PTAB

IPR2015-01310

Merck KGaA v. JNC Corp

Key Events

Petition

petition

Title: Liquid Crystal Composition and Liquid Crystal Display Device
Brief Description: The ’590 patent discloses liquid crystal (LC) compositions with negative dielectric anisotropy suitable for display devices. The claimed compositions comprise at least four distinct components: a two-ring compound, a three-ring compound for high maximum temperature, a three-ring compound for large optical anisotropy, and a two-ring compound for low viscosity.

Prior Art Relied Upon: CN ’594 (Chinese Patent Application Publication No. CN 101519594A).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Working Example 2 (WE2) of CN ’594 expressly discloses a specific liquid crystal composition that includes compounds meeting every limitation of independent claim 1. Specifically, WE2 contains species that satisfy the structural requirements for the first component (formula 1), second component (formula 2), third component (formula 3), and fourth component (formula 4-2) of claim 1. Petitioner provided a detailed breakdown showing how specific compounds in WE2, such as PPN-5.O2.F.F, CCPN-2.1.F.F, CPPN-2.O2.F.F, and CC-0V0.5, correspond to these required formulae. The physical properties required by claim 13, including negative dielectric anisotropy and a nematic phase temperature above 70°C, were also asserted to be disclosed or inherently present in the WE2 composition. The dependent claims were argued to be anticipated by the same disclosure, as WE2 includes compounds satisfying their more specific structural formulae.

Prior Art Relied Upon: CN ’594 (Chinese Patent Application Publication No. CN 101519594A).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner acknowledged that the anticipating WE2 composition from CN ’594 does not contain a compound of formula (2-2), as required by claim 5. However, Petitioner identified that Working Example 1 (WE1) of the same CN ’594 reference explicitly discloses a compound (CCEPN-3.O2.F.F) that satisfies the structure of formula (2-2).
- Motivation to Combine: A POSITA would combine the CCEPN compound from WE1 into the composition of WE2. The motivation was based on the knowledge that both the formula (2-1) compounds in WE2 and the formula (2-2) compound in WE1 were known to have similar and desirable properties for LC mixtures, including negative dielectric anisotropy and low viscosity. The references showed that these types of compounds were frequently used together in LC compositions.
- Expectation of Success: A POSITA would have a high expectation of success because combining these structurally similar and functionally equivalent compounds was a routine practice in the art. The resulting properties would have been predictable, as compounds satisfying both formulae (2-1) and (2-2) were known to produce similar results in LC display mixtures.

Prior Art Relied Upon: US ’245 (Application # 2003/0222245).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Example 10 of US ’245 discloses an LC composition that meets nearly all limitations of claim 1. Specifically, Example 10 includes compounds satisfying the structural requirements for the second component (CCP-302FF), third component (CPY-2-02), and fourth component (CC-3-V) of claim 1. However, Example 10 lacks a compound satisfying the first component (formula 1).
- Motivation to Combine: A POSITA would add a formula (1) compound to the composition of Example 10. The motivation was multi-faceted: 1) US ’245 itself explicitly identifies compounds satisfying formula (1) as a primary component (Component A) for its inventive media; 2) other examples within US ’245 (e.g., Example 12) already include such a compound, demonstrating their compatibility and utility; and 3) extrinsic art showed such compounds were used to improve properties like melting point in mixtures containing three-ring compounds, which are present in Example 10.
- Expectation of Success: A POSITA would have a reasonable expectation of success because combining the components was expressly taught by US ’245. The modification was a substitution of one known, suitable component for another to form a complete composition described by the reference. The properties of such combinations were well-understood and predictable.

Petitioner argued that certain terms should be construed according to their definitions in the ’590 patent specification. A key point raised was the patent’s consistent misspelling of chemical groups in claim 1, such as “1,4-cycrohexylene” and “1,4-pnenylene.” Petitioner contended that a POSITA would understand these to be typographical errors meaning “1,4-cyclohexylene” and “1,4-phenylene,” respectively, based on the specification and the chemical structures depicted in the claims.

A central technical argument was that the problems the ’590 patent purported to solve—achieving a suitable balance of properties like high nematic phase temperature, low viscosity, and appropriate optical and dielectric anisotropy—were well-known in the art of LC compositions. Petitioner asserted that prior art like US ’245 was explicitly directed to addressing these same deficiencies and disclosed compositions with the necessary characteristics, rendering the claimed invention an obvious solution to a known problem using known components.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-17 of the ’590 patent as unpatentable based on the grounds presented.