Tianma Microelectronics Co Ltd v. Japan Display Inc

1. Case Identification

• Case #: IPR2021-01028
• Patent #: 9,793,299
• Filed: June 8, 2021
• Petitioner(s): Tianma Microelectronics Co. Ltd.
• Patent Owner(s): Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.
• Challenged Claims: 1-11, 15-16

2. Patent Overview

• Title: Display of an Electronic Device
• Brief Description: The ’299 patent describes a liquid crystal display for a hand-held electronic device, aiming to reduce overall thickness. The key feature is a protective resin film on the front of the display having a specified thickness of at least 0.2 mm and no greater than 1.0 mm to ensure sufficient strength while maintaining a thin profile.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maekawa and Takahata - Claims 1, 3-6, and 8-11 are obvious over Maekawa in view of Takahata.

• Prior Art Relied Upon: Maekawa (Application # 2005/0158665) and Takahata (Application # 2004/0239641).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Maekawa discloses a display for a hand-held electronic device containing nearly all elements of independent claims 1 and 6, including a TFT substrate, a counter substrate, a liquid crystal layer, a polarizing plate, and a protective film. However, Petitioner contended Maekawa does not explicitly teach an adhesive member between the protective film and the polarizer, nor the specific claimed thickness of the protective film. Takahata was asserted to supply these missing elements, as it discloses a display with a protective resin plate bonded to a polarizing plate using an adhesive. Crucially, Takahata teaches that this protective plate should have a thickness of "not less than 0.2 mm" and "not more than 0.8 mm" to maintain stability and allow for touch input, a range that falls entirely within the ’299 patent’s claimed range.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Maekawa’s display with Takahata’s teachings to achieve predictable benefits. These included creating a more durable display, suppressing thermal expansion of the polarizer, improving structural rigidity, and eliminating optical aberrations caused by air gaps between layers. Using Takahata’s specific thickness range was motivated by the desire to provide durability while ensuring sufficient flexibility for touch operations.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying well-known components and manufacturing techniques (adhesives and specified material thicknesses) to a standard display architecture to achieve the predictable results of improved durability and optical performance.

Ground 2: Obviousness over Maekawa, Takahata, and Nakanishi - Claims 2 and 7 are obvious over Maekawa and Takahata in view of Nakanishi.

• Prior Art Relied Upon: Maekawa (Application # 2005/0158665), Takahata (Application # 2004/0239641), and Nakanishi (Application # 2005/0099402).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims 2 and 7, which further require the protective member to have a surface pencil hardness of at least 3H. Petitioner argued that while Maekawa and Takahata do not disclose this feature, Nakanishi explicitly teaches it. Nakanishi describes a protective hard coat layer for an LCD device that has "a pencil hardness of 3H" to protect the display from scratches during operation with a pen or finger.
  • Motivation to Combine: A POSITA would have been motivated to add Nakanishi’s hard coat layer to the protective member of the Maekawa/Takahata combination for the straightforward and predictable purpose of improving scratch resistance, a common objective in display design for hand-held devices.
  • Expectation of Success: Applying a known hard coat layer to a protective surface to increase its hardness was a well-understood and routine modification in the art with predictable results.

Ground 3: Obviousness over Maekawa, Takahata, and Nagano - Claims 15 and 16 are obvious over Maekawa and Takahata in view of Nagano.

• Prior Art Relied Upon: Maekawa (Application # 2005/0158665), Takahata (Application # 2004/0239641), and Nagano (JP Application # 2004272059 A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built upon the combination in Ground 1 to address claims 15 and 16, which add the limitation that an edge of the protective member is disposed outside an edge of the polarizing plate. Petitioner asserted that Nagano teaches this configuration. Nagano discloses a portable electronic device where a protective plate’s edge extends beyond the edge of the liquid crystal panel (which includes the polarizer) to create a flush, "bezel-less" front surface.
  • Motivation to Combine: A POSITA would have been motivated to modify the Maekawa/Takahata display with Nagano's edge-to-edge design to achieve several well-known advantages. These included a more aesthetically pleasing appearance, creating the impression of a larger display, preventing the accumulation of dust at a bezel edge, and facilitating easier front-side access for repair or replacement of the display panel.
  • Expectation of Success: Altering the dimensions of a protective cover to extend beyond the underlying display components was a simple design choice with predictable aesthetic and functional outcomes.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). Regarding the Fintiv factors, Petitioner contended that the trial date in the parallel district court litigation was speculative and that its stipulation not to pursue the same grounds in court weighs strongly in favor of institution. Petitioner also argued that the petition presents a strong case on the merits. Regarding §325(d), Petitioner asserted that the new prior art references (Takahata, Nakanishi, and Nagano) were never considered during prosecution and are not cumulative. Specifically, Takahata was argued to teach the very thickness limitation that the Examiner found missing from the prior art of record and which formed the basis for allowance.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-11, 15, and 16 of the ’299 patent as unpatentable.