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.
`
`Inter Partes Review of U.S. Patent No. 7,300,194
`IPR Case No.: To Be Assigned
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`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.
`
`Inter Partes Review of U.S. Patent No. 7,300,194
`IPR Case No.: To Be Assigned
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .................... 1
`I.
`II. STATEMENT OF MATERIAL FACTS .................................................... 2
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED .................. 4
`A.
`Joinder is appropriate because it will not impact the Board’s
`ability to complete the review in a timely manner. .......................... 6
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies. ............................ 7
`Joinder will not prejudice IDT or LG. .............................................. 7
`C.
`D. Without joinder, Petitioners may be prejudiced. ............................. 9
`IV. CONCLUSION .............................................................................................. 9
`
`
`B.
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385 ................................. 5, 6
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`IPR2014-01097 ..................................................................................................... 9
`
`SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306 ................................................. 7
`
`Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1 Security
`Sols., Inc., IPR2013-00495 ................................................................................... 7
`
`Taiwan Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -
`00782 ..................................................................................................................... 1
`
`Statutes
`
`35 U.S.C. § 102(a) ................................................................................................. 3, 4
`
`35 U.S.C. § 102(b) ................................................................................................. 3, 4
`
`35 U.S.C. § 102(e) ................................................................................................. 3, 4
`
`35 U.S.C. § 103 ...................................................................................................... 3, 4
`
`35 U.S.C. § 315(c) ............................................................................................. 1, 4, 5
`
`Regulations
`
`37 C.F.R. § 42.22 ...................................................................................................... 1
`
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), petitioners
`
`Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc.
`
`(collectively, “Petitioners”) respectfully request that they be joined as parties to
`
`the following pending (but not yet initiated) inter partes review proceeding
`
`concerning the same patent at issue here, U.S. Patent No. 7,300,194 (“the ‘194
`
`Patent”): LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`
`IPR2014-01097 (the “LG IPR”). Petitioners have filed concurrently herewith a
`
`“Petition for Inter Partes Review of Claims 1, 4-6, 16, 22, 23, 27, 28, and 31 of
`
`U.S. Patent No. 7,300,194,” in which they assert the same grounds of invalidity
`
`as have been raised in the LG IPR. This Motion is timely under 37 C.F.R. §§
`
`42.22 and 42.122(b) because it is being submitted before the LG IPR has been
`
`instituted. See Taiwan Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -
`
`00782, Paper 5 (May 29, 2014) at 3; 37 C.F.R. § 42.122(b).
`
`Petitioners respectfully submit that joinder of these proceedings is
`
`appropriate. Joinder will not impact the Board’s ability to complete its review in
`
`the statutorily prescribed timeframe. Indeed, the invalidity grounds raised in this
`
`IPR are identical to the invalidity grounds raised in the LG IPR. Accordingly,
`
`joinder will ensure the Board’s efficient and consistent resolution of the issues
`
`surrounding the invalidity of the ‘194 Patent. Moreover, joinder will not
`
`1
`
`
`
`prejudice the LG IPR parties because the scope and timing of the LG IPR
`
`proceeding should remain the same. Finally, the Board can implement
`
`procedures that are designed to minimize any impact to the schedule of the LG
`
`IPR, by requiring, for example, consolidated filings and coordination among
`
`petitioners. For these reasons and the reasons outlined herein, joinder should be
`
`granted.
`
`II. STATEMENT OF MATERIAL FACTS
`
`1.
`
`On April 24, 2014, Innovative Display Technologies LLC (“IDT”
`
`or “Patent Owner”) filed a complaint in the United States District Court for the
`
`Eastern District of Texas accusing Petitioners of infringing several patents,
`
`including the ‘194 Patent. See Innovative Display Technologies LLC v.
`
`Mercedes-Benz U.S. International, Inc. and Mercedes-Benz USA, LLC, 2:14-cv-
`
`00535-JRG (E.D. Tex.) (hereinafter, “the Underlying Litigation”).
`
`2.
`
`In its Complaint, IDT purports to be the owner of the ‘194 Patent.
`
`See id.
`
`3.
`
`LG Display Co., Ltd. (“LG”) filed a petition for inter partes
`
`review of the ‘194 Patent on July 1, 2014 (the “LG Petition”). See IPR2014-
`
`01097, Paper 2 (July 1, 2014).
`
`4.
`
`IDT has asserted the ‘194 Patent against LG in co-pending litigation
`
`in the United States District Court for the District of Delaware. See id. at 1.
`
`2
`
`
`
`5.
`
`The LG Petition includes the following seven grounds for
`
`invalidity:
`
`a.
`
`Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`
`§103(a) As Being Obvious Over Pristash;
`
`
`
`b.
`
`Claims 1, 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`
`U.S.C. §102(e) As Being Anticipated By Funamoto;
`
`
`
`c.
`
`Claims 4, 5, And 6 Are Unpatentable Under 35 U.S.C. §103 As
`
`Obvious Over Funamoto;
`
`d.
`
`Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`
`U.S.C. §102(a) As Being Anticipated By Gyoko;
`
`
`
`e.
`
`Claim 28 Is Unpatentable Under 35 U.S.C. §102(b) As Being
`
`Anticipated By Kobayashi;
`
`
`
`f.
`
`Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`
`§102(e) As Being Anticipated By Nishio;
`
`
`
`g.
`
`Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`
`U.S.C. §103 As Obvious Over Nishio, Alone, Or In The Alternative, In
`
`View Of Funamoto.
`
`
`
`See id. at i-ii.
`
`6.
`
`The seven invalidity grounds raised in Petitioners’ Petition
`
`filed in the present IPR proceeding are identical to the seven invalidity
`
`3
`
`
`
`grounds raised in the LG IPR Petition:
`
`a)
`
`Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`
`§103(a) As Being Obvious Over Pristash;
`
`
`
`b)
`
`Claims 1, 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`
`U.S.C. §102(e) As Being Anticipated By Funamoto;
`
`
`
`c)
`
`Claims 4, 5, And 6 Are Unpatentable Under 35 U.S.C. §103 As
`
`Obvious Over Funamoto;
`
`d)
`
`Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`
`U.S.C. §102(a) As Being Anticipated By Gyoko;
`
`
`
`e)
`
`Claim 28 Is Unpatentable Under 35 U.S.C. §102(b) As Being
`
`Anticipated By Kobayashi;
`
`
`
`f)
`
`Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`
`§102(e) As Being Anticipated By Nishio;
`
`
`
`g)
`
`Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`
`U.S.C. §103 As Obvious Over Nishio, Alone, Or In The Alternative, In
`
`View Of Funamoto.
`
`See Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc. v. IDT,
`
`Case No. to be assigned, Paper 1 at i-ii.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`Joinder of inter partes review proceedings is permitted under 35 U.S.C. §
`
`4
`
`
`
`315(c), which provides:
`
`(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
`partes review under section 314.
`
`35 U.S.C. § 315(c).
`
`In deciding whether to allow joinder, the Board takes into account “the
`
`particular facts of each case, substantive and procedural issues, and other
`
`considerations,” while remaining “mindful that patent trial regulations, including
`
`the rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Sols., Inc.,
`
`IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board also takes into
`
`account “the policy preference for joining a party that does not present new issues
`
`that might complicate or delay an existing proceeding.” Id. at 10 (citing 157 Cong.
`
`Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical
`
`petition will be joined to that proceeding, and thus allowed to file its own briefs
`
`and make its own arguments.”)).
`
`“A motion for joinder should: (1) set forth the reasons why joinder is
`
`5
`
`
`
`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.” Id. at 4. An analysis of each of these issues supports joinder.
`
`A.
`
`Joinder is appropriate because it will not impact the Board’s
`ability to complete the review in a timely manner.
`
`
`Joinder is appropriate because it will not impact the Board’s ability to
`
`complete its review of the LG IPR within the statutorily prescribed timeframe.
`
`First, this inter partes review proceeding does not raise any new grounds of
`
`unpatentability over what has been asserted in the LG IPR. Specifically,
`
`Petitioners assert in their petition the same grounds of unpatentability LG asserted
`
`in the LG IPR; Petitioners’ arguments regarding the asserted references are
`
`identical to the arguments LG raised in the LG IPR; and Petitioners have
`
`submitted, in support of their petition, the same declaration of the technical expert
`
`that LG submitted in support of its petition (excluding some minor changes made
`
`to reflect Petitioners’ engagement of the same expert). Thus, this proceeding does
`
`not raise any new issues beyond those already before the Board in the LG IPR, and
`
`this weighs in favor of joinder. See, e.g., Dell Inc. v. Network-1 Security Sols.,
`
`Inc., IPR2013-00385, Paper 17 (July 29, 2013) at 7, 10 (granting joinder where
`
`unpatentability grounds identical and noting “policy preference for joining a party
`
`that does not present new issues that might complicate or delay an existing
`
`6
`
`
`
`proceeding”); Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1 Security
`
`Sols., Inc., IPR2013-00495, Paper 13 (Sept. 16, 2013) at 5 (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) at 4.
`
`In addition, the LG IPR has not yet been instituted, and therefore, no
`
`scheduling order has been entered, yet. Accordingly, joinder of this proceeding
`
`with the LG IPR will not require a change to any existing schedule, and this
`
`weighs in favor of joinder.
`
`B.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies.
`
`
`Further, joinder is appropriate because it will promote efficiency by
`
`avoiding duplicative reviews and filings of the same invalidity issues across
`
`multiple PTAB proceedings. Joinder will also eliminate any risk of inconsistent
`
`results and piecemeal review. This also weighs in favor of joinder.
`
`C.
`
`Joinder will not prejudice IDT or LG.
`
`Permitting joinder will not prejudice IDT or LG. Petitioners’ proposed
`
`grounds for instituting an IPR are identical to those proposed by LG in its petition,
`
`and therefore, joinder will not impact the scope or timing of the LG IPR.
`
`Petitioners and LG are relying on the same testimony of the same technical expert
`
`to support their respective petitions, further avoiding any potential delay.
`
`Moreover, joinder is likely more convenient and efficient for IDT because it
`
`will provide a single trial on the ‘194 Patent. By allowing all grounds of invalidity
`
`7
`
`
`
`to be addressed in a single proceeding, the interests of all parties and the Board
`
`will be well served.
`
`Further, briefing and discovery can be simplified to minimize any impact on
`
`the participants and to streamline the filings for the Board. For example, upon
`
`granting joinder, the Board can adopt procedures similar to those adopted in Dell
`
`Inc., IPR2013-00385 and SAP America Inc., IPR2014-00306. In those
`
`proceedings, the Board required that the petitioners make consolidated filings, for
`
`which the first petitioner was responsible, and allowed the new petitioner to file an
`
`additional seven-page paper addressing only points of disagreement with points
`
`asserted in the consolidated filing. See IPR2013-00385, Paper 17 at 11; IPR2014-
`
`00306, Paper 13 at 5. The Board also permitted the patent owner to respond to any
`
`separate filing, limiting the page limit to that used in the separate filing. See
`
`IPR2013-00385, Paper 17 at 11; IPR2014-00306, Paper 13 at 5. Adopting a
`
`similar procedure in this case will minimize any delay that could arise from
`
`lengthy briefing submitted by each party, while at the same time providing all
`
`parties an opportunity to be heard. See IPR2013-00385 at 8.
`
`As in these prior cases, LG and Petitioners can also coordinate their
`
`questioning at depositions to avoid redundancy. See IPR2013-00385, Paper 17 at
`
`12; IPR2014-00306, Paper 13 at 6.
`
`8
`
`
`
`For these reasons, joinder will not prejudice any party, but rather will
`
`promote the just, speedy, and inexpensive resolution of these proceedings
`
`involving the ‘194 Patent.
`
`D. Without joinder, Petitioners may be prejudiced.
`
`Petitioners would be prejudiced if they are not permitted to join and
`
`participate in the LG IPR, impacting not only Petitioners’ pending inter partes
`
`review petition, but also the Underlying Litigation. Any decision in the LG IPR
`
`will likely simplify, or even resolve, the issues in the Underlying Litigation.
`
`Joinder is necessary to allow Petitioners -- parties to the Underlying Litigation -- to
`
`protect their interests with respect to matters that are at issue in both the inter
`
`partes review proceedings and the Underlying Litigation.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that their Petition
`
`for Inter Partes Review of U.S. Patent No. 7,300,194 be instituted and that this
`
`proceeding be joined with LG Display Co., Ltd. v. Innovative Display Technologies
`
`LLC, IPR2014-01097.
`
`Although Petitioners believe that no fee is required for this Motion, the
`
`Commissioner is hereby authorized to charge any additional fees that may be
`
`required for this Motion to Deposit Account No. 11-0980.
`
`
`
`9
`
`
`
`Dated: December 4, 2014
`
`
`
`Respectfully submitted,
`
`
`/Scott T. Weingaertner/
`Scott T. Weingaertner
`Registration No. 37,756
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, NY 10036-2601
`(212) 556-2227 (telephone)
`(212) 556-2222 (fax)
`sweingaertner@kslaw.com (email)
`
`Natasha H. Moffitt
`Registration No. 53,340
`King & Spalding, LLP
`1180 Peachtree Street NE
`Atlanta, GA 30309
`(404) 572-2783 (telephone)
`(404) 572-5100 (fax)
`nmoffitt@kslaw.com (email)
`
`10
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, on this 4th day of December, 2014, a true and
`
`correct copy of the foregoing MOTION FOR JOINDER PURSUANT TO 35
`
`U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) was served by UPS NEXT DAY AIR
`
`on the attorney of record for the patent owner, with a courtesy copy being sent by
`
`electronic mail to the attorneys of record in the co-pending litigation, at the
`
`following addresses:
`
`Attorney of
`Record for Patent
`Owner:
`
`Attorneys of
`Record In Co-
`Pending
`Litigation:
`
`
`
`Donald L. Otto, Esq.
`Renner, Otto, Boisselle & Sklar, LLP
`1621 Euclid Avenue
`19th Floor
`Cleveland, OH 44115
`
`
`Jeffrey R. Bragalone
`Patrick J. Conroy
`Justin B. Kimble
`T. William Kennedy, Jr.
`Daniel F. Olejko
`Bragalone Conroy PC
`2200 Ross Avenue
`Suite 4500W
`Dallas, TX 75201
`jbragalone@bcpc-law.com
`pconroy@bcpc-law.com
`jkimble@bcpc-law.com
`bkennedy@bcpc-law.com
`dolejko@bcpc-law.com
`
`
`T. John Ward Jr
`Claire Abernathy Henry
`Ward & Smith Law Firm
`
`
`
`1127 Judson Road, Suite 220
`Longview, TX 75601
`jw@wsfirm.com
`claire@wsfirm.com
`
`
`
`Dated: December 4, 2014
`
`
`
`/Scott T Weingaertner/
`Scott T. Weingaertner
`Registration No. 37,756
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, NY 10036-2601
`(212) 556-2227 (telephone)
`(212) 556-2222 (fax)
`sweingaertner@kslaw.com (email)
`
`
`
`
`
`
`
`
`
`
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