`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`Patent Owner.
`
`U.S. Patent No. 10,330,989
`
`____________________
`
`Case No. IPR2021-01060
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`TABLE OF CONTENTS
`
`I.
`PRELIMINARY STATEMENT ..................................................................... 1
`THE ’989 PATENT ......................................................................................... 2
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 5
`IV. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`DENY INSTITUTION .................................................................................... 5
`A.
`The Board Should Not Deny Institution Under 35 U.S.C. § 314 ......... 5
`B.
`The Board Should Not Deny Institution Under 35 U.S.C.
`§ 325(d) ...............................................................................................12
`CLAIM CONSTRUCTION ..........................................................................14
`V.
`VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ..............................................................................14
`VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE ..........................14
`A. Ground 1: Claims 1–2 Would Have Been Obvious Based on
`Yuh, Ohta, and Abe ..............................................................................15
`1.
`Overview of the Prior Art .........................................................15
`2.
`Claim 1 ......................................................................................21
`3.
`Claim 2 ......................................................................................56
`B. Ground 2: Claim 2 Would Have Been Obvious Based on Yuh,
`Ohta, Abe, and Kim .............................................................................64
`1.
`Overview of Kim .......................................................................64
`2.
`Claim 2 ......................................................................................66
`C. Ground 3: Claims 1–2 Would Have Been Obvious Based on
`Yuh and Kurahashi ..............................................................................69
`1.
`Priority Date of the ’989 Patent ................................................69
`
`
`
`i
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`2.
`Overview of Kurahashi .............................................................69
`Claim 1 ......................................................................................73
`3.
`Claim 2 ......................................................................................94
`4.
`D. Ground 4: Claim 2 Would Have Been Obvious Based on Yuh,
`Kurahashi, and Kim .............................................................................96
`1.
`Claim 2 ......................................................................................96
`VIII. MANDATORY NOTICES ...........................................................................99
`A.
`Real Party-in-Interest ..........................................................................99
`B.
`Related Matters ....................................................................................99
`C.
`Lead and Back-Up Counsel, and Service Information .......................99
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ...........................100
`IX. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) ......................................100
`X.
`CONCLUSION ............................................................................................100
`
`
`
`
`
`
`
`
`ii
`
`

`

`IPR202 1-01 060 Petition
`
`US. Patent No. 10,330,989
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Descri tion
`
`Ex.
`
`1001
`
`US. Patent No. 10,330,989 “the ’989 atent”
`
`Ex.
`
`1002
`
`Prosecution Histo
`
`of US. Patent No. 10,330,989
`
`Ex.
`
`1003
`
`Declaration of Richard A. Flasck
`
`Ex.
`
`1004
`
`Curriculum Vitae of Richard A. Flasck
`
`Ex.
`
`1005
`
`Yuh et al., US. Patent No. 6,577,368 “Yuh”
`
`Ex.
`
`1006
`
`Ohta, US. Patent A . Pub. No. 2001/0009447 “Ohta”
`
`
`
`Ex.
`
`1007
`
`Ex.
`
`1008
`
`Ex.
`
`1009
`
`Ex.
`
`1010
`
`Ex.
`
`1011
`
`Ex.
`
`1012
`
`Ex.
`
`1013
`
`Ex.
`
`1014
`
`Ex.
`
`1015
`
`Ex.
`
`1016
`
`Abe, US. Patent No. 6,507,383 “Abe”
`
`Kurahashi et al., US. Patent No. 6,600,541 “Kurahashi”
`
`Kim et al., US. Patent No. 6,580,487 “Kim”
`
`Ito, Jaanese Patent A . o. No. 2001-317149
`
`Complaints for Patent Infi'ingement 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 .
`
`
`Microelectronics Co., Ltd, No. 2:20-cv-00283 E.D. Tex.
`
`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 from Japan Display vInc. f/k/a Hitachi
`Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics Co.,
`Ltd, No. 2:20-cv—00283 ED. Tex.
`
`Defendant’s Motion to Transfer filed in Japan Display vInc. f/k/a
`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma
`
`iii
`
`

`

`PRELIMINARY STATEMENT
`Petitioner Tianma Microelectronics Co., Ltd. requests inter partes review of
`
`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`I.
`
`claims 1–2 of U.S. Patent No. 10,330,989 (Ex. 1001), assigned to Patent Owner
`
`Japan Display, Inc. (“JDI”). Claim 1 is directed to a liquid crystal display (“LCD”)
`
`device. The LCD device includes a “counter electrode” having a “planer shape”
`
`that is “connected to [a] common layer via a through hole in [an] organic insulation
`
`layer.” ’989 patent, 52:8–34. And the LCD device also includes a “pixel electrode”
`
`having a “slit” with a “first portion [that] is not parallel with [a] gate line and [a]
`
`drain line” of the device. Id., 52:25–27. But none of this was new.
`
`Planar counter electrodes were known before the earliest priority date of the
`
`’989 patent, as demonstrated by Yuh, as were pixel electrodes having slits not
`
`parallel with gate lines and drain lines in LCD devices, as demonstrated by Abe
`
`and Kurahashi. The connection of a counter electrode to a common layer via a
`
`through hole in an organic insulation layer was likewise known, as demonstrated
`
`by Ohta and Kurahashi. Claim 2 adds that a “common layer” of the device “is a
`
`planer shape,” ’989 patent, 52:35–37, but planar common layers were also known,
`
`as demonstrated by Kim.
`
`As described below, Yuh, in combination with Abe, Ohta, Kurahashi and/or
`
`Kim, renders obvious claims 1–2 of the ’989 patent.
`
`
`
`1
`
`

`

`II. THE ’989 PATENT
`The ’989 patent describes “[a] liquid crystal display device” that includes “a
`
`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`first substrate,” “a second substrate,” and a “liquid crystal layer between the first
`
`substrate and the second substrate, containing liquid crystal molecules.”
`
`’989 patent (Ex. 1001), 1:55–61, 52:8–12. As shown in Figure 61, formed on the
`
`first substrate are each of: “a common layer,” “an organic insulation layer,” “a
`
`counter electrode,” “a gate insulation layer,” “a pixel electrode,” and “a drain line.”
`
`Id., 52:13–29. “[T]he counter electrode is connected to the common layer via a
`
`through hole within the organic insulation layer.” Id., 52:32-34.
`
`
`
`’989 patent, Figure 1 (annotated, Flasck (Ex. 1003), ¶33).
`
`Figure 60 illustrates a plan view of the device shown in Figure 61. As
`
`shown, the device further includes “a gate line.” ’989 patent, 52:13. “[T]he counter
`2
`
`
`
`

`

`electrode is a planer shape, and the pixel electrode comprises a slit having a first
`
`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`portion, and the first portion is not parallel with the gate line and the drain line.”
`
`Id., 52:24–27. Additionally, “the common layer is a planer shape” and “faces
`
`plural of the pixel electrode.” Id., 52:35–37.
`
`
`
`3
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`’989 patent, Figure 60 (annotated, Flasck, ¶34).
`
`
`
`4
`
`
`
`

`

`III. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSA”) would have had at least a
`
`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`four-year undergraduate degree in electrical engineering or physics or a closely
`
`related field and four years of experience in the design and implementation of flat
`
`panel display devices or components thereof. Flasck, ¶38. Additional education
`
`could substitute for professional experience and vice versa. Id.
`
`IV. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`DENY INSTITUTION
`A. The Board Should Not Deny Institution Under 35 U.S.C. § 314
`The ’989 patent was asserted against Tianma in Japan Display Inc. f/k/a
`
`Hitachi Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics Co. Ltd.,
`
`No. 2:20-cv-00283 (E.D. Tex.) (the “related district court litigation”). See infra
`
`Section VIII.B. The -00283 case is only one of three cases filed against Petitioner
`
`by Patent Owner on the same day. Ex. 1011. Patent Owner has asserted fifteen
`
`patents across the three now-consolidated cases. Ex. 1011; Ex. 1014.
`
`The most relevant Fintiv factors demonstrate that the Board should not deny
`
`institution under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). The current docket control
`
`order in the related district court litigation sets trial in February 2022 (Ex. 1015 at
`
`1), before the statutory deadline for Final Written Decision, but this is not
`
`
`
`5
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`determinative. Taken as a whole, Factors 4 (lack of overlap) and 6 (strong merits)
`
`outweigh the other relevant factors, and the Board should therefore institute.
`
`Regarding Factor 1, where, as here, a stay has been neither requested nor
`
`granted, “[t]his factor does not weigh for or against discretionary denial.” Apple Inc.
`
`v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020). Nor should
`
`the Board, in the absence of specific evidence, speculate how the district court will
`
`proceed with respect to any motion. See, e.g., Sand Revolution II, LLC v. Cont’l
`
`Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
`
`2020) (“In the absence of specific evidence, [the Board] will not attempt to predict
`
`how the district court in [a] related district court litigation will proceed . . . .”); Dolby
`
`Lab’ys, Inc. v. Intertrust Techs. Corp., IPR2020-00664, Paper 10 at 10-11 (PTAB
`
`Dec. 8, 2020) (declining to speculate whether the district court may or may not grant
`
`any motion to stay). Moreover, it remains uncertain when and where the related
`
`district court litigation will even be tried because Petitioner has moved to transfer
`
`the litigation. Ex. 1016. See, e.g., Quantile Techs. Ltd. v. TriOptima AB, CBM2020-
`
`00012, Paper 11 at 17 (PTAB Oct. 5, 2020) (petitioner’s pending motion to change
`
`venue in related district court litigation relevant to weighing factor 1 neutrally).
`
`Thus, Factor 1 is, at best, neutral.
`
`Regarding Factor 2, the current docket control order in the related district
`
`court litigation sets trial in February 2022 (Ex. 1015 at 1), and thus before the
`6
`
`
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`Board’s anticipated statutory deadline for a final written decision. Given Petitioner’s
`
`motion to transfer, however, that trial date is speculative. See, e.g., Quantile Techs.,
`
`Paper 11 at 18 (Petitioner’s pending motion to change venue in a related district
`
`court litigation relevant to weighing factor 2); Dish Network L.L.C. v. Broadband
`
`iTV, Inc., IPR2020-01359, Paper 15 at 13-16 (PTAB Feb. 12, 2021) (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 all the Fintiv
`
`factors, the trial date of the related district court litigation is not determinative but
`
`weighed in concert with the other relevant factors. See, e.g., Samsung Elecs. Co. v.
`
`Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47 (PTAB Feb. 10, 2021)
`
`(instituting review when related district court litigation trial date more than ten
`
`months before final written decision date); Consentino S.A.U. v. Cambria Co.,
`
`PGR2021-00010, Paper 11 at 10-11, 16 (PTAB May 18, 2021) (same by seven
`
`months); Medtronic CoreValve LLC v. Colibri Heart Valve LLC, IPR2020-01454,
`
`Paper 11 at 12-13, 18-19 (PTAB Mar. 10, 2021) (same by six months); Lego Sys.,
`
`Inc. v. MQ Gaming LLC, IPR2020-01443, Paper 12 at 7-8, 16-17 (PTAB Feb. 17,
`
`2021) (same by five months).
`
`Regarding Factor 3, although there has been some investment by the parties
`
`in the related district court litigation, based on the current docket control order
`
`(Ex. 1015), a substantial portion of work and trial is yet to come after institution. By
`7
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`
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`institution, the primary investment by the district court will be through any claim
`
`construction ruling, but any such ruling will have no overlap with the present IPR as
`
`none of the disputed terms are from this patent (Ex. 1013). See, e.g., Lego Sys., Paper
`
`12 at 10-11 (finding the lack of any proposed claim terms for construction in the
`
`district court litigation relevant to weighing Factor 3).
`
`Moreover, Petitioner moved with speed and diligence in bringing this
`
`challenge—the Petition is being filed five months after Patent Owner served its
`
`infringement contentions—mitigating against the investment of the parties. See, e.g.,
`
`Dolby Lab’ys, Paper 10 at 17-18 (finding petitioner acted diligently in filing petition
`
`about three months after patent owner served its infringement contentions
`
`identifying the asserted claims); Fintiv, Paper 11 at 11 (“If the evidence shows that
`
`the petitioner filed the petition expeditiously, such as promptly after becoming aware
`
`of the claims being asserted, this fact has weighed against exercising the authority
`
`to deny institution under NHK.”). To be sure, “preparing a petition for inter partes
`
`review requires substantial effort even after the references and basic theories have
`
`been identified.” Lego Sys., Paper 12 at 11. And this is particularly true in view of
`
`the large number of patents and claims challenged in this and Petitioner’s other
`
`related (see infra Section VIII.B) and upcoming petitions for IPR. See Lego Sys.,
`
`Paper 12 at 11-12; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12
`
`at 17 (PTAB Dec. 1, 2020) (“[W]e find that Petitioner’s explanation for the timing
`8
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`
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`of the Petition is reasonable, notwithstanding the closeness to the statutory deadline,
`
`particularly in view of the large number of patents and claims challenged in this and
`
`Petitioner’s other related petitions for inter partes review.”).
`
`Moreover, in its complaints, Patent Owner asserted “at least claim 1” from
`
`each of fifteen asserted patents, totaling over 170 claims, against five products.
`
`Ex. 1011. And Patent Owner refused to narrow the number of claims and issues until
`
`service of its infringement contentions (Ex. 1012). And then, when Patent Owner
`
`did identify the full set of asserted claims in its contentions, it alleged infringement
`
`of over 2,400 products, imposing a vastly greater burden on Petitioner to assess the
`
`dispute and evaluate on which patents to request IPR. Ex. 1012. See, e.g., Fintiv,
`
`Paper 11 at 11 (“[I]t is often reasonable for a petitioner to wait to file its petition
`
`until it learns which claims are being asserted against it in the parallel proceeding.”);
`
`Samsung Elecs., Paper 17 at 40 (“We recognize that much work has been done by
`
`the parties in the District Court. However, we also find, as a countervailing
`
`consideration, that Petitioner acted diligently in filing this and the other IPRs. The
`
`record reflects that Patent Owner did not identify the full set of claims being asserted
`
`in the District Court until March 9, 2020, and that Petitioner filed this Petition, and
`
`nine others, in less than four months.” (citation omitted)); Dish Network, Paper 15
`
`at 19-20 (petitioner filing petition within three months after receiving patent owner’s
`
`infringement positions for all asserted claims (including those not specifically
`9
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`
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`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`identified originally in the complaint) and prior to completion of Markman briefing);
`
`Lego Sys., Paper 12 at 11-12. “Because Petitioner acted diligently and without much
`
`delay, this mitigates against the investment of the parties.” Dolby Lab’ys, Paper 10
`
`at 17 (citing Apple Inc. v. Seven Networks, LLC, IPR2020-00156, Paper 10 at 11-12
`
`(PTAB June 15, 2020)).
`
`Regarding Factor 4, Petitioner stipulates that, if this IPR is instituted, it will
`
`not pursue in the related district court litigation any ground that it raised or
`
`reasonably could have raised in this Petition. Thus, there will not be any overlap
`
`between this Petition and potential invalidity grounds in the related district court
`
`litigation, strongly weighing in favor of institution. See Sotera Wireless, Paper 12 at
`
`18-19 (precedential as to Section II.A) (finding that because the stipulation
`
`“mitigates any concerns of duplicative efforts” and “potentially conflicting
`
`decisions,” this factor strongly favors institution); see also Consentino, Paper 11 at
`
`13-15 (“Considering that Petitioner has agreed to be bound by a stipulation that is
`
`substantively the same as the stipulation addressed in Sotera, we follow the Sotera
`
`precedent in finding that this factor weighs strongly against exercising discretion to
`
`deny.”); Bos. Sci. Corp. v. Nevro Corp., IPR2020-01562, Paper 14 at 24 (PTAB Mar.
`
`16, 2021); Medtronic CoreValve, Paper 11 at 17; Lego Sys., Paper 12 at 12-15.
`
`Factor 6 favors institution because the merits of this Petition are strong. The
`
`Petition relies upon materially different and noncumulative references not applied
`10
`
`
`
`

`

`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`during prosecution that teach the very features that Patent Owner argued and the
`
`examiner found missing, and which led to the allowance of the claims—i.e.,
`
`“wherein the counter electrode is connected to the common layer via a through hole
`
`within the organic insulation layer.” See infra Section IV.B. This is also Petitioner’s
`
`only challenge to the ’989 patent that has ever been or is currently before the Board,
`
`making considerations related to follow-on petitions moot.
`
`At bottom, this first and only IPR challenge on the ’989 patent raises
`
`different issues than the related district court litigation (Factor 4) and the petition is
`
`strong on the merits (Factor 6), which outweighs other applicable factors, including
`
`the current trial date in the related district court litigation. Moreover, Petitioner
`
`expeditiously filed this IPR Petition—and other related and upcoming petitions—
`
`five months after Patent Owner’s infringement contentions. The Board should
`
`therefore institute this IPR. See Samsung Elecs., Paper 17 at 47 (“We determine
`
`that Petitioner’s stipulation has minimized any overlap with the parallel district
`
`court litigation such that both the duplication of efforts and the potential for
`
`conflicting decisions are minimized. Although the parties have invested in the
`
`litigation, Petitioner filed this proceeding on a timely basis after learning which of
`
`the eighty-four claims were being asserted. Accordingly, we conclude that the
`
`minimization of overlap and the strength of the merits of the first challenge
`
`outweigh the upcoming trial date. As such, we decline to exercise discretion to
`11
`
`
`
`

`

`deny inter partes review.”); see also Lego Sys., Paper 12 at 16-17; Bos. Sci., Paper
`
`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`14 at 25; Medtronic CoreValve, Paper 11 at 18-19; Consentino, Paper 11 at 16;
`
`Sotera Wireless, Paper 12 at 20-21.
`
`The Board Should Not Deny Institution Under 35 U.S.C. § 325(d)
`B.
`Denial of institution would also be improper based on a weighing of the
`
`factors in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 at 17-18 (PTAB Dec. 15, 2017),which include (a) the similarities and
`
`material differences between the asserted art and the prior art involved during
`
`examination; (b) the cumulative nature of the asserted art and the prior art
`
`evaluated during examination; (c) the extent to which the asserted art was
`
`evaluated during examination, including whether the prior art was the basis for
`
`rejection; (d) the extent of the overlap between the arguments made during
`
`examination and the manner in which Petitioner relies on the prior art; (e) whether
`
`Petitioner has pointed out sufficiently how the Examiner erred in his evaluation of
`
`the asserted prior art; and (f) the extent to which additional evidence and facts
`
`presented in the Petition warrant reconsideration of the prior art or arguments. See
`
`also Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential).
`
`Regarding factors (a) and (b), only Kim and Kurahashi were cited during
`
`prosecution, and neither was considered substantively by the examiner, let alone in
`
`
`
`12
`
`

`

`combination with any of Yuh, Ohta, or Abe. As Becton recognizes, it is not
`
`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
`
`
`assumed that a reference was substantively evaluated when “the prior art was
`
`simply listed in an IDS during prosecution.” Becton, Paper 8, 23. The proposed
`
`combinations based on Yuh are materially different from and not cumulative the
`
`Min, Lyu, and Kaneko references used to reject claims during prosecution at least
`
`because these combinations teach “wherein the counter electrode is connected to
`
`the common layer via a through hole within the organic insulation layer,”
`
`something the Examiner determined was missing from Min, Lyu, and Kaneko and
`
`was added to secure a Notice of Allowance. Ex. 1002, 209–214, 239, 247–48.
`
`Microsoft Corporation v. Uniloc 2017 LLC, IPR2019-01251, Paper 7 at 11-14
`
`(PTAB Dec. 20, 2019) (declining to deny institution under Section 325(d) where
`
`the petition “present[ed] evidence that the asserted prior art [taught] the claim
`
`limitations that the [a]pplicant argued were missing from the prior art applied by
`
`the Examiner.”).
`
`Regarding factors (c) and (d), because none of Yuh, Ohta, Abe, Kim, or
`
`Kurahashi was ever used by the examiner during prosecution, there is little to no
`
`overlap between the arguments made during examination and those made here.
`
`Factors (e) and (f) are inapplicable, as Petitioner does not request that any of
`
`the references or arguments substantively considered by the examiner be
`
`reconsidered.
`
`
`
`13
`
`

`

`Weighing these factors together, non-institution under § 325 would be
`
`IPR202 1-01 060 Petition
`
`US. Patent No. 10,330,989
`
`improper.
`
`V.
`
`CLAINI CONSTRUCTION
`
`The Board construes claims in accordance with 37 C.F.R. § 42.200(b) and
`
`Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
`
`§ 42.200(b). Claims only need to be construed to the extent necessary to resolve a
`
`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`
`1013, 1017 (Fed. Cir- 2017). Here, no terms need construction because the claims
`
`encompass the prior-art mappings provided below under any construction
`
`consistent with Phillips.
`
`VI.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAINI CHALLENGED
`
`Tianma requests review of claims 1—2 under the following grounds:
`
`
`
`§ 103
`§ 103
`§ 103
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`§ 103
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`— Yuh, Ohta, and Abe
`— Yuh, Ohio, Abe, and Kim
`3
`Yuh and Kurahashi
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`— Yuh, Kurahashi, and Kim
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`VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`As described below, Yuh, Ohta, Abe, Kurahashi and/or Kim would have
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`rendered obvious claims 1—2 of the ’989 patent-
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`A. Ground 1: Claims 1–2 Would Have Been Obvious Based on Yuh,
`Ohta, and Abe
`1. Overview of the Prior Art
`Yuh, Ohta, and Abe are analogous art to the ’989 patent. Each “is from the
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`same field of endeavor,” LCD devices. Unwired Planet, LLC v. Google Inc., 841
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`F.3d 995, 1000–01 (Fed. Cir. 2016) (citation omitted). Moreover, each is
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`reasonably pertinent to “one of the particular problems dealt with by the inventor,”
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`such as improving a holding capacity of an LCD device while maintaining aperture
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`ratio, ’989 patent, 3:14–26, Yuh (Ex. 1005), 2:39–43 3:42–46, Ohta (Ex. 1006),
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`16:17–64, and achieving a multi-domain effect in an LCD device, ’989 patent,
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`41:35–57, Abe (Ex. 1007), 36:31–67. Flasck, ¶44.
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`Yuh
`a.
`Yuh, U.S. Patent No. 6,577,368, was filed November 3, 1998, and
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`constitutes prior art under at least pre-AIA 35 U.S.C. § 102(e).
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`Yuh describes an LCD device, shown in Figure 2, that includes a lower
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`substrate, an upper substrate, and a liquid crystal layer therebetween. Yuh, 7:1–3.
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`Yuh’s device further includes a linear electrode (also called a pixel electrode) and a
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`planar electrode (also called a common electrode), as well as an insulating film.
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`15
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`Id., 6:45–54, 20:17–19, 20:25–26, 20:46–48.
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`Yuh, Figure 2 (annotated, Flasck, ¶46).
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`A layout view of Yuh’s device is shown in Figure 35A. Yuh, 5:29–30. As
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`shown, the pixel electrodes include slits, and the device also includes a gate line
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`and a data line.
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`Yuh, Figure 35A (annotated, Flasck, ¶47).
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`b. Ohta
`Ohta, U.S. Patent App. Pub. No. 2001/0009447 published July 26, 2001, and
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`constitutes prior art under at least pre-AIA §§ 102(a) and (e).
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`17
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`Ohta describes an LCD device that, similar to Yuh’s, includes a pixel
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`electrode, a counter electrode, and a “liquid crystal composition formed between a
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`lower-side substrate and an upper-side substrate.” Ohta, [0048]–[0049], [0057],
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`[0092], [0095]. Ohta’s device also includes an insulating film and an organic
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`passivation layer, as shown. Id., [0068], [0085].
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`Ohta, Figure 2 (annotated, Flasck, ¶51).
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`18
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`In Ohta, the voltage is applied to the counter electrode via a counter line
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`formed of a “conductive film,” such as a “chrome-molybdenum alloy.” Ohta,
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`[0066]. Ohta’s counter line is illustrated in Figure 4. Id. As shown, the counter
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`electrode is connected to the counter line via a through hole in the organic
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`passivation layer. Id., [0092].
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`
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`Ohta, Figure 4 (annotated, Flasck, ¶52).
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`Abe
`c.
`Abe, U.S. Patent No. 6,507,383, is a national stage of a PCT application
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`having a § 102(e) date of June 29, 2001, and constitutes prior art at least under pre-
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`AIA 35 U.S.C. § 102(e).
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`19
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`Abe describes an LCD device that, similar to Yuh’s, includes a pixel
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`electrode and a common signal electrode. Abe, Abstract, 19:37–54. Abe’s common
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`signal electrode is planar, and Abe’s pixel electrode includes a slit. Abe, 19:8–17.
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`In Abe, the “slit [has] a first portion ... not parallel with the gate line and the drain
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`line,” as shown in Figure 29. According to Abe, this provides “a so-called multi
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`domain system liquid crystal display unit” that prevents a “difference in
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`coloration” that is “produced when a display area” not employing the multi-domain
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`system “is viewed from right and left.” Id., 36:31–42.
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`Abe, Figure 29 (annotated, Flasck, ¶55).
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`Claim 1
`2.
`Yuh, Ohta, and Abe teach every element of claim 1.
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`1(pre). “A liquid crystal display device, comprising:”
`a.
`Yuh teaches “[a] liquid crystal display.” Yuh, 6:29–35.
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`1(a). “a first substrate;”
`b.
`Yuh teaches “a first substrate.” Flasck, ¶¶73–74. Yuh describes a “lower
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`substrate 100,” shown in Figure 2. Yuh, 6:29–35.
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`Yuh, Figure 2 (annotated, Flasck, ¶73).
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`1(b). “a second substrate;”
`c.
`Yuh teaches “a second substrate.” Flasck, ¶¶75–76. Yuh describes an “upper
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`substrate 200,” shown in Figure 2. Yuh, 6:62–65.
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`U.S. Patent No. 10,330,989
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`Yuh, Figure 2 (annotated, Flasck, ¶75).
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`d.
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`1(c). “a liquid crystal layer between the first substrate
`and the second substrate, containing liquid crystal
`molecules;”
`Yuh teaches “a liquid crystal layer between the first substrate and the second
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`substrate, containing liquid crystal molecules.” Flasck, ¶¶77–79. Yuh describes “a
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`liquid crystal layer 500 ... interposed between ... the substrates 100 and 200,” as
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`shown in Figure 2. Yuh, 7:1–3. Yuh teaches that the liquid crystal layer “contain[s]
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`liquid crystal molecules.” Id., 7:66–8:3 (“When viewed on a plane parallel to the
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`substrates 100 and 200, the liquid crystal molecules ...”); Flasck, ¶77.
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`
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`Yuh, Figure 2 (annotated, Flasck, ¶78).
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`1(d). “a gate line and a drain line;”
`e.
`Yuh teaches “a gate line and a drain line.” Flasck, ¶¶80–82. In Yuh, “a gate
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`line 10 is formed on the substrate 100 and extends in the transverse direction,” and
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`“[a] data line extending in the longitudinal direction is also formed,” as shown in
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`Figure 35A. Yuh, 21:39–41, 22:4–6. A POSA would have understood the “data
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`line 70” in Yuh to be a “drain line” because these terms were used interchangeably,
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`as the ’989 patent itself recognizes. Flasck, ¶81; ’989 patent, 23:29–30 (“DL
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`indicates drain lines (video signal lines or data lines)”).
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`Yuh, Figure 35A (annotated, Flasck, ¶80).
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`f.
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`1(e). “a pixel electrode and a counter electrode
`disposed between the first substrate and the liquid
`crystal layer;”
`Yuh teaches “a pixel electrode and a counter electrode disposed between the
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`first substrate and the liquid crystal layer.” Flasck, ¶¶83–88.
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`Yuh describes a “pixel electrode,” which Yuh also calls a “linear electrode.”
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`In Figure 2, for example, Yuh illustrates “a plurality of narrow linear electrodes 1.”
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`Yuh, 6:50–54. Figure 35A depicts “linear pixel electrodes 75,” as shown. Id.,
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`22:15–17.
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`26
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`Yuh, Figure 2 (annotated, Flasck, ¶84).
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`Yuh, Figure 35A (annotated, Flasck, ¶84).
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`Yuh also describes a “counter electrode,” which Yuh calls a “planar
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`electrode,” “common electrode,” or “planar common electrode.” In Figure 2, for
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`example, Yuh illustrates “[a] planar electrode 2 ... formed on the ... lower substrate
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`100,” as shown. Figures 35A and 35B (which is a cross-section of Figure 35A)
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`shows a “planar common electrode” similarly “formed on a ... substrate 100,” as
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`shown. Yuh, 6:45–47, 21:27–30.
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`Yuh, Figure 2 (annotated, Flasck, ¶85).
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`IPR2021-01060 Petition
`U.S. Patent No. 10,330,989
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`Yuh, Figure 35A (annotated, Flasck, ¶85).
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`29
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`U.S. Patent No. 10,330,989
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`Yuh, Figure 35B (annotated, Flasck, ¶85).
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`A POSA would have understood Yuh’s planar electrode (also called a
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`common electrode or planar common electrode, hereinafter “planar electrode”) to
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`be a “counter electrode,” as claimed. Flasck, ¶86. As shown in Yuh’s Figures 2 and
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`35B and the ’989 patent’s Figure 61 below, just as the claimed “counter electrode”
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`and “pixel electrode” are formed on the first substrate and separated by an gate
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`insulation layer in the ’989 patent, Figure 61, 39:47–55, Yuh’s planar electrode and
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`pixel electrode are formed on the