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DOCKET NO.: 2201087-00125 Filed on behalf of View, Inc. By: Joseph F. Haag, Reg. No. 42,612
Jason Kipnis, Reg. No. 40,680 Owen K. Allen, Reg. No. 71,118 Wilmer Cutler Pickering Hale and Dorr LLP 950 Page Mill Road Palo Alto, CA 94304
Tel: (650) 858-6000 Email: Joseph.Haag@wilmerhale.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
VIEW, INC. Petitioner
v.
Patent Owner of U.S. Patent No. 7,193,763 to Beteille et al.
Trial No. IPR2015-00245
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,193,763
UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
i
TABLE OF CONTENTS
I. MANDATORY NOTICES ............................................................................. 1
A. Real Party-in-Interest ............................................................................ 1
B. Related Matters ..................................................................................... 1
C. Counsel .................................................................................................. 1
D. Service Information ............................................................................... 1
II. CERTIFICATION OF GROUNDS FOR STANDING .................................. 2
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2
A. Prior Art Patents and Printed Publications ............................................ 2
B. Grounds for Challenge .......................................................................... 3
IV. OVERVIEW OF THE ʼ763 PATENT ............................................................ 4
A. ’763 Patent Disclosure .......................................................................... 4
B. Prior Art to the ’763 Patent ................................................................... 8
C. Prosecution History of the ’763 Patent ............................................... 13
V. CLAIM CONSTRUCTION .......................................................................... 15
A. “upper electrode” / “lower electrode” ................................................. 16
B. “glazing panel” .................................................................................... 18
VI. SPECIFIC GROUNDS FOR PETITION ...................................................... 20
A. Ground 1: Tokkai ’318 Anticipates Claims 1, 11, and 22 .................. 21
1. The Tokkai ’318 Reference ...................................................... 21
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
ii
2. Tokkai ’318 Anticipates Independent Claim 1 ......................... 23
3. Tokkai ‘318 Anticipates Dependent Claim 11 ......................... 32
4. Tokkai ’318 Anticipates Dependent Claim 22 ......................... 34
B. Ground 2: Claims 1, 11, and 22 Are Rendered Obvious By Badding In View Of Kulkarni 1999 Or Kulkarni 1998 ................ 35
1. Overview of Prior Art References ............................................ 36
2. The Challenged Claims Are Obvious Over Badding In View Of Kulkarni 1999 or Kulkarni 1998 ........................................................................................... 39
C. Ground 3: Claims 1, 11, and 22 Are Rendered Obvious By Badding In View Of EP ’040 ........................................................ 57
VII. CONCLUSION ............................................................................................. 60
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
iii
TABLE OF AUTHORITIES
Page(s) CASES
Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354 (Fed. Cir. 2010) .......................................................................... 23
Ex parte Boor, 2013 WL 3294706 (Patent Tr. & App. Bd. April 16, 2013) .............................. 23
In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 15
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................................................................ 13
Sage Electrochromics, Inc. v. View, Inc., No. 3:12-CV-6441 (JST) (N.D. Cal.) ............................................................. 1, 17
STATUTES
35 U.S.C. § 102 ................................................................................................. passim
35 U.S.C. § 103 ................................................................................................. passim
35 U.S.C. § 314(a) ..................................................................................................... 4
OTHER AUTHORITIES
37 C.F.R. § 42.100(b) .............................................................................................. 15
77 Fed. Reg. 48764 (Aug. 14, 2012) ....................................................................... 15
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
1
I. MANDATORY NOTICES
A. Real Party-in-Interest
View Inc. (“Petitioner”) is the real party-in-interest and submits this inter
partes review Petition (“Petition”) for review of certain claims of U.S. Patent No.
7,193,763 (the “’763 patent”).
B. Related Matters
The following litigation matter would affect or be affected by a decision in
this proceeding: Sage Electrochromics, Inc. v. View, Inc., No. 3:12-CV-6441 (JST)
(N.D. Cal.) (the “pending litigation”). Petitioner has or soon will file inter partes
review petitions for U.S. Patent Nos. 6,337,758 and 5,830,336, which are asserted
in the pending litigation.
C. Counsel
Lead Counsel: Joseph F. Haag (Registration No. 42,612)
Backup Counsel: Jason Kipnis (Registration No. 40,680) Backup Counsel: Owen K. Allen (Registration No. 71,118)
Petitioner also plans to file pro hac vice applications for Cynthia Vreeland
and Keith Slenkovich, both counsel of record in the pending litigation.
D. Service Information
Email: Joseph.Haag@wilmerhale.com
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
2
Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
950 Page Mill Road
Palo Alto, CA 94304
Telephone: 650-858-6000 Facsimile: 650-858-6100
II. CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
claims 1, 11, and 22 of the ʼ763 patent (Ex. 1001).
A. Prior Art Patents and Printed Publications
Petitioner relies upon the following patents and printed publications:
1. Japan Patent Application Publication Tokkai 63-231318 (“Tokkai ’318”) (Ex.
1003), which published on September 27, 1998, is prior art to the ʼ763 patent
under at least 35 U.S.C. §102(b). Exhibit 1003 includes a certified translation
of Tokkai ’318 into English, as well as Tokkai ’318 in the Japanese language.
2. U.S. Patent No. 5,919,571 (“Badding”) (Ex. 1004), which issued on July 6,
1999, is prior art to the ʼ763 patent under at least 35 U.S.C. §102(b).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
3
3. Kulkarni, et al., “Dependence of the Sheet Resistance of Indium-Tin-Oxide
Thin Films on Grain Size and Grain orientation Determined from X-ray
Diffraction Techniques,” Thin Solid Films 345: 273-277 (1999) (“Kulkarni
1999”) (Ex. 1005), which published in 1999, is prior art to the ʼ763 patent
under at least 35 U.S.C. §102(b).
4. Kulkarni, et al., “Electrical, Optical, and Structural Properties of Indium-Tin-
Oxide Thin Films Deposited on Polyethylene Terephthalate Substrates by rf
Sputtering,” J. Vac. Sci. Technol. A 16(3), 1636 (1998) (“Kulkarni 1998”)
(Ex. 1006), which published in 1998, is prior art to the ʼ763 patent under at
least 35 U.S.C. §102(b).
5. European Patent Application EP 1011040 A1 (“EP ’040”) (Ex. 1007), which
is prior art to the ʼ763 patent under at least 35 U.S.C. §102(b).
B. Grounds for Challenge
Petitioner requests cancellation of claims 1, 11, and 22 as unpatentable under
35 U.S.C. §§ 102 and 103. This Petition is supported by the Declaration of Dr.
Colin Wolden (“Wolden Decl.”) (Ex. 1002), a Professor of Chemical and
Biological Engineering at the Colorado School of Mines with more than 20 years
of experience in thin film deposition techniques and more than 15 years of
experience with electrochromic devices. This Petition is also supported by the
attached invalidity claim charts (Exs. 1015-1016) served in the pending litigation.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
4
This Petition demonstrates that there is a reasonable likelihood that Petitioner will
prevail with respect to at least one challenged claim and that each of the challenged
claims is unpatentable for the reasons cited herein. See 35 U.S.C. § 314(a).
The grounds for challenge based on the foregoing prior art references
include the following:
Grounds Reference(s) Challenged Claims
1. §102 Tokkai ’318 1, 11, 22
2. §103 Badding in combination with Kulkarni
1999 or Kulkarni 1998
1, 11, 22
3. §103 Badding in combination with EP ’040 1, 11, 22
IV. OVERVIEW OF THE ʼ763 PATENT
A. ’763 Patent Disclosure
The application that issued as the ’763 patent (Ex. 1001) was filed as a PCT
application on December 4, 2002, and claims priority to French Application No.
0115687, filed on December 5, 2001.
The ʼ763 patent is directed to an electrochemically controllable device—
such as an electrochromic “smart” window or a liquid crystal display (“LCD”)
screen—with a transparent, partially crystallized electronically conductive layer for
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
5
at least the upper electrode. See ʼ763 patent at Abstract, 1:15-17, 23-26; 1:47-2:8;
2:18-39; 5:11-16 (Ex. 1001).
Electrochemical devices typically contain multiple functional layers,
including one or more layers of electroactive material placed between two
electronically conductive (or “electrode”) layers. See id. at 1:47-52. The
electroactive material changes a characteristic, such as an optical property, upon
the application of a voltage. Id. at 1:52-58, 2:18-27. For example, in an
electrochromic window, the electroactive material will become lighter or darker
upon the application of a voltage. Id. at 1:52-58. Similarly, in a liquid-crystal
device display, the electroactive material will undergo a change so that an optical
property of the device changes upon the application of a voltage. Id. at 2:18-27.
As an example, Figure 1 of the ʼ763 patent, reproduced below, provides a
schematic sectional view of an electrochromic window having a transparent glass
pane 1 or carrier substrate, a lower electrode layer 2, a stack of electrochromic
layers 3, and an upper electrode layer 4 that may be a tin-doped indium oxide
(“ITO”) layer 5. See id. at Figure 1; 6:30-57; 2:47-50.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
6
The ʼ763 patent focuses, in particular, on the upper electrode layer 4 (also
called an “electroconductive” or “electronically conductive” layer in the patent).
As the patent acknowledges, it was “common” at the time the patent application
was filed to use ITO for this layer. Id. at 2:47-50; Wolden Decl. at ¶30 (Ex. 1002).
ITO is conductive, and as the ’763 patent indicates, was “frequently deposited” by
a type of deposition known as sputtering. ’763 patent at 3:46-50, 2:55-59 (Ex.
1001). Moreover, ITO is transparent when deposited as a thin layer (id. at 4:23-
24), an obvious advantage for electrochemical devices such as electrochromic
“smart” windows and LCD screens. Wolden Decl. at ¶30 (Ex. 1002).
The ʼ763 inventors claimed to have “surprisingly discovered the influence
that the crystalline structure of the upper ITO [i.e., the upper ITO electrode layer]
can have on all of the rest of the electroactive system.” ’763 patent at 3:34-36 (Ex.
1001). In particular, they claimed that “[i]t has turned out that an at least partially
crystalline structure, additionally having crystallites of nanometric size, is much
Upper Electrode
Lower Electrode
Electroactive Layers
Carrier Substrate
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
7
more advantageous than, for example, an amorphous structure.” Id. at 3:36-39.
This structure was purportedly “beneficial with regard to the stability of the entire
electrochemical system ….” Id. at 3:46-47. As the ’763 specification explains, “if
the upper ITO layers are deposited so as to be ‘nanocrystallized,’ they are much
better and much more electrochemically stable.” Id. at 3:64-66.
The patent specifies that the upper electrode layer is “at least partially
crystallized in the form of crystallites having a mean size of between 5 and 100
nm, especially at least 20 nm” (id. at 3:15-17) and that it has an “electrical
resistivity of between 10-4 and 10-2 ohm.cm.” Id. at 4:16-18. This upper ITO
electrode layer can be deposited by sputtering at room temperature, at moderate
temperatures, or even higher temperatures if the adjacent layers are able to
withstand these temperatures. Id. at 5:55-67.
The ’763 patent states that the purported invention is applicable to a wide
variety of applications, including for “electrochromic, photovoltaic, [and]
electroluminescent” systems. Id. at 2:60-63. Further, the specification states that
the device can be used in “various applications” including glazings, windows,
roofs, aircraft, cars, ships, and “display screens, such as projection screens,
television or computer screens, and touch-sensitive screens.” Id. at 5:43-50.
The patent focuses, in particular, on electrochromic windows and liquid
crystal systems, repeatedly emphasizing the purported invention’s application to
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
8
liquid-crystal systems. See, e.g., id. at 2:18-36 (discussing the use of two
electroconductive layers in “liquid-crystal systems”), 5:11-16 (stating that “the
invention may apply to various types of electrochemical or electrically controllable
systems” and that it is “particularly of interest in the case of electrochromic
systems, especially ‘all solid state’ or ‘all polymer’ systems or else liquid-crystal
or viologen-based systems, or electroluminescent systems” (emphasis added)).
B. Prior Art to the ’763 Patent
Despite the ʼ763 inventors’ claim to have “surprisingly discovered the
influence that the crystalline structure of the upper ITO can have on all of the rest
of the electroactive system” (id. at 3:34-39), all of the features disclosed in the
’763 patent were already well-known in the prior art.
First, as the ʼ763 patent recognizes, it was “common” before the invention
to use tin-doped indium oxide (“ITO”) for the electroconductive (i.e., electrode)
layers in electrochemically controllable devices because it is conductive, easily
deposited by sputtering, and transparent when deposited as a thin layer. See id. at
2:47-50, 55-59, 4:23-24.
In fact, before the ’763 patent, numerous references existed disclosing the
advantages of using ITO for electrodes. Wolden Decl. at ¶35 (Ex. 1002). Sputter-
deposited ITO has long been recognized as an ideal material for an electrode layer
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
9
in applications requiring conductivity and high transparency, and there have been
“many efforts” to study and improve its properties as an electrode material:
Indium tin oxide (ITO) thin film is widely used as an electrode owing
to its optically transparent and electrical conducting properties. Many
efforts have been made to improve the properties necessary for use as
an electrode [1-3], e.g., resistivity, transparency, etching property, and
so on.
Hiroshi Morikawa and Miya Fujita, “Crystallization and Decrease in Resistivity on
Heat Treatment of Amorphous Indium Tin Oxide Thin Films Prepared by d.c.
Magnetron Sputtering,” Thin Solid Films 339: 309-313 (1999) (Ex. 1008) at 309
(emphases added); see also Choi, et al., “Effect of Film Density on Electrical
Properties of Indium Tin Oxide Films Deposited by DC Magnetron Reactive
Sputtering,” J. Vac. Sci. Technol. A 19(5) (Sept./Oct./ 2001) (Ex. 1009) (“Tin-
doped indium oxide (ITO) is a highly degenerated, wide band gap semiconductor
with a relatively low resistivity and a high transmittance in the visible region.
Based on these characteristics, ITO has been widely used as transparent electrodes
in various display devices, which include liquid crystal displays (LCD),
electroluminescent displays (ELD), and light-emitting diodes.” (emphases added));
see also Wolden Decl. at ¶35 (Ex. 1002).
Second, others studying ITO electrodes already had made the same
observations as the ’763 inventors many years earlier—namely, that using a
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
10
crystalline structure for an ITO electrode can have advantages. In fact, multiple
prior art references disclose not only the same observations, but also the precise
crystallite sizes as in the ʼ763 patent. Id. at ¶36. For example, Kulkarni 1999
discloses sputter-deposited partially crystallized ITO films for use as transparent
electrodes, with average crystallite grain sizes of 8.6nm, 11.8nm, 12.2nm, 25.5nm,
54.7nm, and 15.7nm. Kulkarni 1999 at 276, Table 2 (Ex. 1005); Wolden Decl. at
¶36 (Ex. 1002). Kulkarni 1999 also emphasizes that “[l]arger grain sizes (≈25 nm)
in ITO films result in lower sheet resistance …,” and that a low pressure of
around 0.27 Pa during sputtering can be used to deposit this ITO layer (a pressure
within the preferred range in the ’763 patent (6:1-8)). Kulkarni 1999 at 273 (Ex.
1005) (emphasis added). Kulkarni 1998 similarly teaches sputter-deposited
crystallized ITO films for use as transparent electrodes, with an average crystallite
size ranging from 10 to 30 nm. Kulkarni 1998 at 1639 (Ex. 1006); Wolden Decl.
at ¶36 (Ex. 1002). Kulkarni 1998 also states that “[f]or the ITO films on PET, an
increase of grain size from 10 to 30 nm results in a corresponding decrease of
sheet resistance ….” Kulkarni 1998 at 1639 (Ex. 1006) (emphasis added). Thus,
it was well-known that forming crystalline ITO within the size range claimed in the
’763 patent could decrease electrical resistance.
Kulkarni was not alone in these observations. Many other prior art
publications similarly disclosed crystallized ITO films for use as transparent
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
11
electrodes, with the same crystallite sizes claimed in the ʼ763 patent. See, e.g., EP
ʼ040 at ¶93 (Ex. 1007) (“mean crystal grain size (R) is distributed within a range of
20 - 30 nm” for a sputter-deposited ITO thin film); Thorton, et al., “Transparent
Conductive Sn-doped Indium Oxide Coatings Deposited by Reactive Sputtering
with a Post Cathode,” J. Vac. Sci. Technol. 13(1) (Jan./Feb. 1976) at 119
(“Thorton”) (Ex. 1018) (sputtered ITO “grain size … increased from about 80 Å
[8.0 nm] for coatings deposited on cooled substrates to about 300 Å [30 nm] for
coatings deposited or annealed at 400º C.”); Wolden Decl. at ¶37 (Ex. 1002).
Further, it was known that nanocrystallized ITO films result in greater
stability. Id. at ¶38. For example, prior art Japan Patent Application Publication
Tokkai 9-305313 (“Tokkai ’313”) (Ex. 1010) discloses the use of ITO for
transparent films and that “the sheet resistance value of the transparent resistor
films … should be stable over time.” Tokkai ’313 at ¶¶4-5 (Ex. 1010). To
accomplish this, Tokkai ʼ313 describes making the “crystalline particle diameter of
its transparent resistor films … 28nm or less [so] the time-rate of change that can
occur in the sheet resistance … can be controlled … in a stable manner.” Id. at ¶9.
Accordingly, the ʼ763 inventors were not the first to “surprisingly discover”
the significance of using a partially crystalline ITO electrode layer with crystallites
having a mean size between 5 and 100 nm (as recited in claim 1 of the ’763 patent)
or between 20 and 50 nm (as recited in dependent claim 22 of the patent).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
12
Third, the ’763 inventors were not the first to incorporate such a partially
crystalline ITO electrode layer into an electrochemically controllable device.
Wolden Decl. at ¶39 (Ex. 1002). The Tokkai ’318 patent, for example, discloses a
liquid crystal display screen with partially crystalline ITO electrode layers. See
Tokkai ’318 at 94 (Ex. 1003); Wolden Decl. at ¶39 (Ex. 1002). In fact, Tokkai
’318’s ITO electrode layers are not only crystalline, but also have the precise
crystallite sizes disclosed and claimed in the ʼ763 patent. See Tokkai ’318 at 94
(Ex. 1003). One of Tokkai ’318’s disclosed embodiments, for example, has a
“transparent electrode 2 with crystalline particle diameter 0.1μm or less and the
average 0.05μm” (100 nm and 50 nm, respectively), and Tokkai ’318 explicitly
recognizes that a “smaller [compared to 500-2000 nm] crystalline particle diameter
for the transparent electrode was superior.” Id. at 94-95 (emphasis added).
Likewise, Badding discloses an electrochromic window with an upper ITO
electrode layer that has “crystalline phases.” See Badding 7:63-65 (Ex. 1004);
Wolden Decl. at ¶40 (Ex. 1002). Although Badding does not specify the precise
size of the crystallites in the crystalline phases of its upper ITO electrode, it was
well-known in the prior art to use crystallite sizes within the ranges specified in the
’763 claims, as discussed above. Accordingly, the use of partially crystalline ITO
thin films as the upper electrode in electrochemically controllable devices was
well-known in the prior art before the ’763 patent.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
13
C. Prosecution History of the ’763 Patent
During prosecution of the ’763 application, the PTO initially rejected the
pending claims over the combination of U.S. Patent No. 5,202,788 to Weppner
(“Weppner”) and Chopra, et al., “Transparent Conductors—A Status Review,”
Thin Solid Films 102:1-46 (1983) (“Chopra”) (Ex. 1012), contending that
Weppner taught all the limitations of pending claim 17 (issued claim 1) with the
exception of an upper electrode that is “partially crystallized in the form of
crystallites having a mean size of 5 to 100 nm.” Feb. 8, 2006 Office Action at 2-3
(Ex. 1011). For this crystallite size limitation, the PTO relied on Chopra,
contending that it discloses “crystallites having a mean size of 5 to 100nm.” Id.
(citing Chopra (Ex. 1012) at p.5, l. 35 to p.6, l. 28 and p.11, l. 44 to p.21, l. 18).
The Patent Owner overcame this rejection, in an argument made prior to
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), by arguing that Chopra
provided no suggestion or motivation to combine, contending that Chopra
“suggests no particular advantage of such materials in at least partially crystallized
form, let alone being in the form of crystallites having a mean size of between 5
and 100 nm….” March 13, 2006 OA Response at 16 (Ex. 1013). This argument
was not only premised on the pre-KSR legal standard for obviousness, since
overruled by the Supreme Court, but also omitted several critical facts about the
prior art. Most significantly, the Patent Owner failed to mention that a key
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
14
advantage of using crystalline ITO with a mean size within the claimed range had
been made clear in prior art (which was not before the PTO). In particular, the
Patent Owner failed to disclose that it was well-known before filing of the ’763
application that forming an ITO electrode layer with crystallites having an average
size between 20 and 50 nm has the particular advantage of lower resistivity, which
is desirable for ITO electrodes. See, e.g., Kulkarni 1999 at 273 (Ex. 1005)
(“[l]arger grain sizes (≈25 nm) [in comparison to grain sizes smaller than 25 nm] in
ITO films result in lower sheet resistance …”); Kulkarni 1998 at 1639 (Ex. 1006)
(“For the ITO films on PET, an increase of grain size from 10 to 30 nm results in a
corresponding decrease of sheet resistance ….”); EP ʼ040 at ¶ 93 (Ex. 1007)
(disclosing a “mean crystal grain size (R) is distributed within a range of 20 - 30
nm” for a sputter-deposited ITO thin film).
In addition, the Patent Owner also failed to acknowledge that Chopra sets
forth that, for the deposition of ITO films, “[t]he grain size ranges typically
between 400 and 600 Å,” which is 40-60 nm. Chopra at 19 (emphasis added) (Ex.
1012); Wolden Decl. ¶43 (Ex. 1002). Thus, Chopra discloses that the very
crystallite size claimed to be novel in the ’763 patent was already “typical” for an
ITO electrode prior to the filing of the ’763 patent.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
15
V. CLAIM CONSTRUCTION
The challenged claims in inter partes review should be given their “broadest
reasonable construction in light of the specification.” 37 C.F.R. § 42.100(b).
Under this standard, any claim term not explicitly defined in the specification
should be given a broad meaning.1 In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007).
Petitioner has set forth below its proposed constructions of certain terms of
the ’763 patent and its support for the constructions. The remaining terms not
included in the following discussion are readily understandable and should be
given their broadest reasonable interpretation in light of the specification as
commonly understood by those of ordinary skill in the art. To the extent the Patent
Owner, in order to avoid the prior art, contends that any claim term has a meaning
different from its broadest reasonable interpretation, the appropriate course would
be for the Patent Owner to seek to amend the claim to expressly correspond to its
contentions in this proceeding. See 77 Fed. Reg. 48764 (Aug. 14, 2012).
A person of ordinary skill in the art of the ’763 patent would have at least a
Master’s degree in chemical engineering, materials science, or in an equivalent
1 For purposes of this Petition, Petitioner adopts the “broadest reasonable
construction” standard as required by 37 C.F.R. § 42.100(b).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
16
field, as well as at least three years of research or industry experience in thin film
deposition of oxides. Wolden Decl. ¶45 (Ex. 1002).
A. “upper electrode” / “lower electrode”
Claim 1 includes the terms “upper electrode” and “lower electrode.” The
patent confirms that the “upper” and “lower” electrodes are simply electrodes that
have a defined physical relationship with respect to a carrier substrate. ’763 patent
at 3:22-28 (Ex. 1001). For example, the specification states: “Within the context
of the invention, the term ‘lower’ electrode is understood to mean the electrode
lying closest to the carrier substrate taken as reference, on which electrode at least
some of the active layers (all of the active layers in an ‘all solid state’
electrochromic system) are deposited. The ‘upper’ electrode is that deposited on
the other side with respect to the same reference substrate.” Id. The specification
also states that the “upper” electrode includes an “electronically conductive layer,
preferably transparent,” such as an electrode made from ITO. Id. at 3:10-15.
Claim 1 makes an additional point clear about the “upper” and “lower
electrodes.” Claim 1 requires “an electroactive layer or a stack of electroactive
layers placed between a lower electrode and an upper electrode.” Id. at claim 1
(emphasis added). This means that claim 1—and the broadest reasonable
interpretation of “lower electrode”—requires only one electroactive layer, not
multiple active layers.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
17
The broadest reasonable construction of the term “lower electrode” is
therefore the electrode lying closest to the carrier substrate, on which electrode at
least one of the active layer(s) is deposited. The broadest reasonable construction
of the term “upper electrode” is the electrode deposited on the other side of the
device from the lower electrode.
In the pending litigation between the Petitioner and the Patent Owner, the
Patent Owner has proposed constructions for “upper” and “lower” electrode that
are limited to an “electrochromic system.” Joint Claim Construction and
Prehearing Statement in Sage Electrochromics, Inc. v. View, Inc., No. 3:12-CV-
6441 (JST) (N.D. Cal.), dated 9/24/2014, Exhibit A at 2-3 (“Joint Claim Chart”)
(Ex. 1014). This limitation is inconsistent not only with the broadest reasonable
interpretation of these terms, but also with the specific examples in the patent. The
specification repeatedly confirms that the purported invention applies to a much
wider variety of applications than just electrochromic systems, including
photovoltaics and liquid-crystal systems such as display screens. ’763 patent at
2:60-66 (stating that the invention can be used in “electrochemical/electrically
controllable systems … [including] electrochromic, photovoltaic, [and]
electroluminescent” systems), 2:18-36 (discussing the use of two electroconductive
layers in “liquid-crystal systems”), 5:11-16 (stating that “the invention may apply
to various types of electrochemical or electrically controllable systems” and that it
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
18
is “more particularly of interest in the case of electrochromic systems, especially
‘all solid state’ or ‘all polymer’ systems or else liquid-crystal or viologen-based
systems, or electroluminescent systems” (emphases added)), 5:43-50 (stating that
the device according to the invention can be used in “various applications”
including glazing or mirrors, windows, roofs, trains, aircraft, cars, ships, and
“display screens, such as projection screens, television or computer screens, and
touch-sensitive screens.”), dependent claim 14 (listing a wide variety of
applications for the purported invention of claim 1) (Ex. 1001).
Nothing in the specification or claims limits the “upper” and “lower”
electrodes to electrodes for use only in electrochromic systems. To the contrary,
the patent is explicit that the electrodes can be part of solid state or liquid state
devices. Id. at 3:22-28 (“Within the context of the invention, the term ‘lower’
electrode is understood to mean the electrode lying closest to the carrier substrate
taken as reference, on which electrode at least some of the active layers (all of the
active layers in an ‘all solid state’ electrochromic system) are deposited.”
(emphasis added)).
B. “glazing panel”
Claim 11 recites the term “glazing panel.” The specification of the ʼ763
patent emphasizes that “glazing” is intended to be a broad term: “The term
‘glazing’ is to be understood in the broad sense and it encompasses any
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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essentially transparent material, made of glass and/or polymer (such as
polycarbonate PC or polymethyl methacrylate PMMA).” Id. at 5:34-38 (emphasis
added).
The patent goes on to confirm that the broader term—“glazing panel”—is
equally broad. The specification states, for example, that “glazing panels” can be
“fitted on the outside of buildings” (id. at 1:23-26), or used “as projection screens.”
Id. at 1:37-39 (“Glazing panels . . . may be used, when so desired, as projection
screens”). The specification further confirms that the invention “relates to the
various applications in which these devices may be found—glazing or mirrors:
they may be for glazing for buildings, especially external glazing, internal
partitions or glazed doors. They may also be windows, roofs or internal partitions
for means of transportation such as trains, aircraft, cars, ships. They may also be
display screens, such as projection screens, television or computer screens, and
touch-sensitive screens.” Id. at 5:43-54 (emphases added). Consistent with this
broad use of the term “glazing panel” in the patent, Random House Webster’s
Unabridged Dictionary defines “panel” to mean “a comparatively thin, flat piece of
wood or the like, as a large piece of plywood.” See Random House Webster’s
Unabridged Dictionary, Second Edition (2001) at 1401 (Ex. 1017).
The broadest reasonable construction of the term “glazing panel” is therefore
a flat piece of any essentially transparent material made of glass and/or polymer.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
20
In the pending litigation between the parties, the Patent Owner has proposed
a construction for “glazing panel” that is limited to material “fitted on or into a
prepared opening such as a window or internal partition.” Joint Claim Chart, Ex.
A at 3 (Ex. 1014). This limitation is inconsistent with the broadest reasonable
interpretation of the term, and would exclude the examples in the patent. The
specification is explicit that “glazing panels” can not only be “fitted on the outside
of buildings,” but may also be used in devices such “as projection screens.” ’763
patent at 1:23-26, 1:33-40 (Ex. 1001).
VI. SPECIFIC GROUNDS FOR PETITION
Pursuant to Rule 42.104(b)(4)-(5), the following sections describe in detail
how the prior art discloses each and every limitation of claims 1, 11, and 22 of the
’763 patent, and how these claims are anticipated by and rendered obvious by the
prior art. If the claims cover liquid crystal systems—as the patent repeatedly
confirms that they should—then the challenged claims are anticipated by Tokkai
’318. If the Board instead were to accept Patent Owner’s arguments that the
claims are limited to electrochromic windows, or that there is some other
distinction of Tokkai ’318, then the challenged claims are still obvious over
Badding in combination with Kulkarni 1999, Kulkarni 1998, or EP ’040.
Dr. Wolden confirms that these prior art references disclose each limitation
of claims 1, 11, and 22, and further confirms that the corresponding claim charts,
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
21
submitted herewith as Exhibits 1015-1016, identify how the challenged claims are
invalid based on the references relied upon in this Petition. See Wolden Decl. at
¶¶57, 61-90, 100-143 (Ex. 1002). These claim charts were previously served on
the Patent Owner on July 25, 2014 in connection with the pending litigation.
A. Ground 1: Tokkai ’318 Anticipates Claims 1, 11, and 22
1. The Tokkai ’318 Reference
Tokkai ’318 was not cited to the PTO or considered by the Examiner during
prosecution of the ’763 patent. Tokkai ’318 published on September 27, 1998,
well over one year before the effective U.S. filing date of the ’763 patent. See
Tokkai ’318 at 93 (Ex. 1003); ’763 patent at cover page (Ex. 1001). As such,
Tokkai ’318 is prior art to the ’763 patent under at least 35 U.S.C. §102(b).
Tokkai ’318 discloses a liquid crystal display device having a liquid crystal
layer sandwiched between a pair of transparent ITO electrodes, with an orienting
film formed on at least the upper electrode. See Tokkai ’318 at 94 (Ex. 1003).
Figure 1 of Tokkai ’318, reproduced below, shows a representative schematic
drawing of this liquid crystal device:
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Id. at Fig. 1. Figure 1 shows top and bottom substrates 1 (bottom shown in blue),
each of which has formed on it a transparent electrode layer 2 (red on bottom,
green on top). Id. at 94-95; Wolden Decl. at ¶59 (Ex. 1002). A polyimide film is
formed as an oriented layer 3 on top of each transparent electrode 2. Tokkai ’318
at 94 (Ex. 1003). A liquid crystal layer 7 (orange), gap material 5, and a spacer 6
are then placed between the electrode and oriented layers to form the liquid crystal
display. Id. at 94-95; Wolden Decl. at ¶59 (Ex. 1002).
Test Example 1 in Tokkai ’318 describes a transparent ITO electrode layer 2
formed on a glass substrate 1 by sputtering using an ITO target. Tokkai ’318 at 94
(Ex. 1003). In this embodiment, the transparent electrode 2 made from ITO has a
“crystalline particle diameter 0.1μm [100 nm] or less and [an] average 0.05μm [50
nm].” Id. at 94 (emphasis added). Tokkai ’318 teaches a second embodiment,
Test Example 2, also having a transparent ITO electrode layer 2 with a “crystalline
particle diameter” of “0.05 µm [50 nm] or less.” See id. (emphasis added).
Liquid Crystal Layer
Transparent Electrode
Transparent Electrode
Substrate
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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2. Tokkai ’318 Anticipates Independent Claim 1
As explained below, Tokkai ’318 discloses all the limitations of challenged
independent claim 1 and therefore anticipates this claim.
a) Preamble
Claim 1 begins with the preamble: “An electrochemically controllable
device having variable optical properties, or variable energy properties, or both
variable optical and variable energy properties.” Because “the claim body
describes a structurally complete invention such that deletion of the preamble
phrase does not affect the structure or steps of the claimed invention” (i.e., the
body of claim 1 describes a complete device with a “carrier substrate,”
“electroactive layer(s),” a “lower electrode,” and an “upper electrode” with specific
features), the preamble does not limit the claim. Am. Med. Sys., Inc. v. Biolitec,
Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010) (internal citations omitted); see also
Ex parte Boor, 2013 WL 3294706, at *3 (Patent Tr. & App. Bd. April 16, 2013)
(“[t]he Court of Appeals for the Federal Circuit has held generally that ‘the
preamble does not limit the claims’”) (quoting Allen Eng’g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002)). Regardless, Tokkai ’318 meets the
preamble whether or not it is limiting.
First, Tokkai ’318 discloses an electrochemically controllable device. The
ʼ763 patent repeatedly confirms that its purported “invention may apply to various
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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types” of systems, including “electrochromic” and “liquid-crystal” systems. ’763
patent at 5:11-16 (Ex. 1001); see also id. at 2:60-66 (stating that the invention can
be used in “electrochemical/electrically controllable systems … [including]
electrochromic, photovoltaic, [and] electroluminescent” systems), 2:18-36
(discussing the use of electroconductive layers in “liquid-crystal systems”).
Tokkai ’318 teaches exactly such an electrochemically controllable liquid
crystal device. Specifically, Tokkai ’318 teaches “[a] liquid crystal display device
having liquid crystal sandwiched between a pair of substrates having a transparent
electrode, an oriented film being formed on said transparent electrode ….” Tokkai
’318 at 93 (Ex. 1003). Tokkai ’318 also discloses that its liquid crystal layer 7 is a
“nematic liquid crystal” layer with a “chiral agent” (id. at 93-94, Fig. 1) and it
refers to “twisting” or the “[d]egree of twist” of the liquid crystals (id. at 93, 95,
Fig. 1 (numeral 4)). The liquid crystal layer 7 of Tokkai ’318 is electrochemically
controllable because its nematic liquid crystal system involves a chemical change
caused by an applied electric field. Wolden Decl. at ¶63 (Ex. 1002). Upon
application of an electric field, the liquid crystal molecules of Tokkai ’318 twist,
altering the spacing and orientation of atoms within the liquid crystal molecules,
which is a chemical change. Id. Further, the application of an electric field alters
how the liquid crystal molecules interact with the chiral agent molecules, which
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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ultimately alters the properties of the liquid crystal layer, e.g., degree of light
transmittance. Id.
Second, the Tokkai ’318 liquid crystal device has variable optical properties.
Wolden Decl. at ¶66 (Ex. 1002). A liquid crystal display device—including that of
Tokkai ‘318 and that described in the ’763 patent—has variable optical properties
in that liquid crystals are controllable through applied voltages to vary the optical
properties of the liquid crystal layer. Id. For example, the ʼ763 patent expounds
on the similarities of liquid crystal systems and other systems, including
electrochromic systems, and describes how liquid crystal systems are controllable
through applied voltages to vary the optical properties of the liquid crystal layer:
Mention may also be made of liquid-crystal systems, operating in a
similar mode to the previous ones [viologen-based systems (col. 1:44-
46 in Ex. 1001), electrochromic systems (col. 1:47-58 in Ex. 1001),
and optical valve systems (col. 2:9-17 in Ex. 1001)]. They are based
on the use of a film placed between two conductive layers and based
on a polymer in which liquid-crystal droplets are placed, especially
nematic liquid crystals of positive dielectric anisotropy. When a
voltage is applied to the film, the liquid crystals orient along a
preferred axis, which permits vision. With no voltage applied, when
the crystals are not aligned, the film becomes scattered and prevents
vision.
‘763 patent at 2:18-27 (Ex. 1001).
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The ʼ763 patent also discloses that a liquid crystal system can involve a
liquid crystal film “laminated and incorporated between two glass substrates,” (id.
at 2:30-31), just as described in Tokkai ’318. See Tokkai ’318 at 93, claim 1 (Ex.
1003) (disclosing a “liquid crystal display device having liquid crystal sandwiched
between a pair of substrates”), Fig. 1 (showing upper and lower substrates 1).
b) “at least one carrier substrate provided with an electroactive layer or a stack of electroactive layers placed between a lower electrode and an upper electrode”
Tokkai ’318 discloses “at least one carrier substrate provided with an
electroactive layer or a stack of electroactive layers placed between a lower
electrode and an upper electrode,” as required by claim 1 of the ’763 patent.
Wolden Decl. at ¶¶68-73 (Ex. 1002). Tokkai ’318 teaches a liquid crystal display
device having a liquid crystal layer 7 (i.e., an electroactive layer) that is placed
between a pair of transparent ITO electrodes 2 (i.e., upper and lower electrodes).
See Tokkai ’318 at 95 (Ex. 1003) (containing a description of each element in Fig.
1). These layers are shown, for example, in Figure 1, annotated below with labels
for the carrier substrate (blue), the lower electrode (red) formed on the carrier
substrate, the electroactive layer (orange), and the upper electrode 2 (green):
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Id. at 95, Fig. 1; Wolden Decl. at ¶¶68-69 (Ex. 1002).
Each ITO electrode 2 is an electrode layer and is deposited on a glass
substrate 1 (i.e., a carrier substrate). See id. at 94 (“Fig. 1 shows one embodiment
of this invention. A transparent electrode 2 was formed … on a washed glass
substrate 1 by the sputtering method using an indium oxide-tin oxide (hereinafter
referred to as ITO) target.”); id. at 93 (“A liquid crystal display device having
liquid crystal sandwiched between a pair of substrates having a transparent
electrode, an oriented film being formed on said transparent electrode.”). The ’763
patent is explicit that the electrode layers can be part of either a solid state
electrochromic system or some other type of system (such as a liquid-crystal
system). ’763 patent at 3:22-28 (Ex. 1001) (“the term ‘lower’ electrode is
understood to mean the electrode lying closest to the carrier substrate taken as
reference, on which electrode at least some of the active layers (all of the active
layers in an ‘all solid state’ electrochromic system) are deposited”); id. at 5:11-16
Electroactive Layer
Upper Electrode
Lower Electrode
Carrier Substrate
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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(“the invention may apply to various types” of systems including “electrochromic
systems” and “liquid-crystal or viologen-based systems”).
The liquid crystal layer 7 from Tokkai ’318 is an “electroactive layer” and is
placed between the upper and lower electrodes. The ʼ763 patent repeatedly
confirms that a liquid crystal layer is an “electroactive layer,” as that term is used
in the ’763 patent. Wolden Decl. at ¶70 (Ex. 1002). For example, the specification
describes liquid-crystal systems that are “based on the use of a film placed between
two conductive layers and based on a polymer in which liquid-crystal droplets are
placed” such that “[w]hen a voltage is applied to the film, the liquid crystals orient
along a preferred axis, which permits vision.” ʼ763 patent at 2:18-25 (Ex. 1001);
see also id. at 5:11-16 (explaining that the invention may apply to liquid-crystal
systems). The ʼ763 patent further explains that all the disclosed systems, including
liquid-crystal systems, “have in common the need to be equipped with current
leads for supplying electrodes generally in the form of two electronically
conductive layers on either side of the active layer or of the various active layers
of the system.” Id. at 2:42-46 (emphasis added). Moreover, claim 1 is explicit that
only one electroactive layer (“an electroactive layer”) is required. Accordingly, the
liquid-crystal layer 7 between the two electrodes in the Tokkai ’318 device is an
electroactive layer, as that term is used in the ʼ763 patent. See Tokkai ’318 at 94,
Figs. 1, 2 (Ex. 1003); Wolden Decl. at ¶¶70-71 (Ex. 1002).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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The bottom glass carrier substrate is thus provided with an electroactive
layer (i.e., liquid crystal layer 7) placed between two electrode layers (i.e., the ITO
electrodes layers 2). The lower electrode, for example, has the electroactive
layer—i.e., the liquid crystal layer 7—deposited on it: “A liquid crystal display
device according to the invention has liquid crystal sandwiched between a pair of
substrates having a transparent electrode, an oriented film being formed on said
transparent electrode ….” Tokkai ’318 at 93 (Ex. 1003); see also id. at 95, Fig. 1.
The lower electrode is, in turn, deposited directly on the glass carrier substrate: “A
transparent electrode 2 was formed to a thickness of 1000Å on a washed glass
substrate 1 ….” Id. at 94. The Tokkai ’318 patent, therefore, discloses a lower
electrode that is deposited on the carrier substrate and an electroactive layer placed
between the electrode layers. Wolden Decl. at ¶¶72-73 (Ex. 1002).
c) “wherein the upper electrode comprises at least one first electronically conductive layer, based on a metal-doped oxide selected from the group consisting of doped indium oxide, doped tin oxide and doped zinc oxide”
Tokkai ’318 further teaches that “the upper electrode comprises at least one
first electronically conductive layer, based on a metal-doped oxide selected from
the group consisting of doped indium oxide, doped tin oxide and doped zinc
oxide,” as required by claim 1 of the ’763. Wolden Decl. at ¶¶74-77 (Ex. 1002).
Figure 1 of Tokkai ’318, for example, depicts a “transparent electrode 2 [that] was
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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formed … on a washed glass substrate 1 by the sputtering method using an indium
oxide-tin oxide (hereinafter referred to as ITO) target.” Tokkai ’318 at 94 (Ex.
1003) (emphasis added); see also id. (referring to an “ITO film” and “[a]fter ITO
was vapor-deposited”), id. at 95 (referring to, “[a]fter ITO is formed by a method
of this invention”). As such, the upper electrode in Tokkai ’318 is made from ITO,
as depicted in the annotated version of Figure 1 below:
The ’763 patent itself confirms that an ITO layer, such as that in Tokkai
’318, qualifies as “at least one first electronically conductive layer, based on a
metal-doped oxide selected from the group consisting of doped indium oxide,
doped tin oxide and doped zinc oxide.” For example, the ’763 patent repeatedly
sets forth the use of ITO for the upper electrode, including that “the layer based on
indium oxide or based on tin oxide or based on zinc oxide of the upper electrode
will be denoted by the term ‘upper ITO.’” ’763 patent at 3:29-33 (Ex. 1001)
(emphasis added); see also id. at 3:16-19 (setting forth the resistivity of the “upper
Upper Electrode made from ITO
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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ITO”), 3:31-35 (setting forth the composition of ITO), 5:55-61 (setting forth the
use of ITO as a “subject of the invention”), 6:30-57 (setting forth a preferred
embodiment in connection with Figure 1 that uses ITO for the upper electrode).
d) “which is at least partially crystallized in a form of crystallites having a mean size of between 5 and 100 nm.”
Tokkai ’318 also discloses the last limitation of claim 1, requiring that the
upper electrode “is at least partially crystallized in a form of crystallites having a
mean size of between 5 and 100 nm.” Wolden Decl. at ¶¶78-80 (Ex. 1002). For
example, in “Test Example 1,” Tokkai ’318 teaches a transparent upper electrode
made from ITO that is at least partially crystalline with a mean size of 50 nm: “In
this way, the transparent electrode 2 with crystalline particle diameter 0.1 µm or
less and the average 0.05 µm [i.e., 50 nm] could be formed.” Tokkai ’318 at 94
(Ex. 1003) (emphasis added). Because 1 micron (µm) is equal to 1000 nanometers
(nm), the disclosure of an average crystalline particle diameter of 0.05 µm in
Tokkai ’318 is a disclosure of an upper ITO electrode that is “at least partially
crystallized in a form of crystallites having a mean size of between 5 and 100 nm.”
Wolden Decl. at ¶78 (Ex. 1002). Similarly, in “Test Example 2,” Tokkai ’318
teaches the use of ITO as the upper electrode and that the “crystalline particle
diameter of the transparent electrode at this time was 0.05 µm or less [i.e., 50 nm
or less].” Tokkai ’318 at 94 (Ex. 1003) (emphasis added).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Accordingly, Tokkai ’318 discloses all the limitations of claim 1 of the ʼ763
patent, and claim 1 is therefore invalid as anticipated by Tokkai ’318 under 35
U.S.C. §§ 102(a) and (b). Wolden Decl. at ¶¶78-80 (Ex. 1002).
3. Tokkai ‘318 Anticipates Dependent Claim 11
Claim 11, which depends from independent claim 1, requires a “glazing
panel incorporating the device as claimed in claim 1.” Claim 11 is also anticipated
by Tokkai ’318. Wolden Decl. at ¶¶81-86 (Ex. 1002).
As set forth in the claim construction section supra, the ’763 patent confirms
that a “glazing panel” is a flat piece of any essentially transparent material made of
glass and/or polymer. ’763 patent at 5:34-38 (Ex. 1001) (“The term ‘glazing’ is to
be understood in the broad sense and it encompasses any essentially transparent
material, made of glass and/or polymer”). The patent also repeatedly confirms that
the purported invention is applicable to liquid crystal display systems. See, e.g., id.
at 1:40-42, 2:18-39 (“Mention may also be made of liquid-crystal systems,
operating in a similar mode to the previous ones. They are based on the use of a
film placed between two conductive layers and based on a polymer in which
liquid-crystal droplets are placed ….”), 5:11-16 (“As mentioned earlier, the
invention may apply to various types of electrochemical or electrically
controllable systems. It is more particularly of interest in the case of
electrochromic systems … or else liquid crystal or viologen-based systems ….”
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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(emphases added)). A person of ordinary skill in the art, therefore, would
understand the term “glazing panel” to include liquid crystal display devices. See
Wolden Decl. at ¶82 (Ex. 1002).
Tokkai ’318 discloses such a glazing panel, i.e., a flat piece of essentially
transparent material made of glass and/or polymer, incorporating the device of
claim 1. Id. at ¶83. Tokkai ’318, for example, teaches a liquid crystal display
device in which all the layers in the device are made from essentially transparent
materials, such as glass or ITO: “A liquid crystal display device according to the
invention has liquid crystal sandwiched between a pair of substrates having a
transparent electrode, an oriented film being formed on said transparent electrode
….” Tokkai ’318 at 93 (Ex. 1003). Tokkai ’318 continues: “A transparent
electrode 2 was formed to a thickness of 1000Å on a washed glass substrate 1 by
the sputtering method using an indium oxide-tin oxide (hereinafter referred to as
ITO) target.” Id. at 94. Tokkai ’318 further describes the oriented film as thin and
made of a polymer: “[A] form of polyimide was formed to a thickness of 300Å -
1000Å as an oriented layer 3 ….” Id.
Tokkai ’318 also discloses a liquid crystal display device that is flat.
Wolden Decl. at ¶85 (Ex. 1002). For example, Figure 1 depicts a liquid crystal
display device that has flat glass surfaces on the top and bottom sides of the device.
See Tokkai ’318 at 95, Fig. 1 (Ex. 1003). In addition, Tokkai ’318 states, “[i]t is
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therefore an object of this invention to solve these problems of prior art
technologies and to form an oriented surface which is smooth and flat such that
the orientation can be stabilized.” Id. at 94.
4. Tokkai ’318 Anticipates Dependent Claim 22
Claim 22 depends from claim 1 and recites: “The device as claimed in claim
1, wherein the crystallites have a mean size of between 20 and 50 nm.” Claim 22
is also anticipated by Tokkai ’318. Wolden Decl. at ¶¶87-90 (Ex. 1002).
Tokkai ’318 discloses that the crystallites in the upper ITO electrode of Test
Example 1 have a mean size between 20 and 50 nm (Tokkai ’318 at 94 (Ex. 1003)
(“the transparent electrode 2 with crystalline particle diameter 0.1 µm or less and
the average 0.05 µm [50 nm] could be formed” (emphases added))), and that those
in the upper ITO electrode of Test Example 2 have a mean size of 50 nm or less
(id. (“the crystalline particle diameter of the transparent electrode at this time was
0.05 µm [50 nm] or less” (emphases added))). Both examples accordingly meet
claim 22’s requirement of “a mean size between 20 and 50 nm.” Wolden Decl. at
¶88 (Ex. 1002).
In fact, Tokkai ’318 not only discloses the precise crystallite size required by
the claim, but also explicitly teaches the desirability of having an average
crystallite size of 50 nm. In discussing a “conventional liquid crystal display,” for
example, Tokkai ’318 notes that the “crystallite particle diameter” of the ITO
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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electrode was “0.5-2 µ,” which is 500-2000 nm. Tokkai ’318 at 94 (Ex. 1003);
Wolden Decl. at ¶89 (Ex. 1002). After noting this, Tokkai ’318 discloses that the
surface of such an electrode had “significant unevenness” and that the electrode
according to the invention (with its average crystallite particle diameter of 0.05µm
(50nm)) was found to be “superior.” Tokkai ’318 at 94-95 (Ex. 1003). This
disclosure further indicates the clear teaching in Tokkai ’318 of forming an ITO
electrode with an average crystallite size between 20 and 50 nm, as claimed in
claim 22 of the ’763 patent. Wolden Decl. at ¶89 (Ex. 1002).
B. Ground 2: Claims 1, 11, and 22 Are Rendered Obvious By Badding In View Of Kulkarni 1999 Or Kulkarni 1998
As referenced above, the ʼ763 patent repeatedly confirms that the purported
invention covers both solid state electrochromic devices and liquid crystal devices.
To the extent Patent Owner nevertheless contends that Tokkai ’318 does not
anticipate the challenged claims because, for example, it describes a liquid crystal
display system rather than a smart window, or for some other reason, the
challenged claims are still invalid as obvious over Badding in combination with
either Kulkarni 1999 or Kulkarni 1998.
As explained below, Badding discloses each limitation from claims 1, 11,
and 22 of the ’763 patent, including an upper ITO electrode with a crystalline
structure, with the exception of the size of the crystallites in its crystalline upper
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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ITO electrode. It would have been obvious to combine Badding with either of
Kulkarni 1999 or Kulkarni 1998, each of which discloses a transparent ITO
electrode layer with the claimed crystallite size, in order to form the combinations
claimed in claims 1, 11, and 22 of the ’763 patent. Wolden Decl. at ¶¶91-92 (Ex.
1002).
1. Overview of Prior Art References
a) The Badding Reference
Badding was not cited to the PTO or considered by the Examiner during
prosecution of the application that led to the ʼ763 patent. Badding issued on July
6, 1999, well over one year before the effective U.S. filing date of the ’763 patent.
Badding at cover page (Ex. 1004). As such, the Badding patent is prior art to the
’763 patent under at least 35 U.S.C. §102(b).
Badding, like the preferred embodiment of the ʼ763 patent, discloses an
electrochemically controllable device—an electrochromic window—with an upper
electrode layer made from ITO (green below), a lower electrode layer (red below),
and electroactive layers (orange below) between the electrode layers. Figure 2
from Badding, for example, shows one embodiment of this device:
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Badding at 3:38-40, Fig. 2 (Ex. 1004). As Badding confirms, “[t]he window itself
consists of a series of sequential layers, including a transparent glass substrate 12, a
transparent conductive oxide layer 20, an electrochromic layer 30, and ion-
conducting layer 40, a counter electrode layer 50, another transparent conductive
oxide layer 22, and a transparent glass superstrate layer 14.” Id. at 3:40-46.
Badding also discloses, in Example 2, an embodiment in which an
electrochromic stack is deposited between an upper electrode made from ITO and
a lower electrode made from fluorine-doped tine oxide (FTO). Id. at 7:42-65;
Wolden Decl. at ¶95 (Ex. 1002). In this embodiment, a glass substrate is coated
with FTO, and an electrochromic layer made from tungsten trioxide is then
deposited on it, followed by a lithium-ion conducting layer and a vanadium
pentoxide counterelectrode layer, followed by the deposition of “a transparent
conductive layer of indium tin oxide (ITO) … by DC magnetron reactive
Carrier substrate
Upper electrode
Lower electrode
Electroactive layers
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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sputtering from a ceramic ITO target.” Badding at 7:42-65 (Ex. 1004); Wolden
Decl. at ¶95 (Ex. 1002). Badding explicitly states that the upper electrode made
from ITO has “crystalline phases.” Badding at 7:63-65 (Ex. 1004).
b) The Kulkarni 1999 Reference
Kulkarni 1999 was not cited to the PTO or considered by the Examiner
during prosecution of the ʼ763 patent. Kulkarni 1999 published well over one year
before the effective U.S. filing date of the ’763 patent (see Kulkarni 1999 at i-ii
(Ex. 1005)), and is prior art to the ’763 patent under at least 35 U.S.C. §102(b).
Kulkarni 1999 discloses ITO films, for use as transparent electrodes, that are
partially crystallized in a form of crystallites having a mean size of between 5 and
100 nm. Wolden Decl. at ¶97 (Ex. 1002). For instance, the 1999 Kulkarni paper
discloses partially crystallized sputter-deposited ITO films with average crystallite
grain sizes of 8.6nm, 11.8nm, 12.2nm, 25.5nm, 54.7nm, and 15.7nm. Kulkarni
1999 at 276, Table 2 (Ex. 1005); Wolden Decl. at ¶97 (Ex. 1002).
c) The Kulkarni 1998 Reference
Kulkarni 1998 was not cited to the PTO or considered by the Examiner
during prosecution of the ʼ763 patent. Kulkarni 1998 also published well over one
year before the effective U.S. filing date of the ’763 patent (see Kulkarni 1998 at i-
ii (Ex. 1006)), and is prior art to the ’763 patent under at least 35 U.S.C. §102(b).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Kulkarni 1998, like Kulkarni 1999, discloses ITO films, for use as
transparent electrodes, that are partially crystallized in a form of crystallites having
a mean size of between 5 and 100 nm. Wolden Decl. at ¶99 (Ex. 1002). For
instance, Kulkarni 1998 discloses ITO films with mean crystallite grain sizes from
10 to 30 nm. Kulkarni 1998 at 1639 (Ex. 1006) (“For the ITO films on PET, an
increase of grain size from 10 to 30 nm results in a corresponding decrease of
sheet resistance …” (emphasis added)); Wolden Decl. at ¶99 (Ex. 1002).
2. The Challenged Claims Are Obvious Over Badding In View Of Kulkarni 1999 or Kulkarni 1998
a) Claim 1
As explained below, Badding teaches every limitation from claim 1 with the
exception of the precise crystallite size claimed. Kulkarni 1999 and Kulkarni 1998
each discloses this limitation. Challenged claim 1 is obvious over Badding in view
of Kulkarni 1999 or Kulkarni 1998. Id. at ¶¶100-107.
1. Preamble
Claim 1 begins with the preamble: “[a]n electrochemically controllable
device having variable optical properties, or variable energy properties, or both
variable optical and variable energy properties.” Although this preamble should be
construed as non-limiting, Badding discloses the preamble.
Badding teaches an electrochemically controllable device having at least
variable optical properties. Id. at ¶102. Specifically, Badding teaches that
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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“[e]lectrochromic materials are now known which change their optical properties
in response to the application of an electric current or potential. A variety of solid-
state inorganic electrochromic layers have thus been devised including those
effecting color change based on the dual injection of electrons and ions ….”
Badding at 1:19-24; see also id. 4:10-36 (disclosing specific types of
electrochromic materials and how these materials function) (Ex. 1004). Moreover,
the Badding embodiments—like the ’763 embodiment of Figure 1—are
electrochromic windows. Thus, the electrochromic devices disclosed in Badding
are electrochemically controllable devices having variable optical properties and/or
variable energy properties. Wolden Decl. at ¶¶102-103 (Ex. 1002).
2. “at least one carrier substrate provided with an electroactive layer or a stack of electroactive layers placed between a lower electrode and an upper electrode”
Badding further discloses “at least one carrier substrate provided with an
electroactive layer or a stack of electroactive layers placed between a lower
electrode and an upper electrode,” as required by the first limitation of claim 1. Id.
at ¶¶104-105. For example, Badding discloses an electrochromic device in Figure
2, reproduced below with annotations to show the features from this claim
limitation:
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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The Badding specification confirms that Figure 2 shows the claimed elements:
The general structure of an electrochromic device in accordance with
the present invention is shown schematically in cross-section in FIG.
2 hereof. The window itself consists of a series of sequential layers,
including a transparent glass substrate 12, a transparent conductive
oxide layer 20, an electrochromic layer 30, and ion-conducting layer
40, a counter electrode layer 50, another transparent conductive oxide
layer 22, and a transparent glass superstrate layer 14.
Badding at 3:38-46 (Ex. 1004). As is clear from this disclosure, glass substrate 12
of Badding is a “carrier substrate;” transparent conductive oxide layer 20 is a
“lower electrode;” transparent conductive oxide layer 22 is an “upper electrode;”
and electrochromic layer 30, ion-conducting layer 40, and counter electrode layer
50 are a “stack of electroactive layers placed between a lower electrode and an
upper electrode.” Wolden Decl. at ¶¶104-105 (Ex. 1002).
Carrier substrate
Upper electrode
Lower electrode
Electroactive layers
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
42
3. “wherein the upper electrode comprises at least one first electronically conductive layer, based on a metal-doped oxide selected from the group consisting of doped indium oxide, doped tin oxide and doped zinc oxide”
Badding further teaches an “upper electrode [that] comprises at least one
first electronically conductive layer, based on a metal-doped oxide selected from
the group consisting of doped indium oxide, doped tin oxide and doped zinc
oxide.” Id. at ¶¶106-107. Referring to Figure 2, Badding states that “[i]n
fabricating window 12 described above, layers 20 and 22 may be formed from any
transparent oxides which are highly electron conducting, such as doped tin oxide,
doped zinc oxide, tin-doped indium oxide and similar materials.” Badding at 4:5-
10, Fig. 2 (Ex. 1004) (emphasis added). Badding also teaches a process of
fabricating an electrochromic device in Example 2 that includes an upper electrode
made from ITO: “[n]ext, a transparent conductive layer of indium tin oxide (ITO)
is deposited by DC magnetron reactive sputtering from a ceramic ITO target.” Id.
7:57-60 (emphasis added); Wolden Decl. at ¶¶106-107 (Ex. 1002).
4. “which is at least partially crystallized in a form of crystallites having a mean size of between 5 and 100 nm.”
Badding discloses an upper electrode that “is at least partially crystallized in
a form of crystallites.” Id. at ¶108. For instance, in connection with Example 2,
Badding discloses that “[a]n x-ray diffraction (XRD) pattern of the completed
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
43
device shows crystalline phases of tungsten trioxide, FTO, ITO, and γ-LixV2O5.”
Badding at 7:63-65 (Ex. 1004) (emphasis added). Badding is thus clear that its
upper ITO electrode is at least partially crystallized in a form of crystallites.
Wolden Decl. at ¶108 (Ex. 1002).
Although Badding does not disclose the precise size of the crystallites in its
crystalline ITO layer, as explained above, it was well-known before filing of the
’763 patent that it was desirable to use crystallites with the mean size required by
claim 1 in an ITO electrode layer. For example, Kulkarni 1999 and Kulkarni 1998
both teach an ITO electrode layer with crystallites having a mean size between 5
and 100 nm, as required by claim 1. Id. at ¶¶109-111. With respect to Kulkarni
1999, Table 2, reproduced below, discloses “average grain sizes” (i.e., average
crystallite grain sizes) of 8.6 nm, 11.8 nm, 12.2 nm, 25.5 nm, 54.7 nm, and 15.7
nm for six different ITO samples 1-6, respectively.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Kulkarni 1999 at 276 (Ex. 1005); Wolden Decl. at ¶109 (Ex. 1002). These average
grain sizes in Kulkarni 1999 were determined by X-ray diffraction (XRD)
(Kulkarni 1999 at 274 (Ex. 1005)), which is a technique described in the ’763
patent for determining crystal size and structure. ’763 patent at 3:40-45 (Ex.
1001); Wolden Decl. at ¶109 (Ex. 1002). The authors experimentally determined
the microstructures of various ITO thin films to determine the relationship between
resistivity and crystallite size and orientation, ultimately finding that “[l]arger grain
sizes (≈25 nm) [in comparison to grain sizes smaller than 25 nm] in ITO films
result in lower sheet resistance ….” Kulkarni 1999 at 273 (Ex. 1005).
In fact, Kulkarni 1999 not only discloses the same crystallite sizes as the
’763 patent, but also discloses similar deposition parameters for forming its ITO
samples (id. at 274, Table 1), including the deposition of the ITO thin film samples
on substrates by sputtering. See id. at 273 (“sputtering has emerged as the most
viable technique for depositing high quality ITO thin films”); Wolden Decl. at
¶110 (Ex. 1002).
Kulkarni 1998 similarly discloses transparent indium tin oxide (ITO) thin
films that are deposited on glass and polymeric substrates for use in opto-electronic
devices. See Kulkarni 1998 at 1636 (Ex. 1006). Kulkarni 1998 teaches a mean
crystallite size of between 5 and 100 nm for such an ITO layer, as required by
claim 1 of the ’763 patent. Wolden Decl. at ¶111 (Ex. 1002). Specifically,
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Kulkarni 1998 discloses crystallite grain sizes of 10 to 30 nm: “For the ITO films
on PET, an increase of grain size from 10 to 30 nm results in a corresponding
decrease of sheet resistance ….” Kulkarni 1998 at 1639 (Ex. 1006) (emphasis
added).
A person of ordinary skill in the art would have had substantial reason and
motivation to combine the teachings of Badding with the teachings of Kulkarni
1999 or Kulkarni 1998 to form the combination of claim 1 of the ’763 patent.
Wolden Decl. at ¶112 (Ex. 1002). First, as explained supra, Badding, Kulkarni
1999, and Kulkarni 1998 each teaches a transparent ITO electrode layer that is at
least partially crystallized in the form of crystallites. Id. at ¶113. The only
difference between the ITO layers in the references is that Kulkarni 1999 and
Kulkarni 1998 specify the mean size of the crystallites in their transparent ITO
electrode layer, while Badding does not.
Second, Kulkarni 1999 and Kulkarni 1998 focus on a wide range of
applications for transparent ITO electrodes, including applications similar to those
disclosed in Badding. Id. at ¶114. For example, Kulkarni 1999 teaches: “Indium-
tin-oxide (ITO) is a transparent conducting oxide used in several optical and
optoelectronic applications which include transparent electrodes, transparent
resistive heaters, transparent heat reflecting mirrors, antireflective coatings,
electromagnetic shield coatings and anti-static coatings for instrument panels.”
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Kulkarni 1999 at 273 (Ex. 1005) (emphases added). Similarly, Kulkarni 1998
teaches “[t]hin films of transparent conducting oxides (TCO) have applications in
selective heat mirrors, antireflection coatings, solar cells, gas sensors, and flat
panel displays. One such TCO is indium-tin-oxide (ITO), which is used in flat
panel displays ….” Kulkarni 1998 at 1636 (Ex. 1006). Badding teaches similar
commercial applications of electrochromic devices: “These electrochromic devices
have a significant number of potential uses, particularly in controlling the
transmission of optical energy through windows ….” Badding at 1:40-43 (Ex.
1004); Wolden Decl. at ¶114 (Ex. 1002).
Third, Badding uses ITO for its electrode layer for precisely the same
reasons as Kulkarni 1999 and Kulkarni 1998—namely, to achieve transparency
and high electrical conductivity (i.e., low resistivity), both of which properties
were well-known in the prior art for ITO electrode layers. Id. at ¶115. For
instance, Kulkarni 1999 teaches, “[m]ost of these applications require high
electrical conductivity and high visible transparency.” Kulkarni 1999 at 273 (Ex.
1005). Kulkarni 1998 teaches, “[m]ost of the present work on ITO deposition
focuses on the production of thin films with high transparency and low electrical
resistivity using glass substrates.” Kulkarni 1998 at 1636 (Ex. 1006) (emphasis
added). Badding similarly stresses the importance of electrodes that are highly
conductive (i.e., that have low resistivity): “layers 20 and 22 may be formed from
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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any transparent oxides which are highly electron conducting, such as doped tin
oxide, doped zinc oxide, tin-doped indium oxide and similar materials.” Badding
at 4:5-10 (Ex. 1004) (emphasis added). Badding also discloses the use of the
electrochromic device including the upper ITO electrode in an “insulating glass
unit (IGU),” which is transmissive. Id. at 7:66-8:5.
Fourth, Kulkarni 1999 and Kulkarni 1998 explicitly teach that the size of
the crystallites in the ITO electrode layer affects the electrical and optical
properties of thin films—and thus are directly applicable to Badding, which uses
its upper ITO electrode layer for the same purpose of achieving transparency and
low resistivity. For example, Kulkarni 1999 discloses, “[i]n this paper, we have
analyzed the microstructure of the ITO thin films in detail to explain the
dependence of the electrical properties on the grain size and grain orientation. In
general, the grain size and orientation of the thin films dictate the electrical and
optical properties of thin films of different materials such as ITO ….” Kulkarni
1999 at 273 (Ex. 1005) (emphases added); Wolden Decl. at ¶116 (Ex. 1002).
Kulkarni 1999 specifically teaches that an ITO electrode layer with crystallites
having a mean size of between 5 and 100 nm can have desirable properties,
including lower resistivity of the electrode: “Larger grain sizes (≈25 nm) in ITO
films result in lower sheet resistance ….” Kulkarni 1999 at 273 (Ex. 1005);
Wolden Decl. at ¶116 (Ex. 1002). Likewise, Kulkarni 1998 teaches that a similar
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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crystallite size (e.g., 30 nm) yields a particularly low level of resistivity in the ITO
layer: “The peak intensity ratio of (400) peak to all other peaks for one of the
lowest sheet resistance sample (250 Ω/sq) is 0.885 and the grain size of this
sample is estimated to be 30 nm.” Kulkarni 1998 at 1639 (Ex. 1006) (emphasis
added). It also states that “an increase of grain size from 10 to 30 nm results in a
corresponding decrease of sheet resistance from 103 Ω/sq. to 250 Ω /sq.” Id.
Fifth, Badding, Kulkarni 1999, and Kulkarni 1998 not only focus on the
same qualities for their ITO electrode layers—transparency and low resistivity—
but also use similar deposition methods. Each teaches the use of sputtering to
deposit a transparent ITO electrode layer. See, e.g., Badding at 5:2, 7:57-60 (Ex.
1004) (disclosing deposition of ITO by sputtering); Kulkarni 1999 at 273
(Abstract), 273 (Ex. 1005) (“Out of many deposition techniques including
sputtering, thermal or electron-beam evaporation, chemical vapor deposition, spray
pyrolysis, and sol-gel process, sputtering has emerged as the most viable
technique for depositing high quality ITO thin films.” (emphasis added));
Kulkarni 1998 at 1636 (Ex. 1006) (“sheet resistance, optical transmittance, and
microstructure of as-deposited ITO thin films on unheated polyethylene
terephthalate substrates were studied using rf sputter deposition” (emphasis
added)), 1637 (“[p]rior to the introduction into the sputter deposition system,
samples were blown dry” (emphasis added)); Wolden Decl. at ¶117 (Ex. 1002).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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The use of sputtering for ITO deposition in both Badding and Kulkarni
1999/Kulkarni 1998 would make it easy for a person of ordinary skill in the art to
use the ITO sputtering process of Kulkarni 1999 or Kulkarni 1998 in place of the
ITO sputtering process of Badding to produce the upper ITO electrode of Badding.
Id. In addition, Kulkarni 1999 teaches the deposition of ITO at a low pressure of
“20 MTorr (0.27 Pa).” Kulkarni 1999 at 273 (Ex. 1005). This pressure is entirely
consistent with the pressure range set forth in the ’763 patent, which states that a
pressure of “less than or equal to 0.5 Pa (5x10-3 mbar)” and “at least 0.08 Pa (8x10-
4 mbar)” “makes it possible to obtain a dense nano-crystallized layer.” ’763 patent
at 6:1-8 (Ex. 1001). Even if the deposited ITO films of Kulkarni 1999 or Kulkarni
1998 were annealed at a temperature at or below 400º Celsius, the crystal grain
sizes disclosed in Kulkarni 1999 (i.e., 8.6 nm, 11.8 nm, 12.2 nm, 25.5 nm, and 15.7
nm) and Kulkarni 1998 (i.e., 30 nm) would still fall within the range claimed in the
’763 patent. See Wolden Decl. at ¶117 (Ex. 1002); Thorton at 119 (Ex. 1018)
(stating that the sputtered ITO “grain size … increased from about 80 Å [8.0 nm]
for coatings deposited on cooled substrates to about 300 Å [30 nm] for coatings
deposited or annealed at 400º C.”).
Accordingly, a person of ordinary skill in the art would have had substantial
motivation, for multiple reasons, to apply the crystallite size teachings of Kulkarni
1999 or Kulkarni 1998 to Badding to arrive at claim 1 of the ʼ763 patent. Wolden
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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Decl. at ¶118 (Ex. 1002). A person of ordinary skill in the art would have sought
to maintain the transparency of the upper ITO electrode layer in the electrochromic
device of Badding—while at the same time reducing its resistivity—and would
have recognized that Kulkarni 1999 or Kulkarni 1998 taught that sizing the mean
size of the crystallites in the ITO layer between 5 nm and 100 nm would result in
an upper electrode with high transparency and low resistivity. Id. As such, a
person of ordinary skill in the art would have applied the teachings of Kulkarni
1999 or Kulkarni 1998 to the upper ITO electrode layer disclosed in Badding, in
order to form the combination claimed in claim 1 of the ’763 patent. Id.
Applying the ITO electrode layer and deposition technique from Kulkarni
1999 or Kulkarni 1998 to the ITO electrode layer in the electrochromic device of
Badding would be nothing more than a combination of known elements used for
their known purpose and yielding predictable results. Wolden Decl. at ¶119 (Ex.
1002). For instance, every layer in the electrochromic device of Badding could be
used for its intended purpose, and only the top ITO electrode of Badding would
need to be modified according to the teaching of Kulkarni 1999 or Kulkarni 1998.
Id. In addition, the ITO layer from Kulkarni 1999 or Kulkarni 1998 would be used
for its intended purpose in the electrochromic device of Badding—i.e., it would be
used as “a transparent conducting oxide” electrode, as taught by Kulkarni 1999 and
Kulkarni 1998. Kulkarni 1999 at 273 (Ex. 1005); Kulkarni 1998 at 1636 (Ex.
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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1006); Wolden Decl. at ¶119 (Ex. 1002). The combination would have been the
application of Kulkarni 1999’s or Kulkarni 1998’s known technique of depositing
an ITO electrode layer by sputtering (for instance, using the deposition parameters
in Table 1 of Kulkarni 1999 or page 1637 of Kulkarni 1998) with crystallites
having a mean size between 5 and 100 nm, to Badding’s known technique of
depositing an ITO electrode layer by sputtering with crystalline phases for the
upper electrode in an electrochromic device. Wolden Decl. at ¶119 (Ex. 1002).
Further, the result of the combination would be predictable in that the ITO of
Kulkarni 1999 or Kulkarni 1998 would have crystallites with a mean size within
the claimed range and would function as intended as a transparent conducting
oxide electrode in the electrochromic device of Badding. Id. at ¶120. In fact,
Chopra states that, for the deposition of ITO films, “[t]he grain size ranges
typically between 400 and 600 Å,” which is 40-60 nm. Chopra at 19 (Ex. 1012).
This indicates that a person of ordinary skill in the art would expect a deposited
ITO layer to have a mean crystallite grain size within the claimed range. Further,
Badding’s ITO electrode layer was ready for improvement, and the combination
would yield the predictable result of an upper electrode made from an ITO with
that has low resistivity for use as a transparent electrically conductive layer.
Wolden Decl. at ¶¶120-121 (Ex. 1002).
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Finally, design incentives and market forces would have prompted the
application of Kulkarni 1999’s or Kulkarni 1998’s ITO layer to the Badding patent,
because the resulting upper ITO electrode would have high transparency and low
resistance in an electrochromic device, both of which are desirable. Id. at ¶122. In
addition, the combination would have required no more than ordinary creativity,
taking into account the inferences and steps that a person of ordinary skill in the art
would employ. Id. This is evidenced by both the wide use of ITO for
electronically conductive layers (’763 patent at 2:47-50 (Ex. 1001)) and by the vast
amount of prior art research and publication relating to the desirability of using
ITO electrodes with crystallites having a mean size between 5 and 100 nm. See
Kulkarni 1999 at 273, 276, Table 2 (Ex. 1005) (disclosing the desirability of using
“[l]arger grain sizes (≈25 nm) in ITO films” because they “result in lower sheet
resistance,” and disclosing sputter-deposited partially crystallized ITO films, also
for use as transparent electrodes, with average crystallite grain sizes of 8.6nm,
11.8nm, 12.2nm, 25.5nm, 54.7nm, and 15.7nm (emphasis added)); Kulkarni 1998
at 1639 (Ex. 1006) (disclosing sputter-deposited crystallized ITO films for use as
transparent electrodes, and disclosing that an “increase of grain size from 10 to 30
nm results in a corresponding decrease of sheet resistance”) (emphasis added); EP
’040 at ¶93 (Ex. 1007) (disclosing a “mean crystal grain size (R) is distributed
within a range of 20 - 30 nm” for a sputter-deposited ITO thin film) (emphasis
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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added); Tokkai ’318 at 94 (Ex. 1003) (disclosing an ITO electrode “with
crystalline particle diameter 0.1 µm or less and the average 0.05 µm [50 nm]” and
another embodiment where “the crystalline particle diameter of the transparent
electrode … was 0.05 µm [50 nm] or less”) (emphases added); Chopra at 19 (Ex.
1012) (stating that, for the deposition of ITO films, “[t]he grain size ranges
typically between 400 and 600 Å,” which is 40-60 nm) (emphasis added). Wolden
Decl. at ¶122 (Ex. 1002).
b) Dependent Claim 11
Badding also discloses the additional limitation of dependent claim 11, i.e.,
“a glazing panel incorporating the device as claimed in claim 1.” Specifically,
Badding discloses an electrochromic device for use in a variety of applications,
including use in windows and insulating glass units, which are glazing panels:
For the purposes of the present invention, the electrochromic devices
hereof will be discussed in connection with their potential use to
control the transmission of light through a window. It should be
appreciated, however, that these electrochromic devices are useful in a
wide variety of applications, including use in display devices, variable
reflectants, mirrors, lenses, and similar devices in which the ability to
selectively control the transmission of optical energy through a
transparent structure would be beneficial.
Badding at 3:29-37 (Ex. 1004) (emphasis added). Badding further describes the
fabrication of a device and its incorporation “into a desiccated insulating glass unit
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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(IGU),” which is a glazing panel. Id. at 7:66-8:1; Wolden Decl. at ¶124 (Ex.
1002). The windows and IGUs of Badding are transparent materials made from
glass and are flat, as shown in Figure 2 of Badding. Badding, therefore, discloses
“a glazing panel incorporating the device as claimed in claim 1.”
For the same reasons as set forth above for claim 1, claim 11 is rendered
obvious by Badding in view of Kulkarni 1999 or Kulkarni 1998.
c) Dependent Claim 22
Dependent claim 22 adds the limitation “wherein the crystallites have a
mean size of between 20 and 50 nm.” As discussed supra, Kulkarni 1999 teaches
an ITO electrode with an average crystallite grain size of 25 nm, which is between
20 and 50 nm. See Kulkarni 1999 at 273 (Ex. 1005) (“Larger grain sizes (≈25 nm)
in ITO films result in lower sheet resistance.”); id. at 276, Table 2 (showing an
“Average grain size” of “25.5” nm for sample 4). In addition, as discussed supra,
Kulkarni 1998 teaches an ITO electrode with an average crystalline grain size of
30 nm, which is also between 20 and 50 nm. Kulkarni 1998 at 1639 (Ex. 1006).
Accordingly, for the same reasons discussed above in connection with claim 1,
Badding in view of Kulkarni 1999 or Kulkarni 1998 renders obvious claim 22 of
the ʼ763 patent. Wolden Decl. at ¶127 (Ex. 1002).
In addition to the reasons explained above for why a person of ordinary skill
in the art would combine the teachings of Badding and Kulkarni 1999 or Kulkarni
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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1998 to arrive at claim 1 of the ʼ763 patent, Kulkarni 1999 and Kulkarni 1998 each
provides an additional reason why the person of ordinary skill in the art would
combine these references to arrive at the combination of claim 22. For instance,
Figure 3 of Kulkarni 1999, reproduced below, provides a chart comparing the
average crystallite grain size of each ITO electrode sample with the sheet
resistance of that sample:
Kulkarni 1999 at 275, Fig. 3 (Ex. 1005). As is evident from Figure 3, sample 4,
which has an average grain size of 25.5 nm (see id. at 276, Table 2), has the lowest
sheet resistance of all six samples. In particular, the sheet resistance of sample 4,
which is 250 Ω/, is lower than the next closest sheet resistance in Kulkarni 1999,
which is sample 6 at 293 Ω/. Id. Accordingly, Kulkarni 1999 suggests that a
mean size of crystallites of 25.5 nm—i.e., between 20 and 50 nm—is a desirable
size in an ITO electrode. Wolden Decl. at ¶128 (Ex. 1002). Even if the ITO
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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samples with crystal grain sizes of 8.6nm, 11.8nm, 12.2nm, 25.5nm, and 15.7nm in
Kulkarni 1999 or 25 or 30 nm in Kulkarni 1998 were annealed for several minutes
at or below 400º Celsius, the grain sizes would fall right within the claimed range
of 20-50 nm in claim 22. Id. at ¶129.
Kulkarni 1998 also provides a similar motivation for combination with
Badding. Kulkarni 1998 discloses that “an increase of grain size from 10 to 30
nm results in a corresponding decrease of sheet resistance,” indicating the
desirability of using an ITO layer with crystallites with a mean size between 20
and 50 nm. Kulkarni 1998 at 1639 (Ex. 1006) (emphases added).
Accordingly, a person of ordinary skill in the art would have been motivated
to combine the teachings of Badding with the teachings of Kulkarni 1999 or
Kulkarni 1998 to arrive at the invention of claim 22, because the person of
ordinary skill would realize that the low resistance of the ITO sample with an
average crystallite size of 25.5 nm or 30 nm would be desirable. Wolden Decl. at
¶¶130-131 (Ex. 1002). For the same reasons as set forth above in connection with
claim 1, doing so would be nothing more than a combination of known elements
used for their known purpose to yield predictable results. Id.
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C. Ground 3: Claims 1, 11, and 22 Are Rendered Obvious By Badding In View Of EP ’040
As explained above, Badding discloses almost all the limitations of the ’763
claims, including an upper ITO electrode layer with “crystalline phases.” See §
VI.B; see also Badding at 7:63-65 (Ex. 1004). Although Badding does not specify
the precise size of the crystallites in its ITO electrode, many other prior art
publications, including the Kulkarni references, disclose crystallized ITO films for
use as transparent electrodes with the same crystallite sizes claimed. To the extent
Patent Owner attempts to argue that the Kulkarni references do not disclose the
specified crystallite sizes because they refer to “average” rather than “mean”
sizes—a meaningless distinction given that “mean” means “average”—challenged
claims 1, 11, and 22 are nevertheless obvious over Badding in view of EP ’040.
As explained supra, Badding discloses an electrochromic device with each
and every limitation of claims 1, 11, and 22, with the exception of the precise
crystallite size claimed in claims 1 and 22.
EP ʼ040, which was not cited to the PTO during prosecution of the
application that led to the ʼ763 patent, teaches an ITO electrode layer that is
partially crystallized and that has a mean crystallite size between 5 and 100 nm, as
required by claim 1. EP ’040 at ¶93 (Ex. 1007); Wolden Decl. at ¶135 (Ex. 1002).
For example, EP ʼ040 states: “ITO film is formed as a transparent conductive film
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
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by [a] sputtering process …. [T]he mean crystal grain size (R) is distributed
within a range of 20-30nm.” EP ’040 at ¶93 (Ex. 1007) (emphasis added). EP
ʼ040 provides additional examples. See, e.g., id. at ¶67 (“On a 20 µm thick
polyethylene terephthalate film … an ITO film is formed as a transparent
conductive film by sputtering process … by which a transparent conductive film
having a mean crystal grain size (R) distributed within a range of 40-60 nm is
fabricated” (emphases added)).
For the same reasons set forth above for the combination of Badding with
Kulkarni 1999 or Kulkarni 1998, a person of ordinary skill in the art would have
had reason and motivation to combine the teachings of Badding with the teachings
of EP ’040. Wolden Decl. at ¶136 (Ex. 1002).
First, Badding and EP ʼ040 both teach a transparent ITO electrode layer that
is at least partially crystallized in a form of crystallites. Id. at ¶¶132, 135, 137.
Second, Badding uses ITO for its upper electrode layer for precisely the
same reasons as EP ʼ040—low resistivity and high transparency. See EP ʼ040 at
¶4 (Ex. 1007) (“For example, … the mainstream is transparent conductive films
made of ITO, where the surface resistance value is required to be 200 – 2000 Ω/sq
….”); Badding at 4:5-8 (Ex. 1004) (stressing the importance of electrodes that are
“highly electron conducting”); see also supra § VI.B(2).
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
59
Third, Badding and EP ʼ040 not only focus on the same qualities for their
ITO electrode layers—transparency and low resistivity—but also use similar
deposition methods for ITO. Both, for instance, teach the use of sputtering to
deposit the transparent electrode layers. See, e.g., Badding 5:2 (Ex. 1004)
(“[d]eposition techniques include RF sputtering”), 7:57-60 (“[n]ext, a transparent
conductive layer of indium tin oxide (ITO) is deposited by DC magnetron reactive
sputtering from a ceramic ITO target” (emphasis added)); EP ’040 at ¶39 (Ex.
1007) (“sputtering process is the mainstream for forming” ITO films “of good
crystallinity”); see also supra § VI.B.
Accordingly, a person of ordinary skill in the art would have been motivated
to apply the crystallite size teachings for ITO electrodes of EP ’040 to the
teachings of Badding to arrive at claim 1 of the ʼ763 patent. Wolden Decl. at ¶140
(Ex. 1002). A person or ordinary skill in the art would do so for the same reasons
set forth above in connection with the combination of Badding with Kulkarni 1998
or Kulkarni 1999, including that applying the ITO electrode layer and deposition
technique from EP ’040 to the upper ITO electrode layer in the device of Badding
would be nothing more than a combination of known elements used for their
known purpose to yield predictable results. Id. at ¶140.
As explained above, the additional limitation of claim 11—a glazing panel
incorporating the device of claim 1—is disclosed in Badding. For the same
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
60
reasons as set forth for claim 1, claim 11 is rendered obvious by Badding in view
of EP ʼ040. Id. at ¶¶124, 141.
Regarding dependent claim 22, as discussed supra, EP ʼ040 teaches an ITO
electrode with a mean crystallite grain size of 20-30 nm, which is between 20-50
nm as required by claim 22. Id. at ¶142. For example, EP ʼ040 describes an “ITO
film [that] is formed as a transparent conductive film by [a] sputtering process …
[where] the mean crystal grain size (R) is distributed within a range of 20-30nm.”
EP ʼ040 at ¶93 (Ex. 1007) (emphases added). Accordingly, for the same reasons
discussed above for claim 1, Badding in view of EP ’040 renders obvious claim 22.
Wolden Decl. at ¶135-140, 142-143 (Ex. 1002).
VII. CONCLUSION
Based on the foregoing, claims 1, 11, and 22 of the ʼ763 patent recite subject
matter that is anticipated and/or obvious. The Petitioner requests institution of an
inter partes review to cancel those claims.
Respectfully submitted, View, Inc., Petitioner
By: ___/Joseph F. Haag/_________ Joseph F. Haag Registration No. 42,612 Wilmer Cutler Pickering Hale and Dorr LLP
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
1
CERTIFICATE OF SERVICE
I hereby certify that on November 7, 2014, I caused a true and correct copy
of the following materials:
Petition for Inter Partes Review of U.S. Patent No. 7,193,763 Under
35 U.S.C. § 312 and 37 C.F.R. § 42.104
Exhibits 1001-1018
List of Exhibits for Petition for Inter Partes Review of U.S. Patent
No. 7,193,763 (Exhibits 1001-1018)
Power of Attorney
to be served via Federal Express on the following attorney of record as listed on
PAIR:
Surinder Sachar Oblon, Spivak, McClelland, Maier & Neustadt, LLP
1940 Duke Street Alexandria, VA 22314
_____/Joseph F. Haag/_________
Joseph F. Haag Registration No. 42,612
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
1
LIST OF EXHIBITS FOR PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT NO. 7,193,763
Exhibit Description 1001 U.S. Patent No. 7,193,763
1002 Declaration of Dr. Colin Wolden (“Wolden Decl.”)
1003 Japan Patent App. Pub. Tokkai 63-231318 (certified translation into English and Japanese language original) (“Tokkai ʼ318”)
1004 U.S. Patent No. 5,919,571 (“Badding”)
1005 Kulkarni, et al., “Dependence of the Sheet Resistance of Indium-Tin-Oxide Thin Films on Grain Size and Grain orientation Determined from X-ray Diffraction Techniques,” Thin Solid Films 345: 273-277 (1999) (“Kulkarni 1999”)
1006 Kulkarni, et al., “Electrical, Optical, and Structural Properties of Indium-Tin-Oxide Thin Films Deposited on Polyethylene Terephthalate Substrates by rf Sputtering,” J. Vac. Sci. Technol. A 16(3), 1636-40 (1998) (“Kulkarni 1998”)
1007 European Patent App. EP 1011040 A1 (“EP ’040”)
1008 Hiroshi Morikawa and Miya Fujita, “Crystallization and Decrease in Resistivity on Heat Treatment of Amorphous Indium Tin Oxide Thin Films Prepared by d.c. Magnetron Sputtering,” Thin Solid Films 339: 309-313 (1999) (“Morikawa”)
1009 Choi, et al., “Effect of Film Density on Electrical Properties of Indium Tin Oxide Films Deposited by DC Magnetron Reactive Sputtering,” J. Vac. Sci. Technol. A 19(5), 2043-47 (Sept./Oct. 2001) (“Choi”)
1010 Japan Patent App. Pub. Tokkai 9-305313 (certified translation into English and Japanese language original) (“Tokkai ʼ313”)
1011 February 8, 2006 Office Action in App. Ser. No. 10/495,758
1012 Chopra, et al., “Transparent Conductors—A Status Review,” Thin Solid Films 102:1-46 (1983) (“Chopra”)
1013 March 13, 2006 Response in App. Ser. No. 10/495,758
U.S. Patent No. 7,193,763 Petition for Inter Partes Review
2
Exhibit Description 1014 Joint Claim Construction and Prehearing Statement in Sage
Electrochromics, Inc. v. View, Inc., No. 3:12-CV-6441 (JST) (N.D. Cal.), dated 9/24/2014
1015 Invalidity Chart for U.S. Patent No. 7,193,763 in View of Japanese Tokkai Patent No. 63-231318 from Sage Electrochromics, Inc. v. View, Inc., No. 3:12-CV-6441 (JST) (N.D. Cal.), served on 7/25/2014
1016 Invalidity Chart for U.S. Patent No. 7,193,763 in View of USPN. 5,919,571 to Badding et al. from Sage Electrochromics, Inc. v. View, Inc., No. 3:12-CV-6441 (JST) (N.D. Cal.), served on 7/25/2014
1017 Random House Webster’s Unabridged Dictionary, Second Edition (2001) at cover pages, 1401
1018 Thorton, et al., “Transparent Conductive Sn-doped Indium Oxide Coatings Deposited by Reactive Sputtering with a Post Cathode,” J. Vac. Sci. Technol. 13(1), 117-21 (Jan./Feb. 1976) (“Thorton”)
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