UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`-
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`'
`
`CASE |PR2013—00038
`
`PATENT 7,956,978
`
`PATENT OWNER’S MOTION TO TAKE ADDITIONAL
`
`DISCOVERY UNDER 37 C.F.R. § 42.51IbMZI
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`-
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`'
`
`CASE |PR2013—00038
`
`PATENT 7,956,978
`
`PATENT OWNER’S MOTION TO TAKE ADDITIONAL
`
`DISCOVERY UNDER 37 C.F.R. § 42.51IbMZI
`
`
`
`Previously Filed
`
`EXHIBIT LIST
`
`Exhibit 2001 — Complaint, Semiconductor Energy Laboratory Co., Ltd. v. Chimei ‘
`Innolux Corp, et al., Case No. SACV 12—0021—JST (CD. Cal).
`
`Exhibit 2002 — Defendants’ Motion to Stay Litigation Pending Outcome of Inter
`Partes Review, Semiconductor Energy Laboratory Co., Ltd. v. Chimei
`Innolux Corp, et a].
`
`Exhibit 2003 — Supplemental Declaration of Gregory S. Cordrey in Support of
`Defendants' Motion for Stay, Semiconductor Energy Laboratory Co., Ltd. v.
`Chimei Innolux Corp, et al.
`
`Exhibit 2004 — Defendants’ Reply in Support of their Motion to Stay,_
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp, et al.
`
`Exhibit 2005 — Defendant Westinghouse Digital's Notice of Jcinder,
`Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp, et al.
`
`Exhibit 2006 — ‘978 Patent Prosecution History Excerpt Part I — Prior Art
`considered by the Office
`
`Exhibit 2007 — ‘978 Patent Prosecution History Excerpt Part II — Expert Opinion of
`Dr. Silzars considered by the Office
`.
`
`Currently Filed
`
`Exhibit 2008 _ [Proposed] Patent Owner’s Requests for Production To Petitioner
`
`Exhibit 2009 — [Proposed] Patent Owner’s Interrogatories To Petitioner
`
`Exhibit 2010 — [Proposed] Patent Owner’s Requests for Admission To Petitioner
`
`
`
`PATENT OWNER’S MOTION TO TAKE ADDITIONAL
`
`DISCOVERY UNDER 37 C.F.R. § 42.511b112)
`
`Pursuant to the Board’s authorization in its Order dated April 26, 2013,
`
`Patent Owner Semiconductor Energy Laboratory Co., Ltd. (“SEL”) respectfully I
`
`submits this motion to take discovery of Petitioner Chimei Innolux Corporation
`
`(“CMI” or “Petitioner”)1. Specifically, Patent Owner requests that the Board
`
`authorize discovery requests as follows:
`
`0 Patent Owner’s Requests for Production To Petitioner (Nos.
`
`1—2)
`
`(Exhibit 2008);
`
`0 Patent Owner’s Interrogatories To Petitioner
`
`(Nos.
`
`1—3)
`
`(Exhibit
`
`2009); and
`
`0 Patent Owner’s Requests for Admission To Petitioner (Nos.
`
`1—5)
`
`(Exhibit 2010).
`
`I.
`
`Discovery Is Relevant to Whether CMI Identified All Real Parties In
`
`Interest as Reguired Under 35 U.S.C. § 3121a2121
`
`The proposed discovery pertains to the identification of real parties in
`
`interest with respect to the current Petition. As discussed in the initial conference
`
`call conducted on April 23, 2013, Patent Owner believes that the facts presently
`
`before the Board as described in the Patent Owner’s Preliminary Response and in
`
`the pending Request for Rehearing on the Decision to institute a trial in this IPR
`
`demonstrate that the Petitioner failed to identify all real parties in interest as
`
`1 While Patent Owner acknowledges the name change of the Petitioner, Patent
`Owner continues to refer to that party as “Chimei Innolux Corporation” or “ClVII”
`in this document.
`
`
`
`required by the 35 U.S.C. § 312(a)(2). However, insofar as the Board disagrees,
`
`the requested discovery is “necessary in the interest of justice,” as required by 35
`
`U.S.C. § 316(a)(5) in order to allow the Patent Owner an opportunity to show that
`
`CMI failed to identify all real parties in interest. The five factors2 identified by the '
`
`Board in Paper No. 26 in Garmin v. Caozzo (IPR2012-00001) as relevant to
`
`determining whether discovery should be permitted in the context of an IPR weigh
`
`in favor of allowing further discovery in this case.
`Considering, the Board’s first factor, there is more than a “mere possibility”
`
`of discovering relevant evidence that the Petitioner failed to identify all real parties
`
`in interest as required by 35 U.S.C. § 312(a)(2). This is because Patent Owner has
`
`already provided at least the following evidence in its Preliminary Response and
`
`Request for Rehearing:
`
`0 Exhibit 2002, pages 2,
`
`5—6, and 17 — In a Motion to Stay,
`
`the
`
`Defendants in the District Court case collectively refer to the earlier
`
`Petition as “their” Petition that “Defendants filed,” and stated that
`
`“Defendants have moved expeditiously to prepare and file a
`
`comprehensive petition for an IPR of the Asserted Patents.”
`
`0 Exhibit 2003, page 1 — In support of the Defendants’ Motion to Stay in
`
`the District Court case, the Petitioner’s Backup Counsel in this IPR
`
`2 The five factors listed by the Board are the following: (1) more than a possibility
`and mere allegation; (2) litigation positions and underlying basis; (3) ability to
`generate equivalent information by other means; (4) easily understandable
`instructions; and (5) requests not overly burdensome to answer.
`
`2
`
`
`
`proceeding, Gregory Cordrey submitted a declaration stating that the
`
`collective “Defendants filed with the US. Patent and Trademark
`
`Office (‘PTO’) its petition for IPR for US. Patent No. 7,956,978
`
`("978 Patent’).”
`
`0 Exhibit 2005, page 2 — Westinghouse Digital, LLC stated in its Notice
`
`of Joinder in the District Court case that it “hereby joins Defendants’
`
`motion to stay” and “[a]dditionally, in the event that the Court grants
`
`the Motion and stays the litigation, Westinghouse agrees to be bound
`
`by the PTO’s determinations on the IPRs pursuant to the estoppel
`
`provisions of 35 U.S.C. § 315(e)(2).”
`
`o Petitioner’s backup counsel, Mr. Cordrey, also represents Chi Mei
`
`Optoelectronics USA, Inc., Acer America Corporation, ViewSonic
`
`Corporation, and VIZIO, Inc. in the District Court case, which gives
`
`these parties an opportunity to exercise control of the instant Petition
`
`through their counsel, Mr. Cordrey.
`
`Even though the Board’s March 21 Decision gave little or no weight to the
`
`statements and admissions made by all Defendants in the District Court case, the
`
`above statements and admissions support the Patent Owner’s contention that the
`
`parties in addition to CMI participated in the filing of the instant Petition.
`
`Specifically, the March 21 Decision stated that the “statements that SEL refer to are
`
`just that. SEL has not shown persuasively that the statements mean what SEL
`
`
`
`suggests they mean.” (March 21 Decision, p. 7, 11. 18-19.) Further, the Board’s
`
`April 30 Decision on Patent Owner’s Request for Rehearing still found that the
`
`above evidence is insufficient to show that each of the co-defendants is a real party
`
`in interest, stating that “SEL has failed to provide persuasive evidence that the co—
`
`defendants in the CMI Case exercised control or provided funding for the instant
`
`Petition.” (April 30 Decision, p. 3, ll. 13—15.) The Patent Owner is now requesting
`
`additional discovery to show that the above quoted statements mean what they say,
`
`and that
`
`is that some or all Defendants exercised some control, or had the
`
`opportunity to exercise some control, over the preparation and filing of the instant
`
`Petition.
`
`The Patent Trial Practice Guide notes
`
`(at pages 48759—60)
`
`that
`
`the
`
`determination of whether or not a party is a real party in interest is a fact specific
`
`inquiry that must be made on a case by case basis. The Patent Owner respectfiilly
`
`submits that the Board, and not CMI, should make the determination that parties in
`
`addition to CMI are in fact real parties in interests as to this Petition. To enable the
`
`Board to make this fact intensive determination, the requested discovery relating to
`
`the identification of the real parties in interest is necessary because only CM and
`
`the other defendants in the pending litigation are in possession of this information.
`
`Thus, the requested discovery is “necessary in the interest of justice,” as required
`
`by 35 U.S.C. § 316(a)(5).
`
`
`
`The Board’s second factor also weighs in favor of the Patent Owner being
`
`granted the requested discovery because the requested discovery is limited and does
`
`not ask for CMI’s litigation positions or the underlying basis for those positions.
`
`Instead, the requested information is limited to the involvement of CM with other
`
`parties who may have funded, exerted control over, or had the opportunity to exert
`
`control over, preparing and filing the instant Petition. Therefore, the second factor
`
`weighs in favor of the Patent Owner.
`
`Furthermore,
`
`the Patent Owner cannot. obtain access to the requested
`
`information by other means. The requested information is not publicly available
`
`and can only be obtained directly from CMI (as a practical matter, because the
`
`other co—defendants are not parties to this proceeding). Thus, the Board’s third
`
`factor weighs in favor of allowing the additional discovery being requested by the
`
`Patent Owner.
`
`The Board’s fourth and fifth factors also weigh in favor of granting the
`
`Patent Owner’s request for additional discovery. This is because the additional
`
`discovery filed as Exhibits 2008—2010 contains easily understood instructions.
`
`Also, each of the following discovery requests is not overly burdensome and is
`
`tailored to discovering facts relevant to the determination of whether parties in
`
`addition to CMI participated in preparing or filing the instant Petition and are real
`
`parties in interest:
`
`0 Requests for Production Nos. 1-2 (Exhibit 2008);
`
`
`
`0
`
`Interrogatories Nos. 1—3 (Exhibit 2009); and
`
`0 Requests for Admission Nos. 1-5 (Exhibit 2010).
`
`Accordingly, after considering the Board’s five factors and in the interest of
`
`justice, the Patent Owner’s Motion should be granted to prove that the Petitioner
`
`failed to identify all real parties in interest as required by 35 U.S.C. § 312(a)(2).
`
`II.
`
`Conclusion
`
`For the foregoing reasons, Patent Owner respectfully submits that
`
`the
`
`proposed discovery is reasonably limited and necessary in the interest of justice.
`
`The proposed discovery is tailored to discovering evidence that may establish that
`
`this
`
`IPR proceeding should not go forward.
`
`Accordingly, Patent Owner
`
`respectfully requests that the Board grant this Motion and authorize the Patent
`
`Owner to serve the proposed discovery on Petitioner, and order Petitioner to
`
`comply with, and respond fully to, the same.
`
`Dated: May 2, 2013
`
`Respectfully submitted,
`
`Eric J. Robinson
`
`Sean C. Flood
`
`ROBINSON INTELLECTUAL PROPERTY
`
`LAW OFFICE, PC.
`
`3975 Fair Ridge Drive,
`Suite 20 North
`
`Fairfax, Virginia 22033
`(571) 434—6789
`
`Attorneys for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that
`
`the foregoing PATENT OWNER’S MOTION TO TAKE
`
`ADDITIONAL DISCOVERY UNDER 37 C.F.R. § 42.51(b)(2) and each of
`
`Exhibits 2008 to 2010 was served on the Petitioner by Federal Express Standard
`
`Overnight at the following addresses on May 2, 2013.
`
`Scott A. McKeown
`
`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, VA 22314
`
`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`
`Irvine, CA 92614—2592
`
`Stanley Gibson
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`
`Irvine, CA 92614—2592
`
`
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