UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`INNOLUX CORPORATION
`(formerly CHI MEI INNOLUX CORPORATION)
`
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`
`Patent OWNER
`____________
`
`Case IPR2013-00038
`
`U.S. Patent 7,956,978
`
`____________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`TAKE ADDITIONAL DISCOVERY UNDER 37 C.F.R. §42.51(B)(2)
`
`
`
`
`Mail Stop "PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`INNOLUX CORPORATION
`(formerly CHI MEI INNOLUX CORPORATION)
`
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`
`Patent OWNER
`____________
`
`Case IPR2013-00038
`
`U.S. Patent 7,956,978
`
`____________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`TAKE ADDITIONAL DISCOVERY UNDER 37 C.F.R. §42.51(B)(2)
`
`
`
`
`Mail Stop "PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`Patent owner, Semiconductor Energy Laboratory Co., Ltd. (“SEL”) seeks to
`
`take additional discovery of Petitioner Innolux Corporation (“Petitioner”) to
`
`support its contention that Innolux has failed to identify all real parties in interest
`
`pursuant to 35 U.S.C. § 312(a)(2). The discovery requests include Requests for
`
`Production of Documents Nos. 1-2 (Exhibit 2008), Interrogatories Nos. 1-3
`
`(Exhibit 2009), and Requests for Admissions Nos. 1-5 (Exhibit 2010). These
`
`requests are purportedly directed at co-defendants CMO USA, Acer America,
`
`ViewSonic, and VIZIO’s involvement with the Petition. SEL’s motion should be
`
`denied because the requested discovery is based on speculation and is not
`
`necessary in the interest of justice.
`
`SEL offers no evidence other than speculation that multiple defendants could
`
`have participated in preparing the IPR petition. On the other hand, the record
`
`includes clear representations from registered practitioners that the real party-in-
`
`interest information is correct, and has not changed. The same practitioners are
`
`under a continuing duty of candor in this regard to update any changes in this
`
`representation. The PTAB has already rejected the speculative arguments of SEL
`
`twice, and SEL now seeks a third bite at the apple on the very same arguments. See
`
`2
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`
`Decision on Institution of Inter Partes Review, Paper 9 at 6-8 and Decision on
`
`Request for Rehearing, Paper 20 at 2-4.
`
`I.
`
`
`Additional Discovery is Not Generally Allowed
`
`In keeping with Congress’ intent for inter partes review to be a quick and
`
`cost effective alternative to litigation, the scope of discovery in an inter partes
`
`review proceeding is limited compared to what is typically available in district
`
`court patent litigation. See e.g., IPR2013-00080, Paper 17 (citing H. Rep. No. 112-
`
`98 at 45-48 (2011). A party moving for additional discovery “must show that such
`
`additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i); see 35
`
`U.S.C. § 316(a)(5); see also Apple Inc, v. Achates Reference Publishing, Inc.,
`
`IPR2013-00080 Paper 17 and See Garmin Int’l v. Cuozzo Speed Tech., IPR 2012-
`
`00001 Paper 19.
`
`The legislative history of the American Invents Act makes clear that
`
`additional discovery is only appropriate for “particular limited situations, such as
`
`minor discovery that PTO finds to be routinely useful, or to discovery that is
`
`justified by the special circumstances of the case.” See IPR2013-00080, Paper 17
`
`(citing 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008)(statement of Sen. Kyl).
`
`Given this intent, and the one-year statutory deadline for completion of Inter Partes
`
`Review, the Board takes a conservative approach to allowing additional discovery.
`
`3
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`
`See IPR2013-00080, Paper 17 and IPR 2012-00001, Paper 19 (describing factors
`
`considered in determining whether additional discovery is warranted).
`
`
`II. The Additional Discovery is Speculative and Not
`“Necessary in the Interest of Justice”
`The additional discovery sought by SEL is not necessary in the interest of
`
`justice. One significant factor in determining whether additional discovery is in the
`
`interest of justice is whether there exists more than a “mere possibility” or “mere
`
`allegation that something useful [to the proceeding] will be found.” See IPR2013-
`
`00080, Paper 17 at 4; see also IPR 2012-00001, Paper 19 at 2. The party
`
`requesting discovery must come forward with some factual evidence or support for
`
`its request. See IPR 2012-00001, Paper 19 at 2 (stating that the requesting party
`
`“should already be in the possession of evidence tending to show beyond
`
`speculation that in fact something useful will be uncovered.”)
`
`Here, SEL has not met its burden of showing “beyond speculation” that the
`
`requested discovery will lead to useful information. In its Preliminary Response,
`
`and again in its Request for Rehearing on the Decision, SEL argued that the
`
`Petition should be dismissed for failure to designate all real parties-in-interest.
`
`Having twice considered SEL’s arguments, the Board determined that “SEL has
`
`failed to provide persuasive evidence that the co-defendants in the Innolux Case
`
`4
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`
`exercised control or provided funding for the instant Petition…Accordingly, SEL
`
`has not demonstrated that Innolux has failed to list all the real parties-in-interest
`
`under 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b).” See Decision on Request for
`
`Rehearing at 3.
`
`In its motion for additional discovery, SEL purports to list evidence that it
`
`has provided on this issue, and relies on this purported evidence to show that there
`
`is more than a “mere possibility” of discovery relevant evidence that Petitioner
`
`failed to identify all real parties in interest. However, as the Board has recognized,
`
`SEL’s evidence does not support the proposition for which it is being offered.
`
`SEL has not presented any evidence to show control or funding of the Petition by
`
`one or more co-defendants, or other facts that would tend to show that they are real
`
`parties in interest.
`
`For example, SEL argues that statements made by the Defendants in the
`
`District Court litigation constitute admissions that all the Defendants participated
`
`in the filing of the Petition (SEL Exhibits 2002, 2003 and 2005). SEL also argues
`
`that because Innolux’s backup counsel also represents co-defendants, that this
`
`indicates that the co-defendants had an opportunity to exercise control of the
`
`Petition through backup counsel. The Board found that this evidence:
`
`5
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`
`
`merely shows that the other co-defendants in the CMI Case agreed to be
`bound to any decision in this inter partes review proceeding and effectively
`ceded control to CMI over this proceeding. Even though Mr. Cordrey is
`backup counsel in this proceeding and may represent some of the co-
`defendants in the CMI Case as SEL contends, SEL does not show
`persuasively that the other co-defendants hired Mr. Cordrey to control this
`proceeding.
`See Decision on Request for Rehearing at 3. Similarly, SEL asserts that
`
`Defendants made admissions to the Court in the Innolux case that suggests that
`
`Defendants exercised some control in the Petition. However, as recognized by the
`
`Board, SEL’s observations fail to show control or funding by co-defendants. The
`
`evidence and arguments presented by SEL only amount to mere allegation and
`
`speculation that one or more of the co-defendants are real parties-in-interest. To
`
`the extent that SEL has provided evidence, there is no evidence that supports its
`
`contention that one or more of co-defendants are real parties in interest. SEL has
`
`not demonstrated that the requested additional discovery is likely to uncover useful
`
`information and therefore fails to meet its burden of showing that the additional
`
`discovery is in the interest of justice. See Garmin, IPR2012-00001 Paper 26 at 7
`
`(holding that vague allegations are insufficient to justify additional discovery under
`
`37 CFR 42.51(b)).
`
`6
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`
`III. Additional Discovery Is Inappropriate In This Case
`
` The requested discovery is inappropriate and unnecessary on several
`
`additional grounds. First, the Board has already considered and reconsidered
`
`SEL’s evidence and arguments, and has determined that there is no persuasive
`
`evidence of control or funding of the Petition by the co-defendants. As a result,
`
`there is no need for discovery on the issue of real parties in interest. Second,
`
`discovery on issues such as privity and real parties-in-interest should be reserved
`
`for the rare cases where a petition is unclear or facially inaccurate in its
`
`identification of the real parties-in-interest. See In re Arviv, 95/001,526, Order at 7
`
`(4/18/2001). Here, the Petition certifies, and Innolux continues to represent, that it
`
`is the sole real party-in-interest. SEL is seeking a new class of routine discovery
`
`for any Petition for inter partes review that stems from a litigation involving
`
`multiple defendants. Without supporting evidence, such discovery should not be
`
`allowed.
`
`Finally, as noted by the Board at the initial conference call, the parties are
`
`under an obligation to produce documents and information that conflicts with their
`
`litigation positions. Because Innolux maintains that it is the sole real party-in-
`
`7
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`
`interest, Innolux is already under an obligation to provide discovery showing
`
`otherwise. Thus, additional discovery requests on this topic are inappropriate.
`
`IV. Conclusion
`For the reasons stated above, SEL has not met its burden to demonstrate that
`
`additional discovery is in the interest of justice and Petitioner respectfully requests
`
`that the Board deny SEL’s motion to take additional discovery.
`
`Dated: May 9, 2013
`
`
`
`Respectfully submitted,
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`Lead Counsel for Petitioner
`Oblon, Spivak, McClelland, Maier &
`Neustadt, LLP
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`SMcKeown@oblon.com
`
`
`Gregory S. Cordrey (Reg. No. 190,144)
`Back-up Counsel for Petitioner
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`Tel: (949) 623-7236
`Fax: (888) 712-3345
`gxc@jmbm.com
`
`8
`
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Take Additional Discovery
`Case IPR2013-00038
`U.S. Patent 7,956,978
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that PETITIONER’S OPPOSITION TO PATENT
`
`OWNER’S MOTION TO TAKE ADDITIONAL DISCOVERY UNDER 37
`
`C.F.R. § 42.51(B)(2) in connection with Inter Partes Review Case IPR2013-
`
`00038 was served on this 9th day of May, 2013 by electronic mail to Robinson
`
`Intellectual Property Law Office, P.C., Counsel for Patent Owner, at
`
`[erobinson@riplo.com], having a postal address at:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: May 9, 2013
`
`
`
`
`
`
`
`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
`Fairfax, VA 22030
`
`
`
`
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
`
`
`
`
`
`
`
`
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