`Patent 7,434,370
`Filed on behalf of Innovative Display Technologies LLC.
`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
`
`Bragalone Conroy P.C.
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`
`
`Case IPR2014-01096
`U.S. Patent No. 7,537,370
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,537,370
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`1
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`
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`Case IPR2014-01096
`Patent 7,434,370
`I.
`INTRODUCTION
`
`
`
`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
`
`Owner”) hereby files this preliminary response (“Preliminary Response”) to the
`
`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,537,370 (the
`
`“Petition”) in IPR2014-01096 filed by LG Display Co., LTD (“LGD” or
`
`“Petitioner”).
`
`
`
`The PTAB should deny the Petition’s request to institute an inter partes
`
`review (“IPR”) of U.S. Patent No. 7,537,370 (the “’370 patent”) because the grounds
`
`in the Petition do not demonstrate a reasonable likelihood of any claims being
`
`invalid. Furthermore, the PTAB should deny the Petition because it fails to identify
`
`several real parties-in-interest.
`
`
`
`To explain the insufficiencies of the grounds in the Petition, the Preliminary
`
`Response first provides an introduction that outlines (1) the Grounds themselves;
`
`and (2) claim construction issues.
`
`
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
`
`is filed within three months of the July 16, 2014, date of the Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response.
`
`(Paper No. 3.) Patent Owner has limited its identification of deficiencies in
`
`Petitioner’s argument in this Preliminary Response; Patent Owner does not intend
`
`to waive any arguments by not addressing them in this Preliminary Response.
`
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`2
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`Case IPR2014-01096
`Patent 7,434,370
`A. Grounds in Petition
`The Petition includes four grounds of alleged invalidity. This Response
`
`
`
`addresses three of those grounds as described below. Patent Owner does not address
`
`Ground 3 in this preliminary response, but reserves its right to argue against Ground
`
`3 if this IPR is instituted:
`
`Ground 1: Unpatentable under 35 U.S.C. §103(a) as obvious over Pristash
`(Claims 1, 4, 8, 13, 15, 27, 29, 47)
`
`
`A. No Disclosure of Element [1.e] - “light extracting deformities on or
`in one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member”;
`
`B. No Disclosure of Element [13.e] - “light extracting deformities on
`or in one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member”;
`
`C. No Disclosure of Element [13.f] - “the panel member has a
`transition region…”;
`
`D. No Disclosure of Element [13.g] - “at least one side of the transition
`region contains optical elements…”;
`
`E. No Disclosure of Element [27.e] - “the panel member has a
`transition region…”;
`
`F. No Disclosure of Element [27.f] - “at least one side of the transition
`region contains optical elements…”;
`
`G. No Disclosure of Element [29.e] - “light extracting deformities on
`or in one of the sides vary in a different way or manner than the
`light extracting deformities on or in the other side of the panel
`member”;
`
`H. No Disclosure of Element [47.e] - “light extracting deformities on
`or in one of the sides vary in a different way or manner than the
`light extracting deformities on or in the other side of the panel
`member”;
`
`
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`3
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`Case IPR2014-01096
`Patent 7,434,370
`I. No Disclosure of Element [47.f] - “the panel member has a
`transition region…”;
`
`J. No Disclosure of Element [47.g] - “at least one side of the transition
`region contains optical elements…”;
`
`Ground 2: Unpatentable under 35 U.S.C. §102 as being anticipated by Ohe
`(Claims 1, 4, 8, 15, and 29,)
`
`
`A. No Disclosure of Element [1.e] - “light extracting deformities on or
`in one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member”;
`
`B. No Allegation of the Elements of Claim 15
`
`C. No Disclosure of Element [29.e] - “light extracting deformities on
`or in one of the sides vary in a different way or manner than the
`light extracting deformities on or in the other side of the panel
`member”;
`
`Ground 4: Unpatentable under 35 U.S.C. §103 as obvious over Kobayashi in
`view of Pristash (Claims 13, 15, 27, and 47)
`
`
`A. No Disclosure of Element [13.f], [27.e], and [47.f] - “the panel
`member has a transition region…”;
`
`B. No Disclosure of Element [13.g], [27.f], [47.g] - “at least one side
`of the transition region contains optical elements…”.
`B. Claim Construction
`The arguments in this Response stand despite Petitioner’s proposed
`
`construction and despite the broadest reasonable construction of the terms. This
`
`Preliminary Response does not take a position on claim construction at this point.
`
`Patent Owner reserves the right to propose its own construction of any and all claim
`
`terms for which an issue arises in the event the PTAB institutes this IPR.
`
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`4
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`Case IPR2014-01096
`Patent 7,434,370
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“Claim Construction Order”) (Ex. 2002) has ruled on constructions of terms in this
`
`patent, including entering an agreed construction of “deformities” that Petitioner
`
`adopts in its Petition. (Petition at 7) (Ex. 2002 at 58).
`
`II. GROUND 1 - PRISTASH (Claims 1, 4, 8, 13, 15, 27, 29, and 47)
`A. No Disclosure of Element [1.e] - “light extracting deformities on or
`in one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member”
`
`Independent Claim 1 of the ’370 patent recites the following limitation: “the
`
`pattern of light extracting deformities on or in at least one of the sides varies along
`
`at least one of the length and width of the panel member and at least some of the
`
`light extracting deformities on or in one of the sides are of a different type than the
`
`light extracting deformities on or in the other side of the panel member….” That
`
`limitation is referenced as “[1.e]” in the Petition. See, e.g., Petition at p. 17.
`
`The Petition does not even discuss this claim element except in its claim chart,
`
`which refers to the embodiments shown in Figures 5 and 6 of Pristash. (Petition at
`
`17-18.) The claim chart also refers to the Escuti Decl. at ¶¶83-85. The Escuti Decl.,
`
`however, provides only conclusory allegations that are deficient for establishing a
`
`prima facie case of obviousness.
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`5
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`Patent 7,434,370
`To establish prima facie obviousness, there must be some articulated
`
`reasoning for the modifications proposed by the Petition. “[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements; instead,
`
`there must be some articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006). An allegation that all aspects of the claimed invention were individually
`
`known in the art is not sufficient to establish a prima facie case of obviousness
`
`without some objective reason to combine the teachings of the references. (Ex parte
`
`Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).)
`
`The Escuti Declaration makes the allegations that Pristash teaches different
`
`types of deformities and deformities on both sides of the panel. The Escuti jumps to
`
`the conclusion that “[g]iven these disclosures, one of ordinary skill in the art would
`
`understand Pristash to disclose that deformities on one side may be of a different
`
`type than deformities disclosed on the other side.” (Escuti Decl. at ¶¶83-85.) Here,
`
`Escuti merely alleges that Pristash disclosed aspects that may be combined to arrive
`
`at the claim element, but Escuti fails to articulate any objective reason to combine
`
`the alleged disclosures of Pristash and thus fails to establish a prima case of
`
`obviousness.
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`Patent 7,434,370
`For at least the above discussed reasons, the Petition fails to establish that
`
`Pristash teaches the claim element [1.e]. Accordingly, Ground 1 of the Petition fails
`
`for Claim 1 and each of its dependent claims.
`
`B. No Disclosure of Element [13.e] - “light extracting deformities on or
`in one of the sides are of a different type than the light extracting deformities
`on or in the other side of the panel member”
`
`Independent Claim 13 of the ’370 patent recites the following limitation: “the
`
`pattern of light extracting deformities on or in at least one of the sides varies along
`
`at least one of the length and width of the panel member and at least some of the
`
`light extracting deformities on or in one of the sides are of a different type than the
`
`light extracting deformities on or in the other side of the panel member….” That
`
`limitation is referenced as “[13.e]” in the Petition. See, e.g., Petition at p. 21.
`
`For the same reasons provided in Section II.A, Pristash does not disclose this
`
`claim element or render it obvious. The Petition again merely alleges that Pristash
`
`discloses aspects that may be combined to arrive at the claim element, but the
`
`Petition fails to articulate any objective reason to combine the alleged disclosures of
`
`Pristash and thus fails to establish a prima case of obviousness. (See Escuti Decl. at
`
`¶¶108.)
`
`For at least the above discussed reasons in Section II.A, the Petition fails to
`
`establish that Pristash teaches or renders obvious this claim element. Accordingly,
`
`Ground 1 of the Petition fails for Claim 13 and each of its dependent claims.
`
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`Case IPR2014-01096
`Patent 7,434,370
`C. No Disclosure of Element [13.f] - “the panel member has a transition
`region…”
`
`Independent Claim 13 of the ’370 patent recites the following limitation: “the
`
`panel member has a transition region between the at least one input edge and the
`
`patterns of light extracting deformities to all the light from the at least one light
`
`source to mix and spread.” That limitation is referenced as “[13.f]” in the Petition.
`
`See, e.g., Petition at p. 21.
`
`The Petition alleges that Pristash teaches “a transition device … for converting
`
`light and is positioned between input edge 10 and deformities on panel 2…”
`
`(Petition at p. 13). The claim chart identifies transition device 5 as meeting this
`
`limitation. (Id. at 21.) Both the argument in the Petition and in its chart miss a crucial
`
`point of this limitation: “the panel member has a transition region”. That means that
`
`the transition region must be part of the panel member. Here, the transition device 5
`
`is a separate part from the panel member identified in the Petition, i.e., the transition
`
`device 5 is separate from light emitting panel 2 / waveguide 15. Figure 1 and Figure
`
`7 below (as annotated by the Petitioner, which Patent Owner does not adopt)
`
`illustrate that the transition device 5 is separate from light emitting panel 2 /
`
`waveguide 15.
`
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`8
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`Patent 7,434,370
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`
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`Petition at 12 (showing Figs. 1 and 7 from Pristash, annotated by Petitioner). The
`
`Petitioner’s own annotations show that the identified transition region is outside the
`
`of the optical panel member. Pristash’s explicit teaching also shows that the
`
`transition device 5 is separate from the light emitting panel 2: “the light source 3,
`
`transition device 5 and light emitting panel 2 must be designed to fit each other as
`
`well as the particular application. However, it should be understood that the light
`
`source 3, transition device 5 and light emitting panel 2 may also be used separately
`
`if desired.” (Pristash at 3:23-29.)
`
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`Case IPR2014-01096
`Patent 7,434,370
`For at least the above discussed reasons, the Petition has not established that
`
`the claimed element of “the panel member has a transition region” is disclosed in
`
`Pristash. Accordingly, Ground 1 fails for Claim 13 and each of its dependent claims.
`
`D. No Disclosure of Element [13.g] - “at least one side of the transition
`region contains optical elements”
`
`Independent Claim 13 of the ’370 patent recites the following limitation: “at
`
`least one side of the transition region contains optical elements for reflecting or
`
`refracting light from the at least one light source.” That limitation is referenced as
`
`“[13.g]” in the Petition. See, e.g., Petition at p. 21.
`
`The Petition alleges that Pristash teaches “a transition device … which can
`
`have lens 141 at input surface 143 …” (Petition at p. 13, emphasis added). But this
`
`allegation is deficient as the Petition entirely disregards the plain claim language of
`
`“optical elements” – in the plural.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Pristash teaches the claimed “optical elements.” Accordingly, Ground 1 of the
`
`Petition fails for Claim 13 and each of its dependent claims.
`
`E. No Disclosure of Element [27.e] - “the panel member has a transition
`region…”
`
`Independent Claim 27 of the ’370 patent recites the following limitation: “the
`
`panel member has a transition region between the at least one input edge and the
`
`patterns of light extracting deformities to all the light from the at least one light
`
`
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`10
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`Patent 7,434,370
`source to mix and spread.” That limitation is referenced as “[27.e]” in the Petition.
`
`See, e.g., Petition at p. 25.
`
`For the same reasons provided in Section II.C, Pristash does not disclose this
`
`claim element or render it obvious. Accordingly, Ground 1 fails for Claim 27 and
`
`each of its dependent claims.
`
`F. No Disclosure of Element [27.f] - “at least one side of the transition
`region contains optical elements”
`
`Independent Claim 27 of the ’370 patent recites the following limitation: “at
`
`least one side of the transition region contains optical elements for reflecting or
`
`refracting light from the at least one light source.” That limitation is referenced as
`
`“[27.f]” in the Petition. See, e.g., Petition at p. 25.
`
`For the same reasons provided in Section II.D, Pristash does not disclose this
`
`claim element or render it obvious. Accordingly, Ground 1 of the Petition fails for
`
`Claim 27 and each of its dependent claims.
`
`G. No Disclosure of Element [29.e] - “light extracting deformities on
`or in one of the sides vary in a different way or manner than the light
`extracting deformities on or in the other side of the panel member”
`
`Independent Claim 29 of the ’370 patent recites the following limitation: “the
`
`pattern of light extracting deformities on or in at least one of the sides varies along
`
`at least one of the length and width of the panel member and at least some of the
`
`light extracting deformities on or in one of the sides vary in a different way or
`
`manner than the light extracting deformities on or in the other side of the panel
`
`
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`11
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`Case IPR2014-01096
`Patent 7,434,370
`member….” That limitation is referenced as “[29.e]” in the Petition. See, e.g.,
`
`Petition at p. 26.
`
`The Petition does not even discuss this claim element except in its claim chart,
`
`which refers to the embodiments shown in Figures 5 and 6 of Pristash. (Petition at
`
`p. 26.) The claim chart also refers to the Escuti Decl. at ¶¶141. The Escuti Decl.,
`
`however, provides only conclusory allegations that are deficient for establishing a
`
`prima facie case of obviousness.
`
`As discussed in II.A, to establish prima facie obviousness, there must be some
`
`articulated reasoning for the modifications proposed by the Petition. An allegation
`
`that all aspects of the claimed invention were individually known in the art is not
`
`sufficient to establish a prima facie case of obviousness without some objective
`
`reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d
`
`1300 (Bd. Pat. App. & Inter. 1993)
`
`The Escuti Decl. makes the allegations that Pristash teaches deformities that
`
`vary in depth, density, and size one sides of the panel, and then jumps to the
`
`conclusion that “[g]iven these disclosures, one of ordinary skill in the art would
`
`understand Pristash to disclose that deformities on one side may vary in a different
`
`way or manner than the light extracting deformities on or in the other side of the
`
`panel member.” (Escuti Decl. at ¶¶141.) Here, Escuti fails to articulate any objective
`
`
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`12
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`Patent 7,434,370
`reason to arrive at alleged disclosures of Pristash. The Petition thus fails to establish
`
`a prima case of obviousness.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Pristash teaches the claim element [29.e]. Accordingly, Ground 1 of the Petition fails
`
`for Claim 29 and each of its dependent claims.
`
`H. No Disclosure of Element [47.e] - “light extracting deformities on
`or in one of the sides vary in a different way or manner than the light
`extracting deformities on or in the other side of the panel member”
`
`Independent Claim 47 of the ’370 patent recites the following limitation: “the
`
`pattern of light extracting deformities on or in at least one of the sides varies along
`
`at least one of the length and width of the panel member and at least some of the
`
`light extracting deformities on or in one of the sides vary in a different way or
`
`manner than the light extracting deformities on or in the other side of the panel
`
`member….” That limitation is referenced as “[47.e]” in the Petition. See, e.g.,
`
`Petition at p. 28.
`
`For the same reasons provided in Section II.G, Pristash does not disclose this
`
`claim element or render it obvious. The Petition thus fails to establish a prima case
`
`of obviousness. Accordingly, Ground 1 of the Petition fails for Claim 47 and each
`
`of its dependent claims.
`
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`I.
`No Disclosure of Element [47.f] - “the panel member has a transition
`region…”
`
`Independent Claim 47 of the ’370 patent recites the following limitation: “the
`
`panel member has a transition region between the at least one input edge and the
`
`patterns of light extracting deformities to all the light from the at least one light
`
`source to mix and spread.” That limitation is referenced as “[47.f]” in the Petition.
`
`See, e.g., Petition at p. 28.
`
`For the same reasons provided in Section II.C, Pristash does not disclose this
`
`claim element or render it obvious. Accordingly, Ground 1 fails for Claim 47 and
`
`each of its dependent claims.
`
`J. No Disclosure of Element [47.g] - “at least one side of the transition
`region contains optical elements”
`
`Independent Claim 47 of the ’370 patent recites the following limitation: “at
`
`least one side of the transition region contains optical elements for reflecting or
`
`refracting light from the at least one light source.” That limitation is referenced as
`
`“[47.f]” in the Petition. See, e.g., Petition at p. 28.
`
`For the same reasons provided in Section II.D, Pristash does not disclose this
`
`claim element or render it obvious. Accordingly, Ground 1 of the Petition fails for
`
`Claim 47 and each of its dependent claims.
`
`
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`Patent 7,434,370
`III. GROUND 2 - Ohe (Claims 1, 4, 8, 15 and 29)
`A. No Disclosure of Element [1.e] - “light extracting deformities on or
`in one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member”
`
`Independent Claim 1 of the ’370 patent recites the following limitation: “both
`
`the front and back sides having a pattern of light extracting deformities ... wherein
`
`… at least some of the light extracting deformities on or in one of the sides are
`
`of a different type than the light extracting deformities on or in the other side
`
`of the panel member….” The bolded limitation is referenced as “[1.e]” in the
`
`Petition. See, e.g., Petition at p. 33. The antecedent basis of “the sides” in [1.e] are
`
`the front and back sides recited previously in claim 1. As such, the limitations in
`
`claim element [1.e] apply to the front and back sides of the panel member.
`
`The Petition alleges that various changes or modifications may be provided to
`
`the flat areas 8 and roughened surfaces of Ohe and thus the deformities may be varied
`
`in type or manner. (Petition at p. 30.) These allegations are conclusory and devoid
`
`of analysis.
`
`The claim chart also refers to the Escuti Decl. at ¶¶163-164. The Escuti Decl.
`
`alleges that Ohe teaches forming two sides of the plastic light guide 1 with Die 2 and
`
`Die 3 that have different patterns. (¶¶166-167.) Based on the allegation that Die 3
`
`has a different pattern from Die 2, the Escuti Decl made a deficient allegation that
`
`“one of ordinary skill in the art would have understood this … would have created a
`
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`15
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`Case IPR2014-01096
`Patent 7,434,370
`surface with the second type of deformity on the opposite side.” (Escuti Decl. at
`
`¶167.) What is deficient in these allegations is that the Petition fails to show Ohe
`
`teaches using Die 2 and Die 3 to form the front and back sides as required in claim
`
`1. Indeed, Ohe teaches the making of a “combined die for injection molding which
`
`had one surface with a state similar to that of the Die 2 and had the other surface
`
`with a state similar to that of the Die 3….” (Ohe at p. 6, lns 39-40.) Ohe does not
`
`otherwise specify the two surfaces are intended for the front and back sides.
`
`For at least the above discussed reasons, the Petition fails to establish that Ohe
`
`teaches the claim element [1.e]. Accordingly, Ground 2 of the Petition fails for Claim
`
`1 and each of its dependent claims.
`
`B. No Disclosure of Claim 15
`Independent Claim 15 of the ’370 patent was alleged in the Petition to be
`
`anticipated by Ohe but the Petition entirely omits claim 15 from its discussions and
`
`it claim chart for Ground 2. (Petition at 29.) Given this deficiency of the Petition, the
`
`Petition fails to establish that Ohe teaches every element of claim 15. Accordingly,
`
`Ground 2 of the Petition fails for Claim 15 and each of its dependent claims.
`
`C. No Disclosure of Element [29.e] - “light extracting deformities on or
`in one of the sides vary in a different way or manner than the light
`extracting deformities on or in the other side of the panel member”
`
`Independent Claim 29 of the ’370 patent recites the following limitation:
`
`“both the front and back sides having a pattern of light extracting deformities ...
`
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`16
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`wherien … at least some of the light extracting deformities on or in one of the
`
`sides vary in a different way or manner than the light extracting deformities on
`
`or in the other side of the panel member….” The bolded limitation is referenced
`
`as “[29.e]” in the Petition. See, e.g., Petition at pp. 36-37. The antecedent basis of
`
`“the sides” in [29.e] are the front and back sides recited previously in claim 29. As
`
`such, the limitations in claim element [29.e] apply to the front and back sides of the
`
`panel member.
`
`For the same reasons discussed in Section II.A, the Petition fails to establish
`
`that Ohe teaches the claim element [29.e]. Accordingly, Ground 2 of the Petition
`
`fails for Claim 1 and each of its dependent claims.
`
`IV. GROUND 4 – Kobayashi in view of Pristash (Claims 13, 15, 27, and 47)
`A. No Disclosure of Element [13.f], [27.e], and [47.f] - “the panel
`member has a transition region…”
`
`Independent Claims 13, 27, and 47 of the ’370 patent all recite that the “panel
`
`member has a transition region.” The Petition admits that Kobayashi does not
`
`disclose this limitation. (Petition at 47 (“A transition region is not explicitly
`
`disclosed in Kobayashi.”).) The Petition relies on the disclosure of Pristash to meet
`
`this limitation. (Id. (“Pristash, however, discloses transition device 5 between the
`
`input edge 10 and disruptions 16.”). However, as discussed above in Section II.C,
`
`the Petition, Pristash does not disclose the claimed transition region. Accordingly,
`
`the combination of Kobayashi and Pristash does not disclose this limitation, and the
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`Patent 7,434,370
`Petition does not show that there is a reasonable likelihood that this combination in
`
`Ground 4 will invalidate claims 13, 27, or 47, or any of their dependent claims.
`
`B. No Disclosure of Element [13.g], [27.f], and [47.g] - “at least one side
`of the transition region contains optical elements…”
`
`Independent Claims 13, 27, and 47 of the ’370 patent all recite a limitation
`
`that “at least one side of the transition region contains optical elements…” The
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`Petition does not allege that Kobayashi discloses this limitation. (Petition at 52, 56,
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`and 58.) The Petition relies on the disclosure of Pristash to meet this limitation. (Id.)
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`However, as discussed above in Section II.D, Pristash does not disclose the claimed
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`plural optical elements. Accordingly, the combination of Kobayashi and Pristash
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`does not disclose this limitation, and the Petition does not show that there is a
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`reasonable likelihood that this combination in Ground 4 will invalidate claims 13,
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`27, or 47, or any of their dependent claims.
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`V. REAL PARTY-IN-INTEREST
`The Petitioner of this Request is LG Display Co., Ltd. (Petition at 1.). The
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`Petition also lists LG Display America, Inc. as a real party-in-interest. (Id.). The
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`Petition, however, omits two other real parties-in-interest: LG Electronics Inc. and
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`LG Electronics U.S.A., Inc. We know LG Electronics Inc. is a real party-in-interest
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`because it owns 37.9% of Petitioner and because it has admitted to being a related
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`party to Petitioner. (See Ex. 2003 at 75 and 109 (Excerpt of LG Electronics
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`Consolidated Financial Statements, December 31, 2013 and 2012).) We know that
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`LG Electronics U.S.A., Inc. is a real party-in-interest because it is 100% owned by
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`LG Electronics, Inc. (Id. at 16).
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`We also know that LG Electronics Inc. is a real party-in-interest because the
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`same attorneys that filed this IPR request represent LG Electronics Inc. in a lawsuit
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`that involves this patent: Delaware Display Group LLC et al. v. LG Electronics, Inc.,
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`LG Electronics U.S.A., Inc., LG Display Co., Ltd., and LG Display America, Inc.,
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`Case No. 1:13-cv-02109 (D. Del., filed December 31, 2013) (the “Delaware
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`lawsuit”). In the Delaware lawsuit, Robert G. Pluta has appeared for LG Electronics
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`Inc. (See Ex. 2004, Docket Report for Delaware Case). Mr. Pluta is also primary
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`attorney on this Petition. Furthermore, Jamie B. Beaber also represents LG
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`Electronics Inc. in the Delaware lawsuit (Id.), and he has sought permission to appear
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`pro hac vice in this IPR proceeding.
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`These facts show that both LG Electronics Inc. and LG Electronics U.S.A.,
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`Inc. are in sufficient control of these proceedings to be considered real parties-in-
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`interest. Both have the “actual measure of control or opportunity to control that
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`might reasonably be expected between two formal coparties.” (IPR2013-00609, Zoll
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`Lifecor Corp. v. Phillips Elec. N. America Corp., Paper No. 15 at p. 11.)
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`Accordingly, this Petition does not meet the requirements of 35 U.S.C. 312(a).
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`Unlike a clerical issue such as using the incorrect font in a petition, the effect
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`of failure to name real parties-in-interest may give rise to arguments that the
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`unnamed parties are free to operate without the estoppel restrictions of 35 U.S.C.
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`315(e). When the named and unnamed parties are related entities that are each parties
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`in a co-pending lawsuit involving the same attorneys and asserting the same patent,
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`the potential tactical advantage gained by failing to comply with the RPI naming
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`requirement is considerable. In situations like this, the PTAB should decline to
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`institute IPRs to discourage petitioners from intentionally omitting clear real parties-
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`in-interest.
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`VI. CONCLUSION
`This Preliminary Response shows that the Grounds proposed in the Petition
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`are not reasonably likely to invalidate the claims of the ’370 patent. For the reasons
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`contained herein, Patent Owner requests that the PTAB deny the Petition.
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`Dated: October 16, 2014
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`Respectfully submitted,
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` ________________________
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`Justin B. Kimble
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`Attorney for Patent Owner
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`Registration No. 58,591
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`Bragalone Conroy P.C.
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that document has been served via electronic
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`mail on October 16, 2014, to Petitioner at following email addresses pursuant to its
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`consent in its Petition at p. 4: rpluta@mayerbrown.com; bpaul@mayerbrown.com;
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`astreff@mayerbrown.com;
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`alam@mayerbrown.com;
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`and
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`DDGIPR@mayerbrown.com.
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` _______________________
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`Justin B. Kimble
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`Attorney for Patent Owner
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`Registration No. 58,591
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`Bragalone Conroy P.C.
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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