DOCKET NO.: 2201087-00125 Filed on behalf of View, Inc ...Backup Counsel: Jason Kipnis (Registration No. 40,680) Backup Counsel: Owen K. Allen (Registration No. 71,118) Petitioner

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: [email protected]

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

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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


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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


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


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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: [email protected]


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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).


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.


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


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.


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


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


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


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


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


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).


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.


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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


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.


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).


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.


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


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


19

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.


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,


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:


22

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


23

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


24

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


25

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).


26

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):


27

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


28

(“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).


29

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


30

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


31

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).


32

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 ….”


33

(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


34

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


35

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


36

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:


37

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


38

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).


39

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


40

“[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:


41

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


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


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.


44

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,


45

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.”


46

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


47

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


48

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).


49

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


50

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.


51

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).


52

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


53

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


54

(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


55

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


56

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.


57

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


58

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).


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


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


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


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


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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DOCKET NO.: 2201087-00125 Filed on behalf of View, Inc ...Backup Counsel: Jason Kipnis (Registration No. 40,680) Backup Counsel: Owen K. Allen (Registration No. 71,118) Petitioner