UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.,
`Petitioner,
`v.
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 7,434,974
`IPR Case No.: IPR2015-00497
`
`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
`
`LG ELECTRONICS, INC.,
`Petitioner,
`v.
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 7,434,974
`IPR Case No.: IPR2015-00497
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED................. 1
`
`II.
`
`STATEMENT OF MATERIAL FACTS .................................................. 2
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................ 3
`A.
`
`Joinder is appropriate because it will not impact the Board’s ability
`to complete the review in a timely manner. .................................... 5
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies. .......................... 6
`Joinder will not prejudice IDT or LGD. .......................................... 6
`C.
`D. Without joinder, Petitioner may be prejudiced. .............................. 8
`IV. CONCLUSION......................................................................................... 8
`
`
`
`B.
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385 ................................................... 4, 5
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-01092 .................. 1, 8
`
`SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306 .............................................................. 6
`
`Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1 Security Sols., Inc.,
`IPR2013-00495 .................................................................................................................... 5
`
`Taiwan Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -00782 ................................ 1
`
`Statutes
`
`35 U.S.C. § 103(a) ...................................................................................................................... 3
`
`35 U.S.C. § 315(c) ............................................................................................................. 1, 3, 4
`
`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), petitioner LG
`
`Electronics, Inc. (“Petitioner” or “LGE”) respectfully requests that it be joined as a
`
`party to the following pending (but not yet initiated) inter partes review proceeding
`
`concerning the same patent at issue here, U.S. Patent No. 7,434,974 (“the ‘974
`
`Patent”): LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-01092
`
`(the “LGD IPR”). Petitioner has filed concurrently herewith a “Petition for Inter
`
`Partes Review of Claims 1, 3-5, 7-11, 13, and 17 of U.S. Patent No. 7,434,974,” in
`
`which it asserts the same grounds of invalidity as have been raised in the LGD IPR.
`
`This Motion is timely under 37 C.F.R. §§ 42.22 and 42.122(b) because it is being
`
`submitted before the LGD 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).
`
`Petitioner respectfully submits
`
`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 LGD IPR. Accordingly, joinder
`
`will ensure the Board’s efficient and consistent resolution of the issues surrounding
`
`the invalidity of the ‘974 Patent. Moreover, joinder will not prejudice the LGD IPR
`
`parties because the scope and timing of the LGD IPR proceeding should remain the
`
`same. Finally, the Board can implement procedures that are designed to minimize
`
`1
`
`
`
`any impact to the schedule of the LGD 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 December 31, 2013, Innovative Display Technologies LLC
`
`(“IDT” or “Patent Owner”) filed a complaint in the United States District Court
`
`for the District of Delaware accusing Petitioner of infringing several patents,
`
`including the ‘974 Patent. See Delaware Display Group LLC and Innovative Display
`
`Technologies LLC v. LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Display Co.,
`
`Ltd., and LG Display America, Inc., Case No. 1:13-cv-02109 (hereinafter, “the
`
`Underlying Litigation”).
`
`See id.
`
`2.
`
`3.
`
`In its Complaint, IDT purports to be the owner of the ‘974 Patent.
`
`LG Display Co., Ltd. (“LGD”) filed a petition for inter partes review
`
`of the ‘974 Patent on July 1, 2014 (the “LGD Petition”). See IPR2014-01092,
`
`Paper 2 (July 1, 2014).
`
`4.
`
`IDT has asserted the ‘974 Patent against LGD in the Underlying
`
`Litigation. See id. at 1.
`
`5.
`
`The LGD Petition includes the following three grounds for
`
`invalidity:
`
`2
`
`
`
`a)
`
`Claims 1, 3-5, 7-11, And 13 Are Unpatentable Under 35 U.S.C.
`
`§103(a) As Being Obvious Over Funamoto;
`
`b)
`
`Claims 1, 3-5, 7-8, 10-11, And 13 Are Unpatentable Under 35
`
`U.S.C. §103(a) As Being Obvious Over Tsuchiyama In View Of Funamoto;
`
`and
`
`c)
`
`Claims 13 And 17 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Being Obvious Over Funamoto In View Of Nakayama.
`
`See id. at i-ii.
`
`6.
`
`The three invalidity grounds raised in Petitioner’s Petition filed in
`
`the present IPR proceeding are identical to the three invalidity grounds raised
`
`in the LGD IPR Petition:
`
`a)
`
`Claims 1, 3-5, 7-11, And 13 Are Unpatentable Under 35 U.S.C.
`
`§103(a) As Being Obvious Over Funamoto;
`
`b)
`
`Claims 1, 3-5, 7-8, 10-11, And 13 Are Unpatentable Under 35
`
`U.S.C. §103(a) As Being Obvious Over Tsuchiyama In View Of Funamoto;
`
`and
`
`c)
`
`Claims 13 And 17 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Being Obvious Over Funamoto In View Of Nakayama.
`
`See LG Electronics, Inc. v. IDT, Case No. IPR2015-00497, 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. § 315(c),
`
`3
`
`
`
`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
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
`
`4
`
`
`
`(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 LGD 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 LGD IPR. Specifically, Petitioner asserts in their petition the
`
`same grounds of unpatentability LGD asserted in the LGD IPR; Petitioner’s
`
`arguments regarding the asserted references are identical to the arguments LGD
`
`raised in the LGD IPR; and Petitioner has submitted, in support of their petition, the
`
`same declaration of the technical expert that LGD submitted in support of its petition
`
`(excluding some minor changes made to reflect Petitioner’s engagement of the same
`
`expert). Thus, this proceeding does not raise any new issues beyond those already
`
`before the Board in the LGD 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 proceeding”); Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1
`
`5
`
`
`
`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 LGD IPR has not yet been instituted, and therefore, no
`
`scheduling order has been entered. Accordingly, joinder of this proceeding with the
`
`LGD 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 LGD.
`
`Permitting joinder will not prejudice IDT or LGD. Petitioner’s proposed
`
`grounds for instituting an IPR are identical to those proposed by LGD in its petition,
`
`and therefore, joinder will not impact the scope or timing of the LGD IPR.
`
`Petitioner and LGD 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 ‘974 Patent. By allowing all grounds of invalidity to
`
`6
`
`
`
`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 petitioner 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, LGD and Petitioner can also coordinate their
`
`questioning at depositions to avoid redundancy. See IPR2013-00385, Paper 17 at 12;
`
`IPR2014-00306, Paper 13 at 6.
`
`7
`
`
`
`For these reasons, joinder will not prejudice any party, but rather will promote
`
`the just, speedy, and inexpensive resolution of these proceedings involving the ‘974
`
`Patent.
`
`D. Without joinder, Petitioner may be prejudiced.
`
`Petitioner would be prejudiced if they are not permitted to join and participate
`
`in the LGD IPR, impacting not only Petitioner’s pending inter partes review petition,
`
`but also the Underlying Litigation. Any decision in the LGD IPR will likely simplify,
`
`or even resolve, the issues in the Underlying Litigation. Joinder is necessary to allow
`
`Petitioner -- 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, Petitioner respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,434,974 be instituted and that this proceeding
`
`be joined with LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-
`
`01092.
`
`Although Petitioner believes 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. 130019.
`
`
`
`
`
`
`8
`
`
`
`Dated: December 29, 2014
`
`Respectfully submitted,
`
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Amanda K. Streff
`Registration No. 65,224
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone:
`312-701-8641
`Facsimile: 312-701-7711
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`Jamie B. Beaber (permission to file
`motion for pro hac vice admission to
`be sought)
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`Registration No. 67,394
`Mayer Brown LLP
`1999 K Street, N.W.
`Washington, DC 20006
`Telephone:
`202-263-3000
`Facsimile: 202-263-3300
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`Counsel for LG Electronics, Inc.
`
`9
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, on this 29th 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
`
`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
`
`
`
`
`
`addresses:
`
`Attorney of Record
`for Patent Owner:
`
`Attorneys of
`Record In Co-
`Pending
`Litigation:
`
`
`
`
`
`
`
`
`
`
`
`Date: December 29, 2014 By:
`
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile:
`312-701-7711
`
`Counsel for LG Electronics, Inc.
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
