Samsung Display Co., Ltd.v.Gold Charm Limited

Patent Trial and Appeal Board

Nov 13, 2015

10923432 (P.T.A.B. Nov. 13, 2015)

Trials@uspto.gov Paper 12
571–272–7822 Entered: November 13, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

SAMSUNG DISPLAY CO., LTD., FUNAI ELECTRIC CO., LTD., and
TOSHIBA CORP.,
Petitioner,

v.

GOLD CHARM LTD.,
Patent Owner.
_______________

Case IPR2015-01452
Patent 7,460,190 B2
_______________

Before KARL D. EASTHOM, BRYAN F. MOORE, and CHARLES J.
BOUDREAU, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Samsung Display Co., Ltd., Funai Electric Co., Ltd., and Toshiba
Corp. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes
review of claims 1–14 of U.S. Patent No. 7,460,190 B2 (Ex. 1001,
“’190 patent”). See Pet. 1. In response, Gold Charm Ltd. (“Patent Owner”)
filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). 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.” 35 U.S.C. § 314(a).
For the reasons set forth below, we do not institute an inter partes
review of claims 1–14 of the ’190 patent.
A. Related Proceedings
Petitioner indicates that Patent Owner asserts the ’190 patent against
various defendants in the District of Delaware. See Pet. 1–2.
B. The ’190 Patent
The ’190 patent discloses an LCD display device having amorphous-
silicon TFTs (thin-film-transistors). Ex. 1001, 1:18–20, 5:57–64, Fig. 2F. A
disclosed TFT has a larger channel length at both the edge portions of the
channel. Id. at Fig. 1 (reproduced below). For example, the embodiment
represented in Figure 1 includes chamfers at the corners of source and drain
electrodes, thereby exposing and creating a larger channel region length L2
at the corners of the electrodes relative to the center length L1. See id. at
5:35–41. According to the ’190 patent, this type of channel structure
reduces leakage current caused by light incident onto the channel. Id. at
Abstract, 5:47–51.
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Figure 1 of the ’190 patent is reproduced below:

Figure 1 above depicts a larger channel length L2 at edge portions 14a
and 14c of channel 14 between drain 12 and source 13 electrodes, as
compared to length L1 at a center portion of channel 14. Id. at 5:32–51.
“[T]he drain electrode 12 and the source electrode 13 oppose each other,
with an intervention of the channel region 14 disposed therebetween in an
a-Si layer, which underlie[s] the drain electrode 12 and the source electrode
13.” Id. at 5:32–35. This structure reduces “leakage current caused by the
light reflected from the gate electrode 11 . . . due to the larger channel
length” L2 at the edges of the channel. Id. at 5:49–51.
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C. Illustrative Challenged Claim
Claims 1, 9, and 13 are independent. Claim 1 follows.
1. A liquid crystal display (LCD) device comprising a
TFT (thin-film-transistor) substrate mounting thereon a
plurality of TFTs each having a channel in an ohmic contact
layer and a semiconductor layer;

a counter substrate mounting thereon a black matrix;

a liquid crystal layer sandwiched between said TFT
substrate and said counter substrate;

a backlight unit disposed at a rear side of said TFT
substrate for irradiating said TFT substrate with backlight, said
counter substrate mounting thereon a light shield overlapping
said channel of said TFTs as view normal to said counter
substrate; and

a rear shield film interposed between said channel of said
TFTs and said backlight unit to overlap said channel of said
TFTs s viewed normal to said TFT substrate,

said channel having a channel length larger at an edge
portion of said channel adjacent to one of said pixels than at a
central portion thereof, whereupon leakage current of said TFT
at said edge portion is suppressed.
Ex. 1001, 10:18–36.
D. Evidence of Record
Petitioner relies on the following references and declaration:
Reference or Declaration Exhibit No.
Declaration of George A. Melnik, Ph.D. Ex. 1008
U.S. Patent No. 5,563,432 (Oct. 8, 1996) (“Miura”) Ex. 1003
U.S. Patent No. 6,466,289 (Oct. 15, 2002) (“Lee”) Ex. 1004
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Reference or Declaration Exhibit No.
Japanese Pub. Patent App. No. H2-216870 (Aug. 29,
1990) (“Hirikawa”)
Ex. 1005
See Pet. 4, 11–15.
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claims Challenged Basis References(s)
1–14 35 U.S.C. § 103(a) Miura
1–14 35 U.S.C. § 103(a) Lee and Miura
1–10 and 12–14 35 U.S.C. § 103(a) Admitted Prior Art
and Hirikawa
See Pet. 4.
I. ANALYSIS
A. Claim Construction
The claims of an unexpired patent are interpreted using the broadest
reasonable interpretation in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1278–79 (Fed. Cir. 2015).
If the scope of the claims cannot be determined without speculation,
the differences between the claimed invention and the prior art cannot be
ascertained. BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-
00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re
Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art
grounds of unpatentability must fall, pro forma, because they are based on
speculative assumption as to the meaning of the claims”). In other words,
“[w]ithout ascertaining the proper claim scope, we cannot conduct a
necessary factual inquiry for determining obviousness—ascertaining
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differences between the claimed subject matter and the prior art.” Id. at 20
(citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
B. “channel,” independent claims 1, 9, and 13
As Petitioner contends, “[a]ll of the independent claims include a
‘channel.’” Pet. 13. Addressing the channel, Petitioner reproduces and
annotates Figure 15 from the ’190 patent, as follows:

Id. (Petitioner annotating Ex. 1001, Fig. 15). As color-coded by Petitioner,
Figure 15 represents ohmic contact 233a (sky blue), ohmic contact 233b
(orange), drain electrode 225 (green), source electrode 226 (yellow), gate
222 (purple), and an a-Si (amorphous silicon) layer 224 (red and uncolored
hatched regions) in a sectional view of a TFT. See Ex. 1001, 1:24–25, 1:49–
50, 2:8–13; Pet. 13–14. According to Petitioner, the red portion 234 of a-Si
layer 224, marked as having a length “L,” constitutes a “‘channel’ region”
corresponding to the channel recited in the claims. See Pet. 13–14; Ex.
1001, 2:12–13 (“length of the channel region 234 is ‘L’ as shown in” Fig.
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15); see also supra Fig. 1 (similar channel 14 in top plan view, including
regions 14a, 14b, 14c).
Petitioner explains that “[t]he ohmic contacts [233a, 233b] are where
the semiconductor layers [224] are electrically contacted by the source and
drain electrodes [225, 226] through the ohmic contact layers.” Pet. 13–14
(citing Ex. 1008 ¶ 30). Based on the ’190 patent Specification and
testimony by Dr. Melnik (Ex. 1008), Petitioner concludes that “a POSA
would have understood ‘channel’ to include a portion of the semiconductor
layer between two regions where the semiconductor layer is electrically
connected to the source and drain electrodes and overlies the gate electrode.”
Pet. 14.
Patent Owner disagrees with Petitioner’s proposed claim construction,
but agrees with the underlying facts about the location of the channel––i.e.,
it resides in an a-Si region and does not include ohmic contact layers. For
example, Patent Owner contends that
[t]he channel region (channel) 14 is the part of the a-Si
semiconductor layer 23 which is between the source electrode
13 and the drain electrode 12. The region that is turned on and
off by the gate electrode 11 (i.e., the channel) is in the a-Si
semiconductor layer 23, and does not include the ohmic contact
layer 24a or 24b.
Prelim. Resp. 24 (emphases in italics added).

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To support its position, Patent Owner reproduces and annotates Figure
2F from the ’190 patent, as follows:

Id. (Patent Owner annotating Ex. 1001, Fig. 2F). Figure 2F portrays channel
14 in semiconductor region 23 in a sectional view of a TFT. Ex. 1001,
4:36–37, 6:7–10; see also supra Fig. 1 (channel 14 in top plan view). Based
on its assertion concerning the knowledge of an ordinarily skilled artisan
viewing the ’190 patent, Patent Owner contends that a “channel” should be
construed as “a region of a TFT between a source electrode and a drain
electrode that overlies the gate electrode and through which charge carriers
flow when the TFT is in an ON state.” Prelim. Resp. 28.
Despite the two proffered constructions, which differ, the parties
agree that the claimed channel “does not include the ohmic contact layer.”
Prelim. Resp. 24; accord Pet. 13 (“a channel cannot be formed in an ohmic
contact layer but it can be so formed in a semiconductor layer”) (citing Ex.
1008 ¶¶ 21, 29).

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C. “each [TFT] having a channel in an ohmic contact layer and a
semiconductor layer”
The agreed understanding between the parties about the location of
the channel underlies and highlights a clarity problem, because the
challenged independent claims specifically recite contrary structure: “each
[TFT] having a channel in an ohmic contact layer and a semiconductor
layer.” Claim 1 (emphasis added); accord claims 9, 13 (similar recitation).
Recognizing the problem with this phrase, both parties essentially propose
rewriting it: Petitioner contends that “the only reasonable interpretation of
the phrase ‘channel in an ohmic contact layer and a semiconductor layer’
is . . . ‘an ohmic contact layer and a channel in a semiconductor layer.’” Pet.
13. On the other hand, Patent Owner contends “an artisan would clearly
understand that ‘a channel in an ohmic contact layer[]” simply means “a
region formed by the ohmic contact layer and the semiconductor layer in a
channel etching process.” Prelim. Resp. 25 (emphases added) (arguing also
that “the channel would not be formed if the central portion of the ohmic
contact layer was not etched away”).
Neither party cites proper legal authority for what amounts to
rewriting the claim phrase in one of manners proposed. Both proposals
cannot be correct, and therefore point to an effective material change, as the
parties disagree over the claim construction. See Ultimax Cement Mfg.
Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009)
(courts can correct obvious typographical errors “if the correction is not
subject to reasonable debate . . . and the prosecution history does not suggest
a different interpretation”). Further exemplifying the materiality of the
disputed construction, Patent Owner relies on its construction and argues
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that Miura does not teach or suggest the “channel etching process.”
Prelim. Resp. 38, see also id. at 33 (arguing, based on “Patent Owner’s
proper claim construction of ‘channel,’” that “Miura’s TFT is not a region of
a TFT between a source electrode and a drain electrode through which
charge carriers (e.g., electrons) flow when the TFT is in an ON state”).
Patent Owner’s arguments reduce to the assertion that a skilled artisan
knew that the disputed claim phrase meant something other than what it
plainly recites. See Prelim. Resp. 21–25.
1
For its part, Petitioner contends
that “there are several limitations throughout the claims that violate
35 U.S.C. §112,” and “[w]hile Petitioners have provided a broadest
reasonable claim construction for such claim limitations, that should not be

1
Noting that Applicant added the disputed claim phrase in claim
amendments during prosecution, Patent Owner argues that “the Examiner
did not raise any indefiniteness issues” and “knew exactly what this feature
referred to,” because the Examiner read the feature onto prior art Figure 15
of the ’190 patent. See Prelim. Resp. 21–22 (citing Ex. 1002, 131, 144,
255). That the Examiner failed to reject the claims for indefiniteness does
not show clarity. The argument merely highlights that the phrase was not at
issue during prosecution. See Ex. 1002, 46–47, 131–132. The record
indicates that the Examiner reasoned that the most of the claim structure
(i.e., apart from the channel length recitations), as amended, must read on
the admitted prior art structure as disclosed in the ’190 patent, because the
admitted prior art structure is similar to other disclosed structure (i.e.,
structure upon which claims typically find support). See, e.g., Ex. 1002, 46–
47 (relying on admitted prior art, “AAPA,” as teaching everything except the
“channel length” feature), 74–75 (same); 120–126 (Applicant amending the
claims without presenting arguments directed to the disputed phrase); Ex.
1001, 1:14–3:40 (modifying known prior art LCD displays by altering an a-
Si channel structure to decrease leakage current); Pet. 6–10 (discussing
Examiner’s reliance on AAPA). Moreover, the prosecution Examiner did
not have the benefit from this record of the proposed claim constructions and
arguments by the parties.
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construed as waiver to challenge validity under §112 in an appropriate venue
for such challenges.” Pet. 12.
Contrary to Patent Owner’s assertion, “it is of no moment that the
contradiction is obvious: semantic indefiniteness of claims ‘is not rendered
unobjectionable merely because it could have been corrected.’” Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002) (citation
omitted) (“Allen argues that one of skill in the art would understand that the
term ‘perpendicular’ in the claim should be read to mean ‘parallel.’ Allen
stretches the law too far. It is not our function to rewrite claims to preserve
their validity.”); see also Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1375 (Fed. Cir. 2004) (“we have repeatedly declined to rewrite
unambiguous patent claim language” even if “otherwise the patented process
could not perform the function the patentees intended”); Elekta Instrument
S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000)
(“unambiguous language of the amended claim controls over any
contradictory language in the written description”); Process Control Corp. v.
HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999) (“we must
construe the claims based on the patentee’s version of the claim as he
himself drafted it”).
Further, according to Patent Owner, Petitioner’s proposed
construction results in a structure that “is not the structure that Applicant
chose to claim.” See Prelim. Resp. 25. On the other hand, Patent Owner’s
proposal similarly amounts to rewriting the claimed structure––by removing
a portion of the ohmic contact layer via a product-by-process step of
etching––a step that is not claimed. See id. (“the channel would not be
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formed if the central portion of the ohmic contact layer was not etched
away”).
D. “said channel having a channel length larger at an edge portion of
said channel adjacent to one of said pixels than at a central portion thereof,
whereupon leakage current of said TFT at said edge portion is suppressed”
Claims 1, 9, and 13 each recite a “channel” phrase that refers back to
the “channel” recited in the problematic disputed phrase. That is, claim 1
recites “said channel having a channel length larger at an edge portion of
said channel adjacent to one of said pixels than at a central portion thereof,
whereupon leakage current of said TFT at said edge portion is suppressed.”
Claims 9 and 13 recite a similar phrase. As explained above, the disputed
phrase requires the recited channel to include the ohmic contact layer. Yet
nothing in the original ’190 patent Specification clearly refers to “a channel
length” in an ohmic contact layer (and adjacent to a pixel).
2
Rather, as the
parties essentially contend, the ’190 patent Specification focuses on channel
lengths L (including L1, L3, L5, etc.) in a length of silicon (a-Si) that does
not include the ohmic contact layer, wherein the channel length spans
through an a-Si layer between a source and drain electrode. See Ex. 1001,
Fig. 1 (channel length L1); Fig. 2F (channel length L); Fig. 4 (channel length
L3); Fig. 8 (channel length L5); Prelim. Resp. 24–28, 35; Pet. 12–14.
Accordingly, in addition to the lack of clarity regarding the meaning
of “channel” as recited in the disputed phrase, the recited “channel length”
lacks a meaningful frame of reference from which to ascertain the claimed

2
In claim 1, “said pixels” lacks antecedent basis, raising another clarity
problem with respect to challenged claims 1–8. As disclosed, a “pixel”
electrode connects to a source electrode: “The source electrode 226 is
connected to the pixel electrode 229 via a through hole 228.” Ex. 1001, 2:1–
2 (describing prior art Fig. 15).
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length. For example, the channel may or may not begin in, traverse, or end,
in an ohmic contact layer. See, e.g., Ex. 1001, Fig. 2F. In addition, with
respect to claim 1, the channel starts “adjacent” to an unclaimed pixel, the
location of which is not clear. See supra note 2.
As explained at the outset, determining if the prior art renders the
claims obvious necessarily requires resolving facts and determining the
scope of the claims. See BlackBerry, Case IPR2013-00036 (Paper 65, 19–
20). Based on the foregoing discussion, “the prior art grounds of
unpatentability must fall, pro forma, because they [would be] based on
speculative assumption as to the meaning of the claims.” See id. at 20
(citing In re Steele, 305 F.2d at 862–63). Therefore, we decline to institute
an inter partes review of claims 1–14.
E. Remaining Contentions
The above determination makes it unnecessary to resolve any other
disputes, including Patent Owner’s assertion that Petitioner failed to list all
the real parties-in-interest. See Prelim. Resp. 5–15.
II. CONCLUSION
For the foregoing reasons, we determine that the information
presented does not show that there is a reasonable likelihood that Petitioner
would prevail at trial with respect to at least one claim of the ’190 patent,
based on any grounds presented in the Petition. We deny the Petition for
inter partes review of claims 1–14.
III. ORDER
Accordingly, it is
ORDERED that that the Petition is DENIED as to all challenged
claims, and no trial is instituted.
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For PETITIONER:

Jay Alexander
jalexander@cov.com

Andrea Reister
areister@cov.com

Gregory Discher
gdischer@cov.com

Paul Meiklejon
meiklejohn.paul@dorsey.com

Clinton Conner
conner.clint@dorsey.com

Adam Floyd
floyd.adam@dorsey.com

Steven Kelber
skelber@labgoldlaw.com

Marc Labgold
mlabgold@labgoldlaw.com

For PATENT OWNER:

Aaron Ettelman
aettelman@panitchlaw.com

Jeffrey Gluck
jgluck@panitchlaw.com

John D. Simmons
jsimmons@panitchlaw.com

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Frederick Tecce
ftecce@panitchlaw.com

Clark Jablon
cjablon@panitchlaw.com

Dennis Butler
dbutler@panitchlaw.com

Stephen Murray
smurray@panitchlaw.com