Tianma Microelectronics Co Ltd v. Japan Display Inc

1. Case Identification

• Case #: IPR2021-01029
• Patent #: 9,310,654
• Filed: June 9, 2021
• Petitioner(s): Tianma Microelectronics Co. Ltd.
• Patent Owner(s): Japan Display Inc.
• Challenged Claims: 1-7 and 12-14

2. Patent Overview

• Title: LIQUID CRYSTAL DEVICE AND ELECTRONIC APPARATUS
• Brief Description: The ’654 patent discloses a liquid crystal device (LCD) with a specific electrode structure designed to improve display characteristics like viewing angle and luminance. The invention centers on the configuration of first and second electrodes, where one is a common electrode and the other is a pixel electrode, and the second electrode comprises bent linear electrodes with gaps between them.

3. Grounds for Unpatentability

Ground 1: Anticipation over Atarashiya - Claims 1-7 and 12-14 are anticipated by Atarashiya under 35 U.S.C. § 102.

• Prior Art Relied Upon: Atarashiya (Application # 2009/0225267).
• Core Argument for this Ground:
  • Priority Date Challenge: Petitioner’s central argument was that the ’654 patent is not entitled to the filing date of its parent application (which published as Atarashiya). The independent claims of the ’654 patent recite two alternative configurations for the device’s electrodes:
    • Alternative A: A pixel electrode with linear gaps is provided over a common electrode.
    • Alternative B: A common electrode with linear gaps is provided over a pixel electrode.
  • Petitioner asserted that to claim priority, the parent application must provide written description support under 35 U.S.C. § 112 for the invention "with all its limitations," which includes both recited alternatives. However, Petitioner argued that the parent application (Atarashiya) discloses only Alternative B and provides no disclosure of Alternative A.
  • Because the parent application allegedly fails to describe both alternatives, the ’654 patent’s claims are not entitled to priority and their effective filing date is November 20, 2014. Atarashiya, published in 2009, therefore qualifies as prior art against the challenged claims.
  • Prior Art Mapping: Petitioner contended that because Atarashiya discloses one of the two claimed alternatives, it anticipates the claims. An element-by-element analysis demonstrated that "Embodiment 4" of Atarashiya discloses every limitation of the challenged claims.
  • For independent claims 1 and 14, Petitioner argued that Atarashiya’s fourth embodiment explicitly teaches Alternative B: a common electrode (the "second electrode") with linear electrodes and gaps (slits) provided over a pixel electrode (the "first electrode"). Atarashiya further discloses that a light shielding film overlaps with this second electrode, which is bent in plan view, satisfying the final limitation of the independent claims.
  • For dependent claims 2-7 and 12-13, Petitioner asserted that Atarashiya anticipates them because its specification is nearly identical to that of the ’654 patent and discloses all additional limitations, such as the linear symmetry of the electrodes (claim 2), the connection portions between adjacent electrodes (claim 4), and the specific arrangement of the light shielding film relative to the gaps (claim 12).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. § 314(a) based on the Fintiv factors for several reasons:
  • Strong Merits: The petition presents a strong, dispositive challenge based on a priority date issue that was never addressed during prosecution. Atarashiya is a strong anticipatory reference due to its substantial overlap with the ’654 patent’s specification.
  • Stipulation to Avoid Overlap: Petitioner stipulated that if the IPR is instituted, it will not pursue in the related district court litigation any invalidity ground that it raised or reasonably could have raised in the petition. This stipulation mitigates concerns of duplicative efforts and conflicting decisions, weighing heavily against denial.
  • Speculative Trial Date: While the co-pending litigation had a trial date set before the statutory deadline for a Final Written Decision (FWD), Petitioner argued this date was speculative due to a pending motion to transfer venue.
  • Diligence in Filing: Petitioner contended it acted with speed and diligence by filing the petition five months after the Patent Owner served its infringement contentions, which involved a large number of patents and over 2,400 accused products. This diligence mitigates against the investment of resources in the parallel litigation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 12-14 of the ’654 patent as unpatentable under § 102 over Atarashiya.