Filed on behalf of Innovative Display Technologies LLC
`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@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
`
`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.
`Petitioners
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`
`Case IPR2015-00360
`U.S. Patent No. 7,300,194
`
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@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
`
`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.
`Petitioners
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`
`Case IPR2015-00360
`U.S. Patent No. 7,300,194
`
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`Case IPR2015-00360
`Patent 7,300,194
`
`Patent Owner Innovative Display Technologies (“IDT” or “Patent Owner”)
`
`hereby files this opposition to the Motion for Joinder (“Motion,” Paper No. 3) filed
`
`by Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
`
`International
`
`(“Petitioners”). Patent Owner hereby requests the relief that the Board deny
`
`Petitioners’ Motion.
`
`I.
`
`STATEMENT OF MATERIAL FACTS
`
`1. IDT’s patent portfolio is currently subject to 20 IPRs:
`
`a. IPR2014-01092 (U.S. Patent No. 7,434,974);
`
`b. IPR2014-01094 (U.S. Patent No. 7,404,660);
`
`c. IPR2014-01095 (U.S. Patent No. 8,215,816);
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`d. IPR2014-01096 (U.S. Patent No. 7,537,370);
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`e. IPR2014-01097 (U.S. Patent No. 7,300,194);
`
`f. IPR2014-01357 (U.S. Patent No. 6,755,547);
`
`g. IPR2014-01362 (U.S. Patent No. 7,384,177);
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`h. IPR2015-00359 (U.S. Patent No. 7,384,177);
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`i. IPR2015-00360 (U.S. Patent No. 7,300,194);
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`j. IPR2015-00361 (U.S. Patent No. 6,755,547);
`
`k. IPR2015-00363 (U.S. Patent No. 7,404,660);
`
`l. IPR2014-00366 (U.S. Patent No. 8,215,816);
`
`m. IPR2015-00368 (U.S. Patent No. 7,434,974);
`
`
`
`2
`
`
`
`Case IPR2015-00360
`Patent 7,300,194
`n. IPR2015-00487 (U.S. Patent No. 7,404,660);
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`o. IPR2015-00489 (U.S. Patent No. 7,384,177);
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`p. IPR2015-00490 (U.S. Patent No. 7,300,194);
`
`q. IPR2015-00493 (U.S. Patent No. 7,537,370);
`
`r. IPR2015-00495 (U.S. Patent No. 7,404,660);
`
`s. IPR2014-00496 (U.S. Patent No. 8,215,816); and
`
`t. IPR2015-00497 (U.S. Patent No. 7,434,974).
`
`2.
`
`As seen above, many of those IPRs cover overlapping patents. In fact,
`
`the majority of those overlapping IPRs purport to advance identical grounds, the
`
`only difference being that different entities filed them. That is the case for the three
`
`IPRs concerning the patent-at-issue, U.S. Patent 7,300,194 (the “’194 patent”).
`
`Those three IPRs are IPR2014-01097; IPR2014-00360 (the instant IPR); and
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`IPR2015-00490. Each of those three IPRs purports to advance identical grounds of
`
`invalidity. See Motion at 6 (“Petitioners’ arguments regarding the asserted
`
`references are identical to the arguments LG raised in the LG IPR”); see also
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`IPR2015-00490, Paper 3 at 6 (stating the same).
`
`3.
`
`LG Display Co., Ltd. filed IPR2014-01097 (the “first IPR”) against the
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`’194 patent on July 1, 2014.
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`4.
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`Petitioners filed IPR2015-00360 (the instant IPR) against the ’194
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`patent on December 4, 2014, seeking to join the first IPR.
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`
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`3
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`Case IPR2015-00360
`Patent 7,300,194
`5.
`LG Electronics, Inc. filed IPR2015-00490 against the ’194 patent on
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`December 29, 2014, also seeking to join the first IPR.
`
`6.
`
`On January 13, 2015, the Board instituted the first IPR on the following
`
`grounds:
`
`a. Obviousness of claims 1, 4–6, and 28 over Pristash;
`
`b. Anticipation of claims 1, 16, 22, 23, 27, and 31 by Funamoto;
`
`c. Obviousness of claims 4, 5, and 6 over Funamoto;
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`d. Anticipation of claim 28 by Kobayashi; and
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`e. Anticipation of claims 1, 4–6, and 28 by Nishio.
`
`No other proposed grounds of unpatentability were authorized. IPR2014-01097,
`
`Paper 9 at 18.
`
`7.
`
`On January 13, 2015, the Board also set a schedule for the first IPR,
`
`wherein Patent Owner’s response is due on April 6, 2015 and oral argument is set
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`for September 21, 2015. IPR2014-01097, Paper 10 at 5.
`
`8.
`
`The schedule set for IPR2014-01097 was set concurrent and identical
`
`to the schedule of IPR2014-01096, which involves related patent 7,537,370. Id.
`
`II. AUTHORITY
`
`The Board has the discretion to join an inter partes review under 35 U.S.C. §
`
`315. If joinder is ordered, the Board has discretion to adjust the time period for
`
`issuing a final determination in an inter partes review. 35 U.S.C. § 316(a)(11); 37
`
`
`
`4
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`
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`Case IPR2015-00360
`Patent 7,300,194
`C.F.R. § 42.100(c). The Board determines whether to grant joinder on a case-by-
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`case basis, taking into account the particular facts of each case, substantive and
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`procedural issues, and other considerations. IPR2014-00702, Decision, July 24,
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`2014, Paper 12 at 3 (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement
`
`of Sen. Kyl)). When exercising its discretion to join IPR proceedings, the Board is
`
`mindful that patent trial regulations, including the rules for joinder, must be
`
`construed to secure the just, speedy, and inexpensive resolution of every proceeding.
`
`Id. (citing 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b)).
`
`The moving party has the burden of proof to establish that it is entitled to the
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`requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). To determine whether to grant a
`
`motion for joinder, the Board considers many factors, including, (1) time and cost
`
`considerations, including the impact joinder would have on the trial schedule; and
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`(2) how briefing and discovery may be simplified. IPR2014-00702, Paper 12 at 3.
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`III. ARGUMENT
`
`Petitioner’s Motion states that, “[a] motion for joinder should: (1) set forth the
`
`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
`
`asserted in the petition; (3) explain what impact (if any) joinder would have on the
`
`trial schedule for the existing review; and (4) address specifically how briefing and
`
`discovery may be simplified.” Motion at 5-6. The Motion does not adequately show
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`5
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`
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`Case IPR2015-00360
`Patent 7,300,194
`that requirements (1), (3), and (4) support joinder, and thus the Motion should be
`
`denied.
`
`A. Petitioners’ Motion Does not Set Forth Any Independent Reasons Why
`Joinder is Appropriate.
`
`To meet the first requirement of a motion for joinder, Petitioners simply argue
`
`the second and third requirements. First, Petitioners argue that this IPR “does not
`
`raise any new grounds of unpatentability over what has been asserted in the LG IPR”
`
`and that “Petitioners’ arguments regarding the asserted references are identical to
`
`the arguments LG raised in the LG IPR.” Motion at 6. But those reasons alone are
`
`not enough for joinder. See IPR2014-00702, Paper 12 at 4 (“As an initial matter, we
`
`are not persuaded by Unified’s argument that, if there are two proceedings with
`
`nearly identical petitions, the legislative history provides that joinder should be
`
`granted ‘as a matter of right.’ Mot. 6; Reply 1. As we explained above, Section
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`315(c) clearly states that we have discretion to join a party. Unified fails to recognize
`
`that joinder is not automatic, particularly given the need to complete proceedings in
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`a just, speedy, and inexpensive manner.”).
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`Second, Petitioners argue that joinder is appropriate because the “LG IPR has
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`not yet been instituted, and therefore, no scheduling order has been entered, yet.”
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`Motion at 7. After filing its own IPR so late after the first IPR, Petitioners should
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`have known that a decision on institution on the first IPR was imminent and that its
`
`argument on this point would be moot by the time joinder briefing was completed.
`
`
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`6
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`
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`Case IPR2015-00360
`Patent 7,300,194
`As discussed in the next section, joinder here would necessarily affect the scheduling
`
`of the first IPR and another IPR.
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`B. Joinder would improperly delay the trial schedule in the first IPR and
`likely another IPR.
`
`In the first IPR, a trial schedule has already been set with Patent Owner’s
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`response due on April 6, 2015 and oral argument set for September 21, 2015.
`
`IPR2014-01097, Paper 10 at 5. Patent Owner assumes that Petitioners would not
`
`agree to proceed on the schedule that is set in the first IPR as Petitioners do not
`
`mention that option in their Motion. Delaying the schedule of the first IPR would
`
`inhibit the Board’s mandate “to complete proceedings in a just, speedy, and
`
`inexpensive manner.” 37 C.F.R. § 42.1(b). As cited above, the Board’s interest in
`
`completing proceedings in a just, speedy, and inexpensive manner supersedes its
`
`interest in joining identical IPRs. See IPR2014-00702, Paper 12 at 4 (“we are not
`
`persuaded by Unified’s argument that, if there are two proceedings with nearly
`
`identical petitions, the legislative history provides that joinder should be granted ‘as
`
`a matter of right.’… Unified fails to recognize that joinder is not automatic,
`
`particularly given the need to complete proceedings in a just, speedy, and
`
`inexpensive manner.”).
`
`Furthermore, the first IPR has a concurrent and identical schedule set with
`
`IPR2014-01096, which involves a related patent to the patent-at-issue. Joinder here
`
`would necessarily affect the schedule of IPR2014-01096, delaying that IPR too.
`
`
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`7
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`Case IPR2015-00360
`Patent 7,300,194
`Thus, joining this proceeding with the first IPR would also affect the Board’s ability
`
`to complete IPR2014-01096 in a timely manner. The potential impact of joinder on
`
`the schedule of IPR2014-01096 weighs against joinder. See IPR2014-00702, Paper
`
`12 at 7 (“IPR2014-00057 is not just a single case with no other pending related inter
`
`partes reviews. Instead, IPR2014-00057 is one of five related inter partes reviews
`
`between Rackspace and PersonalWeb in which a trial has been instituted. The
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`discovery process and trial schedule for IPR2014-00057 has been coordinated and
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`synchronized with each of the related inter partes reviews … Unified, however, does
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`not address adequately the impact of joinder on the other four related inter partes
`
`reviews, much less present a good cause showing why the pendency for those
`
`proceedings should be extended. As such, joining this proceeding with IPR2014-
`
`00057 most likely would affect our ability to complete all five proceedings in a
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`timely manner and, as a result, weighs in favor of denying Unified’s Motion for
`
`Joinder.”).
`
`C. Patent Owner Will Likely Seek Additional Discovery in this IPR,
`which Weighs Further against Joinder.
`
`Patent Owner will seek additional discovery to determine if LG Display Co.
`
`Ltd. (“LG”) was controlling or funding the filing of this IPR, and thus whether this
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`IPR fails to name real parties-in-interest pursuant to 35 U.S.C. § 315(a)(2) or should
`
`be terminated under 35 U.S.C. § 315(d). Patent Owner is aware that LG supplies
`
`Petitioners with the very LCDs that are the subject of Patent Owner’s lawsuit
`
`
`
`8
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`
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`Case IPR2015-00360
`Patent 7,300,194
`asserting the ’194 patent against Petitioner: Innovative Display Technologies LLC v.
`
`Mercedes-Benz U.S. International, Inc. et al., 2:14-cv- 00535-JRG (E.D. Tex., filed
`
`June 24, 2014). Furthermore, LG is the Petitioner in the first IPR, which Petitioners
`
`allege is identical to the present IPR. Under these facts, it is likely that LG is an
`
`unnamed real party-in-interest to this IPR. The potential for the additional discovery
`
`sought to prove LG’s involvement in this IPR is beyond that already before the
`
`PTAB in IPR2014-01097, and thus weighs against joinder. See IPR2014-00702,
`
`Paper 12 at 5-6 (“Based on those statements, it is not unreasonable for PersonalWeb
`
`to seek authorization for additional discovery in order to determine what companies,
`
`if any, fund and control Unified. This potential for additional discovery presents a
`
`new substantive issue beyond what is already before us in IPR2014-00057 and, as a
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`result, weighs in favor of denying Unified’s Motion for Joinder.”).
`
`IV. CONCLUSION
`
`Petitioners have not met their burden for joinder. To support their Motion for
`
`joinder, Petitioners simply argue that the IPRs are identical and that the schedule in
`
`the first IPR was not entered yet. Those are not sufficient reasons for joinder, given
`
`that a schedule has now been entered, that joinder would almost certainly delay that
`
`schedule and the schedule of another IPR, and that additional discovery would likely
`
`be sought in this IPR that is not sought in the first IPR.
`
`
`
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`9
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`
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`Case IPR2015-00360
`Patent 7,300,194
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`Respectfully submitted,
`
`
`Dated: January 23, 2015
`
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`________________________
`
`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`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.
`
`
`
`
`
`Suite 4500 – West
`
`
`
`
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`Dallas, TX 75201
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that document has been served via electronic
`
`mail on January 23, 2015, to Petitioners at following email addresses pursuant to
`
`their consent
`
`in
`
`its Petition at p. 4:
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` sweingaertner@kslaw.com and
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`nmoffitt@kslaw.com.
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` ________________________
`
`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Registration No. 58,591
`
`
`
`
`
`Bragalone Conroy P.C.
`
`
`
`
`
`2200 Ross Ave.
`
`
`
`
`
`Suite 4500 – West
`
`
`
`
`
`Dallas, TX 75201
`
`
`
`
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`
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`10
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