Samsung Electronics Co Ltd v. Bishop Display Tech LLC

1. Case Identification

• Case #: IPR2022-00500
• Patent #: 6,822,706
• Filed: January 31, 2022
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Bishop Display Tech LLC
• Challenged Claims: 1-3

2. Patent Overview

• Title: Liquid Crystal Display Device
• Brief Description: The ’706 patent discloses a liquid crystal display (LCD) device with features to prevent operational malfunctions in a bare-chip driver caused by light interference. The invention focuses on using multiple light-shielding and light-absorbing materials to protect the driver from both external ambient light and internal light originating from the device's backlight.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are obvious over Moriya in view of Obata

• Prior Art Relied Upon: Moriya (Japanese Patent Publication JPH06112371A) and Obata (Japanese Patent Publication JPH0688961).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Moriya discloses a chip-on-glass LCD that meets most limitations of independent claim 1, including a liquid crystal panel with first and second plates, a driver IC, and multiple light shielding elements. Specifically, Moriya's light shielding adhesive tape was mapped to the "first light shielding material" on one face of the driver, and its light shielding coating film was mapped to the "second light shielding material" on an opposite face. Petitioner contended that Moriya lacks an explicit disclosure of a "diffusion sheet" with a peripheral "light absorbing area." Obata was argued to supply this limitation by teaching a diffuser film with a "black-colored black body layer" on its periphery to absorb stray light and prevent backlight bleeding. The combination of Moriya's LCD structure with Obata's diffuser assembly was alleged to render claims 1-3 obvious.
  • Motivation to Combine: A POSITA would combine these references as both are in the LCD field and aim to improve display quality by managing stray light. Petitioner asserted that since backlit displays like Moriya's were known to use diffusion sheets, a POSITA would be motivated to incorporate Obata's specific diffuser film—with its beneficial light-absorbing periphery—into Moriya’s device to further shield the driver from backlight bleed and external light, a known cause of malfunctions.
  • Expectation of Success: The petition argued for a high expectation of success, as the combination involved applying a known technique (a light-absorbing layer on a diffuser) to a known LCD design to achieve the predictable result of improved light shielding.

Ground 2: Claims 1-3 are obvious over Yamauchi in view of Obata

• Prior Art Relied Upon: Yamauchi (Patent 5,745,202) and Obata (Japanese Patent Publication JPH0688961).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Yamauchi, like Moriya, teaches the core limitations of claim 1, including an LCD with a driver IC, two substrates (plates), and at least two distinct light shielding materials. Yamauchi’s "second light interceptive member 10" was mapped to the "first light shielding material," while the "light interceptive tape 170" covering the IC was mapped to the "second light shielding material." Similar to the first ground, Petitioner argued that Obata supplies the claimed "diffusion sheet" with a "light diffusing area" and a peripheral "light absorbing area" (its black body layer), which is not explicitly present in Yamauchi.
  • Motivation to Combine: The stated motivation was parallel to that of the first ground. Yamauchi explicitly seeks to prevent driver malfunctions from both external and internal light, including light from the backlight. A POSITA seeking to improve Yamauchi's design would have looked to solutions like Obata's for managing backlight bleed and incorporated its diffuser with a light-absorbing periphery to enhance shielding.
  • Expectation of Success: Petitioner again argued that a POSITA would have a reasonable expectation of success, as it constituted the integration of known elements from the same field of art to solve a well-understood problem and achieve a predictable improvement.
• Additional Grounds: Petitioner asserted additional obviousness challenges against claim 3 based on Moriya alone and Yamauchi alone. These grounds argued that the references inherently taught multiple light shielding materials that could be characterized as meeting all claim limitations, or that combining features within each reference to do so would have been obvious.

4. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial would be inappropriate. Regarding the Fintiv factors for co-pending district court litigation, Petitioner argued for institution, emphasizing that the parallel case was at an early stage. It noted that fact discovery had just begun, a Markman hearing was not scheduled for several months, and expert discovery deadlines were even further out, indicating minimal investment by the court and parties. The petition also highlighted uncertainty in the trial schedule, given that 13 patents were asserted across two cases set for the same trial date. Crucially, Petitioner argued for a lack of overlap, as it challenged unasserted claims (2 and 3) and offered a broad stipulation to not pursue in district court any ground raised or any invalidity defense using the same prior art references if the IPR is instituted.
• Under 35 U.S.C. §325(d), Petitioner argued that the petition raises new questions of patentability. It asserted that the primary references, Moriya and Obata, were never considered by the Examiner during prosecution. Furthermore, while Yamauchi was cited on the face of the patent, Petitioner contended the Examiner committed a material error by not substantively addressing its teachings, which Petitioner, in combination with Obata, uses to disclose all limitations of the challenged claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of the ’706 patent as unpatentable.