Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
` Paper No. 17
`
` Entered: October 20, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TIANMA MICRO-ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and
`PANASONIC LIQUID CRYSTAL DISPLAY CO., LTD.,
`Patent Owner.
`
`____________
`
`Case IPR2016-00991
`Patent 8,758,871 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
` Paper No. 17
`
` Entered: October 20, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TIANMA MICRO-ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and
`PANASONIC LIQUID CRYSTAL DISPLAY CO., LTD.,
`Patent Owner.
`
`____________
`
`Case IPR2016-00991
`Patent 8,758,871 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`INTRODUCTION
`
`Tianma Micro-electronics Co., Ltd. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–14 of U.S. Patent No. 8,758,871
`B2 (Ex. 1004, “the ’871 patent”). Paper 2 (“Pet.”). Japan Display Inc. and
`Panasonic Liquid Crystal Display Co., Ltd. (collectively, “Patent Owner”)
`did not file a Preliminary Response. On October 31, 2016, the Board
`instituted trial to review the patentability of claims 1–14 of the ’871 patent.
`Paper 7 (“Dec.”). In the Scheduling Order, we cautioned that any arguments
`for patentability not raised in the Patent Owner Response will be deemed
`waived. Paper 8, 4. Patent Owner did not file a Response. During a call
`with the Board to discuss Patent Owner’s failure to file a Response, and to
`discuss Petitioner’s request to move for adverse judgment or for the Board to
`issue a show cause order, Patent Owner affirmatively stated that it was not
`abandoning the contest. Paper 9, 2–3. Petitioner filed a Statement
`Regarding Oral Hearing indicating that it did not seek oral argument.
`Paper 15. Patent Owner did not request oral argument. We determined that
`an oral hearing was not necessary. Paper 16.
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has established by a preponderance of the evidence
`that claims 1–14 of the ’871 patent are unpatentable.
`Related Proceedings
`A.
`The parties do not identify any other proceedings related to the ’871
`patent. A patent related to the ’871 patent, U.S. Patent No. 7,718,234 B2
`(“the ’234 patent”) is the subject of IPR2016-00990, also filed by Petitioner.
`
`2
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`The ’871 Patent
`B.
`The ’871 patent, titled “Liquid Crystal Display and Method for
`
`Manufacturing Same,” issued on June 24, 2014. Ex. 1004, at [54], [45].
`The ’871 patent relates to a liquid crystal display capable of reducing the
`“occurrence of defective display due to variations in the initial alignment
`direction of a liquid crystal alignment control film in a liquid crystal display
`of an [In-Plane Switching (“IPS”)] scheme, realizing the stable liquid crystal
`alignment, providing excellent mass productivity, and having high image
`quality with a higher contrast ratio.” Id. at [57]. Specifically, the patent
`relates to a liquid crystal display of an IPS scheme in which an electric field
`substantially in parallel with a substrate is applied to a liquid crystal layer for
`operation, and a production process thereof. Id. at 1:15–19.
`By way of background, the ’871 patent explains that the “uniformity
`of alignment is a very important factor in the IPS scheme, and problems in
`the currently used rubbing technique have become apparent.” Id. at 4:1–3.
`According to the ’871 patent, problems associated with the rubbing process
`technique include “TFT [thin film transistor] breakage due to static
`electricity produced by friction, unfavorable display due to misalignment
`from disordered fiber ends of a rubbing cloth or dust, and the need for
`frequent exchanges of rubbing cloths.” Id. at 4:5–9. Consequently, “a so-
`called ‘rubbing-less’ alignment technique for aligning liquid crystal
`molecules has been studied and various processes thereof have been
`proposed” in the prior art, such as aligning the liquid crystal molecules in a
`predetermined direction through irradiation of polarized light. Id. at 4:10–
`17.
`
`3
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`The ’871 patent teaches that the photo-alignment process using light
`irradiation has several problems “from a practical standpoint.” Id. at 4:59–
`63. For example, the ’871 patent teaches that “a polymeric material
`obtained by introducing a photoreactive group in the side chain of a polymer
`represented by polyvinylcinnamate” provides insufficient heat stability of
`alignment and unsatisfactory reliability. Id. at 4:64–67.
`To address the problems in the prior art, the ’871 patent provides a
`liquid crystal display comprising a pair of substrates with a liquid crystal
`layer disposed between the two substrates, an alignment control film
`disposed between the liquid crystal layer and at least one of the pair of
`substrates, and optical means on at least one of the pair of substrates “for
`changing the optical property of the liquid crystal layer in accordance with
`an alignment state of molecules” in the liquid crystal layer. Id. at 5:40–52.
`The ’871 patent teaches that “at least one of the alignment control films is an
`alignment control film comprising photoreactive polyimide and/or polyamic
`acid provided with an alignment control ability by irradiation of
`substantially linearly polarized light.” Id. at 5:52–56. Regarding the
`composition of the alignment control films, the ’871 patent further teaches
`that “it is desirable that the photoreactive alignment control film is polyamic
`acid or polyimide comprising at least cyclobutanetetracarboxylic acid
`dianhydride as acid anhydride and at least aromatic diamine as diamine.” Id.
`at 5:61–64.
`Challenged Claims
`C.
`Of challenged claims 1–14, claims 1 and 8 are independent.
`Claims 2–7 depend directly from claim 1. Claims 9–14 depend directly
`from claim 8.
`
`4
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`Claim 1 is representative of the challenged claims, and recites:
`1. An alignment control film, adapted to be an alignment
`control film of a liquid crystal display to drive a liquid crystal
`with an electric field arising between a pair of electrodes
`formed on a substrate, comprising a polyamic acid or polyimide
`that includes cyclobutanetetracarboxylic acid dianhydride
`and/or its derivative and aromatic diamine; and
`wherein the cyclobutanetetracarboxylic acid dianhydride
`and/or its derivative is a compound represented by a
`formula [1]:
`
`
`
`
`
`
`
`where R1, R2, R3 and R4 of the compound of the formula
`[1] each independently represent a hydrogen atom, a
`fluorine atom, an alkyl group or alkoxyl group with a
`carbon number of 1 to 6, with the proviso that at least
`one of R1, R2, R3and R4 of the compound of formula
`[1] is not hydrogen,
`wherein the alignment control film has a thickness of
`from 1 nm to 100 nm, and
`wherein the aromatic diamine compound contains at least
`one of compounds selected from a group of
`compounds consisting of ones represented by
`formulas [2] to [16]:
`
`5
`
`
`
`IPR2016-00991
`
`IPR2016-00991
`Patent 8,758,871 B2
`Patent 8,758,871 B2
`
`
`6
`
`
`
`
`
`IPR2016-00991
`
`IPR2016-00991
`Patent 8,758,871 B2
`Patent 8,758,871 B2
`
`
`
`
`[10]
`
`[11]
`
`[12]
`
`\
`/
`R3/\\_//\R4
`
`[13]
`
`
`
`[14]
`
`[15]
`
`[16]
`
`
`
`7
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`where R1, R2, R3 and R4 of the compounds represented
`by formulas [2] to [16] each independently represent a
`hydrogen atom, a fluorine atom, an alkyl group or
`alkoxyl group with a carbon number of 1 to 6, or vinyl
`group {—(CH2)m—CH═CH2,m=0, 1, 2} or a group
`represented by {—(CH2)n—C≡CH,n=0,1,2}, and in
`the formula [5], X represents a bond group —S—,
`—CO—, or —NH—.
`
`
`Ex. 1004, 34:59–37:18.
`Instituted Grounds of Unpatentability
`D.
`We instituted inter partes review of claims 1–14 of the ’871 patent on
`the following grounds:
`References
`Tomioka1 and Nishikawa2
`Tomioka, Nishikawa, and
`Chaudhari3
`
`Claims Challenged
`Basis
`§ 103(a) 1–4, 6–11, 13, and 14
`§ 103(a) 5, 12
`
`
`
`ANALYSIS
`
`A.
`
`Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable constructions in light of
`the specification of the patent in which they appear. See 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`standard). Under the broadest reasonable construction standard, claim terms
`
`
`1 U.S. Patent App. Pub. No. 2001/0048498 A1 to Tomioka et al., published
`December 6, 2001 (Ex. 1008, “Tomioka”).
`2 U.S. Patent No. 5,969,055 to Nishikawa et al., issued October 19, 1999
`(Ex. 1009, “Nishikawa”).
`3 U.S. Patent App. Pub. No. 2001/0012081 A1 to Chaudhari et al.,
`published August 9, 2001 (Ex. 1010, “Chaudhari”).
`
`8
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`are presumed to have their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`Petitioner argues that the preambles of independent claims 1 and 8 do
`not limit the claims. Pet. 18–21. Specifically, Petitioner argues that the
`“adapted to be . . .” language of claims 1 and 8 does not limit the alignment
`films and methods recited in the claims. Id.
`In our Institution Decision, we determined that we could measure the
`reasonable likelihood of proving unpatentability of the challenged claims
`without making an express construction of the preamble. Dec. 8. We also
`determined that, because Petitioner argued that the prior art teaches this
`preamble phrase (see, e.g., Pet. 21–23, 37–39), it was not necessary for us to
`decide this issue in order to determine whether to institute trial. See, e.g.,
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (noting that only claim terms which are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy).
`Here, because our Decision does not turn on the express construction of the
`preambles of claims 1 and 8, and because we address Petitioner’s arguments
`regarding the prior art’s teaching of the preamble phrase, we maintain that
`position.
`Principles of Law
`B.
`To prevail in its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenges by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`
`9
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`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”)). This burden of persuasion never shifts to Patent Owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–
`79 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burdens of persuasion and
`production in inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented 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 on the basis of 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 available, objective
`evidence of nonobviousness such as commercial success, long felt but
`unsolved needs, and failure of others.4 Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966). A decision on the ground of obviousness must
`include “articulated reasoning with some rational underpinning to support
`the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006). The obviousness analysis “should be made explicit” and it “can
`
`
`4 The current record does not include any evidence of secondary
`considerations.
`
`10
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`be important to identify a reason that would have prompted a person of
`ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” KSR, 550 U.S. at 418. We analyze the
`asserted grounds of unpatentability in accordance with the above-stated
`principles.
`Analysis
`C.
`i. Person of Ordinary Skill in the Art
`For the purpose of this Decision, we accept Petitioner’s undisputed
`contention that a person of ordinary skill in the art “would have been
`someone with a Ph.D. degree in polymer chemistry/physics or polymer
`engineering and about 2 years of experience in LCD technology; or with a
`M.S. or B.S. degree in polymer chemistry/physics or polymer engineering
`and about 3–5 years of experience in LCD technology.” Pet. 17. The level
`of ordinary skill in the art is further demonstrated by the prior art asserted in
`the Petition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`ii. Asserted Obviousness Based on Tomioka and Nishikawa
`Petitioner challenges claims 1–4, 6–11, 13, and 14 under 35 U.S.C.
`§ 103(a) as obvious in view of the combined teachings of Tomioka and
`Nishikawa. Pet. 21–48. Petitioner relies on the Declaration of Dr. John L.
`West (Ex. 1006) in support of its arguments.
`Tomioka relates to a liquid crystal display device “of IPS mode” in
`which “occurrence of a sticking-image and after-image phenomenon is
`prevented.” Ex. 1008, at [57]. In Tomioka’s device, “pixel electrodes and
`common electrodes and active elements are arranged on at least one
`substrate, and liquid crystal of the liquid crystal layer is controlled to
`
`11
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`perform display by applying a voltage between the pixel electrode and the
`common electrode.” Id. ¶ 15. Moreover, “a pair of alignment layers
`individually formed on surfaces in contact with the liquid crystal layer of the
`pair of substrates are made of an organic polymer” of polyamic acid or
`imidized polymer prepared from, for example, aromatic tetracarboxylic acid
`anhydrides as acid containing components and aromatic diamines as amine
`containing components. Id. ¶¶ 15, 74–76. At least one of the pair of
`alignment layers is a photo-reactive material layer, and the alignment layer
`is formed by irradiating a nearly linearly polarized light onto the layer made
`of the photo-reactive material. Id. ¶ 34. Tomioka discloses in at least one
`example that its LCD’s alignment-control films are derived from 1,2,3,4-
`cyclobutane-tetracarboxylic acid anhydride as the acid anhydride and 4,4′-
`diamino-diphenyl methane as the diamine chemical compound. Id. ¶ 177
`(Example 8); see also Ex. 1006 ¶ 117 (“Example 8 of Tomioka discloses
`preparing a control-alignment film including polyamic acid varnish
`composed of 4,4'-diamino-diphenyl methane as the aromatic diamine and
`1,2,3,4-cyclobutanetetracarboxylic acid anhydride (CBDA) as the acid
`anhydride.”).
`Nishikawa relates to a liquid crystal alignment agent containing at
`least two kinds of polymers selected from the group consisting of polyamic
`acids and imidized polymers. Ex. 1009, at [57]. According to Nishikawa,
`the “liquid crystal alignment agent gives a liquid crystal display device
`having less stuck image and a high pretilt angle.” Id. Nishikawa provides
`that its LCDs can be “favorably used . . . by selecting the liquid crystal to be
`used, also in liquid crystal display devices of IPS (in plane switching) type.”
`Id. at 29:10–16. Nishikawa teaches that “[e]ach polymer used in the liquid
`
`12
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`crystal alignment agent” “can be obtained by reacting at least one
`tetracarboxylic acid dianhydride and at least one diamine compound” in an
`organic acid in order “to synthesize a polyamic acid and, as necessary,
`subjecting the polyamic acid to dehydration and ring closure.” Id. at 2:22–
`27. In identifying “compounds that are preferred from the viewpoint of
`achievement of good liquid crystal alignability,” Nishikawa identifies
`“1,2,3,4-cyclobutane-tetracarboxylic acid dianhydride” (“CBDA”) and “1,3-
`dimethyl-1,2,3,4-cyclobutanetetracarboxylic acid dianhydride” as
`“particularly preferred.” Id. at 5:42–44, 5:64–67.
`Petitioner has presented sufficient evidence showing that the
`combined teachings of Tomioka and Nishikawa teach or suggest every
`limitation of claims 1–4, 6–11, 13, and 14. Pet. 21–48. For example, with
`respect to claim 1, Petitioner shows that Tomioka discloses the elements of
`the claim 1 preamble (Ex. 1008 ¶¶ 13, 86, 177, Fig. 1 (identifying the
`structural components of Tomioka’s LCD)) as well as the claim 1 limitations
`of “a polyamic acid or polyimide that includes cyclobutanetetracarboxylic
`acid dianhydride and/or its derivative and aromatic diamine” (id. ¶¶ 32, 72–
`76, 177 (identifying a cyclobutanetetracarboxylic acid anhydride and an
`aromatic diamine in Example 8)), and “wherein the alignment-control film
`has a thickness of from 1 nm to 100 nm” (id. ¶¶ 114, 116, 177 (identifying
`alignment layer thickness of about 50 nm)). Pet. 21–23, 32. Regarding the
`limitation “wherein the aromatic diamine compound contains at least one of
`compounds selected from a group of compounds consisting of ones
`represented by formulas [2] to [16],” Petitioner shows that Tomioka
`specifies twenty-two diamines that can be used to make its alignment-
`control layer. Id. at 33 (citing Ex. 1008 ¶ 74). We credit Dr. West’s
`
`13
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`unrebutted testimony that ten of these twenty-two diamines are of Formulae
`[2], [3], [5], [6], and [16]. Ex. 1006 ¶ 132. Petitioner further shows that
`many of Tomioka’s diamines that overlap formulae [2] to [16] are preferred
`aromatic diamines for polyamic acid and polyimide alignment-control films,
`citing Nishikawa. Compare Ex. 1008 ¶ 74, with Ex. 1009, 11:13–16 (both
`references disclose p-phenylenediamine, 4,4'-diaminodiphenyl sulfide, 1,5-
`diamino-naphthalene, 2,7-diaminofluorene, and 4,4'-diaminodiphenyl ether).
`Regarding the claim 1 clause “wherein the cyclobutanetetracarboxylic
`acid dianhydride and/or its derivative is a compound represented by a
`formula [1] . . .” we credit Dr. West’s unrebutted testimony that the
`“alignment-control films disclosed in Tomioka differ from the claimed films
`only by the substitution of CBDA with derivatives of CBDA, such as 1,3-
`dimethyl-1,2,3,4-cyclobutanetetracarboxylic acid dianhydride (‘1,3-
`dimethyl-CBDA’).” Ex. 1006 ¶ 119. Petitioner’s evidence and argument
`are sufficient to show that this is nothing more than a simple substitution of
`one known element for another to obtain predictable results. See Pet. 24–27
`(citing Ex. 1006 ¶¶ 120–26); see also In re Fout, 675 F.2d 297, 301
`(CCPA 1982) (“Express suggestion to substitute one equivalent for another
`need not be present to render such substitution obvious.”). As Petitioner
`correctly notes, Tomioka acknowledges that its ‘acid containing
`components’ are not limited to the dianhydrides listed therein. Pet. 26
`(citing Ex. 1008 ¶ 76). Petitioner is also correct that Nishikawa explicitly
`identifies both CBDA and 1,3-dimethyl-CBDA as preferred dianhydrides for
`achieving “good liquid crystal alignability.” Id. at 26–27 (citing Ex. 1009,
`5:64–67). We also credit Dr. West’s unrebutted testimony that “one of
`ordinary skill in the art would have considered CBDA and 1,3-dimethyl-
`
`14
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`CBDA to be interchangeable for purposes of forming alignment-control
`films.” Ex. 1006 ¶ 126.
`Petitioner’s analysis with respect to independent claim 8, which is
`directed to a method of using an alignment control film, largely follows the
`analysis provided for the LCDs of claim 1. Pet. 37–45. Petitioner also
`shows that Tomioka discloses the additional limitations of the challenged
`dependent claims 2–4, 6, 7, 9–11, 13, and 14. Id. at 45–49 (citing Ex. 1008
`¶¶ 34, 64, 73, 86, 177).
`We have considered the arguments and evidence presented by
`Petitioner, and are persuaded that Petitioner has demonstrated by a
`preponderance of the evidence that independent claims 1 and 8 would have
`been obvious based on the combination of Tomioka and Nishikawa. See
`Pet. 21–45; Ex. 1006 ¶¶ 115–37, 151–71. We also have considered
`Petitioner’s arguments and evidence as to dependent claims 2–4, 6, 7, 9–11,
`13, and 14, and likewise are persuaded that Petitioner has demonstrated by a
`preponderance of the evidence that those claims would have been obvious
`based on the combination of Tomioka and Nishikawa. See Pet. 45–49;
`Ex. 1006 ¶¶ 138–50, 172–84. Based on the evidence in this record, we agree
`with Petitioner’s reasoning, which is supported by the unrebutted testimony
`of Dr. West, and adopt it as our own, that one with ordinary skill in the art
`would have recognized that the use of 1,3-dimethyl-CBDA, as taught by
`Nishikawa, in place of CBDA in Tomioka’s LCD would have been a matter
`of simple substitution. We credit the testimony of Dr. West that, “[b]ased at
`least on the results of Example 8 of Nishikawa, one of ordinary skill in the
`art would have recognized that 1,3-dimethyl-CBDA can be used to form an
`alignment-control film,” and could have substituted CBDA with 1,3-
`
`15
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`dimethyl-CBDA, another preferred dianhydride for achieving good liquid
`crystal alignability, without any unique challenges or difficulties. Ex. 1006
`¶¶ 123, 125–26. For the foregoing reasons, Petitioner has demonstrated by a
`preponderance of the evidence the obviousness of claims 1–4, 6–11, 13, and
`14 over the combined teachings of Tomioka and Nishikawa.
`iii. Asserted Obviousness Based on Tomioka, Nishikawa,
` and Chaudhari
`Petitioner challenges claims 5 and 12 under 35 U.S.C. § 103(a) as
`obvious in view of the combined teachings of Tomioka, Nishikawa, and
`Chaudhari. Pet. 49–50.
`Claim 5 depends from claim 1, and claim 12 depends from claim 8.
`Claims 5 and 12, referring to the thickness of the alignment-control film,
`recite “wherein said thickness is 1 to 30 nm.” Ex. 1004, 37:31–32, 40:36–
`37. Petitioner has presented sufficient evidence showing that the combined
`teachings of Tomioka, Nishikawa, and Chaudhari teach or suggest every
`limitation of claims 5 and 12. As Petitioner correctly notes, Tomioka
`discloses a film with a thickness of 50 nm (Ex. 1008 ¶ 177), and Chaudhari
`minimizes the problem of “image sticking” by providing thin (i.e. 100 Å (10
`nm) or less) films that allow for charge hopping or tunneling. See Pet. 49–
`50 (citing Ex. 1010 ¶¶ 11–13). Relying on Dr. West’s testimony, Petitioner
`asserts that “one of ordinary skill in the art would have found it obvious to
`reduce the thickness of the film of Tomioka to 1 to 30 nm to improve
`performance.” Id. at 49 (citing Ex. 1006 ¶¶ 185–86). According to Dr.
`West, “based on Chaudhari’s disclosure, one of ordinary skill in the art
`would have been motivated to make the alignment-control films of Example
`8 of Tomioka very thin, such as 10 nm, to improve display quality, as taught
`by Chaudhari.” Ex. 1006 ¶ 187.
`
`16
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`We are persuaded by Petitioner’s presentation of arguments, which we
`adopt as our own, and credit Petitioner’s expert testimony supporting this
`ground. See Pet. 49–50; Ex. 1006 ¶¶ 185–88. On this record, Petitioner has
`established by a preponderance of the evidence the obviousness of claims 5
`and 12 in view of the combined teachings of Tomioka, Nishikawa, and
`Chaudhari.
`
`CONCLUSION
`
`We have considered the Petition and the evidence presented in support
`thereof and, for the foregoing reasons, we are persuaded that Petitioner has
`established by a preponderance of the evidence that claims 1–14 of the ’871
`patent are unpatentable.
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that claims 1–14 of the ’871 patent are held unpatentable;
`
`and
`
`FURTHER ORDERED because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`17
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`FOR PETITIONER:
`James R. Barney
`Anthony A. Hartmann
`Shing-Yi Cheng
`FINNEGAN, HENDERSON, FARABOW, GARRET & DUNNER
`tianmaiprs@finnegan.com
`anthony.hartmann@finnegan.com
`shingyi.cheng@finnegan.com
`
`
`FOR PATENT OWNER:
`Japan Display Inc.:
`John R. Fuisz
`Jennifer C. Chen
`VINSON & ELKINS L.L.P.
`jfuisz@velaw.com
`jchen@velaw.com
`
`Panasonic Liquid Crystal Display Co., Ltd:
`Joseph M. Casino
`Abraham Kasdan
`WIGGIN AND DANA LLP
`JCasino@wiggin.com
`AKasdan@wiggin.com
`
`
`18
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
