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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2021-01058
`U.S. Patent No. 7,636,142
`_____________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,636,142
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`IPR2021-01058
`U.S. Patent No. 7,636,142
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`Table of Contents
`
`
`PRELIMINARY STATEMENT .................................................................. 1
`I.
`III. THE ’142 PATENT ....................................................................................... 3
`IV. LEVEL OF SKILL IN THE ART ............................................................... 9
`V. CLAIM CONSTRUCTION .......................................................................... 9
`VI. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`TO DENY INSTITUTION ......................................................................... 10
`A.
`The Board Should Not Deny Institution Under § 314(a) .................... 10
`B.
`The Board Should Not Deny Institution Under § 325. ....................... 18
`VII. CLAIMS 1-3, 5, 6, AND 8 OF THE ʼ142 PATENT ARE
`UNPATENTABLE OVER THE PRIOR ART ......................................... 19
`A. Ground 1: Lee in combination with No renders claims 1-3, 5, 6,
`and 8 obvious. ...................................................................................... 19
`1.
`Independent Claim 1 ................................................................. 23
`2.
`Claim 2: ..................................................................................... 43
`3.
`Claim 3: ..................................................................................... 45
`4.
`Claim 5 ...................................................................................... 48
`5.
`Claim 6: ..................................................................................... 52
`6.
`Claim 8: ..................................................................................... 57
`VIII. GROUNDS FOR STANDING .................................................................... 58
`IX. MANDATORY NOTICES ......................................................................... 58
`A.
`Real Party-in-Interest .......................................................................... 58
`B.
`Related Matters .................................................................................... 59
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................ 59
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`IPR2021-01058
`U.S. Patent No. 7,636,142
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................. 60
`D.
`X. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) .................................... 60
`XI. CONCLUSION ............................................................................................ 60
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`iii
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`IPR2021-01058
`U.S. Patent No. 7,636,142
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`LIST OF EXHIBITS
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`Exhibit
`Ex. 1001
`
`Description
`U.S. Patent No. 7,636,142 to Masaaki Aota et al.
`
`Ex. 1002
`
`Declaration of Dr. E. Fred Schubert
`
`Ex. 1003
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`Curriculum Vitae of Dr. E. Fred Schubert
`
`Ex. 1004
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`File History for U.S. Patent No. 7,636,142.
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`Ex. 1005
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`U.S. Patent No. 7,599,015 to Young-Wook Lee et al.
`
`Ex. 1006
`
`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`
`
`Korean Laid-Open Patent No. 2002-0085245 to Jeong-dong No et al.
`with certified translation.
`
`U.S. Patent Application Publication No. 2005/0105034 A1 to Kikuo
`Ono et al.
`
`Active Matrix Liquid Crystal Displays, Fundamentals and Applications,
`Willem den Boer, Elsevier Inc., First Edition (2005).
`
`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).
`
`Vertically Aligned TFT-LCDs, H. Yoshida, et al., Mol. Cryt. Kiq.
`Cryst., Vol. 10, pp. 255/[783]-274/[802] (2004)
`
`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-00283 (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).
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`iv
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`Exhibit
`Ex. 1014
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`Ex. 1015
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`Ex. 1016
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`IPR2021-01058
`U.S. Patent No. 7,636,142
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`Description
`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-00283, -00284, -00285 (EDTX).
`
`Redacted Version of Defendant’s Motion to Transfer 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).
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`I.
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`IPR2021-01058
`U.S. Patent No. 7,636,142
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`PRELIMINARY STATEMENT
`Petitioner Tianma Microelectronics Co. Ltd. requests inter partes review of
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`claims 1-3, 5, 6, and 8 of U.S. Patent No. 7,636,142, purportedly assigned to Patent
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`Owner Japan Display Inc.
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`The ’142 patent relates to a liquid crystal display (“LCD”) device that purports
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`to prevent “disclination,” an undesirable phenomenon in which the direction of
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`rotation of liquid crystal molecules changes depending on their location with respect
`
`to an electric field generated between pixel (or upper) and common (or lower)
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`electrodes. ’142 patent, 2:3-60 (explaining that disclination is especially problematic
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`in the end regions of slits (or electric field opening parts) formed in the pixel
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`electrode, where it may result in reduced pixel transmittance and visible boundaries).
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`The ’142 patent purports to suppress the occurrence of disclination by
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`overlapping one end portion of a slit formed in the pixel electrode with a window-
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`shaped opening part formed in the common electrode. But as the prior art
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`demonstrates, and Dr. Schubert testifies, it was well known before February 26,
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`2007, the ’142 patent’s earliest claimed priority date, to implement displays with this
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`configuration and for preventing disclination. Accordingly, Petitioner requests that
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`the Board institute inter partes review and cancel claims 1-3, 5, 6, and 8 of the ’142
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`patent.
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`1
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`II.
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`U.S. Patent No. 7,636,142
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`PRECISE RELIEF REQUESTED
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`A. Claims for Which Review Is Requested
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`Petitioner respectfully requests inter partes review under 35 U.S.C. § 311 of
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`claims 1-3, 5, 6, and 8 of the ’142 patent, and the cancellation of those claims as
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`unpatentable.
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`B.
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`Statutory Ground
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`Each asserted reference identified in the table below issued, published, and/or
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`was filed before February 26, 2007, the earliest purported priority date of the ’142
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`patent. Thus, each asserted reference is prior art under at least one of pre-AIA
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`35 U.S.C. § 102(a), (b), and/or (e).
`
`Prior Art References
`Lee, U.S. Patent No. 7,599,015, filed on July 17, 2006. Ex. 1005.
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`No, Korean Laid-Open Patent No. 2002-0085245, published on November 16,
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`2002. Ex. 1006, 9, 20 (certified translation).
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` Claims 1-3, 5, 6, and 8 of the ’142 patent are unpatentable under pre-AIA
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`35 U.S.C. § 103 based on the following ground:
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`Ground of Unpatentability
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`1 Lee in combination with No renders obvious claims 1-3, 5, 6, and 8.
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`2
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`U.S. Patent No. 7,636,142
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`III. THE ’142 PATENT
`The ’142 patent relates to a liquid crystal display (“LCD”) device “having
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`upper and lower electrodes interposing an insulation layer therebetween in which an
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`electric field opening part for passing an electric field is formed in the upper
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`electrode and liquid crystal molecules are driven by applying a voltage between the
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`upper and lower electrodes.” ’142 patent, 1:6-12.
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`Independent claim 1 recites the relevant LCD features:
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`1. A liquid crystal display device comprising an upper
`electrode and a
`lower electrode
`interposing an
`insulation layer therebetween,
`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
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`
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`opening part is disposed to be overlapped with the
`window-shaped opening part in a plan view.
`
`’142 patent, 12:39-55.
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`As shown below in annotated Figure 1, the ’142 patent describes an LCD
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`display device (gray) with a pixel (or upper) electrode 42 (orange) arranged above a
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`common (or lower) electrode 38 (green). ’142 patent, 5:47-56, 6:43-49. An
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`insulation film 40 (blue) is interposed between the pixel and common electrodes.
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`’142 patent, 5:47-56, 6:43-49. An interlayer insulation film 36 (red) is interposed
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`between the pixel electrode and drain wirings 32 (teal). ’142 patent, 5:47-56, 9:29-
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`35. The common electrode includes a window-shaped opening part 100 (pink) that
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`facilitates connection of the drain wirings to the pixel electrode. ’142 patent, 3:12-
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`17, 10:57-63, FIG. 11. The pixel electrode, interlayer insulation film, and drain
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`wirings are disposed below the common electrode (see at yellow circle).
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`’142 patent, FIG. 1 (annotated).
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`
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`The ’142 patent further describes a slit 43 (or electric field opening part)
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`(purple) formed in the pixel electrode for passage of an electric field, formed by
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`applying a voltage between the pixel and common electrodes, to drive liquid crystal
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`molecules. ’142 patent, 6:43-49 (“The slit 43, as shown in FIG. 1, is an electric field
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`opening part for driving liquid crystal molecules using an electric field by applying
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`a voltage between the pixel electrode 42, which is an upper electrode, and the
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`common electrode 38, which is a lower electrode, having the [Fringe Field
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`Switching] insulation film 40 interposed therebetween.”), see also ’142 patent, 1:38-
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`47 (discussing the well-known use of pixel electrode slits for passing an electric
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`field). Annotated Figure 3 below demonstrates application of an exemplary electric
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`field E (light blue) between the pixel (or upper) electrode 42 (orange) and the
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`common (or lower) electrode 38 (green). ’142 patent, 6:58-60. The electric field E
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`
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`passes through the pixel electrode slit 43 (or electric field opening part) (purple) and
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`progresses toward the common electrode through the insulation film 40 (blue). ’142
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`patent, 6:60-63.
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`’142 patent, FIG. 3 (annotated).
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`
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`As shown below in annotated Figure 4, passage of the electric field E (light
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`blue) through the pixel electrode slit 43 (purple) drives rotation of liquid crystal
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`molecules L (yellow) along the direction of the electric field E. ’142 patent, 3:58-
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`63, 7:26-44, see also ’142 patent, 1:26-30, 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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`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, 2:3-13 (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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`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.
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`7
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`U.S. Patent No. 7,636,142
`As shown below in annotated Figure 11, the ’142 patent purports to prevent
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`
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`disinclination by overlapping an end portion of a pixel electrode slit 43 (purple) over
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`the common electrode window-shaped opening part 100 (pink) in a plan view (see
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`yellow). ’142 patent, 3:17-20, 10:10-45, see also ’142 patent, 2:41-44
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`(acknowledging as well known that “in order to suppress the occurrence of
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`disclination, it is needed to consider the shape, disposition, and the like of the
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`[electric field] opening part disposed in the upper electrode in relation with the lower
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`electrode”).
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`’142 patent, FIG. 11 (annotated).
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`IV. LEVEL OF SKILL IN THE ART
`A skilled artisan would have had at least a four-year undergraduate degree in
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`electrical engineering or physics or a closely related field and four years of
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`experience in the design and implementation of flat panel display devices or
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`components thereof. Schubert, ¶43 (Ex. 1002). Additional education could substitute
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`for professional experience and vice versa. Schubert, ¶43.
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`V. CLAIM CONSTRUCTION
`The Board construes claims in accordance with 37 C.F.R. § 42.200(b) and
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
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`§ 42.200(b). Claims only need to be construed to the extent necessary to resolve a
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`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017).
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`Claim 3 recites “disclination.” ’142 patent, 12:60-65. In the related district
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`court litigation (see infra Section IX.B.), the parties agreed on the following
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`construction for this term: “a phenomenon in which the direction of rotation of liquid
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`crystal molecules changes depending on their location.” Ex. 1013, 1. No other terms
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`need construction because the claims encompass the prior-art mappings provided
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`below under any construction consistent with Phillips.1
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`VI. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`DENY INSTITUTION
`A. The Board Should Not Deny Institution Under § 314(a)
`The ’142 patent was asserted against Tianma in Japan Display Inc. f/k/a
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`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics Co. Ltd.,
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`No. 2:20-cv-00285 (E.D. Tex.) (the “related district court litigation”). See infra
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`Section IX.B. The -00285 case is only one of three cases filed against Petitioner by
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`Patent Owner on the same day. Ex. 1011. Patent Owner has asserted fifteen patents
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`across the three now-consolidated cases. Ex. 1011; Ex. 1014 (consolidating the -
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`00285 case with the -00283-lead case).
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`The most relevant Fintiv factors demonstrate that the Board should not deny
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`institution under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). The current docket control
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`order in the related district court litigation sets trial in February 2022 (Ex. 1015, 1),
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`1 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
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`Petitioner has not included any indefiniteness arguments herein. Petitioner may,
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`however, raise or maintain such arguments in other proceedings.
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`before the statutory deadline for Final Written Decision, but this is not determinative.
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`
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`Taken as a whole, Factors 4 (lack of overlap) and 6 (strong merits) outweigh the
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`other relevant factors, and the Board should therefore institute.
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`Regarding Factor 1, where, as here, a stay has been neither requested nor
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`granted, “[t]his factor does not weigh for or against discretionary denial.” Apple Inc.
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`v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020). Nor should
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`the Board, in the absence of specific evidence, speculate how the district court will
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`proceed with respect to any motion. See, e.g., Sand Revolution II, LLC v. Cont’l
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`Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
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`2020) (“In the absence of specific evidence, [the Board] will not attempt to predict
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`how the district court in [a] related district court litigation will proceed . . . .”); Dolby
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`Lab’ys, Inc. v. Intertrust Techs. Corp., IPR2020-00664, Paper 10 at 10-11 (PTAB
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`Dec. 8, 2020) (declining to speculate whether the district court may or may not grant
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`any motion to stay). Moreover, it remains uncertain when and where the related
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`district court litigation will even be tried because Petitioner has moved to transfer
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`the litigation. Ex. 1016. See, e.g., Quantile Techs. Ltd. v. TriOptima AB, CBM2020-
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`00012, Paper 11 at 17 (PTAB Oct. 5, 2020) (petitioner’s pending motion to change
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`venue in related district court litigation relevant to weighing factor 1 neutrally).
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`Thus, Factor 1 is, at best, neutral.
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`Regarding Factor 2, the current docket control order in the related district
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`court litigation sets trial in February 2022 (Ex. 1015, 1), and thus before the Board’s
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`anticipated statutory deadline for a final written decision. Given Petitioner’s motion
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`to transfer (Ex. 1016), however, that trial date is speculative. See, e.g., Quantile
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`Techs., Paper 11 at 18 (Petitioner’s pending motion to change venue in a related
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`district court litigation relevant to weighing factor 2); Dish Network L.L.C. v.
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`Broadband iTV, Inc., IPR2020-01359, Paper 15 at 13-16 (PTAB Feb. 12, 2021)
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`(petitioner’s pending motion to transfer in a related district court litigation relevant
`
`to weighing factor 2). Moreover, in light of the Board’s holistic analysis balancing
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`all the Fintiv factors, the trial date of the related district court litigation is not
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`determinative but weighed in concert with the other relevant factors. See, e.g.,
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`Samsung Elecs. Co. v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47
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`(PTAB Feb. 10, 2021) (instituting review when related district court litigation trial
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`date more than ten months before final written decision date); Consentino S.A.U. v.
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`Cambria Co., PGR2021-00010, Paper 11 at 10-11, 16 (PTAB May 18, 2021) (same
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`by seven months); Medtronic CoreValve LLC v. Colibri Heart Valve LLC, IPR2020-
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`01454, Paper 11 at 12-13, 18-19 (PTAB Mar. 10, 2021) (same by six months); Lego
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`Sys., Inc. v. MQ Gaming LLC, IPR2020-01443, Paper 12 at 7-8, 16-17 (PTAB Feb.
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`17, 2021) (same by five months).
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`Regarding Factor 3, although there has been some investment by the parties
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`
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`in the related district court litigation, based on the current docket control order
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`(Ex. 1015), a substantial portion of work and trial is yet to come after institution. By
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`institution, the primary investment by the district court will be through any claim
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`construction ruling, but any such ruling will be limited in scope on the present IPR
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`as the only dispute is whether certain language of claim 1 is intended use (Ex. 1013,
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`9, 20-21), and this Petition addresses the language as limiting. See, e.g., Sand
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`Revolution II, Paper 24 at 10-11 (finding the district court’s two-page Markman
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`Order demonstrating a limited level of investment of time and resources relevant to
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`weighing Factor 3); Lego Sys., Paper 12 at 10-11 (finding the lack of any proposed
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`claim terms for construction in the district court litigation relevant to weighing
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`Factor 3).
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`Moreover, Petitioner moved with speed and diligence in bringing this
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`challenge—the Petition is being filed five months after Patent Owner served its
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`infringement contentions—mitigating against the investment of the parties. See, e.g.,
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`Dolby Lab’ys, Paper 10 at 17-18 (finding petitioner acted diligently in filing petition
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`about three months after patent owner served its infringement contentions
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`identifying the asserted claims); Fintiv, Paper 11 at 11 (“If the evidence shows that
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`the petitioner filed the petition expeditiously, such as promptly after becoming aware
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`of the claims being asserted, this fact has weighed against exercising the authority
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`to deny institution under NHK.”). To be sure, “preparing a petition for inter partes
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`
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`review requires substantial effort even after the references and basic theories have
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`been identified.” Lego Sys., Paper 12 at 11. And this is particularly true in view of
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`the large number of patents and claims challenged in this and Petitioner’s other
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`related (see infra Section IX.B.) and upcoming petitions for IPR. See Lego Sys.,
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`Paper 12 at 11-12; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12
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`at 17 (PTAB Dec. 1, 2020) (“[W]e find that Petitioner’s explanation for the timing
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`of the Petition is reasonable, notwithstanding the closeness to the statutory deadline,
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`particularly in view of the large number of patents and claims challenged in this and
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`Petitioner’s other related petitions for inter partes review.”).
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`Moreover, in its complaints, Patent Owner asserted “at least claim 1” from
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`each of fifteen asserted patents, totaling over 170 claims, against five products.
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`Ex. 1011. And Patent Owner refused to narrow the number of claims and issues until
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`service of its infringement contentions (Ex. 1012). And then, when Patent Owner
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`did identify the full set of asserted claims in its contentions, it alleged infringement
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`of over 2,400 products, imposing a vastly greater burden on Petitioner to assess the
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`dispute and evaluate on which patents to request IPR. Ex. 1012. See, e.g., Fintiv,
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`Paper 11 at 11 (“[I]t is often reasonable for a petitioner to wait to file its petition
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`until it learns which claims are being asserted against it in the parallel proceeding.”);
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`Samsung Elecs., Paper 17 at 40 (“We recognize that much work has been done by
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`the parties in the District Court. However, we also find, as a countervailing
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`consideration, that Petitioner acted diligently in filing this and the other IPRs. The
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`record reflects that Patent Owner did not identify the full set of claims being asserted
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`in the District Court until March 9, 2020, and that Petitioner filed this Petition, and
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`nine others, in less than four months.” (citation omitted)); Dish Network, Paper 15
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`at 19-20 (petitioner filing petition within three months after receiving patent owner’s
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`infringement positions for all asserted claims (including those not specifically
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`identified originally in the complaint) and prior to completion of Markman briefing);
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`Lego Sys., Paper 12 at 11-12. “Because Petitioner acted diligently and without much
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`delay, this mitigates against the investment of the parties.” Dolby Lab’ys, Paper 10
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`at 17 (citing Apple Inc. v. Seven Networks, LLC, IPR2020-00156, Paper 10 at 11-12
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`(PTAB June 15, 2020)).
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`Regarding Factor 4, Petitioner stipulates that, if this IPR is instituted, it will
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`not pursue in the related district court litigation any ground that it raised or
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`reasonably could have raised in this Petition. Thus, there will not be any overlap
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`between this Petition and potential invalidity grounds in the related district court
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`litigation, strongly weighing in favor of institution. See Sotera Wireless, Paper 12 at
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`18-19 (precedential as to Section II.A) (finding that because the stipulation
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`“mitigates any concerns of duplicative efforts” and “potentially conflicting
`
`decisions,” this factor strongly favors institution); see also Consentino, Paper 11 at
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`15
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`13-15 (“Considering that Petitioner has agreed to be bound by a stipulation that is
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`substantively the same as the stipulation addressed in Sotera, we follow the Sotera
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`precedent in finding that this factor weighs strongly against exercising discretion to
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`deny.”); Bos. Sci. Corp. v. Nevro Corp., IPR2020-01562, Paper 14 at 24 (PTAB Mar.
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`16, 2021); Medtronic CoreValve, Paper 11 at 17; Lego Sys., Paper 12 at 12-15.
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`This Petition also challenges claim 2, which is not asserted in the related
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`district court litigation, creating additional nonoverlapping issues. Ex. 1012, 17.
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`3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 at 34 (PTAB May 26,
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`2020) (the Board finding that the related litigation “will not resolve all claims at
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`issue in [the PTAB] proceeding”); Apple Inc. v. Neodron, Ltd., IPR2020-00778,
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`Paper 10 at 19 (PTAB Sept. 14, 2020) (the Board finding additional claims
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`challenged before the Board but not in the related litigation impacts Fintiv Factor 4,
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`and weighs against exercising its discretion to deny the petition); Taiwan
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`Semiconductor Mfg. Co. v. Fraunhofer Gesellschaft zur Föerderung der
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`Angewandten Forschung eV, IPR2020-01669, Paper 13 at 29 (PTAB Apr. 15, 2021)
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`(same).
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`Factor 6 favors institution because the merits of this Petition are strong. The
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`Petition relies upon materially different and noncumulative references not applied
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`during prosecution that teach the very features that Patent Owner argued, and the
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`Examiner found missing, and which led to the allowance of the independent
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`16
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`claims—i.e., one end portion of the electric field opening part in the longitudinal
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`
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`direction around a window shaped opening part being disposed to overlap with the
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`window shaped opening in a plan view. See infra Section VI.B. This is also
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`Petitioner’s only challenge to the ’142 patent that has ever been or is currently before
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`the Board, making considerations related to follow-on petitions moot.
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`At bottom, this first and only IPR challenge on the ’142 patent raises different
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`issues than the related district court litigation (Factor 4) and the petition is strong on
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`the merits (Factor 6), which outweighs other applicable factors, including the current
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`trial date in the related district court litigation. Moreover, Petitioner expeditiously
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`filed this IPR Petition—and other related and upcoming petitions—five months after
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`Patent Owner’s infringement contentions. The Board should therefore institute this
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`IPR. See Samsung Elecs., Paper 17 at 47 (“We determine that Petitioner’s stipulation
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`has minimized any overlap with the parallel district court litigation such that both
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`the duplication of efforts and the potential for conflicting decisions are minimized.
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`Although the parties have invested in the litigation, Petitioner filed this proceeding
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`on a timely basis after learning which of the eighty-four claims were being asserted.
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`Accordingly, we conclude that the minimization of overlap and the strength of the
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`merits of the first challenge outweigh the upcoming trial date. As such, we decline
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`to exercise discretion to deny inter partes review.”); see also Lego Sys., Paper 12 at
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`17
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`16-17; Bos. Sci., Paper 14 at 25; Medtronic CoreValve, Paper 11 at 18-19;
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`
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`Consentino, Paper 11 at 16; Sotera Wireless, Paper 12 at 20-21.
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`The Board Should Not Deny Institution Under § 325.
`B.
`The factors in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-
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`01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) also favor institution. See also
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6 (PTAB Feb. 13, 2020) (precedential).
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`None of the references relied on in this Petition were cited or considered
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`during prosecution. See Ex. 1004, 17, 55; ’142 patent, cover page. Moreover,
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`Petitioner’s references, identified disclosures, and the stated rationale for combining
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`the references are not cumulative to those used during prosecution of the ’142 patent.
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`This Petition challenges claim 1 of the ’142 patent as obvious over Lee and No, a
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`combination that teaches the very features that the Examiner found missing from the
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`prior art of record, and which led to the allowance of the claims—i.e., one end
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`portion of the electric field opening part in the longitudinal direction around a
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`window shaped opening part being disposed to overlap with the window shaped
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`opening in a plan view. Ex. 1004, 14. See Microsoft Corp. v. Uniloc 2017 LLC,
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`IPR2019-01251, Paper 7 at 11-14 (PTAB Dec. 20, 2019) (declining to deny
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`institution under § 325(d) where the petition “present[ed] evidence that the asserted
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`18
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`prior art [taught] the claim limitations that the [a]pplicant argued were missing from
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`the prior art applied by the Examiner”).
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`VII. CLAIMS 1-3, 5, 6, AND 8 OF THE ʼ142 PATENT ARE
`UNPATENTABLE OVER THE PRIOR ART
`A. Ground 1: Lee in combination with No renders claims 1-3, 5, 6,
`and 8 obvious.
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`The challenged claims are unpatentable based on a combination of prior art.
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`As shown below in annotated Figure 2, Lee (Ex. 1005), like the ’142 patent,
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`discloses a liquid crystal display (“LCD”) device (gray) including a pixel (or upper)
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`electrode 191 (orange) arranged above a common (or lower) electrode 270 (green).
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`Lee, 6:11-26, 6:48-62. An upper passivation layer 180q (blue) is interposed between
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`the pixel and common electrodes. Lee, 6:27-51. A lower passivation layer 180p (red)
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`is interposed between the pixel electrode and a drain electrode 175 (teal). Lee, 5:54-
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`63, 6:36-47. The common electrode includes an opening 275 (pink) that facilitates
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`connection of the pixel and drain electrodes. Lee, 6:11-47, 6:63-7:2. The pixel
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`electrode, lower passivation layer 180p, and drain electrode are disposed below the
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`common electrode (see at yellow circle).
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`19
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`Lee, FIG. 2 (annotated).
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`Lee further describes slits (or electric field opening parts) (purple) formed in
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`the pixel electrode for passage of an electric field, formed by applying a voltage
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`between the pixel and common electrodes, to drive liquid crystal molecules. Lee,
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`7:3-10 (“The pixel electrode 191 to which a data voltage is applied and the common
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`electrode 270 to which a common voltage is applied generate an electric field,
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`thereby determining a direction of liquid crystal molecules of a liquid crystal layer
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`(not shown) that is positioned between the two electrodes 191 and 270. Polarization
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`of light that passes through the liquid crystal layer changes depending on a direction
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`of the liquid crystal molecules.”), 6:48-7:2, 1:26-34. As further shown below in
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`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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`20
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`Lee, portion of FIG. 1 (annotated).
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`As shown below in annotated Figure 4b, No (Ex. 1006), like Lee and the ’142
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`patent, discloses an LCD device (gray) including a pixel (or upper) electrode 29
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`(orange) arranged above a counter (or lower) electrode 27 (green). No, 9-16, FIGS.
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`3-4a. The common electrode includes “holes” (pink) that facilitate connection of the
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`pixel with drain wiring of a thin-film transistor (“TFT”) electrode (navy). No, 9, 12-
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`15. No further describes “slits” (purple) formed in the pixel electrode for passage of
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`an electric field, formed by applying a voltage between the pixel and common
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`electrodes, to drive liquid crystal molecules. No, 9-11.
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`21
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`IPR2021-01058
`U.S. Patent No. 7,636,142
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`No, FIG. 4b (annotated).
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