BOE Technology Group Co Ltd v. Optronic Sciences LLC

1. Case Identification

• Case #: IPR2024-01131
• Patent #: 7,226,801
• Filed: July 12, 2024
• Petitioner(s): BOE Technology Group Co., Ltd.
• Patent Owner(s): Optronic Sciences LLC
• Challenged Claims: 1-6, 8-14

2. Patent Overview

• Title: Method for Forming Sealant Region Pattern of Liquid Crystal Display and Sealant Region Pattern Thereof
• Brief Description: The ’801 patent discloses methods and apparatus for a sealant region in liquid crystal displays (LCDs). The invention involves forming an organic material pattern layer over a predetermined material layer, where the organic layer has a "saw tooth opening" that exposes the underlying layer, and the sidewall of this opening forms a "predetermined angle" with the surface of the underlying layer.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claim 9 is anticipated by Kwak under 35 U.S.C. §102.

• Prior Art Relied Upon: Kwak (Patent 7,538,488).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kwak discloses every element of apparatus claim 9. Kwak teaches a sealant region for an LCD comprising first and second substrates. Petitioner identified Kwak’s inorganic layers (e.g., buffer layer 120, gate insulating layer 140, interlayer 160) as the claimed "predetermined material layer." Kwak’s organic protection layer 180, formed on these inorganic layers, was mapped to the claimed "organic material pattern layer." Petitioner asserted that Kwak’s via hole 811, which extends through the organic layer to expose the underlying inorganic layers, constitutes the claimed "saw tooth opening" with a "predetermined angle," pointing to Kwak's Figure 5D as disclosing a sawtooth pattern and Figures 2B-D as showing angled sidewalls.

Ground 2: Obviousness over Zhang - Claims 1-6 and 9-13 are obvious over Zhang under 35 U.S.C. §103.

• Prior Art Relied Upon: Zhang (Chinese Patent Publication CN 1538212A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Zhang teaches an LCD with a frame adhesive structure designed to improve bonding strength. Zhang’s "second covering layer" (disclosed as potentially being a photoresist layer 225B) was mapped to the claimed organic layer, and its "first covering layer" was mapped to the predetermined material layer. Petitioner argued Zhang’s disclosure of various groove shapes—including elongated, X-shaped, and matrix-shaped patterns (Figs. 3A, 5A-B)—teaches or suggests the claimed "saw tooth opening." The "predetermined angle" was allegedly met by Zhang’s disclosure of openings with substantially 90° sidewalls (Fig. 3B) or V-shaped grooves with angles less than 90° (Fig. 6A).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to apply Zhang's teachings to improve sealant bonding, as Zhang explicitly states that increasing the contact area of the frame adhesive enhances bonding strength. Modifying the shape of the openings as taught by Zhang was presented as an obvious design choice to achieve this known benefit.
  • Expectation of Success: Petitioner argued that since the methods and structures in Zhang are conventional for LCD manufacturing, a POSITA would have had a high expectation of success in implementing them to create the claimed sealant region.

Ground 3: Obviousness over Kwak in view of Vaganov - Claims 2-3, 6, 10-11 are obvious over Kwak in view of Vaganov.

• Prior Art Relied Upon: Kwak (Patent 7,538,488), Vaganov (Patent 6,406,636).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the teachings of Kwak by adding Vaganov to explicitly teach the specific angle limitations recited in the dependent claims (e.g., less than 60° in claims 2 and 10; 20°-30° in claims 3 and 11). While Kwak disclosed angled openings, Petitioner argued Vaganov provided the specific motivation and know-how to implement particular angles. Vaganov teaches microprofiling bonding areas in semiconductors with specific, predetermined angles (including 54°, 45°, and 35°) to increase bonding surface area and prevent delamination.
  • Motivation to Combine: Petitioner contended a POSITA, seeking to optimize the bond strength of the structure in Kwak, would combine its teachings with Vaganov. Both references address the same problem of improving adhesion and reliability in electronic devices. A POSITA would have been motivated to use Vaganov’s well-known techniques for creating specific angles to predictably achieve the benefits of increased contact area and improved seal integrity sought by Kwak.
  • Expectation of Success: Given that both references operate in the same field (electronic device fabrication) and employ similar structural approaches to solve a common problem, a POSITA would have reasonably expected success in combining their teachings.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including multiple grounds based on Kwak in view of Kim (Application # 2003/0076452) or Yamazaki (Patent 7,446,336), and grounds based on Zhang in view of Vaganov or Yamazaki. These combinations relied on similar rationales, with the secondary references providing explicit teachings for specific angles or materials.

4. Key Claim Construction Positions

• "a predetermined angle": Petitioner argued this term should be construed according to its plain and ordinary meaning, entitled to its full breadth, and not limited to any particular range of angles. Petitioner contended that the presence of dependent claims 2, 3, 10, and 11, which explicitly recite specific angle ranges (e.g., "less than about 60 degree"), confirms that the independent claims' use of the term is not so limited.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on the Fintiv factors. It was asserted that denial is not warranted because: (1) no trial date has been set in the parallel district court litigation; (2) the issue overlap is minimal, as the litigation complaint asserts only one claim while the IPR challenges thirteen claims; and (3) the petition presents compelling evidence of unpatentability. Petitioner also argued against denial under §325(d), stating that the prior art and arguments presented are not the same as or cumulative to what was considered during prosecution.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-6 and 8-14 of the ’801 patent as unpatentable.