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 IPR2015-00368
`U.S. Patent No. 7,434,974
`
`
`
`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 IPR2015-00368
`U.S. Patent No. 7,434,974
`
`
`
`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 IPR2015-00368
`Patent 7,434,974
`
`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 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);
`
`d. IPR2014-01096 (U.S. Patent No. 7,537,370);
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`e. IPR2014-01097 (U.S. Patent No. 7,300,194);
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`f. IPR2014-01357 (U.S. Patent No. 6,755,547);
`
`g. IPR2014-01362 (U.S. Patent No. 7,384,177);
`
`h. IPR2015-00359 (U.S. Patent No. 7,384,177);
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`i. IPR2015-00360 (U.S. Patent No. 7,300,194);
`
`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 IPR2015-00368
`Patent 7,434,974
`n. IPR2015-00487 (U.S. Patent No. 7,404,660);
`
`o. IPR2015-00489 (U.S. Patent No. 7,384,177);
`
`p. IPR2015-00490 (U.S. Patent No. 7,300,194);
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`q. IPR2015-00493 (U.S. Patent No. 7,537,370);
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`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 7,434,974 (the “’974 patent”).
`
`Those three IPRs are IPR2014-01092; IPR2015-00368 (the instant IPR); and
`
`IPR2015-00497. Each of those three IPRs purports to advance nearly identical
`
`grounds of invalidity. See Motion at 5 (“Petitioners’ arguments regarding the
`
`asserted references are identical to the arguments LG raised in the LG IPR”); see
`
`also IPR2015-00497, Paper 3 at 5 (stating the same).
`
`3.
`
`LG Display Co., Ltd. filed IPR2014-01092 (the “first IPR”) against the
`
`’974 patent on July 1, 2014.
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`4.
`
`Petitioners filed IPR2015-00368 (the instant IPR) against the ’974
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`patent on December 4, 2014, seeking to join the first IPR.
`
`
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`3
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`
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`Case IPR2015-00368
`Patent 7,434,974
`5.
`LG Electronics, Inc. filed IPR2015-00497 against the ’974 patent on
`
`December 29, 2014, also seeking to join the first IPR.
`
`6.
`
`On January 13, 2015, the Board denied institution the first IPR.
`
`IPR2014-01092, Paper No. 9.
`
`II. AUTHORITY
`
`To serve as a basis for joinder, an IPR must first be instituted. See 35 U.S.C.
`
`§ 315 (“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 …”) (emphasis added). 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 C.F.R. § 42.100(c). The Board
`
`determines whether to grant joinder on a case-by-case basis, taking into account the
`
`particular facts of each case, substantive and procedural issues, and other
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`considerations. IPR2014-00702, Decision, July 24, 2014, Paper 12 at 3 (citing 157
`
`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). When
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`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)).
`
`
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`4
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`Case IPR2015-00368
`Patent 7,434,974
`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.
`
`III. ARGUMENT
`
`A. Statutorily, This IPR Cannot Be Joined to the First IPR.
`
`The Board cannot join one IPR to another unless the first IPR is instituted. See
`
`35 U.S.C. § 315 (“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 …”) (emphasis added). Because the Board
`
`denied institution of IPR2014-01092, this Motion cannot be granted. Noting this fact
`
`and the fact that Petitioners have admitted that this IPR is identical to IPR2014-
`
`01092, Patent Owner also asks the Board to deny institution of this IPR for the same
`
`reasons as IPR2014-01092 before its preliminary response in this IPR is due.
`
`B. In the Event that the Petitioner in the First IPR Actually Files and
`Succeeds in a Request for Reconsideration of the Denial to Institute,
`the Motion to Join this IPR should Nonetheless be Denied.
`
`Because the first IPR was denied institution, the only chance for the first IPR’s
`
`survival is a motion for reconsideration. Patent Owner does not anticipate that
`
`reconsideration will be successful in this matter or that the petitioner will even file
`
`
`
`5
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`
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`Case IPR2015-00368
`Patent 7,434,974
`for reconsideration. But, if the first IPR is actually instituted after a motion for
`
`reconsideration, the PTAB should nonetheless deny the Motion.
`
`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. The Motion does not adequately show
`
`that requirements (1), (3), and (4) support joinder, and thus the Motion should be
`
`denied.
`
`C. 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 5. 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
`
`315(c) clearly states that we have discretion to join a party. Unified fails to recognize
`
`
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`6
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`
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`Case IPR2015-00368
`Patent 7,434,974
`that joinder is not automatic, particularly given the need to complete proceedings in
`
`a just, speedy, and inexpensive manner.”).
`
`Second, Petitioners argue that joinder is appropriate because the “LG IPR has
`
`not yet been instituted, and therefore, no scheduling order has been entered, yet.”
`
`Motion at 6. Nevertheless, as discussed in the next section, joinder here would
`
`improperly delay the scheduling of the first IPR.
`
`D. Joinder Would Improperly Delay the Trial Schedule in the First IPR.
`
`If reconsideration results in a reversal of the Board’s earlier decision to deny
`
`institution of the first IPR, then the schedule will already be significantly delayed.
`
`Further delaying the schedule of the first IPR to accommodate joinder 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.”).
`
`
`
`
`
`
`
`7
`
`
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`Case IPR2015-00368
`Patent 7,434,974
`E. Patent Owner Will Likely Seek Additional Discovery in this IPR,
`which Weighs Further against Joinder.
`
`Patent Owner will likely seek additional discovery to determine if LG Display
`
`Co. Ltd. (“LG”) was controlling or funding the filing of this IPR, and thus whether
`
`this 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 asserting the ’974 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 IPR2014-01092, 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 result, weighs in favor of denying Unified’s Motion for
`
`Joinder.”).
`
`
`
`
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`8
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`Case IPR2015-00368
`Patent 7,434,974
`
`IV. CONCLUSION
`
`The first IPR was not instituted and thus the instant IPR cannot be joined to
`
`it. Moreover, Petitioners have not met their burden for joinder even if the first IPR
`
`were instituted. 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 joinder would only further delay the
`
`schedule of the first 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 IPR2015-00368
`Patent 7,434,974
`
`Respectfully submitted,
`
`
`Dated: January 23, 2015
`
`
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`
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`________________________
`
`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Registration No. 58,591
`
`
`
`
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`Bragalone Conroy P.C.
`
`
`
`
`
`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:
`
` 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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`10
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