Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 7
`
` Entered: October 31, 2016
`
`
`
`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 GRACE KARAFFA OBERMANN, JO-ANNE M. KOKOSKI, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 7
`
` Entered: October 31, 2016
`
`
`
`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 GRACE KARAFFA OBERMANN, JO-ANNE M. KOKOSKI, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`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. 1001, “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.
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon considering the Petition and the
`evidence of record, we determine that Petitioner has shown a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the claims challenged in the Petition. Accordingly, we institute inter
`partes review.
`A.
`Related Proceedings
`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 is
`the subject of IPR2016-00990, also filed by Petitioner.
`B.
`The ’871 Patent
`
`The ’871 patent, titled “Liquid Crystal Display and Method for
`Manufacturing Same,” issued on June 24, 2014. Ex. 1001, at [54]. 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 IPS
`scheme, realizing the stable liquid crystal alignment, providing excellent
`mass productivity, and having high image quality with a higher contrast
`
`2
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`ratio.” Id. at [57]. Specifically, the patent relates to a liquid crystal display
`of an In-Plane Switching (“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. 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. For example, one alternate alignment technique realizes the
`alignment of liquid crystal molecules in a predetermined direction through
`irradiation of polarized light. Id. at 4:20–22. Regarding the composition of
`the alignment control films, the ’871 patent states 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.
`C.
`Challenged Claims
`Claim 1 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]:
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`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]:
`
`4
`
`
`
`IPR2016-00991
`
`IPR2016-00991
`Patent 8,758,871 B2
`Patent 8,758,871 B2
`
`
`H2N{| <l—
`
`R3
`
`\ 1 /
`
`5.‘:
`
`R2
`
`3.‘:
`
`1:
`
`_/E‘
`\ /
`
`NH2
`
`H2N
`
`NH
`
`2
`
`5
`
`
`
`
`
`IPRZO16-00991
`
`IPR2016-00991
`Patent 8,758,871 B2
`Patent 8,758,871 B2
`
`
`R3/\\_//\R4
`
`H \ [ U N“
`
`HZN //
`R1
`
`/\/
`R2
`
`‘ \
`
`HZN
`
`R1
`
`\
`//
`R2
`
`NH2
`
`[10]
`
`[11]
`
`[12]
`
`[13]
`
`[14]
`
`[15]
`
`[15]
`
`
`
`6
`
`
`
`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.
`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.
`D.
`The Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–14 of the ’871 patent on two grounds
`(Pet. 4):
`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.
`
`
`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”).
`
`7
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`§ 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
`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 view, we can measure the reasonable likelihood of proving
`unpatentability of the challenged claims without making an express
`construction of the preamble at this time. In any event, Petitioner has argued
`that the prior art teaches this preamble phrase (see, e.g., Pet. 21–23, 37–39),
`and thus, it is 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). We determine that, for purposes of
`this Decision, no term requires express construction.
`B.
`Principles of Law
`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
`
`8
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`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) objective evidence of
`nonobviousness. 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 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.
`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).
`
`9
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`C.
`
`Analysis
`i. Asserted Obviousness Based on Tomioka and Nishikawa
`Petitioner challenges claims 1–4, 6–11, 13, and 14 under 35 U.S.C.
`§ 103 as obvious in view 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
`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 group or
`polyamide ester group.” Id. 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.
`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. In identifying
`compounds that “are preferred from the viewpoint of achievement of good
`liquid crystal alignability,” Nishikawa includes as particularly preferred
`
`10
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`compounds “1,2,3,4-cyclobutane-tetracarboxylic acid dianhydride”
`(“CBDA”) and “1,3-dimethyl-1,2,3,4-cyclobutanetetracarboxylic acid
`dianhydride.” Id. at 5:42–44, 5:64–66.
`Petitioner argues that Tomioka discloses the elements of the claim 1
`preamble, 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,” “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] . . . .”
`Pet. 21–23, 32–37.
`Regarding the claim 1 clause “wherein the cyclobutanetetracarboxylic
`acid dianhydride and/or its derivative is a compound represented by a
`formula [1] . . .” Petitioner argues 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’).” Id.
`at 24 (citing Ex. 1006 ¶ 119). Petitioner argues that substitution of CBDA
`with derivatives such as 1,3-dimethyl-CBDA is nothing more than a simple
`substitution of one known element for another to obtain predictable results.
`Id. at 24–27. Specifically, Petitioner argues that Nishikawa discloses that
`“1,3-dimethyl-CBDA is one of a handful of ‘particularly preferred’
`dianhydrides for forming alignment-control films.” Id. at 25. Although
`Nishikawa discloses using a rubbing treatment, Petitioner relies on Dr.
`West’s testimony to argue that “one of ordinary skill in the art would not
`have been discouraged from using a non-rubbing treatment such as linearly-
`
`11
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`polarized light to impart 1,3-dimethyl-CBDA films with alignment-control
`ability,” and further relies on Nishikawa itself, which discloses that other
`methods besides the rubbing treatment can be used. Id. at 26 (citing
`Ex. 1006 ¶ 124).
`According to Dr. West, one of ordinary skill in the art, practicing the
`teaching of Tomioka’s Example 8, “could have substituted CBDA with 1,3-
`dimethyl-CBDA without facing any unique challenges or difficulty.” Id.
`(citing Ex. 1006 ¶ 125). Petitioner further argues that Tomioka does not
`teach away from the recited CBDA derivatives, but rather states that its
`“acid containing components” are not limited to the ones listed. Id. at 27–
`28. Petitioner faults Patent Owner for having presented no unexpected
`superior results associated with CBDA derivatives, relying on statements in
`the prosecution of the ’871 patent and Dr. West’s counterpoints to those
`statements. Id. at 29–32. Petitioner argues that Tomioka specifies twenty-
`two diamines that can be used to make its alignment-control layer, and that
`ten of these are of Formulae [2], [3], [5], [6], and [16]. Id. at 33–35.
`Petitioner further argues that “Nishikawa suggests that many of Tomioka’s
`overlapping list are preferred aromatic diamines for polyamic acid and
`polyimide alignment-control films.” Id. at 35 (citing Ex. 1009, 11:13–16).
`Regarding claim 8, directed to a method of using an alignment control
`film, Petitioner’s analysis largely follows the analysis provided for the LCDs
`of claim 1. Id. at 37–45. Petitioner argues that Tomioka discloses the
`additional limitations of challenged dependent claims 2–4, 6, 7, 9–11, 13,
`and 14. Id. at 45–49.
`We have considered the arguments and evidence presented by
`Petitioner, and are persuaded that Petitioner has demonstrated a reasonable
`
`12
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`likelihood that independent claims 1 and 8 would have been obvious based
`on the combination of Tomioka and Nishikawa. 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 a
`reasonable likelihood that it would prevail as to those claims. For the
`foregoing reasons, Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claims 1–4, 6–11, 13, and 14 over
`Tomioka and Nishikawa.
`ii. Asserted Obviousness Based on Tomioka,
` Nishikawa, and Chaudhari
`Petitioner challenges claims 5 and 12 under 35 U.S.C. § 103 as
`obvious in view of Tomioka, Nishikawa, and Chaudhari. Pet. 49–50.
`Claims 5 and 12 require that the alignment control film have a
`thickness of 1 to 30 nm. Ex. 1001, 37:31–32, 40:36–37. Petitioner argues
`that Tomioka discloses a film with a thickness of 50 nm. Pet. 49.
`According to Petitioner, Chaudhari, by providing thin (i.e. 10 nm) films that
`allow for charge hopping or tunneling, minimizes the problem of “image
`sticking.” Id. at 50 (citing Ex. 1010 ¶¶ 12–13). Regarding motivation to
`combine, Petitioner argues 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 ¶ 185–186).
`We credit Petitioner’s expert testimony at this stage of the proceeding,
`and are persuaded by Petitioner’s presentation of arguments supporting this
`ground. On this record, Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claims 5 and 12 in view of
`Tomioka, Nishikawa, and Chaudhari.
`
`13
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`
`
`CONCLUSION
`We have considered the Petition and the evidence relied upon by the
`Petitioner and, for the foregoing reasons, we are persuaded that Petitioner
`has established a reasonable likelihood of prevailing in challenging claims
`1–14 of the ’871 patent. This is not a final decision as to the construction of
`any claim term or the patentability of claims 1–14. Our final decision will
`be based on the full record developed during trial.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is instituted with regard to claims
`1–4, 6–11, 13, and 14 of the ’871 patent under 35 U.S.C. § 103 over
`Tomioka and Nishikawa;
`FURTHER ORDERED that inter partes review is instituted with
`regard to claims 5 and 12 of the ’871 patent under 35 U.S.C. § 103 over
`Tomioka, Nishikawa, and Chaudhari;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing
`on the entry date of this Order; and
`FURTHER ORDERED that the trial is limited to the grounds listed in
`the Order. No other grounds are authorized.
`
`
`14
`
`
`
`IPR2016-00991
`Patent 8,758,871 B2
`
`FOR PETITIONER:
`James R. Barney
`Anthony A. Hartmann
`Shing-Yi Cheng
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`tianmaiprs@finnegan.com
`anthony.hartmann@finnegan.com
`shingyi.cheng@finnegan.com
`
`
`
`FOR PATENT OWNER:
`John Fuisz
`Jennifer Chen
`VINSON & ELKINS LLP
`jfuisz@velaw.com
`jchen@velaw.com
`
`
`
`
`15
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