throbber
Case IPR2015-00506
`Patent 7,434,973
`Filed on behalf of Delaware Display Group LLC.
`By:
`Justin B. Kimble (jkimble@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
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`DELAWARE DISPLAY GROUP LLC
`Patent Owner
`
`
`
`Case IPR2015-00506
`U.S. Patent No. 7,434,973
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,434,973
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`1
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`I.
`INTRODUCTION
`
`Patent Owner Delaware Display Group LLC (“DDG” or “Patent Owner”)
`
`hereby files this preliminary response (“Preliminary Response”) to the Petition for
`
`Inter Partes Review (the “Petition”) of U.S. Patent No. 7,434,973 (the “’973 patent”)
`
`in IPR2015-00506 filed by LG Display Co., LTD (“LGD” or “Petitioner”).
`
`The PTAB should deny the Petition’s request to institute an inter partes review
`
`(“IPR”) of the ’973 patent because the grounds in the Petition do not demonstrate a
`
`reasonable likelihood of any claims being invalid. Furthermore, the PTAB should
`
`deny the Petition because it fails to comply with 35 U.SC. 312(a)(2) requiring
`
`petitioner to identify all real parties-in-interest.
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
`
`is filed within three months of the January 22, 2014, date of the Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response (Paper
`
`No. 5). Patent Owner has limited its identification of the deficiencies in Petitioner’s
`
`argument in this Preliminary Response; Patent Owner does not intend to waive any
`
`arguments by not addressing them in this Preliminary Response.
`
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“Claim Construction Order”) (Ex. 2001) has ruled on constructions of terms that
`
`appear in this patent (but the ruling was only on related patents, not the patent-at-
`
`
`
`2
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`issue), including entering an agreed construction of “deformities,” which Petitioner
`
`adopts in its Petition. This Preliminary Response does not take a position on any
`
`remaining claim construction issues at this point. Patent Owner reserves the right to
`
`propose its own construction of any and all claim terms for which an issue arises in
`
`the event the PTAB institutes this IPR.
`
`A. Grounds in Petition
`
`
`
`The Petition includes five grounds of alleged invalidity – one for 102(e)
`
`anticipation and for four 103(a) obviousness combinations – all against claims 1-5
`
`of the ’973 patent. For the following reasons, which are discussed in more detail
`
`below, none of the grounds demonstrate a reasonable likelihood of Petitioner
`
`prevailing against any claims:
`
` Ground 1: Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious
`
`Over The ’389 Patent In View Of Pelka (claims 1-5)
`
` Ground 2: Unpatentable Under 35 U.S.C. § 102(e) As Being
`
`Anticipated By Shinohara (Claims 1-5)
`
` Ground 3: Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious
`
`Over Shinohara In View Of Yoshikawa (Claims 1-5)
`
` Ground 4: Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious
`
`Over Pelka In View Of Funamoto (claims 1-5)
`
`
`
`3
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
` Ground 5: Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious
`
`Over Hooker In View Of Mizobe (claims 1-5)
`
`B. Claim Construction
`
`The arguments in this Preliminary Response stand despite Petitioner’s
`
`proposed construction and despite the broadest reasonable construction of the terms.
`
`This Preliminary Response does not take a position on claim construction at this
`
`point. Patent Owner reserves the right to propose its own construction of any and all
`
`claim terms for which an issue arises in the event the PTAB institutes this IPR.
`
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“Claim Construction Order”) (Ex. 2001) has ruled on constructions of terms in this
`
`patent, including entering an agreed construction of “deformities” that Petitioner
`
`adopts in its Petition. Pet. at 8; Ex. 2001 at 58.
`
`II.
`
`PRIORITY DATE OF THE ’973 PATENT
`
`A. The Petition Fails to Establish That the ’973 Patent Should Receive a
`Later Priority Date
`
`In arguing that the ’973 Patent is not entitled to its June 27, 1995, priority date,
`
`Petitioner fails to consider the whole disclosure in the ’973 Patent and in its priority
`
`applications. However, as detailed below, Petitioner shows that the ’973 Patent is
`
`entitled to its original priority date.
`
`
`
`4
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`1.
`Patent Owner Is Entitled to a Priority Date of June 27, 1995
`
`The limitations of Claims 1-5 of the ’973 Patent are described in the disclosure
`
`of the originally-filed application for U.S. Patent No. 5,613,751, to which the ’973
`
`Patent claims priority.
`
`Petitioner alleges that the following limitation of Claim 1 lacks support prior
`
`to either November 28, 2007, or February 23, 1999: “the density, size, depth and/or
`
`height of the deformities in close proximity to the input edge is greatest at
`
`approximate midpoints between adjacent pairs of light sources.” Petition at 7-14.
`
`Specifically, Petitioner states “[T]he only possible support for this limitation is new
`
`figure 39B.” Id. at 11. However, the application filed on June 27, 1995, includes at
`
`least the following supporting disclosure for this limitation:
`
`By varying the density, opaqueness or translucence, shape, depth, color,
`area, index of refraction, or type of deformities or disruptions may be
`used to control the percent of light emitted from any area of the panels.
`For example, less and/or smaller size deformities 21 may be placed on
`panel areas where less light output is wanted. Conversely, a greater
`percentage of and/or larger deformities may be placed on areas of the
`panels where greater light output is desired.
`
`Varying the percentages and/or size of deformities in different areas of
`the panel is necessary in order to provide a uniform light output
`distribution. For example, the amount of light traveling through the
`panels will ordinarily be greater in areas closer to the light source than
`in other areas further removed from the light source. A pattern of light
`
`
`
`5
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`extracting deformities 21 may be used to adjust for the light variances
`within the panel members, for example, by providing a denser
`concentration of light extracting deformities with increased distance
`from the light source 3 thereby resulting in more uniform light output
`distribution from the light emitting panels.”
`
`Ex. 2002, Application Serial No. 08/495,176, Original Specification at page 8, line
`
`20 through page 9, line 7; see also id. at page 10, lines 1-3; Fig. 4a; Original Claims
`
`5, 6, 7, 82, 83 at 18-26. Neither the Petitioner nor its expert address this disclosure.
`
`A patent application is entitled to the benefit of the filing date of an earlier
`
`filed application if the disclosure of the earlier application provides written
`
`description support for the claims of the later application. See PowerOasis, Inc., 522
`
`F.3d 1299, 1306 (Fed. Cir. 2008) (citing In re Chu, 66 F.3d 292, 297 (Fed. Cir.
`
`1995)). To satisfy the written description requirement, the disclosure of the prior
`
`application must “convey with reasonable clarity to those skilled in the art that, as
`
`of the filing date sought, [the inventor] was in possession of the invention.” Vas-
`
`Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The disclosure,
`
`however, does not have to contain precisely the same words as found in the asserted
`
`claims in order to provide written description support. Ralston Purina Co. v. Far-
`
`Mar-Co, Inc., 772 F.2d 1570, 1573 (Fed. Cir. 1985); see also Purdue Pharma LP v.
`
`Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“To satisfy the written
`
`
`
`6
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`description requirement, the disclosure as originally filed does not have to provide
`
`in haec verba support for the claimed subject matter at issue.”).
`
`This disclosure from the original application provides adequate disclosure for
`
`the limitation added to the claims of the ’973 Patent on November 28, 2007. Thus,
`
`Petitioner fails to show that claim 1 of the ’973 patent is not entitled to its presumed
`
`priority date of June 27, 1995.
`
`III.
`GROUND 1 – CLAIMS 1-5 ARE NOT OBVIOUS OVER THE
`’389 PATENT IN VIEW OF PELKA
`
`A. The ’389 Patent is Not Prior Art
`
`As shown above, claims 1-5 of the ’973 patent are entitled to a priority date
`
`of June 25, 1995, established by the filing of its original parent application. The ’973
`
`patent claims priority to and is a continuation of the ’389 Patent which was filed on
`
`Jul.15, 2003. Because the ’973 patent is entitled to the earlier filing date, the ’389
`
`Patent cannot serve as prior art to it. Further, Petitioner does not allege that Pelka
`
`separately teaches every element of claim 1. Accordingly, Ground 1 of the Petition
`
`based on the combination of the ’389 patent and Pelka fails for claim 1 and each of
`
`its dependent claims 2-5.
`
`B. Pelka Does Not Disclose Each Limitation of Claims 1-5
`
`Independent Claim 1 of the ’973 Patent, and each of dependent Claims 2-5,
`
`require that “wherein the density, size, depth and/or height of the deformities in close
`
`
`
`7
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`proximity to the input edge is greatest at approximate midpoints between adjacent
`
`pairs of the light sources,” which Petitioner labeled as element [1.g] of Claim 1.
`
`Petitioner claims that Pelka Fig. 7 (below) discloses this limitation. Pet. 26-
`
`27.
`
`
`
`The Petitioner alleges that “[i]t is obvious that the most dense area is at the
`
`midpoint between the light sources.” Pet. 19-20. However, the Petitioner fails to
`
`show that. In fact, Pelka describes the elongate structures 54 as being arranged in
`
`“concentric arcs,” and shows the overlapping structures along the input edge as
`
`consistent across the entire area of overlap. Pelka, Ex. 1009 at 9:7-11, Fig. 7.
`
`Petitioner’s statement that the structures are the most dense at midpoint between the
`
`light sources is merely conclusory. Moreover, Petitioner does not show or explain
`
`how the most dense structures are the ones “in close proximity to the input edge.”
`
`
`
`8
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`For at least these reasons, Petitioner has not shown that the combination of ’389
`
`Patent in view of Pelka would render Claims 1-5 obvious and Ground 1 fails.
`
`IV.
`GROUND 2 – SHINOHARA DOES NOT ANTICIPATE
`CLAIMS 1-5 UNDER 35 U.S.C. 102(E).
`
`A. Shinohara Is Not Prior Art
`
`As discussed in above, Claims 1-5 should be accorded a priority date of June
`
`25, 1995. Shinohara’s earliest possible priority date is October 27, 1997, when the
`
`PCT application which resulted in Shinohara was filed. Thus, Shinohara does not
`
`qualify as prior art under 35 USC 102(e) as alleged by Petitioner.
`
`B. Shinohara Cannot Anticipate Because Petitioner Combines
`Embodiments That Are Not Directly Related to Each Other
`
`Petitioner’s contentions that Shinohara anticipates Claims 1-5 of the ’973
`
`Patent under 35 U.S.C. 102(e) depend on picking, choosing, and combining various
`
`embodiments within Shinohara’s disclosure. See, e.g., Petition at 34 (relying on Fig.
`
`9 for element [1.e]) and at 36 (relying on the different embodiment shown in Fig. 27
`
`for element [1.g]). Thus, Patent owner fails to show that Shinohara anticipates
`
`Claims 1-5 of the ’973 Patent. See In re Arkley, 455 F. 2d 586, 587 (CCPA 1972)
`
`(“The [prior art] reference must clearly and unequivocally disclose the claimed
`
`[invention] or direct those skilled in the art to the [invention] without any need for
`
`picking, choosing, and combining various disclosures not directly related to each
`
`other by the teachings of the cited reference.”); see also Net MoneyIN, Inc. v.
`
`
`
`9
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`VeriSign, Inc., 545 F.3d 1359, 1369-1370 (Fed. Cir. 2008) (“the prior art reference—
`
`in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of
`
`the claim within the four corners of the document, but must also disclose those
`
`elements “arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d
`
`1542, 1548 (Fed. Cir. 1983)”). The PTAB has regularly found that an examiner erred
`
`when combining various passages from different embodiments to support an
`
`anticipation rejection. See Ex Parte Ross, 2013 WL 3293194, at *3 (PTAB Apr. 25,
`
`2013) (“the Examiner cites and combines various passages from different
`
`embodiments of Mangal in connection with this feature which renders the
`
`Examiner's anticipation rejection problematic as noted above.”); Ex Parte Duncan,
`
`2015 WL 933431, at *3 (PTAB Feb. 25, 2015).
`
`V. GROUND 3: CLAIMS 1-5 ARE NOT OBVIOUS OVER SHINOHARA
`IN VIEW OF YOSHIKAWA UNDER 35 U.S.C. 103(A).
`
`As discussed above in regards to Ground 2, Shinohara is not prior art because
`
`the ’973 Patent claims priority back to June 27, 1995, well prior to the earliest date
`
`that can be accorded to Shinohara. Thus, because Shinohara is not prior art, it cannot
`
`be combined with Yoshikawa to render any claims obvious under 35 U.S.C. 103(a).
`
`
`
`10
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`VI. GROUND 4 – CLAIMS 1-5 ARE NOT OBVIOUS OVER PELKA AND
`FUNAMOTO
`
`A. Niether Pelka nor Funamoto are Prior Art
`
`As discussed above, the ’973 Patent has a priority date of June 27, 1995, well
`
`prior to the earliest date that can be accorded to Pelka (filed Sept. 24, 1997). Thus,
`
`Pelka is not prior art to ’973 Patent.
`
`Petitioner also claims that Funamoto qualifies as prior art under 35 U.S.C.
`
`102(e) “because Funamoto was published on November 18, 1998, before either the
`
`November 28, 2007 or the February 23, 1999 priority dates to which the ’973 Patent
`
`may be entitled.” Pet. at 16. However, as discussed above, the ’973 Patent claims
`
`priority back to June 27, 1995, well prior to the earliest date claimed by Funamoto,
`
`so Funamoto is also not prior art. Thus, the combination of Pelka and Funamoto
`
`cannot render any claims obvious under 35 U.S.C. 103(a).
`
`Furthermore, Funamoto, a European Patent Application filed on Sep. 24, 1997
`
`does not qualify as 102(e) art, regardless of the priority date of ’973 patent. See,
`
`e.g., MPEP 706.02(f)(1) at I.(a) (“The potential reference must be a U.S. patent, a
`
`U.S. application publication (35 U.S.C. 122(b)) or a WIPO publication of an
`
`international application under PCT Article 21(2) in order to apply the reference
`
`under pre-AIA 35 U.S.C. 102(e).”).
`
`
`
`11
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`B. Even if Pelka and Funamoto Were Considered Prior Art, the
`Combination Would Not Render the ’973 Patent Obvious
`
`Petitioner again refers to Pelka Fig. 7 as disclosing element [1.g] “wherein the
`
`density, size, depth and/or height of the deformities in close proximity to the input
`
`edge is greatest at approximate midpoints between adjacent pairs of the light
`
`sources.” Pet. at 48. As described above with respect to Ground 1, Petitioner has not
`
`shown that Pelka discloses this element. Neither does Petitioner allege that
`
`Funamoto discloses this limitation. Thus, for at least this reason, Ground 5 fails to
`
`render Claims 1-5 obvious.
`
`VII.
`GROUND 5 – CLAIMS 1-5 ARE NOT OBVIOUS OVER
`HOOKER IN VIEW OF MIZOBE
`
`A. Petitioner does not consider Hooker and Mizobe as a Whole
`
`The Petitioner alleges that Claims 1-5 are rendered obvious by Hooker in view
`
`of Mizobe, but fails to establish the prerequisites for demonstrating prima facie
`
`obviousness.
`
`As confirmed by the Supreme Court in KSR, an obviousness analysis begins
`
`with a consideration of the Graham factors. KSR International Co. v. Teleflex Inc.,
`
`550 U.S. 398, 406-407 (2007) (citing Graham v. John Deere Co., 383 U.S. 1 (1966)).
`
`The Graham factors are as follows:
`
`(A) Determining the scope and content of the prior art;
`
`
`
`12
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`(B) Ascertaining the differences between the claimed invention
`
`and the prior art; and (C) Resolving the level of ordinary skill in
`
`the pertinent art.
`
`Graham at 17-18.
`
`In considering the Graham factors, both the claimed invention and the scope
`
`and content of the prior art must be considered as a whole, including disclosures in
`
`the references that diverge from and teach away from the invention at hand. W.L.
`
`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to a difference
`
`from the prior art and then to show that that difference alone would have been
`
`obvious. Schenck v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983). But this improper
`
`element-by-element analysis is exactly the approach used in the Petition. The
`
`Petitioner fails to consider Hooker as whole and account for the potential negative
`
`impacts to the Hooker device if the proposed substitution were implemented. Hooker
`
`teaches arranging a pattern of attenuating dots (ink dots on a thin sheet) to effectively
`
`block light near the light sources. Hooker, Ex. 1013 at 3:8-18.
`
`The analysis below will explain how the negative impacts of the proposed
`
`substitution would indeed diverge from and teach away from the proposed
`
`substitution. But the Petition’s obviousness inquiry is improperly limited to picking
`
`specific differences from the prior art and a showing that the difference alone would
`
`
`
`13
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`have been obvious. Such an obviousness inquiry is deficient and cannot be the basis
`
`for establishing a prima facie case of obviousness.
`
`Because the Petition fails to demonstrate a prima facie case that the
`
`combination of Hooker and Mizobe as a whole would render the claimed subject
`
`matter obvious, Ground 1 fails for all claims.
`
`C. The Proposed Combination of Hooker and Mizobe Would Render the
`Resulting Device Unfit for its Intended Purpose
`
`Petitioner claims that the “half ellipse” ink dot patterns 60 of Hooker’s Fig. 6
`
`to be the claimed limitation “pattern of individual light extracting deformities
`
`associated with respective light sources” of claim 1. Pet. 55-56.
`
`Hooker, Fig. 6.
`
`But these dots cover up the light, decreasing the light output as they get closer
`
`to the light sources 30. Petitioner also proposes that the light reflecting “concavities
`
`
`
`
`
`14
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`and convexities” of Mizobe serve as the claimed deformities. Id. But Mizobe uses
`
`these to reflect light in dimmer areas to improve Mizobe’s uniformity. This is
`
`inconsistent with the function of Hooker’s attenuating dots.
`
`D. The Petition Fails to Establish That the Combination of Hooker In
`view of Mizobe Would Have Been Obvious
`
`The Petition alleges that claims 1-5 are rendered obvious by Hooker in view
`
`of Mizobe but fails to establish the prerequisites for demonstrating prima facie
`
`obviousness.
`
`To establish prima facie obviousness, there must be some articulated
`
`reasoning for the modifications proposed by the Petition. “[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements; instead,
`
`there must be some articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`
`But the Petition’s obviousness allegations are devoid of analysis and are made up of
`
`only conclusory statements. For example, the Petition alleges that it would have been
`
`obvious to include the light reflecting means 5 of Mizobe at the light inputs of
`
`Hooker is place patterned light attenuating surface but offers no analysis as to what
`
`would motivate one of ordinary skill in the art to make such modification of Hooker.
`
`Pet. at 51-52.
`
`The Petition and its claim chart for Ground 5 refers to the Escuti Declaration
`
`(Ex. 1004) for additional support. Pet. at 51; Escuti Decl. ¶¶ 216-217. But with
`
`
`
`15
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`respect to both Hooker and Mizobe, the Escuti Declaration offers the exact same
`
`conclusory statement for motivation to include the reflecting means of Mizobe. The
`
`Escuti Declaration alleges that the motivation to combine Hooker with Mizobe is
`
`because they “a person of ordinary skill in the art would have understood that the
`
`rugged layer 4 having light reflecting means 5 could be used in place of the layer
`
`having attenuating means in Hooker in order to achieve the similar objective of
`
`Hooker of improving uniformity of illumination and thus would have been
`
`motivated to combine the teachings of Mizobe with Hooker.” Escuti Decl. ¶ 217.
`
`These allegations of Escuti lack any analysis of the teaching of Mizobe and Hooker,
`
`and fall short of the articulated reasoning required to establish prima facie
`
`obviousness.
`
`Mizobe is directed to an illumination device configured for using fluorescent
`
`lamps as light sources. Mizobe, Ex. 1014 at 2:36-39. In particular, the illumination
`
`device of Mizobe includes reflecting means 5 with a density for fluorescent lamps.
`
`Mizobe 2:40-3:4; 4:16-23. Hooker, on the other hand, is directed to an optical wave
`
`guide having cut-outs and dot patterns specifically configured for point light sources.
`
`Hooker, Ex. 1013 at 2:1-5. The Petitioner and Escuti fail to explain why the technical
`
`solution for point light sources would be helpful in a fluorescent-based device or that
`
`it’s even compatible to combine the two references. The Petitioner and Escuti fail to
`
`provide a comparison of these benefits and drawbacks of incorporating the
`
`
`
`16
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`configuration taught in Mizobe into Hooker. Without this analysis, Escuti and the
`
`Petitioner have failed to provide the articulated reasoning required for establishing
`
`prima facie obviousness.
`
`Because the Petitioner fails to demonstrate a prima facie case that Hooker in
`
`view of Mizobe would render the claimed subject matter obvious, Ground 5 fails for
`
`all claims.
`
`E. No Disclosure of Element [1.d]
`
`Independent Claim 1 of the ’973 patent recites the following limitation:
`
`“wherein the density, size, depth and/or height of the deformities in close proximity
`
`to the input edge is greatest at approximate midpoints between adjacent pairs of the
`
`light sources.” Petitioner fails to show that Mizobe or Hooker discloses this
`
`limitation.
`
`VIII. REAL PARTY-IN-INTEREST
`
`The Petitioner of this Request is LG Display Co., Ltd. Pet. at 1. The Petition
`
`also lists LG Display America, Inc. as a real party-in-interest. Id. The Petition,
`
`however, omits two other real parties-in-interest: LG Electronics Inc. and LG
`
`Electronics U.S.A., Inc. LG Electronics Inc. is a real party-in-interest because it
`
`owns 37.9% of Petitioner and because it has admitted to being a related party to
`
`Petitioner. See Ex. 2003 at 75 and 109 (Excerpt of LG Electronics Consolidated
`
`
`
`17
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`Financial Statements, December 31, 2013 and 2012). LG Electronics U.S.A., Inc.
`
`is a real party-in-interest because it is 100% owned by LG Electronics, Inc. Id. at 16.
`
`Further, LG Electronics Inc. is a real party-in-interest because the same
`
`attorneys that filed this IPR request represent LG Electronics Inc. in a lawsuit that
`
`involves this patent: Delaware Display Group LLC et al. 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 (D. Del., filed December 31, 2013) (the “Delaware lawsuit”). In
`
`the Delaware lawsuit, Robert G. Pluta has appeared for LG Electronics Inc. See Ex.
`
`2004, (Docket Report for Delaware Case). Mr. Pluta is also primary attorney on this
`
`Petition. Furthermore, Jamie B. Beaber also represents LG Electronics Inc. in the
`
`Delaware lawsuit Id., and he has sought permission to appear pro hac vice in this
`
`IPR proceeding.
`
`These facts show that both LG Electronics Inc. and LG Electronics U.S.A.,
`
`Inc. are in sufficient control of these proceedings to be considered real parties-in-
`
`interest. Both have the “actual measure of control or opportunity to control that
`
`might reasonably be expected between two formal coparties.” IPR2013-00609, Zoll
`
`Lifecor Corp. v. Phillips Elec. N. America Corp., Paper No. 15 at 11. Accordingly,
`
`this Petition does not meet the requirements of 35 U.S.C. 312(a).
`
`Unlike
`
`a
`
`clerical issue such as using the incorrect font in a petition, the effect of failure to
`
`name real parties-in-interest may give rise to arguments that the unnamed parties are
`
`
`
`18
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`free to operate without the estoppel restrictions of 35 U.S.C. 315(e). When the named
`
`and unnamed parties are related entities that are each parties in a co-pending lawsuit
`
`involving the same attorneys and asserting the same patent, the potential tactical
`
`advantage gained by failing to comply with the RPI naming requirement is
`
`considerable. In situations like this, the PTAB should decline to institute IPRs to
`
`discourage petitioners from intentionally omitting clear real parties-in-interest.
`
`IX.
`
`CONCLUSION
`
`This Preliminary Response shows that none of the Grounds proposed in the
`
`Petition are reasonably likely to invalidate any of the claims of the ’973 patent. For
`
`the reasons contained herein, Patent Owner requests that the PTAB deny the Petition.
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 22, 2015
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` ________________________
`
`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Registration No. 58,591
`
`
`
`
`
`Bragalone Conroy P.C.
`
`
`
`
`
`2200 Ross Ave.
`
`
`
`
`
`Suite 4500 – West
`
`
`
`
`
`Dallas, TX 75201
`
`
`
`
`
`
`
`
`
`
`
`19
`
`

`
`Case IPR2015-00506
`Patent 7,434,973
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that document has been served via electronic
`
`mail on April 22, 2014, to Petitioner at following email addresses pursuant to its
`
`consent
`
`in
`
`its
`
`Petition
`
`at
`
`pp.
`
`2-3:
`
`rpluta@mayerbrown.com,
`
`bpaul@mayerbrown.com, astreff@mayerbrown.com, and alam@mayerbrown.com,
`
`with a courtesy copy to DDGIPR@mayerbrown.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` _______________________
`
`
`
`
`
`
`Justin B. Kimble
`
`
`
`
`
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Registration No. 58,591
`
`
`
`
`
`Bragalone Conroy P.C.
`
`
`
`
`
`2200 Ross Ave.
`
`
`
`
`
`Suite 4500 – West
`
`
`
`
`
`Dallas, TX 75201
`
`
`
`
`
`
`
`
`
`
`
`20

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket