Takeaway: The Board may deny a petition if the petitioner does not provide any expert testimony or evidence to support the reason to combine the obviousness references.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood of prevailing on any of the challenged claims, claims 1-5, of the ’550 Patent. The ’550 Patent discloses a matrix structure arrangement for a liquid crystal display (LCD) panel in which pixels are arranged in rows and columns.  The Board began with claim construction, stating that the terms are given their broadest reasonable construction. The Board adopted Petitioner’s proposed constructions, which were applied by Patent Owner for the purposes of its Preliminary Response.

The Board then reviewed the grounds of unpatentability. First, the Board discussed whether the claims are obvious over Shimada and Kubota or Shimada and the Admitted Prior Art. Patent Owner argued that Petitioner did not provide a basis to modify Shimada with either Kubota or the Admitted Prior Art. The Board agreed that the Petition failed to provide a factual basis for the allegations that Shimada could be modified using Kubota or the Admitted Prior Art. Specifically, the Board noted the lack of expert testimony or evidence, and found that Petitioner provided only attorney argument.

Next, the Board reviewed whether the claims are obvious over Janssen and Kubota or Janssen and the Admitted Prior Art. The Board again agreed with Patent Owner that Petitioner did not provide support for its contention that Janssen would be modified using Kubota or the Admitted Prior Art. The Board also was not persuaded that the combinations would yield predictable results. Finally, regarding the challenge to dependent claim 3, the Board noted that the additional reference, Takeuchi, does not remedy the deficiencies discussed above.

Sharp Corp. v. Surpass Tech Innovation LLC, IPR2015-00022

Paper 9: Decision Denying Institution of Inter Partes

Review Dated: March 10, 2015

Patent 7,420,550 B2

Before: Sally C. Medley, Bryan F. Moore, and Beth Z. Shaw

Written by: Shaw