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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`TIANMA MICROELECTRONICS CO. LTD.,
`
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2021-01061
`U.S. Patent No. 10,423,034
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,423,034
`
`
`
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`

`

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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`
`Table of Contents
`
`
`I.
`PRELIMINARY STATEMENT .................................................................. 1
`III. THE ’034 PATENT ....................................................................................... 3
`IV. LEVEL OF SKILL IN THE ART ............................................................... 7
`V. CLAIM CONSTRUCTION .......................................................................... 7
`VI. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`TO DENY INSTITUTION ........................................................................... 8
`A.
`The Board Should Not Deny Institution Under § 314(a) ...................... 8
`B.
`The Board Should Not Deny Institution Under § 325. ....................... 15
`VII. CLAIMS 1-4 AND 6-8 OF THE ʼ034 PATENT ARE
`UNPATENTABLE ...................................................................................... 16
`A. Ground 1: Ochiai in combination with Ando renders claims 1-4
`and 6-8 obvious. .................................................................................. 16
`1.
`Independent Claim 1 ................................................................. 20
`2.
`Claim 2: A liquid crystal display device according
`to claim 1, wherein the scanning line is disposed between
`the semiconductor layer and the spacer in a cross-section
`view. .......................................................................................... 65
`Claim 3: A liquid crystal display device according
`to claim 1, wherein the spacer is formed on the first
`substrate. ................................................................................... 67
`Claim 4: A liquid crystal display device according to
`claim 1, wherein the second pixel electrode is overlapped
`with the scanning line. .............................................................. 70
`Claim 6: A liquid crystal display device according to
`claim 1, wherein the organic film has a through hole, and
`the third contact hole is located in the through hole in the
`plan view. .................................................................................. 71
`
`3.
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`4.
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`5.
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`6.
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`7.
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`Claim 7: A liquid crystal display device according
`to claim 6, wherein the second insulation film contacts
`the source electrode. .................................................................. 74
`Claim 8: A liquid crystal display device according to
`claim 1, wherein the spacer is provided on the second
`substrate and located away from the third contact hole. ........... 76
`B. Ground 2: Ochiai in combination with Ando and Hattori
`renders claim 7 obvious. ...................................................................... 81
`C. Ground 3: Ochiai in combination with Ando and Yanagawa
`renders claim 8 obvious. ...................................................................... 84
`VIII. GROUNDS FOR STANDING .................................................................... 88
`IX. MANDATORY NOTICES ......................................................................... 88
`A.
`Real Party-in-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 88
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................... 88
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................ 89
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................. 89
`X. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) .................................... 90
`XI. CONCLUSION ............................................................................................ 90
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`ii
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`

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`IPR2021-01061
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`US. Patent No. 10,423,034
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`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1001 US Patent No. 10,423,034 to Takahiro Ochiai et al.
`
`Ex. 1002
`
`Declaration of Dr. Bruce W. Smith.
`
`Ex. 1003
`
`Curriculum Vitae of Dr. Bruce W. Smith.
`
`Ex. 1004
`
`File History for US. Patent No. 10,423,034.
`
`Ex. 1005 US Patent Application Publication No. 2008/0007679 A1 to
`Takahiro Ochiai et al.
`
`Ex. 1006
`
`US. Patent No. 6,356,330 to Masahiko Ando et 31.
`
`Ex. 1007
`
`US. Patent No. 7,173,281 to Yoshiharu Hirakata et 31.
`
`
`
`Ex. 1008
`
`Japanese Patent Application Publication No. 2007/293155A to
`Yasuo Segawa et al. and certified translation.
`
`Ex. 1009
`
`US. Patent Application Publication No. 2008/0018816 A1 to
`Takashi Hattori et al.
`
`Ex. 1010 US Patent No- 6,798,486 to Kazuhiko Yanagawa et al.
`
`Ex. 1011 McGraw-Hill Dictionary of Chemical Terms, Definition of
`“Resin” (3d ed. 1984).
`
`Ex. 1012
`
`US. Patent No. 6,771,342 to Yoshiharu Hirakata et a1.
`
`Ex. 1013
`
`Henry Hall, Fault Identification on TFT-LCD Substrates Using
`Transfer Admittance Measurement, Society for Information
`Display - Application Notes (1992)-
`
`Cheryl Faltermeier, Barrier Properties ofTitanium Nitride Films
`Grown by Low Temperature Chemical Vapor Deposition fiom
`Titanium Tetraiodide, J. Electrochem. Soc., Vol. 144, No. 3
`
`(1997).
`
`iii
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`

`

`IPR2021-01061
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`US. Patent No. 10,423,034
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`Ex. 1015
`
`Sung-Yul Lee, Diflusion ofAluminum in ,B—Titanium, Materials
`Transactions, Vol. 51, No. 10, pp. 1809-1813 (2010).
`
`Ex. 1016
`
`US. Patent No. 10,330,989 to Nakayoshi et al.
`
`
`
`Ex. 1019
`
`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).
`
`E?
`
`Plaintist 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 and
`Exhibits filed in Japan Display Inc. f/k/a Hitachi Electronic
`Devices (USA), Inc. et al. v. Tianma Microelectronics Co., Ltd.,
`2:20-cv—00283 (EDTX).
`
`Order Consolidating Proceedings in Japan Display Inc. f/k/a
`Hitachi Electronic Devices (USA),
`Inc. et al.
`v. Tianma
`Microelectronics Co., Ltd., 2:20-cv-00283 (EDTX).
`
`Docket Control Order in Japan Display Inc. f/k/a Hitachi
`Electronic Devices (USA), Inc. et al. v. Tianma Microelectronics
`Co., Ltd., 2:20—cv-00283 (EDTX).
`
`Defendant’s Motion to Transfer to the Central District of
`
`California in Japan Display Inc. f/k/a Hitachi Electronic Devices
`(USA), Inc. et al. v. Tianma Microelectronics Co., Ltd., 2:20-cv-
`00283 (EDTX) (public redacted version).
`
`iv
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`

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`PRELIMINARY STATEMENT
`Petitioner Tianma Microelectronics Co. Ltd. requests inter partes review of
`
`
`
`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`
`I.
`
`claims 1-4 and 6-8 of U.S. Patent No. 10,423,034, assigned to Patent Owner Japan
`
`Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.
`
`The ’034 patent relates to a liquid crystal display (“LCD”) device. ’034 patent,
`
`Title, Abstract, 2:47-52. As the patent recognizes, it was well known before February
`
`26, 2008, the ’034 patent’s earliest claimed priority date, to position columnar
`
`spacers at intersections of LCD drain and scanning lines. ’034 patent, 1:29-2:43. The
`
`LCD purportedly suppresses “oriental disturbance and transmittance reduction due
`
`to formation of the [spacer] column.” ’034 patent, 2:47-52.
`
`Independent claim 1 recites an LCD including several structural elements,
`
`including a spacer overlapped with a drain line, organic film, and common electrode.
`
`ʼ034 patent, 12:60-14:6. It also recites a specific structure of a semiconductor layer
`
`of a thin film transistor (“TFT”), including that the semiconductor layer overlaps
`
`with a scanning line at first and second “channel regions,” that a “part of the
`
`semiconductor layer” between the channel regions is located on a “second side of
`
`the scanning line,” and that the part of the semiconductor layer overlaps with a
`
`second pixel electrode. Id. These claimed features of the semiconductor layer—in
`
`particular, its overlap with a second pixel electrode—prompted the Examiner to
`
`allow the claims during prosecution. Ex. 1004, 18-20.
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`
`
`1
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`

`

`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`The ’034 patent does not ascribe any particular benefits to the semiconductor
`
`
`
`layer’s structure of claim 1. Regardless, as the prior art demonstrates, and as Dr.
`
`Smith testifies, it was well known by 2008 to implement displays with the same
`
`configuration of the “inverted C-shaped” semiconductor layer, scanning line, and
`
`pixel electrodes shown in Figure 1 of the ’034 patent, as well as every other feature
`
`of the challenged claims. Accordingly, Petitioner requests that the Board institute
`
`inter partes review and cancel claims 1-4 and 6-8 of the ’034 patent.
`
`II.
`
`PRECISE RELIEF REQUESTED
`
`A. Claims for Which Review Is Requested
`
`Petitioner respectfully requests inter partes review under 35 U.S.C. § 311 of
`
`claims 1-4 and 6-8 of the ’034 patent and cancellation of those claims as
`
`unpatentable.
`
`B.
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`Statutory Grounds
`
`Each asserted reference identified in the table below issued, published, and/or
`
`was filed before February 26, 2008, the earliest purported priority date of the ’034
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`patent. Thus, each asserted reference is prior art under at least one of pre-AIA
`
`35 U.S.C. § 102(a), (b), and/or (e).
`
`
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`2
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`

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`IPR2021-01061
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`US. Patent No. 10,423,034
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`Prior Art References
`
`Ochiai, US. Patent Application Publication No. 2008/0007679 A1, published on
`
`January 10, 2008, and was filed on June 21, 2007. Ex. 1005.
`
`Ando, US. Patent No. 6,356,330, issued on March 12, 2002, and was filed on
`
`October 27, 1999. Ex. 1006.
`
`filed on August 27, 2002. Ex. 1010.
`I Ochiai andAndo, in combinationwithYanagawa, renderobvious claim 8
`
`Hattori, US. Patent Application Publication No. 2008/0018816 A1, published on
`
`January 24, 2008, and was filed on July 13, 2007. Ex. 1009.
`
`Yanagawa, US. Patent No. 6,798,486, issued on September 28, 2004, and was
`
`Claims 1-4 and 6-8 of the ’034 patent are unpatentable under pre-AIA
`
`35 U.S-C. § 103 based on the following grounds:
`
`Grounds of—npatentability
`I Ochiai1ncombinationwithAndorenders obvious claims 1—4 and 6-8.
`I Ochiai andAndo, in combinationwithHattori, renderobvious claim 7.
`
`III. THE ’034 PATENT
`
`Independent claim 1 recites a liquid crystal display device including numerous
`
`structural features:
`
`

`

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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`1. A liquid crystal display device comprising:
`a first substrate;
`a second substrate;
`liquid crystal enclosed between the first substrate and the
`second substrate;
`a scanning line formed between the first substrate and the
`liquid crystal;
`a drain line crossing the scanning line;
`a thin film transistor having a semiconductor layer and a
`source electrode,
`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 contact hole and connected to the
`source electrode via the second contact hole;
`an organic film above the source electrode;
`a second insulation film;
`a common electrode between the organic film and the
`second insulation film;
`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;
`a second pixel electrode adjacent to the first pixel
`electrode; and
`a spacer disposed between the first substrate and the
`second substrate,
`
`
`
`4
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`

`

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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`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,
`wherein the semiconductor layer overlapped with the
`scanning line at a first channel region and a second
`channel region, and 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,
`wherein the spacer is overlapped with the semiconductor
`layer, the drain line, the organic film, and the common
`electrode,
`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
`wherein the part of the semiconductor layer between the
`first channel region and the second channel region is
`overlapped with the second pixel electrode.
`
`ʼ034 patent, 12:60-14:6.
`
`
`Annotated Figure 1 provides a plan view of the LCD, including a
`
`semiconductor layer 103 having an “inverted-C shape.” ’034 patent, 4:55-56, 5:47-
`
`49, 7:7-9.
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`
`
`5
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`

`

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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`
`
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`’034 patent, FIG. 1 (annotated).
`
`
`
`Annotated Figure 3 provides a cross-sectional view of the TFT portion
`
`of the LCD. ’034 patent, 4:59-60, 7:50-8:6.
`
` ’034 patent, FIG. 3 (annotated).
`6
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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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`
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`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. Smith, ¶¶31-33 (Ex. 1002). Additional education could
`
`substitute for professional experience and vice versa. Id.
`
`V. CLAIM CONSTRUCTION
`The Board construes claims in accordance with 37 C.F.R. § 42.100(b) and
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 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.1
`
`
`1 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
`
`Petitioner has not included any indefiniteness arguments herein. Petitioner may,
`
`however, raise or maintain such arguments in other proceedings.
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`
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`7
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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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 ’034 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 IX.B. The -00283 case is only one of three cases filed against Petitioner by
`
`Patent Owner on the same day. Ex. 1019. Patent Owner has asserted fifteen patents
`
`across the three now-consolidated cases. Ex. 1022.
`
`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. 1023 at
`
`1), before the statutory deadline for Final Written Decision, but this is not
`
`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
`8
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`

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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`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
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`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
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`district court litigation will even be tried because Petitioner has moved to transfer
`
`the litigation. Ex. 1024; 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
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`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
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`court litigation sets trial in February 2022 (Ex. 1023 at 1), and thus before the
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`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
`
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`9
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`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. 1023), a substantial portion of work and trial is yet to come after institution. By
`
`institution, the primary investment by the district court will be through any claim
`
`construction ruling, but any such ruling will not affect the present IPR, as neither
`
`party proposed construing terms for the ’034 patent. 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
`
`
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`10
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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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
`
`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 [IPR] 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 IX.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 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 [IPR] . . . .”).
`
`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. 1019. And Patent Owner refused to narrow the number of claims and issues until
`
`service of its infringement contentions (Ex. 1020). And then, when Patent Owner
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`11
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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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
`
`dispute and evaluate on which patents to request IPR. Ex. 1020. 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
`
`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
`
`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
`
`at 19-20 (petitioner filing petition within three months after receiving Patent
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`Owner’s infringement positions for all asserted claims (including those not
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`specifically identified originally in the complaint) and prior to completion of
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`Markman briefing); Lego Sys., Paper 12 at 11-12. “Because Petitioner acted
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`diligently and without much delay, this mitigates against the investment of the
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`parties.” Dolby Lab’ys, Paper 10 at 17 (citing Apple Inc. v. Seven Networks, LLC,
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`IPR2020-00156, Paper 10 at 11-12 (PTAB June 15, 2020)).
`
`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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`12
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`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
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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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`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
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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 3, which is not asserted in the related
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`district court litigation, creating additional nonoverlapping issues. 3Shape A/S v.
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`Align Tech., Inc., IPR2020-00223, Paper 12 at 34 (PTAB May 26, 2020) (finding
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`that the related litigation “will not resolve all claims at issue in [the [PTAB]
`
`proceeding.”); Apple Inc. v. Neodron, Ltd., IPR2020-00778, Paper 10 at 19 (PTAB
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`Sept. 14, 2020) (finding additional claims challenged before the Board but not in the
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`related litigation impacts Fintiv factor 4, and weighs against exercising its discretion
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`to deny the petition); Taiwan Semiconductor Mfg. Co. v. Fraunhofer Gesellschaft
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`13
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`zur Föerderung der Angewandten Forschung eV, IPR2020-01669, Paper 13 at 29
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`
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`(PTAB Apr. 15, 2021) (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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`claims—i.e., wherein the part of the semiconductor layer between the first channel
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`region and the second channel region is overlapped with the second pixel electrode.
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`See infra Section VI.B. This is also Petitioner’s only challenge to the ’034 patent
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`that has ever been or is currently before the Board, making considerations related to
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`follow-on petitions moot.
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`At bottom, this first and only IPR challenge on the ’034 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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`14
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`Although the parties have invested in the litigation, Petitioner filed this proceeding
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`
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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 [IPR].”); see also Lego Sys., Paper 12 at 16-17; Bos.
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`Sci., Paper 14 at 25; Medtronic CoreValve, Paper 11 at 18-19; Consentino, Paper 11
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`at 16; Sotera Wireless, Paper 12 at 20-21.
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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 Fintiv, Paper 11 at 5-6.
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`B.
`The Board Should Not Deny Institution Under § 325.
`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. The Examiner
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`did not cite or consider the references relied on in this petition: Ochiai (Ex. 1005),
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`Ando (Ex. 1006), Hattori (Ex. 1009), or Yanagawa (Ex. 1010). Becton, Dickinson
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`factors (c)-(f) thus favor institution.
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`Becton, Dickinson factors (a), (b), (d), and (f) also support institution because
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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 ’034 patent.
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`During prosecution, the Examiner allowed independent claim 1 over references
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`including Hirakata (Ex. 1007) stating, “Hirakata does not disclose that ‘wherein the
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`15
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`part of the semiconductor layer between the first channel region and the second
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`
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`channel region is overlapped with the second pixel electrode.’ Therefore, the prior
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`art of record taken alone or in combination fails to teach or disclose, in light of the
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`specifications, the recited limitations of claim 1.” Ex. 1004, 18-20.
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`This Petition challenges claim 1 of the ’034 patent as obvious over Ochiai and
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`Ando, a combination that teaches the features that Patent Owner argued (and the
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`Examiner found) was missing from Hirakata, and which led to the allowance of the
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`independent claims. See Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01251,
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`Paper 7 at 11-14 (PTAB Dec. 20, 2019).
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`VII. CLAIMS 1-4 AND 6-8 OF THE ʼ034 PATENT ARE UNPATENTABLE
`A. Ground 1: Ochiai in combination with Ando renders claims 1-4
`and 6-8 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 Figures 3 and 5, Ochiai discloses a liquid crystal
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`display device having most elements of the claims including first and second glass
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`substrates SUB1 (pink), SUB2 (navy), a liquid crystal layer LC (gold), a scanning
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`line G (red), a thin-film transistor having a semiconductor layer (gray) and a source
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`electrode DD (teal), an inter-layer insulating film 13 (yellow) and inter-layer
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`insulating film 17 (blue), a common electrode CT (green), and pixel electrodes PIX
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`(orange). Ochiai, ¶¶106, 109-111, 138, 144; Smith, ¶¶35-37.
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`16
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`Ochiai, FIG. 3 (annotated).
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`Ochiai, FIG. 5 (annotated).
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`U.S. Patent No. 10,423,034
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`In addition, as shown below in annotated Figure 1A, Ochiai discloses that the
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`
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`part of the semiconductor layer between the first and second channel regions is
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`located on the second side of the scanning line. Ochiai, ¶48.
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`Ochiai, FIG. 1A (annotated).
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`
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`Ochiai further discloses, as shown in the magnified portion of Figure 1A
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`below, that a part of the semiconductor layer is overlapped with the second pixel
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`electrode.
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`Ochiai, FIG. 1A (annotated).
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`
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`Like Ochiai, Ando discloses an LCD device. Ando, Title, Abstract. As shown
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`below in annotated Figure 3, Ando’s LCD device includes first 201 (pink) and
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`second 207 (navy) glass substrates, a scanning wire 101 (red), a thin-film transistor
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`having a semiconductor layer (gray), a signal wire 103 (light blue), a common
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`electrode 107 (green), and a pixel electrode 106 (orange). Ando further discloses the
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`well-known use of a spacer (purple) disposed between the first and second glass
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`substrates. Ando, 6:54-7:7, 7:38-45, 8:49-58; Smith, ¶38.
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`19
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`Ando, FIG. 3 (annotated).
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`1.
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`Independent Claim 1
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`1(pre): A liquid crystal display device comprising:
`Ochiai discloses a “transflective liquid crystal display device.” Ochiai, ¶¶3,
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`48-53, 94-122, FIGS. 1A, 1B, 3, 5. Ochiai thus discloses this limitation of claim 1.
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`Smith, ¶41.
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`1(a): a first substrate;
`As shown below in annotated Figure 5, Ochiai’s LCD device includes a glass
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`substrate SUB1 (pink) (the claimed “first substrate”). Ochiai, ¶106 (“[A]s shown in
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`FIG. 5, a pair of glass substrates (SUB1 and SUB2) are disposed with a liquid crystal
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`layer (LC) containing a large number of liquid crystal molecules sandwiched
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`between them.”). Ochiai thus discloses this limitation of claim 1. Smith, ¶42.
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`20
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`Ochiai, FIG. 5 (annotated).
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`
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`1(b): a second substrate;
`As shown below in annotated Figure 5, Ochiai’s LCD device includes a glass
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`substrate SUB2 (navy) (the claimed “second substrate”). Ochiai, ¶106. Ochiai thus
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`discloses this limitation of claim 1. Smith, ¶43.
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`
`Ochiai, FIG. 5 (annotated).
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`
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`1(c): liquid crystal enclosed between the first
`substrate and the second substrate;
`As shown below in annotated Figure 5, Ochiai’s LCD device includes a liquid
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`crystal layer LC (gold) (the claimed “liquid crystal”) enclosed between the first glass
`
`substrate SUB1 (pink) and second glass substrate SUB2 (navy). Ochiai, ¶106. Ochiai
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`thus discloses this limitation of claim 1. Smith, ¶44.
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`22
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`
`Ochiai, FIG. 5 (annotated).
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`
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`1(d): a scanning line formed between the first
`substrate and the liquid crystal;
`As shown below in annotated Figure 3, Ochiai’s LCD device includes a
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`scanning line G (red) (the claimed “scanning line”). Ochiai, ¶¶109, 111.
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`Ochiai, FIG. 3 (annotated).
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`23
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`IPR2021-01061
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`U.S. Patent No. 10,423,034
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`Although not specifically