Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: January 12, 2022
`
`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.
`
`IPR2021-01061
`Patent 10,423,034 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Entered: January 12, 2022
`
`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.
`
`IPR2021-01061
`Patent 10,423,034 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2021-01061
`Patent 10,423,034 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Tianma Microelectronics Co. Ltd. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) seeking an inter partes review of claims 1–4 and 6–8 (the
`“challenged claims”) of U.S. Patent No. 10,423,034 B2 (Ex. 1001,
`“the ’034 Patent”). Japan Display Inc. and Panasonic Liquid Crystal Display
`Co., Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). After considering
`the parties’ arguments and evidence, we determine that Petitioner has shown
`a reasonable likelihood that it will prevail with respect to at least one claim
`challenged in the Petition, and we do not exercise our discretion to deny
`institution. Therefore, we grant institution of an inter partes review.
`Our findings and conclusions below are based on the record
`developed thus far. This is not a final decision as to the patentability of any
`challenged claim. Any final decision will be based on the full record
`developed during trial.
`
`B. Related Matters
`Although the parties initially identified Japan Display Inc. and
`Panasonic Liquid Crystal Display Co. v. Tianma Microelectronics Co., No.
`2:20-cv-00283 (E.D. Tex.) (the “Texas litigation”), as a related matter, the
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`parties each filed updated mandatory notices indicating that the ’034 Patent
`is no longer at issue in the Texas litigation. Papers 12, 14.
`
`C. The ’031 Patent (Ex. 1001)
`The ’034 Patent discloses a liquid crystal display (“LCD”) device in
`which the interval between the thin film transistor (“TFT”) substrate and the
`opposed substrate is defined by a column-type spacer. Ex. 1001, 2:47–52.
`According to the ’034 Patent, by locating the spacer “at a crossing point
`between a scanning line and a drain line, problems due to formation of the
`column, including reduction of transmittance and light leakage due to
`orientation disturbance can be reduced.” Id. at 4:26–30.
`
`D. Illustrative Claim
`The ’034 Patent includes eight claims, and claims 1–4 and 6–8 are
`challenged in the Petition. Claim 1 is the sole independent claim and is
`reproduced below with parenthetical identifiers added to correspond with
`Petitioner’s claim mapping.
`1(pre). A liquid crystal display device comprising:
`(a) a first substrate;
`(b) a second substrate;
`(c) liquid crystal enclosed between the first substrate and the
`second substrate;
`(d) a scanning line formed between the first substrate and the
`liquid crystal;
`(e) a drain line crossing the scanning line;
`(f) a thin film transistor having a semiconductor layer and a
`source electrode,
`(g) a first insulation film above the semiconductor layer and
`having a first contact hole and a second contact hole, the
`semiconductor layer being connected to the drain line via the first
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`contact hole and connected to the source electrode via the second
`contact hole;
`(h) an organic film above the source electrode;
`(i) a second insulation film;
`(j) a common electrode between the organic film and the second
`insulation film;
`(k) a first pixel electrode above the second insulation film and
`connected to the source electrode via a third contact hole formed
`in the second insulation film;
`(l) a second pixel electrode adjacent to the first pixel electrode;
`and
`(m) a spacer disposed between the first substrate and the second
`substrate,
`(n) wherein the scanning line has a first side and a second side
`opposite to the first side in the plan view, the first pixel electrode
`is located on the first side and the second pixel electrode is
`located on the second side,
`(o)(i) wherein the semiconductor layer overlapped with the
`scanning line at a first channel region and a second channel
`region, and
`(o)(ii) a part of the semiconductor layer between the first channel
`region and the second channel region is located on the second
`side of the scanning line,
`(p) wherein the spacer is overlapped with the semiconductor
`layer, the drain line, the organic film, and the common electrode,
`(q) wherein the first contact hole, the second contact hole, and
`the third contact hole are located on the first side of the scanning
`line, and
`(r) wherein the part of the semiconductor layer between the first
`channel region and the second channel region is overlapped with
`the second pixel electrode.
`Ex. 1001, 12:60–14:6 (parentheses with annotations added); see Pet. 20–63
`(claim mapping).
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`E. Asserted Grounds
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103(a).1
`Ground Claim(s) Challenged
`1
`1–4, 6–8
`2
`7
`3
`8
`
`References
`Ochiai,2 Ando3
`Ochiai, Ando, Hattori4
`Ochiai, Ando, Yanagawa5
`
`
`
`F. Testimonial Evidence
`In support of the Petition, Petitioner relies on a Declaration of
`Dr. Bruce W. Smith. Ex. 1002 (the “Smith Declaration”). In support of the
`Preliminary Response, Patent Owner relies on a Declaration of Mr. Thomas
`L. Credelle. Ex. 2003.
`
`II. ANALYSIS
`
`A. Discretionary Denial
`In the Preliminary Response, Patent Owner argues that the Petition
`should be denied under 35 U.S.C. § 314(a) and Fintiv6 in view of the Texas
`litigation. Prelim. Resp. 1–15. Patent Owner has since withdrawn
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’034 Patent has an effective filing date before this date,
`the pre-AIA version of § 103 applies. Ex. 1001, code (63).
`2 Ex. 1005, US 2008/0007679 Al, published January 10, 2008 (“Ochiai”).
`3 Ex. 1006, US 6,356,330 B1, issued March 12, 2002 (“Ando”).
`4 Ex. 1009, US 2008/0018816 Al, published January 24, 2008 (“Hattori”).
`5 Ex. 1010, US 6,798,486 B2, issued September 28, 2004 (“Yanagawa”).
`6 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential).
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`the ’034 Patent from the Texas litigation. See Papers 12, 14 (parties’
`updated mandatory notices). Accordingly, there is no longer a basis for
`discretionary denial under 35 U.S.C. § 314(a) and Fintiv.
`
`B. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied upon).
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when presented, objective evidence of
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
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`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)). Petitioner cannot satisfy its burden of proving obviousness
`by employing “mere conclusory statements,” but “must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`
`C. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art (“POSA”)
`“would have had at least a 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.” Pet. 7 (citing Ex. 1002 ¶¶ 31–33). Petitioner also
`contends that “[a]dditional education could substitute for professional
`experience and vice versa.” Id.
`Patent Owner’s declarant, Mr. Credelle, testifies that a POSA would
`have had “the equivalent of an undergraduate degree in electrical
`engineering, materials science, physics, or a related field and at least two
`years of work experience (or a graduate degree) in LCD display technology”
`and that “[l]ack of work experience could have been remedied by additional
`education, and vice versa.” Ex. 2003 ¶ 28. Mr. Credelle states that he
`disagrees with Dr. Smith’s asserted level of ordinary skill, but that his
`opinions apply equally under either proposed level. Id. ¶ 30.
`For purposes of this Decision, we apply the level of skill in the art as
`defined by Mr. Credelle, which we find more appropriate and consistent
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`with the scope and content of the asserted prior art and the subject matter of
`the ’034 Patent for several reasons, including that it includes a more
`comprehensive set of undergraduate fields of study and identifies a POSA’s
`experience as pertaining more specifically to “LCD display technology”
`(Ex. 2003 ¶ 28) rather than simply “flat panel display devices,” as in
`Petitioner’s definition (Pet. 7).
`
`D. Claim Construction
`In an inter partes review, we apply the same claim construction
`standard as would be used by a district court to construe a claim in a civil
`action involving the validity or infringement of a patent. 37 C.F.R.
`§ 42.100(b). Under that standard, claim terms are given their ordinary and
`customary meaning, as would have been understood by a person of ordinary
`skill in the art at the time of the invention, in light of the language of the
`claims, the specification, and the prosecution history of record. Id.; Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`Neither party proposes an express claim construction for any claim
`term. We determine that no claim term requires express construction for
`purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in
`the context of inter partes review).
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`E. Petitioner’s Challenge based on Ochiai and Ando
`Petitioner challenges claims 1–4 and 6–8 based on Ochiai (Ex. 1005)
`and Ando (Ex. 1006). Pet. 16–81. Patent Owner opposes. Prelim.
`Resp. 24–41. We address the parties’ arguments below.
`
`1. Independent Claim 1
`Petitioner contends that Ochiai discloses an LCD device having most
`of the elements of claim 1, but does not disclose a spacer. Pet. 16, 49.
`Petitioner contends that, in view of Ando, it would have been obvious to
`implement Ochiai’s LCD device with a spacer between the glass substrates
`and to locate the spacer over the TFT at the point of intersection of a drain
`line and a gate line. Pet. 50, 55. Relying on teachings from Ando and the
`testimony of Dr. Smith, Petitioner provides reasons for this spacer location,
`including minimizing spacer height and providing an electric field shielding
`effect from the common electrode. Pet. 61–62 (citing Ex. 1002 ¶¶ 104, 105;
`Ex. 1006, 5:37–41, 8:59–9:5, Figs. 1, 3, 6).
`Patent Owner argues that Ochiai does not disclose claim element 1(k)
`due to an intervening layer between the first pixel electrode and the source
`electrode. Prelim. Resp. 24–31. In addition, Patent Owner argues that the
`spacer location recited in claim element 1(p) would not have been obvious in
`view of Ochiai and Ando. Id. at 31–40.
`Claim element 1(k) recites in relevant part “a first pixel electrode . . .
`connected to the source electrode via a third contact hole formed in the
`second insulation film.” Ex. 1001, 13:11–13. Petitioner contends that
`Ochiai teaches claim element 1(k) by disclosing a pixel electrode (PIX)
`electrically connected to a source electrode (DD) via an
`electroconductor (PD) formed in a contact hole (CH4a) in the second
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`insulation film (insulating film 17). Pet. 39–41 (citing Ex. 1002 ¶¶ 72–74;
`Ex. 1005 ¶¶ 109, 111, 121, Figs. 1A, 3). Petitioner illustrates its contention
`with the following annotation of Ochiai Figure 3:
`
`
`
`Pet. 40. Ochiai Figure 3 shows a cross-section of an LCD device. Ex. 1005
`¶¶ 48, 51. Petitioner’s annotations identify, among other structures, pixel
`electrode (PIX), electroconductor (PD), common electrode (CT), source
`electrode (DD), insulating films 16 and 17, and contact holes (CH2a, CH3a,
`and CH4a).
`Patent Owner argues that Ochiai’s intervening electroconductor (PD)
`prevents Ochiai from meeting claim element 1(k). Prelim. Resp. 24. After
`considering the parties’ arguments and evidence, we determine on the
`current record that Petitioner shows sufficiently for institution that Ochiai’s
`pixel electrode (PIX) is connected to the source electrode (DD) via contact
`hole (CH4a) in a manner contemplated by the ’034 Patent. Pet. 41 (citing
`Ex. 1001, 8:62–65). In both cases, there is an electro-conductive connection
`between the pixel electrode and the source electrode. Id. Patent Owner
`agrees that Ochiai’s pixel electrode is electrically connected to the source
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`electrode (DD), but argues that the connection is not via contact hole CH4a.
`Prelim. Resp. 25. On this record, we disagree. As shown by Ochiai
`Figure 3, the electrical connection between the pixel electrode (PIX) and the
`source electrode (DD) is via three contact holes: CH4a, CH3a, and CH2a.
`Ex. 1005 ¶ 121, Fig. 3. In our view based on the current record, the claim
`does not exclude the presence of additional contact holes through which the
`pixel electrode is connected to the source electrode. The ’034 Patent, for
`example, discloses an embodiment in which pixel electrode 113 is connected
`to source electrode 108 through both third contact hole CH3 and fourth
`contact hole CH4. Ex. 1001, 5:56–60, 8:45–48, Fig. 3. Accordingly, we
`determine that Petitioner shows sufficiently that Ochiai discloses claim
`element 1(k).
`In view of our determination that Petitioner shows sufficiently that
`Ochiai’s Figure 3 embodiment discloses claim element 1(k), we do not need
`to address the parties’ dispute about whether Ochiai discloses or suggests a
`different embodiment that omits electroconductor (PD). Pet. 42–48; Prelim.
`Resp. 26–30.
`Claim element 1(p) recites: “wherein the spacer is overlapped with
`the semiconductor layer, the drain line, the organic film, and the common
`electrode.” Petitioner contends that it would have been obvious in view of
`Ando to implement Ochiai’s LCD device with a spacer located over the TFT
`at the point of intersection of a drain line and a gate line. Pet. 55–62.
`Relying on teachings in Ando, Petitioner provides reasons why a POSA
`would place a spacer in this location, including minimizing spacer height
`and providing an electric field shielding effect from the common electrode.
`Pet. 61–62 (citing Ex. 1002 ¶¶ 104, 105; Ex. 1006, 5:37–41, 8:59–9:5, Figs.
`1, 3, 6).
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`At this stage of the proceeding, Patent Owner does not dispute
`Petitioner’s contentions that it would have been obvious to implement
`Ochiai with a spacer and that the spacer location proposed by Petitioner
`satisfies claim element 1(p). See Prelim. Resp. 35 (reproducing Petitioner’s
`modified version of Ochiai Figure 1A). Patent Owner also does not dispute
`Petitioner’s contention that Ando teaches placing a spacer over the TFT at
`the point of intersection of a drain line and a gate line. Pet. 55–57.
`Although Patent Owner argues that Ando’s opposing electrode 107
`does not disclose the “common electrode” recited in claim 1 (Prelim.
`Resp. 32), that argument does not squarely address Petitioner’s obviousness
`contention, which relies on Ochiai, not Ando, to disclose a common
`electrode. Pet. 37–39. Patent Owner also argues that a POSA “would not
`find it obvious to combine” Ochiai’s in-plane switching (“IPS”)-type
`transflective display device “with a non-transflective, non-conventional IPS
`liquid crystal display device like Ando.” Prelim. Resp. 33–34 (citing
`Ex. 2003 ¶ 49). Although Patent Owner identifies differences between the
`two references, Patent Owner does not specifically address whether a POSA
`would have considered Ando’s teachings about spacer location as relevant
`and instructive on where a spacer should be located in Ochiai’s LCD device.
`In addition, Patent Owner argues that Petitioner misapplies Ando’s
`teaching about the relationship between spacer location and spacer height,
`and a POSA would not place the spacer in the location proposed by
`Petitioner. Prelim. Resp. 35–38. According to Patent Owner, “in Ochiai,
`the optimal spacer location to minimize the height of the spacer would be on
`the reflective layer.” Id. at 38 (citing Ex. 2003 ¶ 53). On this record,
`however, it is unclear whether or how the spacer location proposed by Patent
`Owner differs from the spacer location proposed by Petitioner, and if so,
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`whether Patent Owner’s proposed spacer location would satisfy claim
`element 1(p). In addition, although Patent Owner argues that Petitioner’s
`proposed spacer location “would likely lead to alignment issues” (Prelim.
`Resp. 39), it is unclear whether the asserted “alignment issues” relate to
`alignment of the substrates (see, e.g., Ex. 1001, 2:18–22; Ex. 1006,
`2:55–62), alignment of the liquid crystal (see, e.g., Ex. 1001, 9:46–53;
`Ex. 1006, 3:55–56), or some other type of alignment.
`Patent Owner argues that, in Ando, “the electric potential between the
`TFT 216 and the opposing electrode 107 is the same.” Prelim. Resp. 39–40.
`Patent Owner’s argument relates to one of the reasons Petitioner asserts for
`its proposed spacer location, namely: “an electric field shielding effect from
`the common electrode.” Pet. 61 (citing Ex. 1006, 8:59–9:5). On the record
`before us, the shielding effect discussed by Petitioner and Ando does not
`appear to depend on the electric potential of the common electrode relative
`to the TFT, as suggested by Patent Owner, but rather, on the location of the
`electrode between the spacer and the TFT. Prelim. Resp. 39–40.
`Accordingly, we determine that Petitioner shows sufficiently for
`institution that it would have been obvious in view of Ando to implement
`Ochiai’s LCD device with a spacer located over the TFT at the point of
`intersection of a drain line and a gate line, as shown by Petitioner’s
`modifications to Ochiai Figure 1A. Pet. 59, 60. We also determine that
`Petitioner shows sufficiently for institution that a POSA would have had
`reasons to place the spacer in this location. Pet. 61–62.
`Aside from its arguments about claim elements 1(k) and 1(p), Patent
`Owner does not dispute Petitioner’s contention that the remaining limitations
`of claim 1 are disclosed or suggested by Ochiai, either alone or in
`combination with Ando. Pet. 16–65; see generally Prelim. Resp. 24–40.
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`Accordingly, after considering the record before us, we determine that
`Petitioner establishes a reasonable likelihood of prevailing on its challenge
`to claim 1 of the ’034 Patent based on Ochiai and Ando.
`
`2. Dependent Claims 2–4 and 6
`Petitioner contends that the additional limitations of dependent
`claims 2–4 and 6 are disclosed or suggested by Ochiai, alone or in
`combination with Ando. Pet. 65–73 (citing Ex. 1002 ¶¶ 113–127). At this
`stage of the proceeding, Patent Owner does not present counterarguments for
`these claims separate from its arguments for independent claim 1. See
`Prelim. Resp. 40 (relying on Patent Owner’s arguments for claim 1 to
`address claims 2–4 and 6–8 and presenting an additional argument for
`claim 8).
`Based on the arguments and evidence presented in the Petition
`(Pet. 65–73) and the Smith Declaration (Ex. 1002 ¶¶ 113–127), we
`determine that Petitioner establishes a reasonable likelihood of prevailing on
`its challenge to claims 2–4 and 6 of the ’034 Patent based on Ochiai, Ando,
`and Yanagawa.
`
`3. Dependent Claim 7
`Claim 7 recites: “wherein the second insulation film contacts the
`source electrode.” Claim 7 depends from claim 6, which depends from
`claim 1 and which recites: “wherein the organic film has a through hole, and
`the third contact hole is located in the through hole in the plan view.”
`Petitioner contends that Ochiai teaches that electroconductor (PD) is
`not always needed. Pet. 42, 74. Petitioner illustrates its contention with the
`following modification of Ochiai Figure 3.
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`Pet. 44, 75. Ochiai Figure 3 shows a cross-section of an LCD device,
`wherein inter-layer insulating film 17 does not contact source electrode DD.
`Ex. 1005 ¶ 51, Fig. 3. Petitioner modifies Ochiai Figure 3 by omitting
`electroconductor (PD) and extending inter-layer insulating film 17 and pixel
`electrode (PIX) through contact holes (CH2a, CH3a, CH4a) so that they
`contact source electrode (DD). Pet. 44, 75.
`Patent Owner argues that Ochiai does not teach that
`electroconductor (PD) is optional. Prelim. Resp. 26–30. Among other
`things, Patent Owner argues that Petitioner’s modification of Ochiai Figure 3
`“effectively recreates the prior art cross-section” depicted in Ochiai
`Figure 23 that Ochiai seeks to improve upon. Prelim. Resp. 29–30 (citing
`Pet. 44; Ex. 1005, Fig. 23).
`On this record, we are not persuaded that Petitioner’s modification of
`Ochiai Figure 3 (Pet. 44, 75) is supported by the teachings of Ochiai.
`Although Petitioner asserts that “Ochiai does not provide a figure that omits
`electroconductor PD” (Pet. 74), that is not true. Ochiai provides prior art
`Figure 23, which is reproduced below.
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`
`Ochiai Figure 23 shows a cross-section of a prior art LCD device in which
`the pixel electrode (PIX) directly contacts the source electrode (DD).
`Ex. 1005 ¶¶ 18, 76. In contrast to Petitioner’s modification of Ochiai
`Figure 3 (Pet. 44, 75), Ochiai Figure 23 does not show that the second
`insulation film (inter-layer insulating film 17) contacts the source electrode
`(DD), as recited in claim 7. To the extent that Ochiai teaches or suggests an
`embodiment that omits electroconductor (PD), Petitioner does not show
`sufficiently that such an embodiment meets the limitation of claim 7 or that a
`POSA would have had a reason to modify the embodiment in a way that
`meets the limitation of claim 7. For these reasons, on this record, we
`determine that Petitioner does not establish a reasonable likelihood of
`prevailing on its challenge to claim 7 of the ’034 Patent based on Ochiai and
`Ando.
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`4. Dependent Claim 8
`Claim 8 depends from claim 1 and recites: “wherein the spacer is
`provided on the second substrate and located away from the third contact
`hole.”
`The parties disagree about the meaning of “provided on.” Petitioner
`contends that claim 8 should be construed “to mean that the spacer is
`positioned against the second substrate when the LCD is fully assembled,
`not necessarily that the spacer was ‘formed on’ the second substrate.”
`Pet. 78–79. Patent Owner, on the other hand, argues that “[c]laim 8 requires
`the spacer to be part of the second substrate and not merely positioned
`against it.” Prelim. Resp. 40.
`We agree with Patent Owner that, under Petitioner’s proposed
`construction, there would be no difference in scope between claim 1’s
`recitation of “a spacer disposed between the first substrate and the second
`substrate” and claim 8’s recitation of “wherein the spacer is provided on the
`second substrate.” Prelim. Resp. 41. Under Petitioner’s proposed
`construction, both of these limitations would encompass embodiments in
`which a spacer is formed either on the first substrate or on the second
`substrate. Petitioner’s proposed construction would thus make claim 8’s
`recitation of “provided on the second substrate” superfluous.7 Patent Owner
`presents a credible, evidence-supported argument that claim 8’s recitation
`that the spacer is “located away from the third contact hole” addresses a
`concern that arises only when the spacer is formed on the second substrate.
`Id. Patent Owner’s argument is supported by the ’034 Patent, as well as
`
`7 See Simpleair, Inc. v Sony Ericsson Mobile Communications AB, 820 F.3d
`419, 429 (Fed. Cir. 2016) (“[I]nterpretations that render some portion of the
`claim language superfluous are disfavored.”).
`
`17
`
`
`
`IPR2021-01061
`Patent 10,423,034 B2
`Mr. Credelle’s testimony. Ex. 1001, 2:12–29; Ex. 2003 ¶ 57. Petitioner and
`Dr. Smith, on the other hand, do not address the purpose of claim 8’s
`recitation that the spacer is “located away from the third contact hole.”
`Accordingly, on this record, we determine that Patent Owner has the better
`argument for claim 8.
`Petitioner contends that, even if claim 8 requires forming a spacer on
`the second substrate, the claim recitations would have been obvious in view
`of Ochiai, Ando, and general knowledge in the art. Pet. 80. Petitioner relies
`on the ’034 Patent’s statement that it was conventional to form a spacer on
`the substrate opposed to the TFT substrate. Ex. 1001, 2:12–14 (“The
`column for defining the interval between the TFT substrate and the opposed
`substrate is conventionally formed on the opposed substrate.”). Petitioner
`also relies on Dr. Smith’s testimony and Yanagawa. Ex. 1002 ¶ 137
`(testifying that “spacers were well known in the art, and they were routinely
`and conventionally formed on either of the TFT substrate or the opposed
`substrate”); Ex. 1010, 7:39–41 (disclosing that, in the embodiment shown in
`Figure 1B, “the spacer 10 is formed on the filter substrate 1B, but the spacer
`10 may be formed on the TFT substrate 1A.”). Patent Owner does not
`dispute Petitioner’s obviousness argument for claim 8. See Prelim. Resp.
`40–41 (arguing that Ando does not disclose forming a spacer on the second
`substrate, but not addressing Petitioner’s obviousness argument). On this
`record, we determine that Petitioner’s obviousness argument for claim 8 is
`plausible and adequately supported by the record.
`Accordingly, after considering the Petition and the Preliminary
`Response, we determine that Petitioner establishes a reasonable likelihood of
`prevailing on its challenge to claim 8 of the ’034 Patent based on Ochiai and
`Ando.
`
`18
`
`
`
`IPR2021-01061
`Patent 10,423,034 B2
`F. Petitioner’s Challenge based on Ochiai, Ando, and Hattori
`Petitioner challenges claim 7 based on Ochiai (Ex. 1005), Ando
`(Ex. 1006), and Hattori (Ex. 1009). Pet. 81–84. Patent Owner opposes.
`Prelim. Resp. 42. At this stage, the parties’ dispute focuses on whether there
`would have been a motivation to combine Hattori and Ochiai.
`Petitioner contends that it would have been obvious in view of Hattori
`to extend Ochiai’s second insulating film 17 so that it contacts Ochiai’s
`source electrode. Pet. 81–84. Petitioner provides the following reasons for
`this modification: “to improve the ‘opening ratio’ of the LCD display and
`increase the storage capacitance of the insulation film without needing to
`increase the corresponding electrode area.” Pet. 83 (citing Ex. 1009 ¶¶ 9,
`64).
`
`Patent Owner argues that Hattori improves the “opening ratio” by
`using transparent material to form the pixel electrode and the common
`electrode and that Ochiai already teaches that these electrodes are made of a
`transparent conductive film. Prelim. Resp. 42 (citing “Ochiai at 8:55–57,
`65–67”;8 Ex. 1009 ¶ 9). According to Patent Owner, Petitioner fails to
`establish a motivation to combine “because features disclosed in Hattori that
`produce the purported benefit already exist in Ochiai.” Id.
`At this stage, we tend to agree with Patent Owner that Petitioner does
`not sufficiently establish a reason to combine the teachings of Ochiai and
`Hattori in the manner proposed. Patent Owner presents a record-supported
`argument that the feature of Hattori that results in an improved opening
`
`
`8 Patent Owner’s citation to Ochiai is incorrect. It appears that the correct
`citation is Ex. 1005 ¶ 112 (“The pixel electrode (PIX) and the counter
`electrode (CT) are formed of transparent electroconductive films of, for
`instance, indium tin oxide (ITO).”)
`
`19
`
`
`
`IPR2021-01061
`Patent 10,423,034 B2
`ratio—transparent electrodes—is already present in Ochiai. Prelim.
`Resp. 42; Ex. 1005 ¶ 112; Ex. 1009 ¶ 9. Furthermore, we are not persuaded
`that Petitioner establishes a sufficient link between the limitation of claim 7
`(“the second insulation film contacts the source electrode”) and Petitioner’s
`asserted reasons for modifying Ochiai (improve opening ratio and increased
`storage capacitance). Petitioner’s explanation, on this record, does not
`persuade us that extending Ochiai’s insulating film 17 to contact the source
`electrode would improve the opening ratio or increase the storage
`capacitance.
`For these reasons, we determine that Petitioner does not establish a
`reasonable likelihood of prevailing on its challenge to claim 7 of
`the ’034 Patent based on Ochiai, Ando, and Hattori.
`
`G. Petitioner’s Challenge based on Ochiai, Ando, and Yanagawa
`Petitioner challenges claim 8 based on Ochiai (Ex. 1005), Ando
`(Ex. 1006), and Yanagawa (Ex. 1010). Pet. 84–88. At this stage of the
`proceeding, Patent Owner does not present counterarguments to this
`challenge separate from its arguments for independent claim 1. See Prelim.
`Resp. 43 (relying on Patent Owner’s arguments for claim 1 to address
`Petitioner’s challenge to claim 8 based on Ochiai, Ando, and Yanagawa).
`For the reasons discussed above, we determine that Petitioner
`establishes a reasonable likelihood of prevailing on its challenge to claim 8
`based on Ochiai and Ando. Consistent with that determination and based on
`the arguments and evidence presented in the Petition (Pet. 84–88) and the
`Smith Declaration (Ex. 1002 ¶¶ 146–151), we determine that Petitioner
`establishes a reasonable likelihood of prevailing on its challenge to claim 8
`of the ’034 Patent based on Ochiai, Ando, and Yanagawa.
`
`20
`
`
`
`IPR2021-01061
`Patent 10,423,034 B2
`
`III.
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