`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2021-01058
`U.S. Patent No. 7,636,142
`_____________________________
`
`DECLARATION OF E. FRED SCHUBERT, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,636,142
`
`
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`Page 1 of 62
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`Tianma Exhibit 1002
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`

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`
`
`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`
`Table of Contents
`
` 
`
` 
`
`Introduction .......................................................................................................... 3
`I.
`II. Qualifications and Background ........................................................................... 4
`III. Materials Considered ........................................................................................ 9
`IV. Legal Standards .............................................................................................. 10
`A. Claim Construction ......................................................................................... 11
`B. Obviousness Under 35 U.S.C. § 103 .............................................................. 11
`V. The ’142 Patent .................................................................................................. 15
`A. Overview of the ’142 Patent ........................................................................... 15
`B. Prosecution History of the ’142 Patent ........................................................... 21
`C. Person of Ordinary Skill in the Art ................................................................ 21
`VI. Claim Construction of Terms of the ’142 Patent ........................................... 23
`VII. Summary of Opinions on Unpatentability ...................................................... 23
`VIII. Obviousness of claims 1-3, 5, 6, and 8 over Lee and No ............................... 27
`A. Independent Claim 1 ....................................................................................... 27
`B. Claim 2: .......................................................................................................... 47
`C. Claim 3: .......................................................................................................... 49
`D. Claim 5: .......................................................................................................... 51
`E. Claim 6: .......................................................................................................... 55
`F. Claim 8: .......................................................................................................... 60
`IX. Conclusion ...................................................................................................... 62
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`2
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`I.
`
`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`
`INTRODUCTION
`1.
`I, E. Fred Schubert, Ph.D., submit this declaration to state my opinions
`
`on the matter described below.
`
`2.
`
`I have been retained by Petitioner Tianma Microelectronics Co. Ltd.,
`
`(“Tianma” or “Petitioner”), as an independent expert in this proceeding before the
`
`United States Patent and Trademark Office. Although I am being compensated at
`
`my usual and customary rate of $500.00 per hour, no part of my compensation
`
`depends on the outcome of this proceeding, and I have no other interest in this
`
`proceeding.
`
`3.
`
`I understand that this proceeding involves U.S. Patent No. 7,636,142
`
`(the “’142 patent”), and I have been asked to provide my opinions as to the
`
`patentability of the claims of the ’142 patent. I understand that the application for
`
`the ’142 patent was filed on January 30, 2008, and claims priority to a foreign
`
`application having a filing date of February 26, 2007.
`
`4.
`
`I have been asked to consider the validity of certain claims of the ’142
`
`patent based on certain prior art references. I have also been asked to consider the
`
`state of the art and prior art available as of February 26, 2007. Based on the prior art
`
`discussed in this declaration, it is my opinion that claims 1-3, 5, 6, and 8 of the ’142
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`patent are unpatentable for the reasons provided below.
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`3
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`
`
`II. QUALIFICATIONS AND BACKGROUND
`5.
`I believe that I am well qualified to serve as a technical expert in this
`
`matter based upon my educational and work experience, and specifically, flat panel
`
`display devices, including liquid crystal displays (“LCDs”).
`
`6.
`
`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.
`
`7.
`
`I also held other positions at RPI. For example, from 2002 to 2012, I
`
`was a professor in the Department of Physics, Applied Physics, and Astronomy. In
`
`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).
`
`8.
`
`Before I moved to RPI, I was a professor in the Department of Electrical
`
`and Computer Engineering at Boston University, from 1995 to 2002. I also served
`
`as the director of Boston University’s Semiconductor Devices Research Laboratory.
`
`9.
`
`Prior to my university career, I was a post-doctoral member of the
`
`technical staff, member of the technical staff, principal investigator, and member of
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`management at AT&T Bell Laboratories Murray Hill, New Jersey, from 1985 to
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`1995.
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`4
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`I earned my Ph.D. in 1986, Master of Science in 1981, and Bachelor’s
`
`
`
`10.
`
`degree in 1978, all in Electrical Engineering, at the University of Stuttgart, Germany.
`
`11. My curriculum vitae (“CV”) is submitted as Exhibit 1003. As shown
`
`by my CV, I have extensive experience in the design and implementation of flat
`
`panel display devices, including the design, fabrication, processing, and packaging
`
`of the electrodes and semiconductor devices that are commonly used in liquid crystal
`
`displays (LCDs) and light emitting diode (LED) displays.
`
`12.
`
`I have published over 300 technical articles, most at highly competitive
`
`refereed conferences and rigorously reviewed journals. These papers relate to Liquid
`
`Crystal Displays (LCDs), LEDs, semiconductor electronics (e.g., field-effect
`
`transistors and bipolar junction transistors), semiconductor lasers, photo-detectors,
`
`etc., the technologies of which are the foundations of the flat panel display devices.
`
`13. As an example of my research activities in the field of LCDs, I refer to
`
`a US patent issued in 2012: Jaehee Cho, E. Fred Schubert, and Xing Yan “Liquid
`
`crystal display with refractive index matched electrodes” US Patent No. 8,164,727;
`
`filed on April 28, 2010; issued on April 24, 2012. During my tenure in industry
`
`(AT&T Bell Laboratories), I was part of a working group on LCDs. I have also
`
`performed technical consulting services in the field of LCDs and associated TFTs
`
`(thin film transistors). One project concerned the enhancement of the carrier mobility
`
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`in amorphous silicon TFTs. At my university (RPI), I regularly teach courses on
`
`microelectronic devices and displays, including TFTs and LCDs. Light emitting
`
`diodes are routinely used as a back lighting source for LCDs and I have worked on
`
`and developed LEDs for backlighting units.
`
`14.
`
`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 by
`
`Cambridge University Press, Cambridge, UK. In this book, I provide a
`
`comprehensive review of the state-of-art technologies for designing, fabricating,
`
`processing, and manufacturing LEDs, which are highly relevant and similar to those
`
`used in the back-lighting unit of LCDs.
`
`15.
`
`In addition to my research, I have been teaching for more than 25 years.
`
`I have taught numerous undergraduate and advanced graduate classes in integrated
`
`optoelectronics, microelectronics technology, solid-state devices, semiconductor
`
`devices, display devices, and light-emitting diodes, all pertinent to the subject matter
`
`in this case. I have also advised close to 50 Ph.D. and M.S. students while at the RPI
`
`and Boston University, in areas such as LEDs, semiconductor electronics,
`
`semiconductor lasers, solar cells, etc.
`
`16.
`
`I am the co-inventor of more than 35 issued U.S. patents and numerous
`
`foreign patents. I was identified as one of the top 1% inventors in the field of
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`optoelectronics, in a 2011 study conducted by Professor Erica Fuchs of Carnegie
`
`Mellon University under the support of NSF. Examples of my issued 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.”
`
`17.
`
`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). I have served in the organizing committee of many
`
`technical conferences, including, for example:
`
`● Program committee member and chair of “Display and Solid-State
`
`Lighting Devices” conference for OSA/IEEE Conference on Lasers and
`
`Electro-Optics (CLEO), 2003 – 2005.
`
`● Member of the International Advisory Committee of First International
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`Conference on Display LEDs (ICDL), Seoul, Korea, January 31 – February 2,
`
`2007.
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`● Sub-Committee Chair of Track 6: Displays, Solid-State Lighting,
`
`Photovoltaics, and Energy-Efficient Photonics of Asia Communications and
`
`Photonics Conference (ACP), Shanghai, China, November 11 – 14, 2014.
`
`ACP is the largest and the most influential conference in Asia and Pacific Rim
`
`for communications and photonics technologies.
`
`18. 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 extraordinary
`
`qualifications and experience.”
`
`● Elected to Fellow of the SPIE in 1999. According to the Society’s
`
`bylaws, a Fellow “shall be distinguished through his achievements and shall
`
`have made outstanding contributions in the field of optics, or optoelectronics,
`
`or in a related scientific, technical, or engineering field.”
`
`● Elected to Fellow of the OSA in 2001. OSA Fellows are elected by the
`
`OSA Board of Directors.
`
`● Elected to Fellow of the APS in 2001.
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`e Honored with RPI Medal as Senior Constellation Chair in 2002.
`
`e Recipient of “SCIENTIFIC AMERICAN 50 AWARD”of 2007, as published
`
`in the January 2008 issue of Scientific American.
`
`e Received
`
`“Rensselaer
`
`Polytechnic
`
`Institute Trustee
`
`Faculty
`
`Achievement Award”in 2002, 2008, and 2012.
`
`Ill. MATERIALS CONSIDERED
`
`19.
`
`In forming myopinions, I have reviewed the following documents:
`
`Ex. 1006|Korean Laid-Open Patent No. 2002-0085245 to Jeong-dong Noetal.
`with certified translation.
`
`Ex. 1007|U.S. Patent Application Publication No. 2005/0105034 Al to Kikuo
`Onoetal.
`
`Cryst., Vol. 10, pp. 255/[783]-274/[802] (2004).
`
`Ex. 1008|Active Matrix Liquid Crystal Displays, Fundamentals and
`Applications, Willem den Boer, Elsevier Inc., First Edition (2005).
`
`Ex. 1009|Electro-Optic Characteristics and Switching Principle of a Nematic
`Liquid Crystal Cell Controlled by Fringe-Field Switching, S.H. Lee et
`al., Applied Physics Letters, Vol. 73, No. 20 (Nov. 16, 1998).
`
`Ex. 1012|Vertically Aligned TFT-LCDs, H. Yoshida,et al., Mol. Cryt. Kig.
`
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`
`
`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`
`Ex. 1012 Plaintiff’s Infringement Contentions served in Japan Display Inc. f/k/a
`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma
`Microelectronics Co., Ltd., 2:20-cv-00283 (EDTX).
`
`Ex. 1013 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).
`
`IV. LEGAL STANDARDS
`20.
`In forming my opinions and considering the subject matter of the ’142
`
`patent and its claims in light of the prior art, I am relying on certain legal principles
`
`that counsel in this case explained to me. My understanding of these concepts is
`
`summarized below.
`
`21.
`
`I understand that the claims define the invention. I also understand that
`
`an unpatentability analysis is a two-step process. First, the claims of the patent are
`
`construed to determine their meaning and scope. Second, after the claims are
`
`construed, the content of the prior art is compared to the construed claims.
`
`22.
`
`I understand that a claimed invention is only patentable when it is new,
`
`useful, and non-obvious in light of the “prior art.” That is, the invention, as defined
`
`by the claims of the patent, must not be anticipated by or rendered obvious by the
`
`prior art.
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`
`
`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`
`A. Claim Construction
`23.
`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.
`
`24.
`
`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 embodiments described
`
`in the specification.
`
`25.
`
`I understand that in addition to the claims, specification, and
`
`prosecution history, other evidence may be considered to ascertain the meaning of
`
`claim terms, including textbooks, encyclopedias, articles, and dictionaries. I have
`
`been informed that this other evidence is often less significant and less reliable than
`
`the claims, specification, and prosecution history.
`
`B. Obviousness Under 35 U.S.C. § 103
`26.
`I understand that a patent claim is invalid as obvious if the claimed
`
`invention would have been obvious to a person of ordinary skill in the art at the time
`
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`the claimed invention was made. This means that even if all of the elements of the
`
`claim cannot be found in a single prior art reference that would anticipate the claim,
`
`a person of ordinary skill in the field who knew about all the prior art would have
`
`come up with the claimed invention. I understand that in an obviousness
`
`determination, the person of ordinary skill in the art is presumed to have knowledge
`
`of all material prior art. I understand that whether a claim is obvious is based upon
`
`the determination of several factual issues.
`
`27.
`
`I understand that obviousness is a determination of law based on
`
`underlying determinations of fact. I understand that these factual determinations
`
`include the scope and content of the prior art, the level of ordinary skill in the art,
`
`the differences between the claimed invention and the prior art, and secondary
`
`considerations of non-obviousness.
`
`28.
`
`In considering obviousness, I understand that one must determine the
`
`scope and content of the prior art. I understand that, in order to be considered as prior
`
`art to a patent being considered, a prior art reference must be reasonably related to
`
`the claimed invention of that patent. A reference is reasonably related if it is in the
`
`same field as the claimed invention or is from another field to which a person of
`
`ordinary skill in the art would look to solve a known problem.
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`I understand that one must determine what differences, if any, existed
`
`
`
`29.
`
`between the claimed invention and the prior art.
`
`30.
`
`I understand that a patent claim composed of several elements is not
`
`proved obvious merely by demonstrating that each of its elements was independently
`
`known in the prior art. In evaluating whether such a claim would have been obvious,
`
`one may consider whether a reason has been identified that would have prompted a
`
`person of ordinary skill in the art to combine the elements or concepts from the prior
`
`art in the same way as in the claimed invention. There is no single way to define the
`
`line between true inventiveness on the one hand (which is patentable) and the
`
`application of common sense and ordinary skill to solve a problem on the other hand
`
`(which is not patentable). For example, market forces or other design incentives may
`
`be what produced a change, rather than true inventiveness.
`
`31.
`
`I understand that whether a prior art reference renders a patent claim
`
`unpatentable as obvious is determined from the perspective of a person of ordinary
`
`skill in the art at the time of the alleged invention. I have been told that there is no
`
`requirement that the prior art contain an express suggestion to combine known
`
`elements to achieve the claimed invention, but a suggestion to combine known
`
`elements to achieve the claimed invention may come from the prior art, as filtered
`
`through the knowledge of one skilled in the art. In addition, I have been told that the
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`inferences and creative steps a person of ordinary skill in the art would employ are
`
`also relevant to the determination of obviousness.
`
`32.
`
`I understand that there is no rigid rule that a reference or combination
`
`of references must contain a “teaching, suggestion, or motivation” to combine
`
`references. But I also understand that the “teaching, suggestion, or motivation” test
`
`can be a useful guide in establishing a rationale for combining elements of the prior
`
`art. I have been told that this test poses the question as to whether there is an express
`
`or implied teaching, suggestion, or motivation to combine prior art elements in a
`
`way that realizes the claimed invention, and that it seeks to counter impermissible
`
`hindsight analysis.
`
`33.
`
`I understand that one may consider, e.g., whether (1) the change was
`
`merely the predictable result of using prior art elements according to their known
`
`functions, or whether it was the result of true inventiveness; (2) there is some
`
`teaching or suggestion in the prior art to make the modification or combination of
`
`elements claimed in the patent; (3) the claimed innovation applies a known technique
`
`that had been used to improve a similar device or method in a similar way; (4) the
`
`claimed invention would have been obvious to try, meaning that the claimed
`
`innovation was one of a relatively small number of possible approaches to the
`
`problem with a reasonable expectation of success by those skilled in the art; (5) the
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`invention merely substituted one known element for another known element in order
`
`to obtain predictable results; (6) the invention merely applies a known technique to
`
`a known device, method, or product to yield predictable results; or (7) known work
`
`in the field may have prompted variations of use of the same inventions in the same
`
`or different fields due to market forces or design incentives that would have been
`
`predictable to a person of ordinary skill in the art.
`
`34.
`
`I understand that any assertion of secondary considerations of non-
`
`obviousness must be accompanied by a nexus between the merits of the invention
`
`and the evidence offered.
`
`V. THE ’142 PATENT
`A. Overview of the ’142 Patent
`35. The ’142 patent relates to a liquid crystal display (“LCD”) device
`
`“having upper and lower electrodes interposing an insulation layer therebetween in
`
`which an electric field opening part for passing an electric field is formed in the
`
`upper electrode and liquid crystal molecules are driven by applying a voltage
`
`between the upper and lower electrodes.” ’142 patent, 1:6-12.
`
`36.
`
`Independent claim 1 recites the relevant LCD features:
`
`1. A liquid crystal display device comprising an
`upper electrode and a lower electrode interposing an
`insulation layer therebetween,
`
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
`wherein an electric field opening part for passing
`an electric field is formed in the upper electrode and
`liquid crystal molecules are driven by applying a
`voltage between the lower electrode and the upper
`electrode,
`wherein an upper electrode wiring and the upper
`electrode which interpose an interlayer insulation film
`therebetween, together is disposed below the lower
`electrode,
`wherein a window-shaped opening part formed
`by partially removing
`the
`lower electrode for
`connecting the upper electrode wiring and the upper
`electrode, and
`wherein one end portion of the electric field
`opening part in the longitudinal direction around the
`window-shaped opening part
`is disposed
`to be
`overlapped with the window-shaped opening part in a
`plan view.
`
`’142 patent, 12:39-55.
`
`37. As shown below in annotated Figure 1, the ’142 patent describes an
`
`LCD display device (gray) with a pixel (or upper) electrode 42 (orange) arranged
`
`above a common (or lower) electrode 38 (green). ’142 patent, 5:47-56, 6:43-49. An
`
`insulation film 40 (blue) is interposed between the pixel and common electrodes.
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`’142 patent, 5:47-56, 6:43-49. An interlayer insulation film 36 (red) is interposed
`
`between the pixel electrode and drain wirings 32 (teal). ’142 patent, 5:47-56, 9:29-
`
`35. The common electrode includes a window-shaped opening part 100 (pink) that
`
`facilitates connection of the drain wirings to the pixel electrode. ’142 patent, 3:12-
`
`17, 10:57-63, FIG. 11. The pixel electrode, interlayer insulation film, and drain
`
`wirings are disposed below the common electrode (see at yellow circle).
`
`’142 patent, FIG. 1 (annotated).
`
`
`
`38. The ’142 patent further describes a slit 43 (or electric field opening part)
`
`(purple) formed in the pixel electrode for passage of an electric field, formed by
`
`applying a voltage between the pixel and common electrodes to drive liquid crystal
`
`
`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`molecules. ’142 patent, 6:43-49 (“The slit 43, as shown in FIG. 1, is an electric field
`
`opening part for driving liquid crystal molecules using an electric field by applying
`
`a voltage between the pixel electrode 42, which is an upper electrode, and the
`
`common electrode 38, which is a lower electrode, having the [Fringe Field
`
`Switching] insulation film 40 interposed therebetween.”), see also ’142 patent, 1:38-
`
`47 (discussing the well-known use of pixel electrode slits for passing an electric
`
`field). Annotated Figure. 3 below demonstrates application of an exemplary electric
`
`field E (light blue) between the pixel (or upper) electrode 42 (orange) and the
`
`common (or lower) electrode 38 (green). ’142 patent, 6:58-60. The electric field E
`
`passes through the pixel electrode slit 43 (or electric field opening part) (purple) and
`
`progresses toward the common electrode through the insulation film 40 (blue). ’142
`
`patent, 6:60-63.
`
`’142 patent, FIG. 3 (annotated).
`
`39. As shown below in annotated Figure 4, passage of the electric field E
`
`(light blue) through the pixel electrode slit 43 (purple) drives rotation of liquid
`
`
`
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`
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`crystal molecules L (yellow) along the direction of the electric field E. ’142 patent,
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`6:58-63, 7:26-44, see also ’142 patent, 1:27-31, 1:38-2:8 (discussing the well-known
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`operation of horizontal electric field methods for passing an electric field to drive
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`liquid crystal molecules).
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`’142 patent, FIG. 4 (annotated).
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`40. Disclination is a well-known and undesirable phenomenon in which the
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`rotation direction of the liquid crystals changes depending on their location with
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`respect to an electric field generated between an upper pixel electrode and lower
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`common electrode. ’142 patent, 2:3-15 (describing the well-known phenomenon of
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`disclination), 2:32-41 (explaining that disclination is especially problematic in end
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`portions of the pixel electrode slits and can lead to reduced pixel transmittance and
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`visible display boundaries), 7:55-63. Annotated Figure 4 above depicts exemplary
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`regions of disinclination, D (forest green), in which, upon application of an electric
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`field E, the rotation direction of liquid crystal molecules L located at an edge portion
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`of the pixel electrode slits are rotated in an undesired direction (or cannot be rotated).
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`’142 patent, 2:3-15, 2:32-41, 7:55-63. As shown below in annotated Figure 11, the
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`’142 patent purports to prevent disinclination by overlapping an end portion of a
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`pixel electrode slit 43 (purple) over the common electrode window-shaped opening
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`part 100 (pink) in a plan view (see yellow). ’142 patent, 3:17-20, 10:10-45, see also
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`’142 patent, 2:41-44 (acknowledging as well known that “in order to suppress the
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`occurrence of disclination, it is needed to consider the shape, disposition, and the
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`like of the [electric field] opening part disposed in the upper electrode in relation
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`with the lower electrode.”).
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`’142 patent, FIG. 11 (annotated).
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`
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`B.
`41.
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`Prosecution History of the ’142 Patent
`I have reviewed the prosecution history of the application that led to the
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`’142 patent. Ex. 1004. Nothing in the prosecution history changes my opinions
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`expressed in this declaration.
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`C.
`42.
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`Person of Ordinary Skill in the Art
`I am informed that patentability must be analyzed from the perspective
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`of “one of ordinary skill in the art” in the same field as the ’142 patent at the time of
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`the invention. I am also informed that several factors are considered in assessing the
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`level of ordinary skill in the art, including (1) the types of problems encountered in
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`the art; (2) the prior art solutions to those problems; (3) the rapidity with which
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`innovations are made; (4) the sophistication of the technology; and (5) the education
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`level of active workers in the field.
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`43.
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`In my opinion, a person of ordinary skill in the art pertinent to the ’142
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`patent as of its earliest priority date would have had at least a four-year
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`undergraduate degree in electrical engineering or physics or a closely related field
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`and four years of experience in the design and implementation of flat panel display
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`devices or components thereof. Additional education could substitute for
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`professional experience and significant work experience could substitute for formal
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`education. Although I surpass this definition of one of ordinary skill in the art now
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`and at the priority date of the ’142 patent, my analysis regarding the ’142 patent has
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`been based on the perspective of one ordinary skill in the art as of the priority date
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`of the ’142 patent.
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`44.
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`I am also familiar with the knowledge of the person of ordinary skill in
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`the art as of the priority date of the ’142 patent. I am able to opine on how the person
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`of ordinary skill in the art would have understood the disclosure and claims of the
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`’142 patent, the disclosures of the prior art, the motivation to combine the prior art,
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`and what combinations would have been obvious to one of ordinary skill in the art.
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`VI. CLAIM CONSTRUCTION OF TERMS OF THE ’142 PATENT
`45. As I discussed above, I have been informed that for purposes of inter-
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`partes reviews, the standard for claim construction of terms within the claims of the
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`patent is the same as that applied in federal district court litigation. I understand that
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`the parties in the related district court litigation agreed on the following construction
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`for the term “disclination” recited in claim 3 (’142 patent, 12:60-65): “a phenomenon
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`in which the direction of rotation of liquid crystal molecules changes depending on
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`their location.” Ex. 1013, 1. I have been asked to assume that the claim terms
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`otherwise have their plain and ordinary meaning to a person skilled in the art in light
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`of the specification and the prosecution history.
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`VII. SUMMARY OF OPINIONS ON UNPATENTABILITY
`46.
`In my opinion, the challenged claims are unpatentable based on a
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`combination of prior art. As shown below in annotated Figure 2, Lee (Ex. 1005),
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`like the ’142 patent, discloses a liquid crystal display (“LCD”) device (gray)
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`including a pixel (or upper) electrode 191 (orange) arranged above a common (or
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`lower) electrode 270 (green). Lee, 6:11-26, 6:48-62. An upper passivation layer
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`180q (blue) is interposed between the pixel and common electrodes. Lee, 6:27-51.
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`A lower passivation layer 180p (red) is interposed between the pixel electrode and a
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`drain electrode 175 (teal). Lee, 5:54-63, 6:36-47. The common electrode includes an
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`opening 275 (pink) that facilitates connection of the pixel and drain electrodes. Lee,
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`6:11-47, 6:63-7:2. The pixel electrode, lower passivation layer 180p, and drain
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`electrode are disposed below the common electrode (see at yellow circle).
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`Lee, FIG. 2 (annotated).
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`
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`47. Lee further describes slits (or electric field opening parts) (purple)
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`formed in the pixel electrode for passage of an electric field, formed by applying a
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`voltage between the pixel and common electrodes to drive liquid crystal molecules.
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`Lee, 7:3-10 (“The pixel electrode 191 to which a data voltage is applied and the
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`common electrode 270 to which a common voltage is applied generate an electric
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`field, thereby determining a direction of liquid crystal molecules of a liquid crystal
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`layer (not shown) that is positioned between the two electrodes 191 and 270.
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`Declaration of E. Fred Schubert, Ph.D.
`U.S. Patent No. 7,636,142
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`Polarization of light that passes through the liquid crystal layer changes depending
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`on a direction of the liquid crystal molecules.”), 6:48-7:2, 1:26-34. As further shown
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`below in annotated Figure 1, Lee’s pixel electrode slits (purple) include end portions
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`positioned adjacent to the opening 275 (pink) in a plan view (see at yellow circle).
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`Lee, portion of FIG. 1 (annotated).
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`48. As shown below in annotated Figure 4b, No (Ex. 1006), like Lee and
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`the ’142 patent, discloses an LCD device (gray) including a pixel (or upper)
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`electrode 29 (orange) arranged above a counter (or lower) electrode 27 (green). No,
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`9-16, FIGS. 3-4b. The common electrode includes “holes” (pink) that facilitate
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`connection