1352.
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`Instead, “[i]t is the disclosures of the applications that count. Entitlement to a filing
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`date does not extend to subject matter which is not disclosed but would be obvious
`
`over what is expressly disclosed. It extends only to that which is disclosed.”
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`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).
`
`Moreover, “the disclosure must describe the claimed invention with all its
`
`limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998); see also
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`Lockwood, 107 F.3d at 1571-72.
`
`In addition, if a claim in a U.S. application is not entitled to the benefit of the
`
`filing date of an earlier filed U.S. application, the claim is also not entitled to the
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`benefit of the filing date of any application that the earlier filed U.S. application
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`Inter Partes Review
`United States Patent No. 9,310,654
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`claims priority to. Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012)
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`(quoting In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (Priority to an earlier
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`family member would only be available if there is a “continuous chain of
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`copending applications each of which satisfies the requirements of § 112 with
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`respect to the subject matter presently claimed.”).
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`2.
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`None of the five disclosed embodiments in the Parent
`Application contain the features of Alternative A.
` The Parent Application does not provide written description support for
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`Alternative A recited in each of independent claims 1 and 14:
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`[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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`The Parent Application describes five embodiments: “first embodiment”
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`(Ex. 1006, ¶¶ [0037]-[0052]), “second embodiment” (id., ¶¶ [0053]-[0055]), “third
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`embodiment” (id., ¶¶ [0056]-[0060]), “fourth embodiment” (id., ¶¶ [0061]-[0073]),
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`and “modification” (id., ¶¶ [0074]-[0080]), which will be referred to below as
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`Embodiments 1-4 and Embodiment M, respectively. Embodiments 1-3 disclose “a
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`pixel electrode . . . including the linear electrodes and gaps . . . provided over a
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`common electrode,” but do not discuss any “light shielding film,” let alone a “light
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`United States Patent No. 9,310,654
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`shielding film . . . configured to overlap with the pixel electrode which is bent in
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`plan view,” as required by Alternative A. See id., ¶¶ [[0037]-[0060]. Therefore,
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`Embodiments 1-3 do not disclose Alternative A. Schubert, ¶ 44.
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`Embodiment 4 discloses an arrangement of pixel electrode and common
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`electrode opposite of Alternative A, such that a common electrode with linear
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`electrodes and gaps (“slits”) is provided over the pixel electrode, as required by
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`Alternative B:
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`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.
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`Ex. 1006, ¶ [0062]. Further, the Parent Application specifically discloses that, in
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`Embodiment 4, “the common electrode 67 overlaps with the black matrix 73 as
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`viewed in plan view.” Id., ¶ [0072]. Therefore, Embodiment 4 discloses
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`Alternative B.
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`Embodiment M discloses the same pixel electrode and common electrode
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`disposition as Embodiment 4. Id., ¶ [0075]. But Embodiment M does not meet the
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`requirement of “light shielding film being provided on the second substrate”
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`(Elements [1.6] and [14.6]), which is required by claims of the ’654 patent.
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`Therefore, Embodiment M does not correspond to either Alternative A or
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`Alternative B of the ’654 patent claims. Schubert, ¶ 45.
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`Accordingly, the Parent Application discloses Alternative B (in Embodiment
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`4), but not Alternative A. Id., ¶¶ 47, 56.
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`3.
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`The disclosed embodiments cannot be combined to provide
`written description.
`In a nutshell, none of the Parent Application’s five embodiments describes
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`Alternative A of the ’654 patent claims. Embodiments 1-3 fail to disclose
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`Alternative A’s requirement of “wherein the light shielding film is configured to
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`overlap with the pixel electrode which is bent in plan view,” whereas
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`Embodiments 4 and M fail to disclose Alternative A’s requirement of “a pixel
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`electrode . . . including the linear electrodes and gaps . . . provided over a common
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`electrode . . . .” Id., ¶¶ 44-46.
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`And Patent Owner cannot combine different embodiments to provide written
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`description or to support priority claims. Ariad Pharm., 598 F.3d at 1352 (“[A]
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`description that merely renders the invention obvious does not satisfy the [written
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`description] requirement.”); see also Novozymes A/S v. DuPont Nutrition
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`Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (explaining that the written
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`description analysis requires “[t]aking each claim . . . as an integrated whole rather
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`than as a collection of independent limitations”).
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`
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`Therefore, the Parent Application does not “describe the claimed invention
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`with all its limitations.” Tronzo, 156 F.3d at 1158. Nor does it “indicate to a person
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`skilled in the art that the inventor was ‘in possession’ of the invention as later
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`claimed.” Power Oasis, 522 F.3d at 1306. As such, the Parent Application does not
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`provide written description support for the claims of the ’654 patent.
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`4.
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`The Japanese applications incorporated by the Parent
`Application by reference cannot provide written description
`support for the claims of the ’654 patent.
`The last paragraph of the Parent Application’s specification, paragraph
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`
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`[0086], states that “[t]he entire disclosure of Japanese Patent Application Nos.
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`2008-055867, filed March 6, 2008 and 2009-009615, filed January 20, 2009 are
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`expressly incorporated by reference herein.” But “written description of the