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 IPR2013—00066
`
`PATENT 7,876,413
`
`PATENT OWNER’S LISTING OF ANTICIPATED MOTIONS FOR >
`
`DISCUSSION IN INITIAL CONFERENCE CALL
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`CASE IPR2013—00066
`
`PATENT 7,876,413
`
`PATENT OWNER’S LISTING OF ANTICIPATED MOTIONS FOR >
`
`DISCUSSION IN INITIAL CONFERENCE CALL
`
`
`
`An initial conference call is scheduled in this matter for May 21, 2013 at 2
`
`PM EST. Pursuant to the Office Patent Trial Practice Guide (OPTPG), 77 Fed.
`
`Reg., 48765 (Aug. 14, 2012), Patent Owner submits this initial listing of motions it
`
`may bring during this trial. Patent Owner reserves its right to seek authorization to
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`bring additional motions, or to decide not to bring motions as indicated, as
`
`circumstances may warrant.
`
`1. Motion to Amend the Claims
`
`On May 8, 2013, Patent Owner filed a Request for Rehearing on the Board’s
`
`Decision to institute inter partes review (IPR), which is currently pending.
`
`.
`
`Depending on Patent Owner’s continuing evaluation of the Board’s Decision, and
`
`upon the Board’s decision on Patent Owner’s Request for Rehearing, Patent Owner
`
`may move to amend or propose substitute claims pursuant to 37 CPR. § 42.121
`
`for one or more of the claims of US. Patent 7,876,413 for which a trial has been
`
`granted.
`
`If Patent Owner determines that it will file a motion to amend one or
`
`more claims, Patent Owner will arrange a conference call with the Board and
`
`opposing counsel to discuss the proposed motion to amend.
`
`
`
`2. Motion to Take Discovery Relating to the Identification of
`Real Parties-In-Interest Under 35 U.S.C. § 312(a)(2)
`
`Patent Owner may move to take additional discovery 1 regarding the ,
`
`identification of real parties—in-interest with respect to the current Petition. More
`
`specifically,
`
`the additional discovery may seek information concerning the
`
`involvement of Chi Mei Optoelectronics USA, Inc., Acer America Corporation,
`
`ViewSonic Corporation, VIZIO, Inc., and Westinghouse Digital, LLC,
`
`in the
`
`preparation and filing of the current Petition.
`
`Patent Owner believes that the facts presently before the Board as described in
`
`the Patent Owner’s Preliminary Response demonstrate that the Petitioner failed to
`
`identify all real parties-in—interest as 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 Petitioner failed to identify all real parties—
`
`in—interest.
`
`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
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`evidence in its Preliminary Response:
`
`1 This includes, pctentially, a reasonable number of requests for production,
`interrogatories, and requests for admission.
`3
`
`
`
`0 Exhibit 2002, pages 2,
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`5—6, and 17 — In a Motion to Stay,
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`the
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`Defendants in the District Court case collectively refer to the earlier
`
`Petition as “their” Petition that “Defendants filed,” and stated that
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`“Defendants have moved expeditiously to prepare and file a
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`comprehensive petition for an IPR of the Asserted Patents.”
`
`0 Exhibit 2003, page 3 — In support of the Defendants’ Motion to Stay in
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`the District Court case, the Petitioner’s Backup Counsel in this IPR
`
`proceeding, Gregory Cordrey submitted a declaration stating that the
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`collective “Defendants filed with the US. Patent and Trademark Office
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`(‘PTO’) its petition for IPR for US. Patent No. 7,876,413 ("413
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`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
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`the Motion and stays the litigation, Westinghouse agrees to be bound by
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`the PTO’s determinations on the IPRs pursuant
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`to the estoppel
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`provisions of 35 U.S.C. § 315(e)(2).”
`
`o Petitioner’s backup counsel, Mr. Cordrey, also represents Chi Mei
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`Optoelectronics USA, Inc, Acer America Corporation, ViewSonic
`
`Corporation, and VIZIO, Inc. in the District Court case, which gives
`
`4
`
`
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`these parties an opportunity to exercise control of the instant Petition
`
`through their counsel, Mr. Cordrey.
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`The Patent Owner may request additional discovery to show that the above
`
`quoted statements mean What they say, and that is that some or all Defendants
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`exercised some control, or had the opportunity to exercise some control, over the
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`preparation and filing of the instant Petition.
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`The Patent Trial Practice Guide notes
`
`(at pages 48759-60)
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`that
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`the
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`determination of Whether or not a party is a real party-in—interest is a fact specific
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`inquiry that must be made on a case by case basis. The Patent Owner respectfully
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`submits that the Board, and not Petitioner, should make the determination that
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`parties in addition to Petitioner are in fact real parties-in—interest as to this Petition.
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`To enable the Board to make this fact
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`intensive determination,
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`the requested
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`discovery relating to the identification of the real parties—in-interest is necessary
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`because only Petitioner and the other defendants in the pending litigation are in
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`possession of this information. Thus, the requested discovery is “necessary in the
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`interest ofjustice,” as required by 35 U.S.C. § 316(a)(5).
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`Any requested discovery Will be limited and Will not ask for Petitioner’s
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`litigation positions or the underlying basis for those positions. Instead, the requested
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`information will be directed to the Petitioner and limited to the involvement of
`
`
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`Petitioner with other parties who may have funded, exerted control over, or had the
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`opportunity to exert control over, preparing and filing the instant Petition.
`
`
`Dated: May fig , 2013
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`Respectfully submitted,
`
`
`
`Mark J. 'Murphy, Reg. No. 34,22 “wk
`Edward Manzo, Reg. No. 28,135
`
`2%
`
`'\
`
`Husch Blackwell LLP
`
`120 South Riverside Plaza
`
`Chicago, Illinois 60606
`(312) 526-1533
`Customer No. 24628
`
`
`
`CERTIFICATE OF SERVICE
`
`foregoing PATENT OWNER’S LISTING OF
`the
`that
`certify
`I
`ANTICIPATED MOTIONS FOR DISCUSSION IN INITIAL CONFERENCE
`
`CALL was served on the Petitioner by Federal Express Standard Overnight at the
`following addresses on May 15, 2013.
`
`Scott A. McKeown
`
`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, VA 22314
`
`Gregory S. Cordrey
`Stanley M. Gibson
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`'
`
`Irvine, CA 92614-2592
`
`
`
`Attornejswfoerwatent Owner
`
`
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