41 for 46: Two IPR Trials Initiated After Detailed Obviousness Analysis by Board

iStock_000000202778XSmallChimei Innolux Corporation (CMI), an early veteran of inter partes review proceedings, had two more petitions for granted. CMI was challenging two Semiconductor Energy Laboratory (SEL) patents in cases styled as Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd. (IPR2013-00066 and IPR2013-00068), involving U.S. Pat. Nos. 7,876,413 and 8,068,204.  The IPR trials were granted based on all challenged claims of the subject patents.

The ‘413 and ‘204 patents relate to liquid-crystal display (LCD) devices with two opposing substrates bonded to each other with a sealant. More precisely, the two patents disclose a solution to the problem of non-uniform seals which create an uneven gap between the substrates and can lead to deterioration of picture quality. The patents also describe connecting two conducting lines in parallel through the insulating film of the device along with an adjustment layer.

At the outset of both decisions, the Board addressed Patent Challenger’s request that the Board intercede in Patent Owner’s pending patent application and take immediate jurisdiction over all related applications.  Order at 6.  Treating the request as a motion, the Board denied Patent Challenger’s request.  Simply, Patent Challenger did not show that the claims in the pending application were patentably indistinct from the claims at issue in the IPR and, as such, Patent Challenger had failed to show why the Board should intercede.  Id. 

Next, the Board rejected Patent Owner’s argument that inter partes review petitions were improper pursuant to 35 USC §325(d) because the prior art references were already considered during the prosecution of the applications leading to each patent. The Board stated that without demonstrating that substantially the same arguments were made both times, the inter partes review would not be improper. Next, the Board in each case evaluated Patent Owner’s contention that the review should be denied because the petition failed to identify all real parties-in-interest. SEL asserted that several other co-defendants with Patent Challenger in a pending case all agreed to be bound by inter partes review, but the petition failed to identify them as real parties-in-interest. Because the Board did not find that SEL presented any persuasive evidence that these additional parties had any control over the IPR proceeding, it denied SEL’s contention.  More specifically, the Board might have been persuaded by evidence that the third parties authored the Petition, exerted control over its contents, provided funding for the Petition, etc.  CMI I Order at 9.

Having dispensed with SEL’s procedural challenges, the Board continued with a claim construction analysis, centering on the phrase, “contact through an opening,” and more specifically the definition of, “through.” SEL argued that the phrase meant, “made possible by (or by virtue of) the opening.” CMI did not submit its own interpretation, and the Board found SEL’s interpretation of the phrase to be consistent with the ordinary meaning of the phrase, in light of dictionary definitions of the term, “through.” (The American Heritage Dictionary of the English Language).

The Board then moved on to analyze Patent Challenger’s asserted grounds of unpatentability. In each case, Patent Challenger asserted all challenged claims were unpatentable as being obvious over two combinations of prior art references. Using an expert declaration from Patent challenger, the Board proceeded through a fairly straightforward obviousness analysis, concluding that in each case, the challenged claims were obvious over the prior art, with one of the two combinations of references in each case being denied as redundant. As has been previously seen, the Board showed a willingness to grant IPR trial on obviousness grounds using prior art that was already considered during the prosecution of the application that lead to the patent(s) in question.

In summary, the Board granted the petition of Patent Challenger as to all of the challenged claims in the ‘413 and ‘204 patent on obviousness grounds.