Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: January 5, 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.
`
`IPR2021-01060
`Patent 10,330,989 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: January 5, 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.
`
`IPR2021-01060
`Patent 10,330,989 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2021-01060
`Patent 10,330,989 B2
`
`I.
`INTRODUCTION
`Tianma Microelectronics Co. Ltd. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1 and 2 (the “challenged claims”)
`of U.S. Patent No. 10,330,989 B2 (“the ’989 patent,” Ex. 1001). Paper 2
`(“Pet.”). Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.
`(collectively, “Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). With Board authorization, Petitioner filed a Reply to the
`Preliminary Response (“Reply,” Paper 8), and Patent Owner filed a Sur-
`reply to Petitioner’s Reply (“Sur-reply,” Paper 10).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`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
`(2018); see also 37 C.F.R. § 42.4 (2021). For the reasons set forth below,
`we deny the Petition and do not institute an inter partes review.
`A. Real Parties in Interest
`Each party identifies itself as the real party-in-interest. Pet. 99;
`Paper 6, 1.
`B. Related Matters
`The parties indicate that, pursuant to the district court’s order
`(Ex. 1022), the ’989 patent is no longer at issue in Japan Display Inc. v.
`Tianma Microelectronics Co. Ltd., No. 2:20-cv-00283 (E.D. Tex.).
`Paper 12, 1; Paper 14, 3; Ex. 1023.
`C. The ’989 Patent
`The ’989 patent, titled “Liquid Crystal Display Device, Display
`Device and Manufacturing Method Thereof,” is directed to “an active matrix
`type liquid crystal display device which can reduce holding capacity for
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`Patent 10,330,989 B2
`holding lighting of pixels for a given time and feeding resistance thereof
`thus enhancing numerical aperture.” Ex. 1001, code (54), 1:49–53.
`The ’989 patent describes a liquid crystal display device that includes:
`liquid crystal sandwiched between a first substrate and a second substrate; a
`plurality of gate lines arranged parallel to each other that extend in a first
`direction; a plurality of drain lines arranged parallel to each other that extend
`in a second direction that crosses the gate lines; a plurality of switching
`elements arranged at the crossing portions of the gate lines and the drain
`lines; pixel electrodes, driven by the switching elements, formed on an inner
`surface of the first substrate; and pixel regions formed of a plurality of pixel
`electrodes. Id. at 9:2–13. A reference electrode layer that is insulated by a
`first insulation layer is formed in between an electrode forming layer “which
`is constituted of the gate lines, the drain lines, the switching elements and
`the pixel electrodes including the pixel regions of the first substrate and the
`first substrate side.” Id. at 9:14–20. The electrode forming layer includes a
`gate insulation layer, a passivation layer, and the pixel electrode “in this
`order over the first insulation layer and further includes a capacitive
`electrode layer” that is “connected to the pixel electrodes between the first
`insulation layer and the passivation layer.” Id. at 9:28–33. “[H]olding
`capacities of the pixels are formed among the pixel electrodes, the reference
`electrode layer, and the capacitive electrode layer.” Id. at 9:34–36.
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`Patent 10,330,989 B2
`Figure 61 of the ’989 patent is reproduced below.
`
`
`Figure 61 is a cross-section view of a portion of a modified liquid crystal
`display device described in the ’989 patent. Id. at 39:41–45. Source
`electrode SD1 is formed over gate insulation layer GI, and pixel electrode
`PX overlaps source electrode SD1. Id. at 39:47–51. Counter electrode CT
`is formed over organic insulation layer O-PAS and is connected to reference
`electrode layer ST via through hole TH2, forming a holding capacity
`between counter electrode CT and pixel electrode PX. Id. at 39:51–55.
`The ’989 patent teaches that, “[d]ue to such a constitution, the
`numerical aperture of the pixels can be enhanced” and, because “the area of
`the reference electrode layer is large, the feeding resistance can be reduced.”
`Id. at 9:37–40. The ’989 patent further teaches that the capacitive electrode
`layer can be formed over the gate insulation layer, and the capacitive
`electrode layer is connected to the reference electrode layer via through
`holes which penetrate the gate insulation layer. Id. at 10:32–35. In this way,
`“the holding capacity formed between the reference electrode and the pixel
`electrodes can be adjusted by changing the area of the capacitive electrode
`layer connected to the reference electrode layer.” Id. at 10:36–39.
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`Patent 10,330,989 B2
`D. Illustrative Claim
`Petitioner challenges claims 1 and 2 of the ’989 patent. Pet. 1.
`Claim 1, the only independent challenged claim, is illustrative of the claimed
`subject matter and is reproduced below.
`
`1. A liquid crystal display device, comprising:
`[a] a first substrate;
`[b] a second substrate;
`[c] a liquid crystal layer between the first substrate and
`the second substrate, containing liquid crystal
`molecules;
`[d] a gate line and a drain line;
`[e] a pixel electrode and a counter electrode disposed
`between the first substrate and the liquid crystal layer;
`[f] a gate insulation layer formed on the gate line; and
`[g] an organic insulation layer disposed between the first
`substrate and the liquid crystal layer,
`[h] wherein the liquid crystal layer is driven by an
`electric field generated between the pixel electrode and
`the counter electrode,
`[i] wherein the pixel electrode is formed between the
`liquid crystal layer and the organic insulation layer,
`[j] wherein the counter electrode is a planar shape, and
`[k] the pixel electrode comprises a slit having a first
`portion, and the first potion is not parallel with the gate
`line and the drain line,
`[l] wherein the counter electrode is connected to a
`common layer,
`[m] wherein the organic insulation layer is formed
`between the counter electrode and the first substrate,
`and
`[n] wherein the counter electrode is connected to the
`common layer via a through hole within the organic
`insulation layer.
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`Patent 10,330,989 B2
`Ex. 1001, 52:8–34 (bracketed material added).
`E. References Relied On
`Petitioner relies on the references listed below (Pet. 14):
`Reference
`Date
`Exhibit No.
`US Patent No. 6,577,368 B1 (“Yuh”)
`June 10, 2003
`1005
`US Patent App. Pub.
`July 26, 2001
`1006
`No. 2001/0009447 A1 (“Ohta”)
`US Patent No. 6,507,383 B1 (“Abe”)
`Jan. 14, 2003
`1007
`US Patent
`July 29, 2003
`1008
`No. 6,600,541 B2 (“Kurahashi”)
`US Patent No. 6,580,487 B1 (“Kim”)
`June 17, 2003
`1009
`
`F. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`
`
`
`References
`Claim(s) Challenged 35 U.S.C. §
`Yuh, Ohta, Abe
`1, 2
`103
`Yuh, Ohta, Abe, Kim
`2
`103
`Yuh, Kurahashi
`1, 2
`103
`Yuh, Kurahashi, Kim
`2
`103
`Pet. 14. Petitioner relies on the Declaration of Richard Flasck (Ex. 1003) in
`support of its contentions. Patent Owner submits the Declaration of Thomas
`L. Credelle (Ex. 2010) in support of its Preliminary Response.
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art 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. 5 (citing Ex. 1003 ¶ 38). Patent Owner’s declarant,
`Mr. Credelle, testifies that a person having ordinary skill in the art “would
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`have 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.” Ex. 2010
`¶ 28. Mr. Credelle also states that, although he disagrees with Petitioner’s
`proposed level of ordinary skill in the art, his opinions “apply equally under
`either proposed level.” Id. ¶ 30.
`We agree with the parties that a person of ordinary skill in the art
`would have had the equivalent of a four-year undergraduate degree in
`electrical engineering or a similar field, and experience in the field of flat
`panel displays or liquid crystal display technology; this definition appears to
`be consistent with the level of skill in the art at the time of the invention as
`reflected in the prior art in this proceeding. Our determination regarding
`Petitioner’s challenge does not turn on the differences between Petitioner’s
`and Patent Owner’s definitions, and we note that our conclusion would be
`the same under either definition.
`B. Claim Construction
`We construe each claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b). Under this standard, claim terms are generally given their plain
`and ordinary meaning as would have been understood by a person of
`ordinary skill in the art at the time of the invention and in the context of the
`entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`Cir. 2005) (en banc). Only those terms in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`Neither party proposes an explicit construction for any claim term.
`See Pet. 14; see generally Prelim. Resp. For purposes of this Decision,
`based on the record before us, we determine that no claim term requires an
`explicit construction.
`C. Earliest Effective Filing Date of the ’989 Patent
`The ’989 patent issued from US Patent Application No. 15/271,422
`(“the ’422 application”), which was filed on September 21, 2016, and,
`through a series of continuation and divisional applications, claims priority
`to US Patent Application No. 10/237,911 (“the ’911 application,”
`Ex. 2007, 139–355), which was filed on September 10, 2002. Ex. 1001,
`codes (21), (22), (60). The face of the ’989 patent identifies JP 2001-317149
`(JP-’149), filed on October 15, 2001, as the foreign application to which
`the ’989 patent claims priority. Id. at code (30).
`Petitioner contends that the ’989 patent is not entitled to the
`October 15, 2001, priority date of JP-’149, titled “Connecting Structure for
`Steel Pipe Column and PC Board,” because JP-’149 “does not provide §112
`written description support for claims 1 and 2.” Pet. 69 (citing Ex. 1010).
`Therefore, Petitioner contends, “[t]he earliest priority date to which the ’989
`patent is entitled is the date of the earliest filed application, namely [the ’911
`application] filed on September 10, 2002.” Id.
`Patent Owner argues that Petitioner “fails to explain that, while the
`biographical information for the ’989 patent lists (JP) 2001-317149 (‘JP-
`’149’) under ‘Foreign Application Priority Data,’ the priority statement in
`the specification correctly states that the foreign priority claim is to Japanese
`Patent Application No. 2001-317147 (‘JP-’147’) filed on October 15, 2001.”
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`Prelim. Resp. 18. Patent Owner argues that “[t]his discrepancy is easily
`reconciled” because the prosecution history of the ’989 patent states the
`priority benefit to JP-’147 in the Continuation/Divisional Application
`Transmittal, and the prosecution history of the ’911 application establishes
`the benefit of priority to JP-’147. Id. (citing Ex. 1002, 1; Ex. 2006, 362).
`Patent Owner also argues that JP-’149 was not filed on October 15, 2001,
`which is, instead, the filing date of JP-’147. Id. at 18–19.
`We agree with Patent Owner that the record establishes that the ’989
`patent claims priority to JP-’147 filed on October 15, 2001. Prelim.
`Resp. 18. Although the face of the ’989 patent identifies JP-’149 under the
`“Foreign Application Priority Data” heading, the “Cross-Reference to
`Related Application” section of the specification identifies and claims
`priority to JP-’147. Ex. 1001, code (30), 1:41–43. In both instances,
`October 15, 2001 is listed as the filing date of the foreign application. Id.
`The prosecution history, however, reflects that the claimed priority benefit is
`to JP-147. In particular, the Continuation/Divisional Application
`Transmittal form for the ’422 application states that priority is claimed based
`on JP-’147, filed on October 15, 2001. Ex. 1002, 1. The ’422 application as
`originally filed also identifies JP-’147 in the “Cross-Reference to Related
`Application” section of the specification. Id. at 12 ¶ 1.
`Moreover, the “Request for Priority Under 35 U.S.C. 119 and the
`International Convention” filed during prosecution of the ’911 application
`states that “the Applicant claims the priority date of October 15, 2001, the
`filing date of the corresponding Japanese patent application 2001-317147,”
`and attaches a copy of JP-’147 reflecting the October 15, 2001, filing date
`thereto. Ex. 2007, 362–517. In view of the foregoing, and because JP-’149
`is not directed to a liquid crystal device and does not appear to have been
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`filed on October 15, 2001, it appears that the reference to JP-’149 on the
`face of the ’989 patent is a mistake and the correct foreign application
`priority data is JP-’147. Ex. 1010, 1, 6–8.
`Petitioner does not address this discrepancy in the ’989 patent.
`Pet. 69. Instead, Petitioner relies on the reference to JP-’149 on the face of
`the ’989 patent and the title of JP-’149 (“Connecting Structure for Steel Pipe
`Column and PC Board”) as the only evidence supporting its contention that
`“the ’989 patent is not entitled to the October 15, 2001, priority date.” Id.
`(citing Ex. 1010). Petitioner fails to address the numerous additional
`citations in the record to JP-’147 as the priority document. Based on the
`record before us, we find that Petitioner does not come forward with
`sufficient evidence to show that the ’989 patent is not entitled to its asserted
`October 15, 2001, foreign priority date. Because Petitioner does not address
`whether JP-’147 provides adequate written description support for claims 1
`and 2 of the ’989 patent, Petitioner has not made a sufficient threshold
`showing that claims 1 and 2 lack written description support in JP-’147.
`Accordingly, we determine, on this record, that Petitioner has not
`established a reasonable likelihood that it will prevail in showing that the
`challenged claims are not entitled to priority based on the October 15, 2001,
`filing date of JP-’147.
`D. Asserted Obviousness over Yuh, Ohta, and Abe (Ground 1)
`Petitioner contends that claims 1 and 2 would have been obvious over
`the combined teachings of Yuh, Ohta, and Abe. Pet. 21–63.
`1. Overview of Yuh
`Yuh relates to “a liquid crystal display (LCD) . . . having a modified
`electrode array.” Ex. 1005, 1:8–10. Yuh teaches that a conventional twisted
`nematic LCD (“TN-LCD”) has disadvantages such as a narrow viewing
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`angle, and that methods used to compensate have other disadvantages, such
`as in manufacturing cost, power consumption, and aperture ratio. Id.
`at 2:11–12, 2:25–34. Yuh asserts that the modified electrode array it
`describes accomplishes the objects of attaining a wide viewing angle,
`reducing power consumption, and enlarging the aperture ratio. Id. at 3:3–10.
`In particular, Yuh teaches that “[f]irst electrodes and second electrode
`insulated from each other are overlapped with each other at least in part,”
`and “[t]he second electrode forms a continuous plane between the first
`electrodes.” Id. at 3:11–14. “The potential difference between the two
`electrodes generated by applying voltages to the electrodes yields an electric
`field,” and “[t]he shape of an electric line of force is semi-ellipse or parabola
`having a center on a boundary line or a boundary region between the first
`electrode and the second electrode.” Id. at 3:16–22. In this way, Yuh
`teaches that the liquid crystal molecules on the first and second electrodes
`and on the boundary region “are re-arranged to have a twist angle and a tilt
`angle due to the vertical and horizontal components of the electric field,”
`and, accordingly, “the polarization of the incident light varies by the
`rearrangement of liquid crystal molecules.” Id. at 3:23–28.
`Therefore, according to Yuh, “a wide viewing angle may be obtained
`since the liquid crystal molecules are re-arranged to have both the twist
`angle and the tilt angle.” Id. at 3:29–31. “In addition, power consumption is
`low since the strength of the electric field is large on the boundary region
`between the first electrode and the second electrode,” and “aperture ratio
`may be enlarged since a storage capacitor for obtaining sufficient storage
`capacity is not additionally required” because “the two electrodes are
`overlapped via an insulating film with using a thin film transistor (TFT) as a
`switching element.” Id. at 3:38–45.
`
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`2. Overview of Ohta
`Ohta “relates to a high picture quality image active matrix system
`liquid crystal display device having thin film transistor elements.” Ex. 1006
`¶ 2. Ohta teaches that transverse electric field system color LCD devices are
`constructed such that transparent substrates are disposed with a liquid crystal
`layer interposed in between, with electrodes for display and reference
`electrodes provided on the liquid-crystal-side surfaces of one or both
`transparent substrates that correspond to respective unit pixels. Id. ¶ 3.
`Electric fields are generated between the display and reference electrodes
`parallel to the surfaces of the transparent substrates so as to modulate light
`that is transmitted through the liquid crystal layer. Id. Ohta teaches that
`such a device “has been known to have a so-called excellent broad visual
`field angle” that “allows a person to recognize a clear image even from a
`position which is at a large angle relative to the display screen,” but also has
`“a problem in that an unnecessary electric field generated by the drain lines
`causes fluctuation of an electric field between the” display and reference
`electrodes, producing “bad image quality in which stripes are produced in a
`direction along the drain lines.” Id. ¶¶ 3, 5. Ohta seeks to provide an LCD
`device that can suppress the occurrence of these stripes, called longitudinal
`smear or crosstalk, “and enhance the productivity, while also enabling a low
`power consumption.” Id. ¶ 6.
`To achieve these objectives, Ohta describes an active matrix system
`LCD device that includes: first and second substrates with a liquid crystal
`composition layer in between; a plurality of drain lines and gate lines formed
`on the first substrate crossing each other in a matrix form; a plurality of
`counter lines formed on the first substrate; and a plurality of pixels formed
`by adjoining the drain lines and the gate lines. Id. at code (57). “At least
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`one counter electrode is formed on one of the drain lines, with an insulating
`layer therebetween,” and “[a] layer on which one of the counter lines is
`formed and a layer on which the at least one counter electrode is formed are
`different,” with “the one of the counter lines and the at least one counter
`electrode for one of the pixels are connected via a through hole.” Id. The
`LCD device has “pixel electrodes and counter electrodes capable of applying
`an electric field parallel to substrate surfaces in the pixels, and image signals
`are supplied to the pixel electrodes from thin film transistors connected to
`the drain lines and gate lines.” Id. ¶ 7. Ohta teaches that “the counter
`electrodes and the pixel electrodes are formed linearly so as not to overlap
`each other in a planar condition.” Id.
`3. Analysis
`Petitioner asserts that claims 1 and 2 would have been obvious over
`the combined teachings of Yuh, Ohta, and Abe. Pet. 15–63. Petitioner
`contends that Yuh teaches or suggests all of the limitations of claim 1 except
`elements 1[g], 1[i], 1[l], 1[m], and 1[n], which Petitioner contends Yuh and
`Ohta teach, and element 1[k], which Petitioner contends Yuh and Abe teach,
`as follows:
`Preamble: “A liquid crystal display device, comprising:” (Pet. 21
`(relying on Ex. 1005, 6:29–35));
`Element 1[a]: “a first substrate;” (Pet. 22 (relying on Ex. 1005, 6:29–
`35, Fig. 2; Ex. 1003 ¶¶ 73–74));
`Element 1[b]: “a second substrate;” (Pet. 22–23 (relying on Ex. 1005,
`6:62–65, Fig. 2; Ex. 1003 ¶¶ 75–76));
`Element 1[c]: “a liquid crystal layer between the first substrate and the
`second substrate, containing liquid crystal molecules;” (Pet. 23–24 (relying
`on Ex. 1005, 7:1–3, 7:66–8:3; Ex. 1003 ¶¶ 77–79));
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`Element 1[d]: “a gate line and a drain line;” (Pet. 24–25 (relying on
`Ex. 1005, 21:39–41, 22:4–6, 23:29–30, Fig. 35A; Ex. 1003 ¶¶ 80–82));
`Element 1[e]: “a pixel electrode and a counter electrode disposed
`between the first substrate and the liquid crystal layer;” (Pet. 26–33 (relying
`on Ex. 1005, 6:45–54, 7:16–18, 21:27–30, 22:15–17, 39:47–55, Figs. 2,
`35A, 35B; Ex. 1003 ¶¶ 83–88));
`Element 1[f]: “a gate insulation layer formed on the gate line; and”
`(Pet. 33–36 (relying on Ex. 1005, 20:8–12, 20:17–26, 20:60–64, 21:22–26,
`21:43–63, Figs. 2, 33, 35C; Ex. 1003 ¶¶ 89–93));
`Element 1[g]: “an organic insulation layer disposed between the first
`substrate and the liquid crystal layer,” (Pet. 36–39 (relying on Ex. 1006 ¶ 17,
`Fig. 2; Ex. 1003 ¶¶ 94–99));
`Element 1[h]: “wherein the liquid crystal layer is driven by an electric
`field generated between the pixel electrode and the counter electrode,”
`(Pet. 39–40 (relying on Ex. 1005, 3:16–18, 7:16–18, 8:12–16, 10:66–11:2,
`Fig. 2; Ex. 1003 ¶¶ 100–103));
`Element 1[i]: “wherein the pixel electrode is formed between the
`liquid crystal layer and the organic insulation layer,” (Pet. 40–41 (relying on
`Ex. 1006 ¶ 17; Ex. 1003 ¶¶ 104–108));
`Element 1[j]: “wherein the counter electrode is a planer [sic, planar]
`shape, and” (Pet. 42–43 (relying on Ex. 1005, 6:45–50, 20:17–19, 25:11–13,
`Figs. 2, 35A; Ex. 1003 ¶¶ 109–110));1
`
`
`1 Although not expressly acknowledged by the parties, we understand
`“planer” in the context of claim 1 as a misspelling of “planar.” See, e.g.,
`Pet. 1 (“Planar counter electrodes were known before the earliest priority
`date of the ’989 patent.”).
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`Element 1[k]: “the pixel electrode comprises a slit having a first
`portion, and the first portion is not parallel with the gate line and the drain
`line,” (Pet. 43–49 (relying on Ex. 1005, 7:16–18, 8:9–16, Fig. 35A;
`Ex. 1007, Abs., 1:31–40, 19:8–10, 19:14–17, 19:37–54, 36:19–34, 36:35–
`42; Figs. 2, 29; Ex. 1003 ¶¶ 111–120));
`Element 1[l]: “wherein the counter electrode is connected to a
`common layer,” (Pet. 49–52 (relying on Ex. 1005, 7:18, 8:9–12, 21:1–3,
`21:27–38, 21:44–57, Fig. 2; Ex. 1006 ¶¶ 51, 66, 92, 139, Fig. 4; Ex. 1003
`¶¶ 121–127));
`Element 1[m]: “wherein the organic insulation layer is formed
`between the counter electrode and the first substrate, and” (Pet. 53–54
`(relying on Ex. 1005, Fig. 2; Ex. 1006 ¶ 17, Fig. 2; Ex. 1003 ¶¶ 128–131));
`Element 1[n]: “wherein the counter electrode is connected to the
`common layer via a through hole within the organic insulation layer.”
`(Pet. 54–56 (relying on Ex. 1006 ¶¶ 86, 92, Fig. 4; Ex. 1003 ¶¶ 132–137)).
`With respect to element 1[g] (“an organic insulation layer disposed
`between the first substrate and the liquid crystal layer”), Petitioner contends
`that “Yuh’s planar electrode is shown formed directly on the lower
`substrate,” but that Ohta “recommends forming an ‘organic passivation
`layer’ between a ‘counter electrode’ and a ‘substrate.’” Pet. 36 (citing
`Ex. 1006 ¶ 17, Fig. 2; Ex. 1003 ¶ 95). Petitioner contends that a person of
`ordinary skill in the art “would have been motivated by Ohta’s teaching that
`the organic passivation layer facilitates uniformity in the brightness of an
`LCD device” to “include an organic passivation layer between the planar
`electrode and the lower substrate in Yuh’s device.” Id. at 37–38 (citing
`Ex. 1003 ¶ 96). Petitioner further contends that a person of ordinary skill in
`the art “would have recognized that ‘when the organic passivation layer is
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`coated on’ Yuh’s lower substrate, ‘the flatness of the substrate . . . is
`enhanced,’ and ‘the irregularities of the brightness . . . can be eliminated thus
`enhancing the uniformity of the brightness’ of Yuh’s liquid crystal device.”
`Id. at 38 (citing Ex. 1006 ¶ 17; Ex. 1003 ¶ 96). Petitioner contends that a
`person of ordinary skill in the art
`would have found it obvious because including the organic
`passivation layer between the planar electrode and the lower
`substrate in Yuh’s device would merely have used a known
`technique—Ohta’s technique of enhancing the uniformity of a
`liquid crystal device’s brightness through the inclusion of an
`organic passivation layer on a substrate—to improve Yuh’s
`similar liquid crystal device in the same way.
`Id. (citing Ex. 1003 ¶ 96).
`Patent Owner responds that a person of ordinary skill in the art would
`not look to combine Yuh with Ohta. Prelim. Resp. 19–22. Patent Owner
`argues that Yuh discloses a modified pixel array where the first and second
`(pixel and counter) electrodes insulated from each other are overlapped with
`each other at least in part in a Fringe Field Switching (“FFS”) configuration.
`Id. at 19–20 (citing Ex. 1005, 3:9–12, Fig. 2). Patent Owner argues that
`“Ohta, on the other hand, discloses a pixel configuration where the ‘counter
`electrodes and the pixel electrodes are formed linearly so as not to overlap
`with each other in a planar condition’” in an interdigitated IPS configuration.
`Id. at 20 (citing Ex. 1006 ¶ 7, Fig. 2) (emphasis omitted). Patent Owner
`further argues that “[t]he FFS configuration and the interdigitated IPS
`configuration produce electric fields with different contours that affect
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`IPR2021-01060
`Patent 10,330,989 B2
`display performance characteristics, including transmittance and viewing
`angle.” Id. (citing Ex. 2009,2 1).
`In particular, Patent Owner argues that “the FFS configuration
`produces a parabolic electric field with both vertical and horizontal
`components, whereas the interdigitated IPS configuration produces electric
`fields that are parallel to the surface (i.e., mainly horizontal components).”
`Prelim. Resp. 20–21 (citing Ex. 2009, 1–2, Fig. 2; Ex. 1005, 3:18–22;
`Ex. 1006 ¶ 3). Patent Owner argues that “[t]he different electric field shapes
`result from different electrode configurations and, in particular, the distance
`between the electrodes.” Id. at 22 (citing Ex. 2010 ¶ 36).
`Patent Owner provides a side-by-side annotated comparison of
`Figure 2 from Yuh and Figure 2 from Ohta, reproduced below, to illustrate
`its argument. Prelim. Resp. 21.
`
`
`2 S. H. Lee et al., 16.4L: Late-News Paper: A novel Wide-Viewing-Angle
`Technology: Ultra-Trans View™, Hyundai Electronics Industries 1 (1999
`SID).
`
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`IPR2021-01060
`Patent 10,330,989 B2
`
`
`
`Annotated Yuh Figure 2, on the left, depicts a cross-sectional view of Yuh’s
`LCD that shows equipotential lines and lines of electrical force between the
`upper and lower substrates. Ex. 1005, 3:62–65. Annotated Ohta Figure 2,
`on the right, is a cross-sectional view of a pixel of one embodiment of the
`LCD described in Ohta. Ex. 1006 ¶ 19. Patent Owner’s annotations include
`identification of the pixel and counter electrodes in each figure, and, in Ohta
`Figure 2, the addition of dotted lines parallel to and between the left pixel
`electrode and the counter electrode, and parallel to and between the right
`pixel electrode and the counter electrode, which Patent Owner identifies as
`“Electric Field.” Prelim. Resp. 21.
`Referring to its annotated comparison of Yuh Figure 2 and Ohta
`Figure 2, Patent Owner argues that “a FFS device differs from an IPS device
`in significant ways” including “requiring (1) the electrode configuration and
`spacing, (2) an insulating layer between the electrodes, and (3) an
`accounting for the capacitance created between the electrodes.” Id. at 22
`
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`IPR2021-01060
`Patent 10,330,989 B2
`(citing Ex. 2010 ¶ 37; Ex. 2009, 1, Fig. 2). According to Patent Owner, the
`differences between FFS and IPS devices “specifically impact the number
`and size of insulation layers required for these devices,” such that one of
`ordinary skill in the art “would not readily look to an interdigitated IPS
`structure to improve upon an FFS structure, especially with regard to the
`types of insulation layers used.” Id. (citing Ex. 2010 ¶ 37).
`To support a showing of obviousness, there has to be articulated
`reasoning with rational underpinning to support a motivation to combine the
`prior art teachings, and the analysis should be explicit. KSR Int’l Co. v.
`Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with rational underpinning to support the legal
`conclusion of obviousness.”)). A petitioner must demonstrate “that a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.”
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 964 F.3d 1312, 1327
`(Fed. Cir. 2012) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361
`(Fed. Cir. 2007)).
`Having considered the parties’ arguments, we are not persuaded, on
`this record, that Petitioner sufficiently establishes that a person of ordinary
`skill in the art would have attempted to modify Yuh’s LCD with Ohta’s
`organic passivation layer, and would have had a reasonable expectation of
`success in doing so. Petitioner fails to account for fundamental differences
`between the structure and function of the LCD devices taught by Yuh and
`Ohta and to explain sufficiently why a person of ordinary skill in the art
`
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`would have considered an organic passivation layer, as taught by Ohta, to
`have been applicable to and an improvement upon Yuh’s device.
`Petitioner’s rationale for why a person of ordinary skill in the art
`would have had reason to combine the teachings of Yuh and Ohta is based
`on Petitioner’s contention that Ohta teaches that placing an organic
`passivation layer between a counter electrode and substrate “facilitates
`uniformity in the brightness of an LCD device.” Pet. 36 (citing Ex. 1006
`¶ 17; Ex. 1003 ¶ 95). In Ohta’s LCD, pixel electrodes and counter
`electrodes are formed linearly “so as not to overlap each other in a planar
`condition,” and “are capable of applying an electric field parallel to substrate
`surfaces in the pixels.” Ex. 1006 ¶ 7. An insulating film is formed on
`Ohta’s drain line, and the counter electrodes are formed on the insulating
`film so that they cover the drain lines. Id.; see also id. ¶ 15 (“Reference
`electrodes are formed on an organic insulating film in such a manner th
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