IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`PICTIVA DISPLAYS INTERNATIONAL LTD.,
`Patent Owner.
`
`
`Case No. IPR2024-01187
`Patent No. 9,257,492
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`9,257,492 UNDER 35 U.S.C. §§ 311–319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`TABLE OF CONTENTS
`
`Contents
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`FEE
`AND
`NOTICES
`MANDATORY
`STANDING,
`AUTHORIZATION ....................................................................................... 2
`
`III.
`
`SUMMARY OF CHALLENGE .................................................................... 4
`
`IV. OVERVIEW OF THE ’492 PATENT ........................................................... 6
`
`A.
`
`Prosecution History .............................................................................. 8
`
`V.
`
`LEVEL OF ORDINARY SKILL ................................................................... 9
`
`VI. CLAIM CONSTRUCTION ........................................................................... 9
`
`VII. OVERVIEW OF PRIOR ART ....................................................................... 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`Ingle (Ex.1004, Ex.1005) ..................................................................... 9
`
`Hasei (Ex.1006, Ex.1007) .................................................................. 12
`
`Hanamura (Ex.1008) .......................................................................... 14
`
`Egitto (Ex.1013) ................................................................................. 16
`
`VIII. APPLICATION OF PRIOR ART TO THE CHALLENGED CLAIMS
` ...................................................................................................................... 17
`
`A. Ground I: Claims 1, 2, 8-11, and 16 Are Obvious Over Ingle in
`view of Hasei ...................................................................................... 17
`
`1. Motivation to Combine Ingle and Hasei .................................. 18
`
`a)
`
`b)
`
`Ingle contemplates forming an optoelectronic assembly
`using a conventional process, like that of Hasei. ..................... 18
`
`Both Ingle and Hasei teach forming an OLED device using
`structured application of layers, and Ingle teaches a
`substrate suitable for this purpose. ........................................... 21
`
`i
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Independent Claim 10 .............................................................. 26
`
`Dependent Claim 11: “The method as claimed in claim 10,
`wherein before the optically functional layer is applied, the
`second electrically conductive layer is removed in the
`component region and the optically functional layer is
`applied to the first electrically conductive layer in the
`component region.” .................................................................. 39
`
`Independent Claim 1 ................................................................ 42
`
`Dependent Claim 2: “The method as claimed in claim 1,
`wherein a first electrode of a capacitor is formed by the
`first contact region between the dielectric and the substrate
`and a second electrode of a capacitor is formed by the
`electrode layer on a side of the dielectric facing away from
`the first contact region.” ........................................................... 45
`
`Dependent Claim 8: “The method as claimed in claim 1,
`wherein the dielectric is applied by a printing method.” ......... 46
`
`Dependent Claim 9: “The method as claimed in claim 1,
`wherein the dielectric firstly is applied in a structured
`fashion to the second electrically conductive layer in such
`a way that it adjoins the first trench, and wherein then the
`dielectric is heated in such a way that it deforms and
`encapsulates edges and/or side surfaces of the first and
`second electrically conductive layers in the first trench.” ....... 46
`
`8.
`
`Independent Claim 16 .............................................................. 48
`
`B.
`
`Ground II: Claims 1, 2, 8, and 16 Are Obvious Based on
`Hanamura ........................................................................................... 50
`
`1.
`
`2.
`
`Independent Claim 1 ................................................................ 50
`
`Dependent Claim 2: “The method as claimed in claim 1,
`wherein a first electrode of a capacitor is formed by the
`first contact region between the dielectric and the substrate
`and a second electrode of a capacitor is formed by the
`electrode layer on a side of the dielectric facing away from
`the first contact region.” ........................................................... 56
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`3.
`
`Dependent Claim 8: “The method as claimed in claim 1,
`wherein the dielectric is applied by a printing method.” ......... 58
`
`4.
`
`Independent Claim 16 .............................................................. 58
`
`C.
`
`Ground III: Claims 3, 5, and 6 Are Obvious Based on Hanamura
`in view of Egitto ................................................................................. 60
`
`1.
`
`2.
`
`3.
`
`Dependent Claim 3: “The method as claimed in claim 1,
`wherein before the dielectric is applied, a second trench
`and at least one third trench are formed, which delimit a
`resistance region, which comprises a part of the first and
`second electrically conductive layers and which has a
`taper in a direction parallel to the electrically conductive
`layers and which leads into the first contact region on a
`first side of the taper. ............................................................... 60
`
`Dependent Claim 5: “The method as claimed in claim 3,
`wherein the resistance region is formed such that it forms
`a third contact region on a second side of the taper and thus
`forms a resistor that is electrically connected in series with
`the capacitor.” .......................................................................... 68
`
`Dependent Claim 6: “The method as claimed in claim 2,
`wherein a plurality of capacitors and/or resistors are
`formed electrically in parallel with one another and/or
`electrically in series one after another.” ................................... 69
`
`IX. DISCRETIONARY DENIAL IS INAPPROPRIATE UNDER FINTIV ..... 70
`
`X.
`
`CONCLUSION ............................................................................................. 72
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`TABLE OF EXHIBITS
`
`Exhibit No.
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`Description
`U.S. Patent No. 9,257,492
`File History for U.S. Patent No. 9,257,492
`Declaration of Alex Kattamis, Ph.D.
`World Intellectual Property Organization Published
`Application No. 2011/036089 A1 (Ingle)
`Certified English Translation of World Intellectual Property
`Organization Published Application No. 2011/036089 A1
`(Ingle)
`Japanese Patent Application Publication No. JP 2003-317610
`(Hasei)
`Certified English Translation of Japanese Patent Application
`No. JP 2003-317610 (Hasei)
`U.S. Patent No. 5,691,877 (Hanamura)
`LEFT BLANK
`U.S. Patent No. 7,817,117
`LEFT BLANK
`LEFT BLANK
`U.S. Patent Publication No. 2009/0178271 (Egitto)
`James L. Sanford and Frank R. Libsch, TFT AMOLED Pixel
`Circuits and Driving Methods, 4.2 SID 03 Digest 10-12
`(2003)
`Reiji Hattori et al., Current-Writing Active-Matrix Circuit for
`Organic Light-Emitting Diode Display Using aSi:H Thin-
`Film-Transistors, IEICE Trans. Electron., Vol.e83-C, No. 5
`(May 2000)
`U.S. Patent No. 3,997,411 (Muenz)
`James W. Nilsson and Susan A. Riedel, Electric Circuits,
`Addison-Wesley Publishing Co. (5th ed. 1996)
`Alan B. Grebene, Bipolar And MOS Analog Integrated
`Circuit Design, John Wiley & Sons (1983)
`IEEE 100, The Authoritative Dictionary of IEEE Standards
`Terms (7th ed. Dec. 2000)
`Jiun-Haw Lee et al., Introduction To Flat Panel Displays,
`John Wiley & Sons (2008)
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`Exhibit No.
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`Description
`Robert A. Street, Technology and Applications of Amorphous
`Silicon in Materials Science, Vol. 37 (2000)
`Gary S. May and Costas J. Spanos, Fundamentals of
`Semiconductor Manufacturing and Process Control (2006)
`Bruce E. Kahn, Printing Methods for Printed Electronics,
`Soc’y For Imagin Sci. & Tech.: NIP24 and Digital
`Fabrication 15-20 (2008), https://doi.org/10.2352/ISSN.2169-
`4451.2008.24.1.art00005_1
`Ana C. Arias et al., Materials and Applications for Large
`Area Electronics: Solution-Based Approaches, 110 Chemical
`Reviews 3-24 (2010)
`Docket Control Order, Pictiva Displays International Ltd. v.
`Samsung Elec. Co., Ltd., No. 2:23-cv-00495, Dkt. #40 (E.D.
`Tex. Apr. 17, 2024)
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`I.
`
`INTRODUCTION
`
`Samsung Display Co., Ltd. (“Petitioner”) petitions for inter partes review
`
`(“IPR”) seeking cancellation of claims 1-3, 5, 6, 8-11, and 16 (the “Challenged
`
`Claims”) of U.S. Patent No. 9,257,492 (Ex.1001, “’492 patent”), nominally assigned
`
`to Pictiva Displays International Ltd.
`
`The Challenged Claims are directed to a passive electronic component (e.g.,
`
`a capacitor), a method for producing a passive electronic component, and a method
`
`for producing an optoelectronic assembly that comprises both a passive electronic
`
`component and an optoelectronic component (e.g., an organic light emitting diode
`
`(“OLED”)). According to the claimed methods, both the dielectric layer and
`
`electrically conductive electrode layer are formed “in a structured fashion.”
`
`The inventor of the ’492 patent, Andrew Ingle, disclosed the majority of the
`
`alleged invention more than two years earlier, in a PCT application that published
`
`on March 31, 2011. Like the ’492 patent, PCT Application Publication No. WO
`
`2011/036089 A1 (“Ingle”) disclosed “a method for producing an electronic
`
`component and an electronic component,” including a capacitor and an OLED.
`
`Ingle, 1:8-9, 6:3-7. And like the ’492 patent, Ingle disclosed that layers could be
`
`deposited in a structured fashion, including through the aid of self-assembling
`
`monolayers and printing processes. See id., 6:19-24, 15:26-35. Similarly, prior art
`
`Japanese Patent Application Publication No. JP 2003-317610 (“Hasei”) already
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`taught the use of inkjet printing to selectively deposit electrodes and thereby avoid
`
`the drawbacks of conventional photolithographic processes. The combination of
`
`Ingle and Hasei renders obvious all the limitations of claims 1, 2, 8-11, and 16, as
`
`shown in Ground I.
`
`Beyond the inventor himself, U.S. Patent No. 5,691,877 (“Hanamura”), issued
`
`well before the ’492 patent, taught and/or suggested the same method for producing
`
`electronic assemblies including both capacitors and resistors. Meanwhile, U.S.
`
`Patent Publication No. 2009/0178271 (“Egitto”) disclosed how to manipulate the
`
`shape and size of resistor materials to control their overall resistance. Hanamura
`
`renders obvious all the limitations of claims 1, 2, 8, and 16, as shown in Ground II.
`
`The combination of Hanamura and Egitto renders obvious all the limitations of
`
`claims 3, 5, and 6, as shown in Ground III.
`
`II.
`
`STANDING, MANDATORY NOTICES AND FEE AUTHORIZATION
`
`Grounds for Standing: Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies
`
`that the ’492 patent is available for IPR and that Petitioner is not barred or estopped
`
`from requesting an IPR challenging the ’492 patent on the ground identified in this
`
`petition.
`
`Real Party-in-Interest: Petitioner identifies Samsung Display Co., Ltd.,
`
`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. as real
`
`parties-in-interest.
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`Related Matters: Patent Owner has asserted the ’492 patent in litigation
`
`against Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. in
`
`Pictiva Displays International Ltd. v. Samsung Electronics Co., Ltd., Case No. 2:23-
`
`cv-00495 (E.D. Tex.) and Pictiva Displays International Ltd. v. Samsung
`
`Electronics Co., Ltd., Case No. 2:24-cv-00532 (E.D. Tex.).
`
`Lead and Back-Up Counsel: Petitioner designates Scott C. Weidenfeller
`
`(Reg. No. 54,531, SWeidenfeller@cov.com) as lead counsel, of Covington &
`
`Burling LLP, One CityCenter, 850 Tenth Street, NW, Washington, DC 20001
`
`(postal and hand delivery), telephone: (202) 662-6000, facsimile: (202) 662-6291.
`
`Petitioner designates David A. Garr (Reg. No. 74,932, dgarr@cov.com) as
`
`back-up counsel, of Covington & Burling LLP, One CityCenter, 850 Tenth Street,
`
`NW, Washington, DC 20001 (postal and hand delivery), telephone: (202) 662-6000,
`
`facsimile: (202) 662-6291.
`
`Service Information: Service information is provided in the designation of
`
`counsel above. Petitioner consents to service of all documents via electronic mail at
`
`the email addresses above and at SDC-Pictiva-IPR@cov.com.
`
`Fee Authorization: The Office is authorized to charge all fees due in
`
`connection with this proceeding to Deposit Account No. 60-3160.
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`III.
`
`SUMMARY OF CHALLENGE
`
`Petitioner requests IPR based on the following grounds:
`
` Ground I: Claims 1, 2, 8-11, and 16 are obvious over Ingle in view of
`
`Hasei;
`
` Ground II: Claims 1, 2, 8, and 16 are obvious over Hanamura; and
`
` Ground III: Claims 3, 5, and 6 are obvious over Hanamura in view of
`
`Egitto.
`
`The ’492 patent is a U.S. national stage application of PCT Application No.
`
`PCT/EP2013/067348, filed August 20, 2013, and claims priority to a foreign
`
`application filed September 27, 2012. Petitioner’s challenge is based on the
`
`following references, which are available as prior art under 35 U.S.C. § 102 (AIA)1
`
`as shown in the following table:
`
`
`1 The application for the ’492 patent was filed after March 16, 2013, but claims
`
`priority to a German patent application filed prior to March 16, 2013. During
`
`prosecution, the application was “examined under the first inventor to file provisions
`
`of the AIA.” Ex.1002, 471. Accordingly, it is treated as such herein. Nevertheless,
`
`as shown, the references relied upon qualify as prior art, and render obvious the
`
`Challenged Claims, under both the AIA and pre-AIA conditions for patentability.
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`Exhibit
`
`Reference
`
`Date(s)
`
`WO
`2011/036089
`A1 (Ingle)
`
`Filed Sept. 16, 2010;
`Published Mar. 31,
`2011
`
`Availability as Prior
`Art
`Pre-AIA
`§§ 102(a),
`(b)
`
`AIA
`§ 102(a)
`
`Ex.1004
`(certified
`translation
`provided as
`Ex.1005)
`Ex.1006
`(certified
`translation
`provided as
`Ex.1007)
`Ex.1008
`
`Ex.1013
`
`
`
`Japanese
`Publication
`Application No.
`JP2003-317610
`(Hasei)
`U.S. Patent No.
`5,691,877
`(Hanamura)
`U.S. Patent
`Publication No.
`2009/0178271
`(Egitto)
`
`Filed Apr. 18, 2002;
`Published Nov. 7,
`2003
`
`§§ 102(a),
`(b)
`
`§ 102(a)
`
`Filed Feb. 16, 1996;
`Issued Nov. 25, 1997
`
`§§ 102(a),
`(b), (e)
`
`§ 102(a)
`
`Filed Jan. 16, 2008;
`Published July 16,
`2009
`
`§§ 102(a),
`(b), (e)
`
`§ 102(a)
`
`The Examiner did not rely upon any of these prior art references during
`
`prosecution, nor did the Examiner consider any of the combinations of prior art
`
`references presented by the Grounds herein.2 The supporting declaration of Alex
`
`Kattamis, Ph.D. (Ex.1003) was also not before the examiner. Accordingly, the
`
`
`2 Two relatives of Ingle, a German relative, DE 102009060066, and a U.S. relative,
`
`U.S. Patent Publication No. 2012/0267147, were provided during prosecution;
`
`however, neither was relied upon by the Examiner. Ex.1002 (File History), 289, 332.
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`obviousness grounds and arguments in this Petition are not the same (or substantially
`
`the same) as those previously presented to the Office.
`
`IV. OVERVIEW OF THE ’492 PATENT
`
`The ’492 patent is directed to “a method for producing a passive electronic
`
`component and/or a method for producing an optoelectronic assembly[.]” See, e.g.,
`
`’492 patent, 1:41-46. The claimed methods include forming layers of electrically-
`
`conductive and dielectric (insulating) materials on a substrate. These layers can be
`
`arranged to produce a passive electronic component, such as a capacitor or resistor.
`
`See, e.g., id., 8:22-24. They can also be used in producing an optoelectronic
`
`assembly, which may include, for example, one or more passive electronic
`
`components and one or more optoelectronic components. See, e.g., id., 8:29-52.
`
`The ’492 patent alleges benefits of applying layers “in a structured fashion,”
`
`as compared to applying layers “without structure” and later structuring the layers
`
`using known methods like photolithography. For example, in its “Background,” the
`
`’492 patent states that: “Suitable insulators or dielectrics such as light-sensitive
`
`resists” are conventionally “applied without structure in a planar fashion to metal
`
`layers,” after which photolithography masks are used to selectively remove the resist
`
`from particular regions, “as a result of which the resist layer is structured.” Id., 1:27-
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`37.3 This conventional approach, according to the ’492 patent, is “usually very
`
`expensive and complex.” Id.
`
`To purportedly simplify and/or lower cost of production, the ’492 patent states
`
`that “the dielectric and/or the electrode layer and/or subsequently [sic] further layers
`
`or materials” may be “applied in a structured fashion . . . for example by printing,
`
`for example inkjet printing or screen printing, by blade coating and/or by deposition
`
`with the aid of SAMs (self-assembling monolayers) and the like.” Id., 1:66-2:19.
`
`The ’492 patent states that, through this approach, “the desired structure is already
`
`formed during the application of the corresponding layer,” and “[t]he area to be
`
`coated is thus coated only in partial regions dependent on the desired structure.” Id.,
`
`1:66-2:4.
`
`An exemplary result of the ’492 patent’s method for producing a passive
`
`electronic component is depicted in Figure 7, which “shows the substrate 10 and the
`
`first and second electrically conductive layers 12, 14 with the dielectric 28, wherein
`
`an electrode layer 38 is applied in a structured fashion on the dielectric 28 and a part
`
`of the second contact region 18.” Id., 12:27-31. The passive component of Figure 7
`
`“can form a capacitor, for example.” Id., 12:40-42.
`
`
`3 All emphasis added except where otherwise noted.
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`
`
`Id., Fig. 7.
`
`An exemplary result of the ’492 patent’s method for producing an
`
`optoelectronic assembly that combines a passive electronic component and an
`
`optoelectronic component is depicted in Figure 16. Figure 16 shows a passive
`
`electronic component, i.e., a capacitor like that of Figure 7, in combination with an
`
`optoelectronic component, i.e., an OLED comprising “an organically functional
`
`layer 54 . . . formed in the component region 50.” Id., 14:31-34.
`
`
`
`Id., Fig. 16.
`
`The ’492 patent includes three independent claims (claims 1, 10, 16) and
`
`fifteen dependent claims (claims 2-9, 11-15, 17-18).
`
`A.
`
`Prosecution History
`
`The prosecution history for the ’492 patent is relatively short; the ’492 patent
`
`received a first action allowance. The Examiner’s reasons for allowance merely
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`stated that “[t]he prior art of record neither anticipates nor renders obvious all the
`
`limitations in the base claims 1, 10, and 16.” Ex.1002 (File History), 324-26.
`
`V.
`
`LEVEL OF ORDINARY SKILL
`
`A person of ordinary skill in the art (“POSITA”) for the ’492 patent would
`
`have had a bachelor’s degree in Electrical Engineering, Physics, or a comparable
`
`field of study, and at least three years of research or industrial experience with
`
`semiconductor (organic or inorganic) optoelectronic devices and/or lighting or
`
`displays. Ex.1003, ¶46. An individual with additional education could have less
`
`research or industrial experience and vice-versa. Id.
`
`VI. CLAIM CONSTRUCTION
`
`Claims in an IPR are construed in accordance with the ordinary and customary
`
`meaning of such claims as understood by one of ordinary skill in the art and the
`
`prosecution history. 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). Petitioner does not believe that any specialized
`
`constructions are necessary for this petition.
`
`VII. OVERVIEW OF PRIOR ART
`
`A.
`
`Ingle (Ex.1004, Ex.1005)
`
`PCT Application Publication No. WO 2011/036089 A1 (“Ingle”), the primary
`
`reference in Ground I, names as an inventor the sole-named inventor of the ’492
`
`patent, Andrew Ingle. Ingle was published on March 31, 2011, more than one year
`
`before the ’492 patent’s September 27, 2012, foreign priority date.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`Similar to the ’492 patent, Ingle “relates to a method for producing an
`
`electronic component and an electronic component.” Ingle, 1:8-9. Ingle’s method,
`
`like that of the ’492 patent, forms components like “a capacitor” and “an organic
`
`electronic component, such as an organic light-emitting diode.” Id., 6:3-7. Like the
`
`’492 patent, Ingle discloses application of layers in a structured fashion, e.g., “[o]ne
`
`task of [Ingle’s] invention is to provide an improved method of producing an
`
`electronic component . . . in which the insulator is only applied to certain areas of
`
`an electrically conductive layer.” Ingle, 1:22-25. Like the ’492 patent, Ingle teaches
`
`that structured application of layers may “be done by applying the first and second
`
`electrically conductive layers or parts thereof to the substrate, for example by
`
`printing, by deposition with the aid of SAMs (self-assembling monolayers) and the
`
`like.” Id., 6:19-24; see also 15:26-35 (“Suitable printing processes include . . . screen
`
`printing, inkjet printing, flexographic printing and the like.”). Ingle alleges the same
`
`benefits of this approach as the later-filed ’492 patent: “[t]he method according to
`
`[Ingle’s] invention is usually free of photolithographic steps and can therefore be
`
`used as a cost-effective method for producing an electronic component, such as an
`
`organic light-emitting diode.” Id., 18:7-10.
`
`Ingle describes its claimed method as “suitable for producing an electronic
`
`component having at least one first electrode region and a second electrode region,
`
`which are separated from one another by an insulator and each have at least a partial
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`layer of a first electrically conductive material,” as shown in, for example, in its
`
`Figure 1I (reproduced below). Id., 2:2-7.
`
`
`
`Id., Fig. 1I.
`
`A comparison of Fig. 1I of Ingle with Figure 15 of the ’492 patent (below)
`
`shows that the devices in both share the same base structure that can be used to form,
`
`among other things, “a capacitor” and “an organic electronic component, such as an
`
`organic light-emitting diode.” Id., 6:3-7. After detailing how to build the base
`
`structure depicted in its Figure 1I, Ingle teaches that “an OLED, can now be
`
`produced on the substrate layer . . . using a conventional process.” Id., 21:34-36.
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
`
`
`
`’492 patent Fig. 15 (annotated, top); Ingle Fig. 1I (annotated, bottom).
`
`B. Hasei (Ex.1006, Ex.1007)
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`Japanese Patent Application Publication No. JP 2003-317610 (“Hasei”)
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`published in November 2003, i.e., almost a decade before the ’492 patent’s claimed
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`priority date. As detailed below, Hasei illustrates the “conventional process” for
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`forming the OLED contemplated in Ingle (see Ingle, 21:34-36), and accordingly
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`serves as a secondary reference in Ground I.
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`Like Ingle and the ’492 patent, Hasei teaches structured application of layers.
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`For example, Hasei notes that “the conventional method of providing a conductive
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`pattern requires a photomask to be used in the photolithography process, which
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`lengthens the manufacturing process and requires that a photomask be made each
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`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
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`time the model of the conductive pattern is changed.” Hasei, ¶3. Hasei teaches a
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`method that deposits material using “an inkjet head of a droplet discharging device,”
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`i.e., “inkjet device,” to only the desired locations on a substrate. Id., ¶15. Through
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`Hasei’s approach, “there is no need to create a photomask, so the manufacturing time
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`required for forming a conductive pattern of a transparent electrode or the like can
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`be shortened, and manufacturing costs can be reduced.” Id., ¶5.
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`Furthermore, like Ingle and the ’492 patent, Hasei’s structured application of
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`layers is for making an electro-optical device. For example, Hasei’s Figure 3
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`illustrates “a cross-sectional view depicting an example of an organic EL device
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`manufactured using [Hasei’s] method for manufacturing an electrode wiring
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`pattern.” Id., ¶31.
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`Id., Fig. 3.
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`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
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`As shown above, Hasei’s Figure 3 “includes a substrate (light transmitting
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`layer) 41 capable of transmitting light, an organic EL element (light emitting
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`element) 60 formed on one surface of the substrate 41, sandwiched between a pair
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`of a negative electrode (electrode) 50 and a positive electrode (transparent electrode)
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`42, and which includes light emitting layers 46, 47, 48 made of an organic
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`electroluminescent material and a hole injection layer 44,” a “protective layer 51 for
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`protecting the organic EL element 60,” Id., ¶32, and “thin film 49,” which “is an
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`electron transport layer or an electron injection layer.” Id., ¶38. The “negative
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`electrode 50 is a metal electrode” that “may be formed by the droplet discharging
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`method.” Id., ¶37.
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`C. Hanamura (Ex.1008)
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`U.S. Patent No. 5,691,877 (“Hanamura”) issued in 1997, well before the ’492
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`patent’s claimed priority date of September 27, 2012. Hanamura discloses the ’492
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`patent’s technique for forming a capacitor and a resistor and serves as the primary
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`reference in Grounds II and III.
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`For example, Hanamura discloses “a chip type thick film capacitor wherein a
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`capacitor element is formed on an insulating chip substrate.” Hanamura, 1:6-10.
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`Hanamura notes that successive screen printing of two metal layers—the first to
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`form electrode leads and the second to form a first capacitor electrode—causes the
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`two metal layers to come into electrical conduction with one another, thereby
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`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
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`shorting the electrodes of the capacitor and rendering the device inoperative. Id.,
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`1:49-59. Hanamura solves this problem by forming a first capacitor electrode and an
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`auxiliary electrode in a single screen-printing step. See, e.g., id., 5:52-62. As shown
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`in Hanamura’s Figure 1 (reproduced below), Hanamura’s first capacitor electrode
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`14 and auxiliary electrode 20 are separated by predetermined spacing “D1,” which
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`prevents the two from shorting. Id. This space is subsequently filled with a dielectric
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`layer 15, like the trench in the ’492 patent.
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`Id., Fig. 1.
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`Hanamura further teaches a method of manufacturing a resistor in conjunction
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`with a capacitor. See Id., 1:6-10 (disclosing a “chip type thick film capacitor which
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`incorporates a resistor to work as a composite device.”). Similar to the ’492 patent,
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`Hanamura “reliably adjust[s]” resistance of the device by adjusting the dimensions
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`of a resistor layer 30. See, id., 2:39-41, 6:50-58, 7:34-39. As illustrated in
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`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
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`Hanamura’s Figure 8 (reproduced below), resistance can be tuned by changing the
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`length of resistor layer 30, id, 6:50-58, and/or trimming the groove 30a to change
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`the overall shape of the layer, id., 7:34-39.
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`Id., Fig. 8.
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`D. Egitto (Ex.1013)
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`U.S. Patent Publication No. 2009/0178271 (“Egitto”) disclosed, over three
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`years prior to the ’492 patent, that resistors may be formed (and their resistance
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`adjusted) by manipulating the shape and size of the resistor material. Egitto serves
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`as a secondary reference for Ground III.
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`For example, Egitto “provid[es] resistors for circuitized substrates such as
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`printed circuit boards, chip carriers and the like.” Egitto, ¶1. Egitto explains that “it
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`is often necessary to adjust the resistance of the film resistors in the circuit.” Id., ¶5.
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`Like Hanamura, Egitto teaches that, “[t]o increase the resistance of a film resistor,
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`the resistor [can be] ‘trimmed’, often by forming a slot across the electrical current
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`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
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`path in the resistor and to make the effective width of the resistor (and the current
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`path there-through) smaller and thereby increasing resistance.” Id.
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`Figure 8 of Egitto (reproduced below) illustrates a pattern that may be formed
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`in the resistor material according to Egitto’s teachings. See Id., ¶52. Egitto discloses
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`that a laser may be used to form isolated parts 61 and 61’, thereby creating a
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`remaining portion of the resistor material 65 with “a rectangular shape with
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`substantially triangular ends 67 and 69.” Id., ¶¶82-83.
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`Id., Fig. 8.
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`VIII. APPLICATION OF PRIOR ART TO THE CHALLENGED CLAIMS
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`A. Ground I: Claims 1, 2, 8-11, and 16 Are Obvious Over Ingle in view
`of Hasei
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`Independent claim 1 of the ’492 patent is directed to a method of producing a
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`passive electronic component (e.g., a capacitor); independent claim 16 is directed to
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`the passive electronic component itself. Independent claim 10 is directed to a method
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`of producing an optoelectronic assembly that includes both a passive electronic
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`component (like in claims 1 and 16) and an optoelectronic component (e.g., OLED).
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`As the method of producing the passive electronic component is subsumed
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`within the method of producing the optoelectronic assembly, the limitation-by-
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`limitation analysis in this Ground addresses Independent claim 10 first.
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`1. Motivation to Combine Ingle and Hasei
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`A POSITA would have been motivated to combine Ingle and Hasei. Ex.1003,
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`¶¶108-25.
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`a)
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`forming an optoelectronic
`contemplates
`Ingle
`assembly using a conventional process, like that of
`Hasei.
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`Ingle discloses “the preparation of a substrate for producing an electronic
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`component using the method according to [its] present invention.” Ingle, 19:3-5.
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`Ingle depicts this base structure in Figure 1I. See Ex.1003, ¶109.
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`Ingle, Fig. 1I (annotated). See Ex.1003, ¶109. Ingle explains that, once the base
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`structure is prepared, “[t]he electronic component, for example an OLED, can [then]
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`be produced on the substrate layer . . . using a conventional process.” Ingle, 21:34-
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`36. See Ex.1003, ¶110.
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`Hasei discloses such a conventional process for forming an OLED. As
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`discussed (supra §VII.B), Hasei discloses “an organic EL element (light emitting
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`element) 60 formed on one surface of [a] substrate 41, sandwiched between a pair
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`of a negative electrode (electrode 50) and a positive electrode (transparent electrode)
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`42, and which includes light emitting layers 46, 47, 48 made of organic
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`electroluminescent material and a hole injection layer 44,” as shown in Figure 3.
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`Hasei, ¶32.
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`Hasei, Fig. 3. See Ex.1003, ¶¶111-12.
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`It would have been obvious to a POSITA to form Hasei’s OLED on Ingle’s
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`base structure, as depicted below. Doing so would have been nothing more than
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`combining prior art elements according to known methods and applying a known
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`technique to improve a similar device in the same way to obtain predictable results.
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`Petition for Inter Partes Review of U.S. Patent No. 9,257,492
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`KSR Int’