Paper No. 10
` Date: July 13, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00489
`Patent No. 7,384,177 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
` Date: July 13, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00489
`Patent No. 7,384,177 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`I. INTRODUCTION
`
`
`LG Electronics, Inc. (“Petitioner”) filed a Petition pursuant to 35
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1–3, 5–7, 9,
`10, 13–15, 19, 21, and 23–27 of U.S. Patent No. 7,384,177 (“the ’177
`patent”). Paper 2 (“Pet.”). Concurrently, Petitioner filed a Motion for
`Joinder. Paper 3 (“Joinder Motion”). The Joinder Motion seeks to join this
`proceeding with LG Display Co., Ltd. v. Innovative Display Technologies
`LLC, Case IPR2014-01362 (“the ʼ1362 IPR”), which concerns the ʼ177
`patent at issue here. Joinder Motion 1. Innovative Display Technologies
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
`Resp.”) as well as an opposition to the Joinder Motion (Paper 7,
`“Opposition”). We instituted trial in the ’1362 IPR on March 2, 2015.
`’1362 IPR, Paper 12 (“’1362 Institution Decision”). For the reasons
`described below, we institute an inter partes review of all challenged claims
`and grant Petitioner’s Motion for Joinder.
`
`II. INSTITUION OF INTER PARTES REVIEW
`A. References
`Petitioner relies on the same references as those in the ʼ1362 IPR1:
`Melby
`US 5,054,885
`Oct. 8, 1991
`Ex. 1006
`Nakamura
`US 5,453,855
`Dec. 9, 1993
`Ex. 1007
`Baur
`US 4,142,781
`Mar. 6, 1979
`Ex. 1008
`Sasuga
`US 5,432,626
`Mar. 11, 1993
`Ex. 1009
`Pristash
`US 5,005,108
`Apr. 2, 1991
`Ex. 1010
`Farchmin
`US 5,567,042
`May 2, 1994
`Ex. 1011
`
`1 The references are ordered by exhibit number with effective dates asserted
`by Petitioner. As in the ʼ1362 IPR, Petitioner here also states that it is
`relying on Admitted Prior Art from the ʼ177 patent specification. Pet. 9.
`
`
`
`2
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`
`Melby
`
`Nakamura
`
`§ 102(e)
`
`
`Petitioner also relies on the same Declaration of Michael J. Escuti, Ph.D., as
`in the ʼ1362 IPR. (“Escuti Decl.”). Ex. 1004.
`B. Grounds Asserted
`The Petition in this proceeding asserts the same grounds as those on
`
`which we instituted review in the ʼ1362 IPR. Those are:
`References
`Basis
`Claims Challenged
`§ 103(a)
`1–3, 5–7, 9, 10, 13–15, 19,
`21, 23–25, and 27
`1, 2, 6, 7, 9, 10, 13–15, 19,
`21, 23, 24, and 26
`
`
`C. Real Parties-in-Interest
`Patent Owner contends that the Petition should be denied because
`Petitioner has failed to name two real parties-in-interest. Prelim. Resp. 25–
`26. They are LG Display Co., Ltd., and LG Display America, Inc. Id.
`
`Patent Owner made a similar assertion in the ʼ1362 IPR with respect
`to Petitioner.2 For the reasons stated in the ʼ1362 IPR Institution Decision,
`we conclude that Patent Owner’s preliminary response fails to provide
`convincing evidence that LG Display Co., Ltd. and LG Display America,
`Inc. are real parties-in-interest here.
`D. Statutory Bar Under 35 U.S.C. § 315(b)
`Patent Owner also asserts that the Petition is barred under 35 U.S.C
`
`§ 315(b). Prelim. Resp. 27. Patent Owner makes the argument that
`Petitioner is barred from filing the Petition because Petitioner is in privity
`
`
`2 In the ʼ1362 IPR, Patent Owner contended that the Petitioner here, LG
`Electronics, Inc., should have been named as a real party-in-interest, along
`with LG Electronics U.S.A., Inc. ʼ1362 IPR, Paper 8, 26.
`
`
`
`3
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`with HP and Dell. Id. at 27–31. Patent Owner made a similar assertion in
`the ʼ1362 IPR. We determined there that Patent Owner did not provide
`sufficient evidence of privity. ʼ1362 Institution Decision 5.
`For the reasons stated in the ʼ1362 IPR Institution Decision, we
`determine that based on the evidence presented at this stage of the
`proceeding, Petitioner’s showing of privity with HP and Dell is insufficient,
`and, therefore, 35 U.S.C. § 315(b) does not bar institution of inter partes
`review.
`
`E. Decision
`In view of the identity of the challenges to the ʼ177 patent in this
`Petition and in the petition in the ʼ1362 IPR, we institute an inter partes
`review in this proceeding on the same grounds as those on which we
`instituted inter partes review in the ʼ1362 IPR.
`We do not institute inter partes review on any other grounds.
`
`
`
`III. MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`
`review, subject to the provisions of 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`
`As the moving party, Petitioner bears the burden of proving that it is entitled
`to the requested relief. 37 C.F.R. § 42.20(c).
`
`
`
`4
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`To be considered timely, a motion for joinder must be filed no later
`
`than one month after the institution date of the inter partes review for which
`joinder is requested. 37 C.F.R. § 42.122(b). The Petition in this proceeding
`has been accorded a filing date of January 20, 2015 (Paper 6). This date is
`before the date of institution in the ʼ1362 IPR, which was instituted on
`March 2, 2015. The Petition, therefore, is timely.
`
`A motion for joinder should: (1) set forth the reasons joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Frequently Asked Question H5,
`http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/trials/patent-review-processing-system-prps-0#heading-13 (last
`visited July 2, 2015).
`
`
`Petitioner contends joinder will not impact the Board’s ability to
`complete its review in the statutorily prescribed time frame. Joinder
`Motion 6. Petitioner contends that the grounds asserted in this Petition are
`the same grounds of unpatentability asserted in the ʼ1362 IPR. Id.
`Petitioner’s arguments regarding the asserted references are identical to the
`arguments raised in the ʼ1362 IPR, and Petitioner has submitted, in support
`of its petition, the same declaration of the technical expert submitted in the
`’1362 IPR (excluding some minor changes made to reflect Petitioner’s
`engagement of the same expert). Id.
`
`Petitioner further contends that joinder will promote efficiency by
`avoiding duplicative filings and reviews of the same issues in multiple
`proceedings. Joinder Motion 7.
`
`
`
`5
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`Petitioner further asserts joinder will not prejudice the parties to the
`
`ʼ1362 IPR because the scope and timing of that proceeding should remain
`the same. Joinder Motion 1. According to Petitioner, the Board can
`minimize any scheduling impact by requiring consolidated filings and
`coordination among petitioners. Id. at 1–2.
`
`
`
`Patent Owner opposes joinder, contending that Petitioner argues only
`that the grounds asserted in the instant Petition and the ones asserted in the
`ʼ1362 IPR are identical, and has not provided any “independent” reasons
`why joinder is appropriate. Opposition 6.
`
`As discussed above, joinder is a matter within the Board’s discretion
`based on the particular circumstances of each proceeding. In this
`proceeding, we are persuaded that Petitioner has demonstrated that joinder
`with the ʼ1362 IPR would avoid duplication and promote the efficient
`resolution of both proceedings. Petitioner has brought the same challenges
`presented by the ʼ1362 IPR; thus, the substantive issues would not be unduly
`complicated by joining the proceedings. Joinder merely introduces the same
`grounds presented originally in the ʼ1362 IPR, where all the same prior art is
`involved. Patent Owner, therefore, will be able to address the challenges in
`a single proceeding.
`
`
`Patent Owner asserts that there might be a problem in coordinating
`briefing and discovery that would lead to inefficiencies. Opposition 7. We
`are not persuaded, based on this argument, that joinder should be denied. If
`the parties are unable to coordinate these matters, the Board will provide
`guidance upon the appropriate request.
`
`Finally, Patent Owner argues that it will seek additional discovery to
`determine whether LG Display Co., Ltd., the petitioner in the ʼ1362 IPR, is
`
`
`
`6
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`controlling or funding this proceeding. Id. at 8. Patent Owner contends this
`“potential for the additional discovery . . . weighs against joinder.” Id. at 9.
`We do not find this argument persuasive because it is speculative, as no such
`discovery has been requested or authorized by the Board. On the facts
`presented, the possibility that Patent Owner may seek additional discovery is
`not sufficient to persuade us that joinder should not be granted.
`
`III. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`
`IPR2015-00489 and grant Petitioner’s motion to join that proceeding to
`IPR2014-01362.
`
`
`III. ORDER
`In view of the foregoing, it is
`ORDERED that inter partes review in IPR2015-00489 is hereby
`instituted;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and IPR2015-00489 is joined with IPR2014-01362;
`FURTHER ORDERED that the grounds on which IPR2014-01362
`was instituted are unchanged, and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2014-01362 (Paper 13) is not modified by this Order and shall govern
`the schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding,
`Petitioner and LG Display Co., Ltd. will file papers, except for motions that
`
`
`
`7
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`do not involve the other party, as a single, consolidated filing; that the filing
`party (either Petitioner LG Electronics, Inc., or LG Display Co., Ltd.) will
`identify each such filing as a Consolidated Filing; and will conduct
`coordinated (not separate) discovery;
`FURTHER ORDERED that IPR2015-00489 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2014-01362;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2014-01362; and
`FURTHER ORDERED that the case caption in IPR2014-01362 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`8
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`PETITIONER:
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`
`
`PATENT OWNER:
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`
`9
`
`
`
`IPR2015-00489
`Patent 7,384,177 B2
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG DISPLAY CO., LTD, AND
` LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-013621
`Patent 7,384,177
`_______________
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00489 has been joined with this proceeding.
`
`
`
`10
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