Paper 11 Tel: Entered: April 30, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Paper 11 Tel: Entered: April 30, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD INNOLUX CORPORATION 1 Petitioner v. SEMICONDUCTOR ENERGY LABORATORY CO., LTD. Patent Owner Case IPR (SCM) Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R See Paper No. 10 (Petitioner s Mandatory Notice updating the Board as to its name change from Chi Mei Innolux Corporation, which Petitioner also refers to as formerly Cheimei Innolux Corporation, to Innolux Corporation as the real party-in-interest in this proceeding). The caption, as it appears above, will be employed in all future correspondence.

2 I. BACKGROUND Petitioner, Chimei Innolux Corp. ( CMI ) 2, filed a Petition 3 to institute an inter partes review of claims 9-11, 15, 17-19, 48, 51, and 52 of U.S. ( the '311 Patent ) 4 owned by Semiconductor Energy Laboratory Co., Ltd. ( SEL ). See 35 U.S.C In response, Patent Owner, SEL, filed a Preliminary Response. 5 The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a): THRESHOLD The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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. Pursuant to the defined threshold under 35 U.S.C. 314(a), the Board institutes an inter partes review of claims 9-11, 15, 17-19, 48, 51, and 52 of the '311 Patent. 6 A. The '311Patent The '311 Patent describes a thin film transistor (TFT) and a method for forming the same (EX 1001, col. 1, ll. 7-10). According to the '311 Patent, 2 While we acknowledge the name change of Petitioner (see footnote 1), we continue to refer to that party as CMI for purposes of this Decision. 3 Petition for Inter Partes Review of U.S. Patent No. 7,923,311 Under 35 U.S.C and 37 C.F.R Et Seq. (Nov. 26, 2012). 4 Based on a terminal disclaimer filed during the prosecution of the application for the '311 Patent, the patent has now expired (Pet. 5, 8-9). 5 Patent Owner Preliminary Response Under 37 C.F.R (Feb.2 6, 2013). 6 A second request for inter partes review of claims 23, 24, 26-40, 42-44, 46, 49, 50, 53, and 54 the '311 Patent was filed concurrently with the instant Petition (IPR ), where a Decision on that petition is being sent out concurrently. 2

3 numerous problems were associated with prior art methods of crystalizing amorphous silicon layers used in devices (Id. at col. 1, ll ). According to the disclosure of the '311 Patent, the later crystallization by laser irradiation of semiconductor materials in the channel region and the activation of the ohmic contact region of the source and drain provides improvements in electrical conductivity and avoids the prior art problems (Id. at col. 1, l col. 2, l. 4). Figures 3(D) and 3(F), which follow, illustrate portions of the method used to fabricate the TFT: A metal layer is deposited on a silicon dioxide layer on a glass substrate and patterned to form a gate electrode, with a gate insulating film, a first semiconductor film, and an N-type semiconductor film deposited thereon (Id. at col. 5, l. 55 col. 6, l. 43). A photoresist (P2) is used to pattern those layers to form a TFT island (Id. at col. 6, ll ; Fig. 3(D)). A conductive layer is deposited on the TFT island, with a photoresist (8, P3) applied thereon (Id. at col. 6, ll ; Fig. 3(F)). Source and drain electrodes (9 & 10) are formed by etching of the conductive layer, using the photoresist (P3), with source and drain regions (11 & 12) being formed from the N-type semiconductor film by the same etching process (Id.). 3

4 In one embodiment, a wet etching process may be applied to the structure represented in Figure 3(F) so that the distance between the source and drain regions (11 & 12), in the channel region, is less than the distance between the source and drain electrodes (9 & 10), as illustrated in Figure 3(G): Thereafter, a passivation film is applied to cover the source and drain electrodes, the source and drain regions, and the channel formation region (Id. at col. 7, ll. 1-9; Fig. 3(H)). In addition, pixel electrodes may be formed over the passivation film, which may form an electrical connection to the source or drain electrode (Id. at col. 7, ll ). B. Illustrative Claim Illustrative claim 9 follows, with emphasis applied: 9. A method of manufacturing a display device including a thin film transistor, the method comprising the steps of: forming a gate electrode over a glass substrate; forming a gate insulating film comprising silicon nitride on said gate electrode; forming a first semiconductor film over said gate electrode with said gate insulating film interposed therebetween; forming an N-type semiconductor film on said first semiconductor film; patterning said first and N-type semiconductor films using a first photomask; forming a conductive layer on at least the patterned N-type semiconductor film; 4

5 etching a portion of said conductive layer to form source and drain electrodes using a resist formed by a second photomask; etching a portion of the patterned N-type semiconductor film to form source and drain regions by dry etching without removing said resist wherein a channel forming region is formed in said first semiconductor film between said source and drain regions; and forming a passivation film over said glass substrate to cover at least said source and drain electrodes, said channel forming region, a part of a surface of said source region not covered by said source electrode and a part of a surface of said drain region not covered by said drain electrode after removing said resist, wherein an upper portion of each of said source and drain regions extend beyond a lower portion of each of said source and drain electrodes so that a distance between the source and drain regions is shorter than a distance between the source and drain electrodes. C. Related Proceedings The '311 Patent is involved with several other related CMI patents in several other inter partes review filings before the PTAB, and also in infringement litigation styled as Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al., SACV JST (C.D. Cal.) (filed Jan. 5, 2012) [hereinafter the CMI Case]. (See Pet. 1-2; Prelim. Resp. 4). Defendants in that case filed a motion on October 22, 2012 to stay that litigation pending the outcome of this instant proceeding (EX 2002), where that request for a stay was granted on December 19, CMI also discusses the prosecution, litigation, and reexamination of related U.S. Patent No. 6,756,258 (EX 1010, the '258 Patent ), where the '258 Patent claims priority to the same Japanese patent application (JP ) that the instant '311 Patent does (Pet. 9). 5

6 D. Prior Art Relied Upon CMI relies upon the following prior art references: Koden U.S. Patent 4,862,234 Aug. 29, 1989 (EX 1004) Kato U.S. Patent 5,054,887 Oct. 8, 1991 (EX 1005) Kwasnick U.S. Patent 5,198,694 Mar. 30, 1993 (EX 1008) Mori U.S. Patent 5,270,567 Dec. 14, 1993 (EX 1003) Noguchi JP Patent Pub Jun. 6, 1989 (EX 1002) Matsuzaki JP Patent Pub Jul. 18, 1989 (EX 1007) Taniguchi JP Patent Pub Sep. 17, 1990 (EX 1006) Peter Van Zant, Microchip Fabrication: A Practical Guide to Semiconductor Processing, pp and 298 (2 nd ed. 1990) ( Van Zant, EX 1009). E. The Asserted Grounds CMI asserts the following obviousness grounds of unpatentability under 35 U.S.C. 103: Claims 9, 10, 15, 48, and 51 over: i) Taniguichi and Mori, or ii) Noguchi, Mori, and Koden, or iii) Matsuzaki, Mori, and Zwasnick; Claim 11 over the above-cited combinations [i) iii)] with the addition of Van Zant; and Claims and 52 over the above-cited combinations [i) iii)] with the addition of Kato. (Pet. 4-5). II. ANALYSIS A. Threshold Issues 1. Prosecution History of the '311 Patent SEL contends that CMI s Petition for Inter Partes Review of the '311 Patent is improper under 35 U.S.C. 325(d) because during prosecution of the application 6

7 leading to the '311 Patent, the PTO examiner who allowed the '311 Patent to issue previously considered all of the same prior art references under consideration here, in that they were all submitted by the patentee in an information disclosure statement, save Kato cited only as a secondary reference (See Prelim. Resp ). That the documents were considered as prior art listed in the prosecution record of the '311 Patent application is a factor which the Board may take into account according to 35 U.S.C. 325(d). However, SEL does not show that the examiner of the '311 Patent application considered substantially the same... arguments, as CMI presents here, another factor which the Board may take into account according to 35 U.S.C. 325(d). Absent a showing of substantially the same... arguments, id., and considering that CMI includes evidence not considered before the '311 Patent examiner, including Kato, even if cumulative as alleged, and the declaration of Jerzy Kanicki, Ph.D. ( Kanicki Decl. ) (Ex. 1014), SEL does not show that the inter partes review of the '311 Patent would be improper under 35 U.S.C. 325(d). 2. Real Parties-In-Interest SEL also contends that this review should be denied because the Petition fails to identify all of the real parties-in-interest as required by 35 U.S.C. 312 (a)(2) and 37 C.F.R. 42.8(b)(1) (Prelim. Resp. 3-10). The Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party-in-interest. As SEL acknowledges, a primary consideration includes whether a non-party exercises control over a petitioner s participation in a proceeding. (See Prelim. Resp. 3, citing Office Patent Trial Practice Guide, 77 Fed. Reg , (August 14, 2012)). Other considerations may include whether a non-party, in conjunction with control, funds the proceeding and directs 7

8 the proceeding (Trial Practice Guide at 60). SEL asserts that co-defendants with CMI, CMO USA, Acer America, ViewSonic, VIZIO, and Westinghouse, in the pending CMI Case (see supra IC), represented to the district court that the co-defendants all participated in filing the instant Petition in support of a district court motion to stay, and that the co-defendants all agreed to be bound by the Inter Partes Review (See Prelim. Resp. 4-10). SEL focuses on statements to the district court in which the codefendants refer to their Petition which Defendants have moved expeditiously to prepare and file. (Prelim. Resp. 5-6 (quoting the codefendants in the CMI Case, emphasis by SEL)). Notwithstanding SEL s assertions, SEL does not set forth persuasive evidence that the district court co-defendants CMO USA, Acer America, ViewSonic, VIZIO, and Westinghouse necessarily have any control over this proceeding. The statements to which SEL refers do not show that these other codefendants had control over the Petition, or will exert control over the proceeding. The statements made in connection with the joint motion to stay may have been a short-hand explanation (e.g., speaking as one unified voice as opposed to explaining in great length who controlled the contents of the Petition, etc.) to the district court of the events leading up to the filing of the instant Petition. Toward that end, only lead counsel for CMI, Scott A. McKeown, signed the Petition (see Pet. 5, 60), which certifies that CMI is the real party-in-interest (Pet. 1). Accordingly, the collective filing of a motion to stay and other assertions do not prove control by each party. As indicated, SEL has not shown, for example, that the co-defendants CMO USA, Acer America, ViewSonic, VIZIO, and Westinghouse necessarily coauthored the Petition or exerted control over its contents, or will exert any control 8

9 over the remaining portions of this proceeding. SEL has failed to provide persuasive evidence that each of the co-defendants in the CMI Case provided funding for the instant Petition, let alone exercised control and funding. That the co-defendants agree to be bound by the decision of this Inter Partes Review insofar as the co-pending litigation is concerned does not dictate that each of the co-defendants are real parties-in-interest in this proceeding. Accordingly, SEL has not demonstrated that CMI has failed to list all the real parties-in-interest under 35 U.S.C. 312 (a)(2) and 37 C.F.R. 42.8(b). 3. Claims of the '258 Patent CMI discusses the disposition of the '258 Patent, where the '258 Patent claims priority to the same Japanese patent application as the instant '311 Patent (see supra IC). That litigation and an inter partes reexamination (95/00,246) resulted in the invalidation or cancellation of many of the claims of the '258 Patent (Pet. 9-10). CMI also alleges that the contested claims of the '311 Patent are obvious variants of claims surrendered or cancelled of the '258 Patent, and provides a comparison chart of claims in both (Pet ). Because of this, CMI also alleges that administrative estoppel prevents the presentation of arguments that are inconsistent with the results of the previous USPTO proceeding (Pet ). SEL argues that CMI is incorrect because i) the claims of the '311 Patent are patently distinct from the cancelled claims in the '258 Patent, and ii) CMI has misapplied interference estoppel to the claims of the '258 Patent (Prelim. Resp ). We need not reach the second contention as we concur with SEL that CMI has not shown persuasively that the claims are patentably indistinct. As provided in CMI comparison chart (Pet. 12), claim 9 of the '311 Patent, element I, details that the etching is performed by dry etching without removing 9

10 said resist. Claim 5 of the '258 Patent, cited for comparison, only provides for an etching step, without any recitations of the type of etching, and that the exposed portion is etched, without recitation that the resist remains in place. While CMI alleges that in the context of the common patent specification there is no difference between the claim terms (Pet. 18), CMI has not persuaded us that the differences between the claims, such as that cited supra, render those claims patentably indistinct. See McCabe v. Cramblet, 65 F.2d 459, (C.C.P.A. 1933). While the representative claims may recite similar limitations, CMI has not persuasively shown that the claims necessarily call for the same invention. Given this, we conclude that no estoppel should necessarily attach to the instant claims of the '311 Patent based on the surrender or cancellation of claims of the '258 Patent. B. Claim Construction The Board s review of the claims of an expired patent is similar to that of a district court s review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). The principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005) (words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art in question at the time of the invention, construing to preserve validity in case of ambiguity) should be applied since the expired claims are not subject to amendment. CMI submits that none of the claim terms contain means-plusfunction or step-plus-function limitations, or appear to recite coined or lexicographical phrases requiring special consideration (Pet. 6), and SEL does not appear to contradict this in their Preliminary Response. CMI also points out that a district court has construed the same or similar claim terms in litigation involving the '258 Patent (Pet. 6), and provides Judge 10

11 Patel s March 27, 2006, claim construction order (EX 1015). In particular, CMI directs attention to the judge s order regarding the term overetching. We have reviewed the district court s claim construction (EX 1015 pp. 3, 4) for the term overetching and hold that CMI has shown that that claim interpretation is consistent with the ordinary and customary meaning as understood by one of ordinary skill in the art. Accordingly, we agree with the district court that overetching can be performed either as a separate step, involving the application of additional etchant, or by extending the original etching such that the etchant undercuts the mask. C. Asserted Grounds of Unpatentability A patent claim is unpatentable under 35 U.S.C. 103(a) if the differences between the claimed subject matter 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 skill in the art, and (4) where in evidence, socalled secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, (1966). In making the threshold determination under 35 U.S.C. 314(a), the Board considers CMI s Petition and SEL s Preliminary Response, and in addition, the prior art and relevant expert report submissions. 11

12 1. Taniguichi and Mori CMI relies on the Kanicki Declaration (EX 1014), Taniguchi (EX 1006), and Mori (EX 1003) to set forth its obviousness challenge to the claims 9, 10, 15, 48, and 51 (See Pet ). In response, SEL focuses attention on independent claim 9 through two major contentions, namely that Taniguchi and Mori fail to disclose element (j) of claim 9 and that there is no motivation to combine Taniguchi and Mori (Prelim. Resp ). We address SEL s contentions as we set forth our determination that CMI has persuaded us that it has met the required showing on the unpatentability of claim 9 for this stage of the proceeding. CMI shows persuasively that Taniguchi discloses the process of forming a TFT on a glass substrate (SUB1), having a gate electrode (GT) formed thereon, with subsequent deposition of an insulating film (GI), an i-type amorphous silicon layer, and an N + -type silicon film (See Pet ; EX 1006, pp. 2, 5, 22; Fig. 22). Thereafter, both semiconductor layers are etched selectively using a photoresist to form the source and drain regions, and multiple metal layers are produced by sputtering and selectively etched to form the source and drain electrodes, resulting in the step-like structure illustrated in Figure 22 (See Pet ; EX 1006, p. 22; Fig. 22). The Kanicki Declaration (EX 1014) provides that Taniguchi discloses that the i-type semiconductor layer (AS) is used as the respective channel formation area for the TFT (Kanicki Decl. 61), and Taniguchi discloses a protection film (PSV 1) that is formed over the channel, regions, and electrodes (See Pet. 24; EX 1006, p. 23; Fig. 22). Figure 22, as annotated by CMI, is reproduced below: 12

13 Although CMI contends that Taniguchi illustrates the distance between source and drain regions being less than the distance between source and drain electrodes (Pet. 25), 7 CMI also cites Mori (EX 1003), Figure 12 of which is provided below, as annotated by CMI: CMI details that Mori discloses the above step-like structure, with the distance between the source and drain regions (35) being less than the distance between source and drain electrodes (36 & 37) (EX 1003, col. 1, l. 50 col. 2, l. 22; Fig. 12). Mori discloses that the step-like structure reduces the gate-tosource and gate-to-drain capacitance problems present in other designs (Id. at col. 2, ll ). CMI argues that this known benefit would have provided 7 Where Dr. Kanicki agrees with this proposition (Kanicki Decl ). 13

14 motivation for ordinarily skilled artisans to provide such a structure in the TFT design of Taniguchi (Pet. 15). This rationale is sufficient to combine Taniguchi and Mori to meet the limitations of claim 9. SEL argues that the upper portions of the source and drain regions, d0, are aligned with the lowest portion of the source and drain electrodes, d1, such that Taniguchi does not meet the last limitation of claim 9, with its recitation of upper and lower portions (Prelim. Resp ) 8. SEL also argues that Dr. Kanicki s testimony ignores the presence of the d1 layer, that any stepped structure between d1 and d0 is not visible in Figure 22 of Taniguchi, and that one of ordinary skill in the art would not have perceived a step from a review of Taniguchi (Prelim. Resp ). Even accepting these positions to be correct, the specific deficiencies of Taniguchi are not fatal because the ground of unpatentability is raised with respect to both Taniguchi and Mori. References must not be read in isolation, but must be read for what they fairly teach in combination with the prior art as a whole. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As such, SEL s argument is not persuasive. SEL also argues that there is no motivation to combine Taniguchi with Mori (Prelim. Resp ). SEL argues that Taniguchi teaches away from creating a step between the chromium layer d1 and the N-type semiconductor layer d0 because the former acts as a barrier layer for the latter against aluminum diffusing from the aluminum layer d2 (Prelim. Resp ). SEL continues that any step 8 Additionally, SEL argues that the Petition should be rejected because pages include extensive arguments in the single-spaced claim chart, which SEL alleges to be improper under 37 C.F.R and We do not conclude that any additional remarks in those charts are extensive and the Petition itself is under 60 pages, per 37 C.F.R Additionally, 37 C.F.R. 42.6(a)(2)(iii) clearly allows for claim charts to be single spaced. As such, we do not reject the Petition on the suggested basis. 14

15 between layers d1 and d0 would expose the N-type semiconductor layer and defeat the purpose of the chromium layer d1 (id.). However, depending on the step created, the chromium layer d1 would still act as a barrier layer. We can find no recitation in Taniguchi that the edges of the chromium layer d1 and the N-type semiconductor layer d0 must be coincident. A step between the layers do and d1 would not create a diffusion path for aluminum from layer d2 during the formation or operation of the transistor, as SEL has argued (id.). As such, we do not find any specific teaching away or a teaching in Taniguchi that would contradict the combination of Taniguchi with Mori. As such, SEL s argument is not persuasive. SEL argues that any attempt to realize Mori s objective of having no overlap between the gate electrode and the source and drain electrodes, to reduce parasitic capacitance, would render the TFT of Taniguchi disabled or unfit for its intended purpose (Prelim. Resp ). If one of ordinary skill in the art would look to Mori and see only the need to eliminate any overlap in the electrodes, then perhaps SEL s argument would be persuasive. However, [c]ombining the teachings of references does not involve an ability to combine their specific structures. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). The test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill in the art would have viewed Mori as teaching the reduction as well as the elimination of parasitic capacitance. To that end, reducing the overlap of the gate electrode with the source and drain electrodes would reduce parasitic capacitances therefrom. While SEL discusses the endpoints of such a process, reducing the size of the gate electrode or receding the source and drain electrodes to achieve zero overlap, such considerations do not take into account the benefits of reducing instead of totally eliminating overlap and thus parasitic capacitances. We conclude that one of 15

16 ordinary skill in the art would have viewed both elimination and reduction in the overlap and the parasitic capacitance as suggestions from Mori, such that Taniguchi would have been modified so that a distance between the source and drain regions is shorter than a distance between the source and drain electrodes, per claim 9. As such, SEL s argument is not persuasive. SEL also argues that there would be no need to combine Taniguchi with Mori because Taniguchi already has solved the problem with which Mori is concerned (Prelim. Resp ). Taniguchi discloses that increasing the size of the gate electrode increases parasitic capacitance, but that the retention capacitance element solves this problem (EX 1006, p. 16). We conclude, however, that SEL s argument improperly makes the good the enemy of the perfect. The fact that the retention capacitance can compensate for the parasitic capacitance does not mean that one of ordinary skill in the art would not also seek to reduce such a parasitic capacitance. We do not take from the recitation in Taniguchi that [t]he retention capacitance element Cadd solves this problem as well that ordinary skilled artisans would have no concern about such parasitic capacitances. Rather, we concur with CMI that one of ordinary skill in the art would have viewed the reduction in parasitic capacitance from Mori as a benefit and would have sought to incorporate aspects into the already stepped structure of Taniguchi to achieve the same, at least to some degree. As such, SEL s argument is not persuasive. SEL also argues that it would be impossible to manufacture the TFT disclosed in Mori, having a stepped structure, by using the method disclosed in Taniguchi, which uses the same resist to etch the N-type semiconductor and first conductive layers (Prelim. Resp ). However, the ground proffered by CMI modifies Taniguchi in view of Mori, such that the efficacy of modifying Mori in view of Taniguchi need not be considered. As such, SEL s argument is not 16

17 persuasive. As to the remaining challenged claims, namely claims 10, 15, 48, and 51, all which depend from independent claim 9, CMI similarly relies on Taniguichi, Mori, and the Kanicki Declaration, and shows persuasively that the prior art combination teaches or renders obvious the additional recited limitations in those claims (See Pet ). SEL s arguments are directed to representative claim 9, and SEL does not appear to contest the specific limitations in the other challenged claims with separate arguments (Prelim. Resp. 22, 34). Pursuant to the foregoing discussion, the Petition establishes a reasonable likelihood of prevailing on the asserted ground of unpatentability of claims 9, 10, 15, 48, and 51as obvious under 35 U.S.C. 103 based on the combination of Taniguichi and Mori. 2. Taniguichi, Mori, and Van Zant With respect to claim 11, CMI also cites Van Zant for its disclosure of overetching and how this may be accomplished through wet etching (Pet ; EX 1009, pp , 228). Given this disclosure, we concur with CMI that it would have been obvious to achieve the structure, discussed supra, through wet etching to enact the overetching. SEL asserts that claim 11 is not obvious over Taniguichi, Mori, and Van Zant for similar reasons SEL provided that claim 9 was not obvious over Taniguichi and Mori (Prelim. Resp. 41). We have addressed these arguments supra and do not determine them to be more persuasive with respect to claim Taniguichi, Mori, and Kato With respect to independent claim 17, CMI identifies differences between the recitations of claims 9 and 17, namely elements c and h, and argues that 17

18 those recitations are disclosed in Taniguchi, buttressed by the Kanicki Declaration (Pet ). SEL does not appear to dispute these aspects of Taniguchi (Prelim. Resp ). CMI cites to Kato for its teaching of a picture element electrode 24 formed on a protective insulating layer 35 and electrically connected to the drain electrode 34b through a contact hole 40 (Pet. 46; EX 1005, col. 3, ll ). We concur with CMI that it would have been obvious to incorporate a pixel electrode, such as provided in Kato, for use with the TFT of Taniguchi, with an electrical connection being made through the passivation film to one of the source or drain electrodes. SEL asserts that claim 17 is not obvious over Taniguichi, Mori, and Kato for similar reasons SEL provided that claim 9 was not obvious over Taniguichi and Mori (Prelim. Resp ). We have addressed these arguments supra and do not determine them to be more persuasive with respect to claim 17. With respect to claims 18, 19 and 52, we determine CMI assertions on the obviousness of those claims (Pet ) to be likewise persuasive for the reasons discussed supra. 4. Other Combinations We determine that it is unnecessary to reach CMI s asserted obviousness grounds of unpatentability involving the combinations of Noguchi, Mori, and Koden, and Matsuzaki, Mori, and Zwasnick, as well as those combinations with Van Zant and Kato, in light of the determination that there is a reasonable likelihood that claims 9-11, 15, 17-19, 48, 51, and 52 are unpatentable based on the grounds on which we institute an inter partes review. We therefore exercise our discretion to deny these grounds as redundant. See 37 C.F.R

19 III. SUMMARY For the forgoing reasons, we determine that the information presented in CMI s petition shows that there is a reasonable likelihood that CMI would prevail with respect to claims 9-11, 15, 17-19, 48, 51, and 52 of the '311 Patent. Accordingly, the petition is granted. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that pursuant to 35 U.S.C. 314, an inter partes review is hereby instituted for the following grounds: 1. Claims 9, 10, 15, 48, and 51 are unpatentable under 35 U.S.C. 103(a) over Taniguichi and Mori; 2. Claim 11 is unpatentable under 35 U.S.C. 103(a) over Taniguichi, Mori, and Van Zant; and 3. Claim and 52 are unpatentable under 35 U.S.C. 103(a) over Taniguichi, Mori, and Kato. FURTHER ORDERED that the Petition is denied as to the other grounds set forth in the Petition; FURTHER ORDERED that pursuant to 35 U.S.C. 314(a), Inter Partes Review of the '311 Patent is hereby instituted with trial commencing on the entry date of this Order, and pursuant to 35 U.S.C. 314(c) and 37 C.F.R. 42.4, notice is hereby given of the institution of the trial; FURTHER ORDERED that the trial is limited to the grounds identified immediately above and no other ground is authorized for the '311 Patent claims 9-11, 15, 17-19, 48, 51, and 52; and 19

20 FURTHER ORDERED that an initial conference call with the Board is scheduled for 2:00 PM ET on May 28, The parties are directed to the Office Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012) for guidance in preparing for the initial conference call, and should be prepared to discuss any proposed changes to the Scheduling Order entered herewith and any motions the parties anticipate filing during the trial. For Petitioner: Scott A. McKeown OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P Duke Street Alexandria, VA Gregory S. Cordery JEFFER MANGELS BUTLER & MITCHELL LLP 3 Park Plaza, Suite 1100 Irvine, CA gcordrey@jmbm.com For Patent Owner: Mark J. Murphy Edward D. Manzo HUSCH BLACKWELL LLP 120 So. Riverside Plaza, #2200 Chicago, IL Mark.murphy@huschblacksell.com Edward.manzo@huschblackwell.com 20