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 PC
`
`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 ELECTRONICS, INC.
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner
`
`Case IPR2015-00497
`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 PC
`
`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 ELECTRONICS, INC.
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner
`
`Case IPR2015-00497
`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 IPR2015-00497
`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 LG Electronics, Inc. (“Petitioner”). Patent Owner hereby requests that the Board
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`deny Petitioner’s 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);
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`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);
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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);
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`l. IPR2015-00366 (U.S. Patent No. 8,215,816);
`
`m. IPR2015-00368 (U.S. Patent No. 7,434,974);
`
`n. IPR2015-00487 (U.S. Patent No. 7,404,660);
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`
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`2
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`
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`Case IPR2015-00497
`Patent 7,434,974
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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);
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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);
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`s. IPR2015-00496 (U.S. Patent No. 8,215,816); and
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`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
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`IPRs concerning the patent-at-issue, U.S. Patent 7,434,974 (the “’974 patent”).
`
`Those three IPRs are IPR2014-01092; IPR2015-00368; and IPR2015-00497 (the
`
`instant IPR). Each of those three IPRs purports to advance nearly identical grounds
`
`of invalidity. See Motion at 1 (“Indeed, the invalidity grounds raised in this IPR are
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`identical to the invalidity grounds raised in the LGD IPR.”); see also Mercedes-Benz
`
`USA, LLC and Mercedes-Benz U.S. International, Inc., v. Innovative Display
`
`Technologies LLC, IPR2015-00363, Paper 3 at 1 (stating the same using exactly the
`
`same language) (“Indeed, the invalidity grounds raised in this IPR are identical to
`
`the invalidity grounds raised in the LG IPR.”).
`
`3.
`
`LG Display Co., Ltd. filed IPR2014-01092 (the “first IPR”) against the
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`’974 patent on July 1, 2014.
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`3
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`Case IPR2015-00497
`Patent 7,434,974
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`4. Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc.
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`filed IPR2015-00368 against the ’974 patent on December 4, 2014, seeking to join
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`the first IPR.
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`5.
`
`Petitioner LG Electronics, Inc. filed IPR2015-00497 (the instant IPR)
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`against the ’974 patent on December 29, 2014, also seeking to join the first IPR.
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`6.
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`On January 13, 2015, the Board denied institution the first IPR.
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`IPR2014-01092, Paper No. 9at 15.
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`II. AUTHORITY
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`To serve as a statutory basis for joinder, an IPR must first be instituted. See
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`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). Once instituted,
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`the Board has the discretion to join an inter partes review under 35 U.S.C. § 315. If
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`joinder is ordered, the Board has discretion to adjust the time period for issuing a
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`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,
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`taking into account the particular facts of each case, substantive and procedural
`
`issues, and other 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)).
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`When exercising its discretion to join IPR proceedings, the Board is mindful that
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`
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`4
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`Case IPR2015-00497
`Patent 7,434,974
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`patent trial regulations, including the rules for joinder, must be construed to secure
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`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
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`motion for joinder, the Board considers many factors, including, (1) time and cost
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`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
`
`A. Statutorily, This IPR Cannot Be Joined to the First IPR.
`
`According to the plain language in § 315, the Board cannot join one IPR to
`
`another unless the first IPR is instituted. 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 has not instituted IPR2014-01092, this
`
`Motion cannot be granted.
`
`B. In the Event that the Petitioner in the First IPR Actually Files and
`Succeeds in a Request for Rehearing 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 rehearing. Patent Owner does not anticipate that
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`
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`5
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`Case IPR2015-00497
`Patent 7,434,974
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`reconsideration will be successful in this matter. 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
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`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 LGD
`
`IPR” and that “Petitioners’ arguments regarding the asserted references are identical
`
`to the arguments LGD raised in the LGD 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
`
`
`
`6
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`
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`Case IPR2015-00497
`Patent 7,434,974
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`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
`
`that joinder is not automatic, particularly given the need to complete proceedings in
`
`a just, speedy, and inexpensive manner.”).
`
`D. Petitioner does Not Sufficiently Explain how Briefing and Discovery
`may be Simplified.
`Perfunctory statements about how the parties will coordinate their filings are
`
`not enough to show how briefing and discovery may be simplified. See IPR2014-
`
`01143 Paper 11 at 6. Petitioner suggests that it might make consolidated filings and
`
`be afforded additional pages of briefing to address points of disagreement. Motion
`
`at 7. Petitioner also states simply that “LGD and Petitioner can also coordinate their
`
`questioning at depositions to avoid redundancy.” Id. at 7. But, like the petitioner in
`
`IPR2014-01143, the Petitioner here “is silent as to whether the petitioner in” the First
`
`IPR “has agreed to work together or supports Petitioner’s proposed additional pages
`
`for briefing.” IPR2014-01143 Paper 11 at 6.
`
`E. Patent Owner Will Likely Seek Additional Discovery in this IPR,
`which Weighs Further against Joinder.
`Patent Owner will likely need to seek additional discovery to determine if LG
`
`Display Co. Ltd. (“LG Display”) 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
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`
`
`7
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`
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`Case IPR2015-00497
`Patent 7,434,974
`
`that LG Display supplies Petitioners with the very LCDs that are the subject of Patent
`
`Owner’s lawsuit asserting the ’974 patent against Petitioner: Delaware Display
`
`Group LLC et al. v. LG Electronics Inc. et al., No. 1:13-cv-02109 (D. Del., filed
`
`Dec. 31, 2013). Furthermore, LG Display is the Petitioner in the first IPR that has
`
`identical counsel and which Petitioners allege is identical to the present IPR. Under
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`these facts, it is likely that LG Display is an unnamed real party-in-interest to this
`
`IPR. The potential for the additional discovery sought to prove LG Display’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 IPR2014-01094 and, as a result, weighs in favor
`
`of denying Unified’s Motion for Joinder.”).
`
`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. 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
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`
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`8
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`Case IPR2015-00497
`Patent 7,434,974
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`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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`Case IPR2015-00497
`Patent 7,434,974
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`Respectfully submitted,
`
`
`Dated: February 17, 2015
`
`
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`________________________
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`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Registration No. 58,591
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`
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`
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`Bragalone Conroy PC
`
`
`
`
`
`2200 Ross Ave.
`
`
`
`
`
`Suite 4500 – West
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`
`
`
`
`Dallas, TX 75201
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`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that document has been served via electronic
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`mail on February 17, 2015, to Petitioners at following email addresses pursuant to
`
`their
`
`consent
`
`in
`
`its Petition
`
`at p. 3:
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`
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`rpluta@mayerbrown.com,
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`bpaul@mayerbrown.com, astreff@mayerbrown.com, alam@mayerbrown.com with
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`a courtesy copy to LGEDDGIPR@mayerbrown.com.
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` ________________________
`
`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Registration No. 58,591
`
`
`
`
`
`Bragalone Conroy PC
`
`
`
`
`
`2200 Ross Ave.
`
`
`
`
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`Suite 4500 – West
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`
`
`
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`Dallas, TX 75201
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`10
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