UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.
`Petitioners
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00862
`Patent 7,202,843
`
`_______________
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`PRELIMINARY RESPONSE
`
`

`

` 
`
`
`
` 
`
`TABLE OF CONTENTS
`
`
`Introduction .......................................................................................................... 1
`I.
`a. The Serial Nature of This Petition is an Abuse of the Administrative Process
`
`1
`b. The Petition Recycles Art and Arguments Already Considered and Rejected
`by the Board .......................................................................................................... 13
`II. Background ........................................................................................................ 19
`a. About U.S. Patent No. 7,202,843 (the “‘843 patent” or “Shen”) ................... 19
`b. Independent Claim 1 ....................................................................................... 23
`c. Petitioner’s Grounds of Challenge ................................................................. 26
`III. Claim Construction ......................................................................................... 27
`a. A Person of Ordinary Skill in the Art ............................................................. 28
`b. Petitioners Misconstrue the “blur clear converter” of claim 1 ...................... 29
`c. Even Assuming the “blur clear converter” were a Means-Plus-Function
`Term, Petitioners Misidentify the Corresponding Structure ................................ 31
`IV. Argument ........................................................................................................ 35
`a. The Combination of Suzuki, Nitta, and Lee is Insufficiently Supported ....... 35
`b. The Grounds of Challenge Based on Jinda Also Remain Deficient .............. 41
`V. Conclusion ......................................................................................................... 43
` 
`
`
`
`
`
`ii 
` 
`
`

`

`TABLE OF AUTHORITIES
`
`
`Cases
`
`Conopco, Inc. dba Unilever v. The Proctor & Gamble Co.,
` IPR2014-00628, paper 23 (PTAB 3/20/2015) ......................................... 8, 10, 11
`Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) ............. 29
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
` IPR2013-00183, paper 12 (PTAB 7/31/2013) .................................................... 15
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................. 28
`Jiawei Technology (HK) Ltd., et al. v. Richmond,
` IPR2015-00580, paper 22 (PTAB 5/2/2015) ............................................... 10, 11
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................... 14
`Lake Cable, LLC v. Windy City Wire Cable & Tech. Prods., LLC,
` IPR2013-00528, paper 11 (PTAB 2/19/2014) .................................................... 15
`Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004)25
`Pride Solutions, LLC v. Not Dead Yet Manufacturing, Inc.,
` IPR2013-00627, paper 14 (PTAB 3/17/2014) ............................................. 34, 35
`Unilever, Inc. dba Unilever v. The Proctor & Gamble Co.,
` IPR2014-00506, paper 17 (PTAB 7/7/2014) ...................................................... 12
`Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) ............................................. 30
`Williamson v. Citrix Online, LLC,
` Case No. 2013-1130 (Fed. Cir. June 16, 2015) ........................................... 25, 30
`ZTE Corp. v. ContentGuard Holdings, Inc.,
` IPR2013-00454, paper 12 (PTAB 9/25/2013) .................................................... 11
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 42
`35 U.S.C. § 112(6) ........................................................................................... passim
`35 U.S.C. § 112(f) .................................................................................................... 13
`35 U.S.C. § 314(a) ................................................................................ 12, 35, 42, 43
`35 U.S.C. § 325(d) ........................................................................................... passim
`Rules
`
`37 C.F.R. § 42.1 ....................................................................................................... 12
`
`iii 
` 
`
`

`

`37 C.F.R. § 42.1(b) .................................................................................................... 9
`37 C.F.R. § 42.100(b) .............................................................................................. 27
`37 C.F.R. § 42.104(b) ....................................................................................... 30, 34
`Patent Trial Practice Guide, 77 Fed. Reg. 48766 (Aug. 14, 2012) .......................... 27
`
`
`
`
`
`
`iv 
` 
`
`

`

`
`
`Exhibit
`
`2001
`
`
`2002
`
`
`2003
`
`
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`
`
`Description
`
`“Petitioner and His Money are Soon Parted: Separate Fee
`Payments Do Not Reduce Risk of Non-Institution of Redundant
`Grounds”; Authored by M. Carniaux and M. Sander;
`interpartesreviewblog.com, dated November 13, 2014 (accessed
`June 1, 2015)
`
`Joint Stipulation to Stay Cases Pending Inter Partes Review,
`filed November 20, 2014
`
`Order Granting Joint Stipulation to Stay Cases Pending Inter
`Partes Review, entered November 21, 2014
`
`
`v 
` 
`
`

`

`
`
` 
`
`I.
`
`Introduction
`
`a. The Serial Nature of This Petition is an Abuse of the Administrative
`Process
`
`
`
`Samsung Electronics Co., Ltd., Samsung Display Co., Ltd. (collectively,
`
`“Samsung”), and Sony Corporation (“Sony”) (Sony and Samsung are collectively
`
`referred to as the “Petitioners”) filed the current Petition for inter partes review of
`
`claims 1-3 of U.S. Patent No. 7,202,843 (“the ‘843 patent”) on March 16, 2015.
`
`But this filing represents only the most recent of many similar requests for Board
`
`resources filed by a common group of accused infringers in litigation with Patent
`
`Owner Surpass Tech Innovation LLC (“Surpass”).
`
`More than five months previously, on October 3, 2014, three Sharp entities
`
`filed two petitions for IPR against Surpass: IPR2015-00021 challenging claims 1,
`
`4, 8, and 9 of the ‘843 patent; and IPR2015-00022 challenging claims 1-5 of U.S.
`
`Patent No. 7,420,550 patent (the ‘550 patent) (hereinafter these petitions will be
`
`collectively referred to as the “First Round Petitions”).1
`
`                                                            
`1 Because Patent Owner Surpass has already introduced the ‘843 patent and its
`
`claims in its preliminary response in IPR2015-00021, this Preliminary Response
`
`will begin by explaining the many reasons why this second-bite at the apple should
`
` 
`
`1 
`
`

`

`On the basis of the First Round Petitions, the Sharp entities moved for a stay
`
`of the pending litigation between the Sharp entities and Surpass. Other co-
`
`defendants in litigation with Surpass over the ‘550 and ‘843 patents were aware of
`
`the Sharp Petitioners’ efforts to challenge certain claims of these patents. These
`
`other co-defendants also sought to gain the benefit of Sharp’s First Round
`
`Petitions. Specifically, co-defendant LG Display Co., Ltd. (“LG”), Petitioner and
`
`co-defendant Sony, and Petitioner and co-defendant Samsung were aware of
`
`Sharp’s First Round Petitions at least as early as October 3, 2014 (and likely much
`
`earlier), and they each joined the Sharp entities in seeking a stay of all of their co-
`
`pending litigations with Surpass on the basis of Sharp’s First Round Petitions. Ex.
`
`2002 at 2. This request was filed with the U.S. District Court for the District of
`
`Delaware on November 20, 2014 (id.), and was granted the following day. Ex.
`
`2003 at 1-2. Included as part of the paper filed with the Court was the request that
`
`“each Action shall be stayed as long as all of the patents asserted in that Action are
`
`subject to: a pending request for IPR; or a pending IPR proceeding in which a final
`
`written determination has not issued.” Ex. 2002 at 3. Thus, by the very language of
`
`this request, the moving defendants are benefited by prolonging the period during
`
`                                                                                                                                                                                                
`be denied in full. Background information regarding the ‘843 patent and its
`
`independent claims is provided in Section II.
`
`2 
` 
`
`

`

`which there is at least one request for IPR pending against Patent Owner Surpass’s
`
`‘843 and ‘550 patents.
`
`Not remarkably, around the same time that Sharp, Sony, Samsung, and LG
`
`moved for a stay pending Sharp’s IPR requests, on November 13, 2014, counsel of
`
`record in this Petition published a blog post entitled “Petitioner and His Money are
`
`Soon Parted: Separate Fee Payments Do Not Reduce Risk of Non-Institution of
`
`Redundant Grounds.” Ex. 2001 at 1. As the title suggests, that blog post discussed
`
`the Board’s treatment of redundant grounds filed over multiple IPR petitions
`
`against common target claims. The post concludes by stating, “As simply throwing
`
`money at the problem appears to no longer be a viable option, Petitioners may need
`
`to come up with more creative strategies to get multiple, parallel bites at the
`
`invalidity apple.” Id. at 3. What followed is a perfect example of Samsung, Sony,
`
`LG, and Sharp’s attempts to get multiple bites at the invalidity apple against the
`
`‘843 and ‘550 patents.
`
`On March 10, 2015, the Board denied all six grounds presented in Sharp’s
`
`IPR2015-00022 petition against claims 1-5 of the ‘550 patent, and dismissed the
`
`petition in full. See IPR2015-00022, paper 9. Thus, as of this date, there was no
`
`pending request for IPR or IPR proceeding effective as to the ‘550 patent. Then, on
`
`March 18, 2015, the Board denied three of four grounds presented in Sharp’s
`
`3 
` 
`
`

`

`IPR2015-00021 petition against claims 1, 4, 8, and 9 of the ‘843 patent. See
`
`IPR2015-00021, paper 10.
`
`Only after the Board issued its denial-in-full of the petition in IPR2015-
`
`00022 did any of the other co-defendants take action. Indeed, more than five
`
`months after Sharp Petitioners first filed IPR2015-00021 and -00022 and about
`
`four months after each of Sony, Samsung, LG, and Sharp Petitioners relied upon
`
`the First Round Petitions to gain a stay of the pending litigations in District Court,
`
`five new inter partes petitions were filed against Surpass. Using Surpass’s
`
`preliminary responses and the institution decisions in the First Round Petitions as
`
`roadmaps for further challenges, Sony, Samsung, and LG sought inter partes
`
`review of the ‘843 patent in IPR2015-00862, -00863, and -00885. Similarly,
`
`Petitioners Samsung and Sony, and the Sharp entities (for the second time)
`
`attacked the ‘550 patent in IPR2015-00887 and IPR2015-00913, respectively.
`
`These five new petitions are referred to as the “Second Round Petitions.”
`
`Although Sony, Samsung, and LG were not named as petitioners in the First
`
`Round Petitions, these co-defendants relied on Sharp’s First Round Petitions in
`
`order to stay the pending litigations. Further, this batch of Second Round Petitions
`
`is a perfect example of counsel’s apparent “more creative” strategy to get multiple
`
`bites at the invalidity apple (See Ex. 2001 at 3), though Petitioners’ approach of
`
`swapping out one co-defendant petitioner for another in this second round falls far
`
`4 
` 
`
`

`

`short of being creative. It is against the Board’s policy to allow second bites at
`
`apple, particularly where the second bite – or third or fourth bite -- is designed to
`
`cure the defects revealed by the first bite, and that is exactly what Petitioners have
`
`done here. Further, counsel’s blog, which suggested a need to contort the Board’s
`
`rules to acquire second chances, occurred nearly concurrently with the stay motion
`
`filed with the District Court based on Sharp’s petitions. This timing strongly
`
`suggests that filing serial IPR petitions against Patent Owner Surpass, and
`
`therefore abusing the administrative process, was Petitioners’ intention all along.
`
`This also strongly suggests that there was concerted strategic planning among the
`
`co-defendants, and reinforces that Petitioners here stand in the same shoes as the
`
`Sharp Petitioners. Now coming before the Board in these Second Round Petitions,
`
`Sony, Samsung, and LG have made no representation to the Board that the prior art
`
`and arguments in the Second Round Petitions were not known or available to the
`
`parties at the time of Sharp’s First Round Petitions.
`
`Further, the references in these Second Round Petitions appear to have been
`
`passed around the various petitioners/co-defendants in order to avoid the reality
`
`that in fact many references were known and available at the time of Sharp’s First
`
`Round Petitions. For example, the Lee reference in IPR2015-00885, filed by LG
`
`Display Co., Ltd., is assigned to Petitioner Samsung. The Ham reference used in
`
`5 
` 
`
`

`

`IPR2015-00863 filed by Samsung and Sony is assigned to Petitioner LG.2 The
`
`Kubota reference in IPR2015-00887 filed by Samsung and Sony is assigned to
`
`Sharp’s Japanese entity, Sharp Kabushiki Kaisha (aka Sharp Corporation) and was
`
`already used once against the ‘550 patent, unsuccessfully. No representations are
`
`made in the Second Round Petitions that these references were not known or
`
`available to the parties at the time of Sharp’s First Round Petitions. Indeed, the
`
`assignment data for each of these references informs that in fact these references
`
`were all available and were necessarily in the hands of the co-defendants prior to
`
`the date of the First Round Petitions.
`
`Further, the overlap between the grounds of challenge in the First Round
`
`Petitions and the Second Round Petitions is extensive. For example, U.S. Patent
`
`Application Publication No. 2002/0044115 (“Jinda”) was relied upon in two
`
`grounds in IPR2015-00021, and both were rejected by the Board. Now, each of the
`
`three Second Round Petitions against the ‘843 also presents Jinda in one or more
`
`identical or substantially similar grounds against the ‘843 claims. The references
`
`relied upon in the First and Sound Round Petitions against the ‘843 patent are
`
`charted below, with references listed in bold font where appearing in both the First
`
`Round Petition and a Second Round Petition:
`                                                            
`2 This Ham reference is also the parent application of the Ham reference used in
`
`IPR2015-00021. 
`
`6 
` 
`
`

`

`IPR2015-00021 1st
`
`IPR2015-00862
`
`IPR2015-00863
`
`IPR2015-00885
`
`Round References
`
`References
`
`References
`
`References
`
`--Jinda
`
`--Jinda
`
`--Japanese Patent
`
`--U.S. Patent
`
`--Jinda
`
`--Ham
`
`--Jinda
`
`--Miyai
`
`Laid-Open
`
`Application
`
`--Suzuki
`
`--Korean Patent
`
`Application No.
`
`2000-0073673
`
`
`
`Publication No.
`
`Publication No.
`
`--Nitta
`
`HEI 6-62355
`
`2003/0156092
`
`
`
`(“Miyai”)
`
`(“Suzuki”)
`
`--U.S. Patent
`
`--Japanese Laid
`
`Application
`
`Open Patent
`
`Publication No.
`
`Application
`
`2004/0196229
`
`No. 2002-132224
`
`(“Ham”)
`
`(“Nitta”)
`
`--U.S. Patent
`
`--U.S. Patent
`
`Application
`
`Application
`
`Publication No.
`
`Publication
`
`2001/0038369
`
`No. 2003/0214473
`
`(“Adachi”)
`
`(“Lee”)
`
`
`
`7 
` 
`
`

`

`Petitioners provide no reason why the arguments and evidence, including
`
`Suzuki, Nitta, and Lee, in this Petition could not have been presented in IPR2015-
`
`00021. Further, a more detailed comparison of the challenges in this case and the
`
`unsuccessful challenges in IPR2015-00021 reveals that both petitions contain the
`
`same or substantially the same arguments, on the basis of the same or substantially
`
`similar prior art. See Section I.b below. Under these facts, the Board has statutory
`
`discretion to deny the petitions on this basis under 35 U.S.C. § 325(d).
`
`Board policy further supports dismissal of the Second Round Petitions under
`
`35 U.S.C. § 325(d). Petitioners stand in a common position with the Sharp entities,
`
`having relied upon the earlier Sharp First Round Petitions to gain a litigation
`
`advantage and stay of the litigation proceedings pending the outcome of Sharp’s
`
`petitions. As the Board has recognized previously, the granting of successive
`
`petitions “would incentivize petitioners to hold back prior art for successive attacks,
`
`should a first petition be denied.” Conopco, Inc. d/b/a Unilever v. The Procter &
`
`Gamble Co., IPR2014-00628, paper 23 at 3 (PTAB 3/20/2015). That incentive is
`
`even more prevalent in this instance, since the litigation stay also incentivizes
`
`petitioners to plan successive attacks to keep at least one pending inter partes
`
`review at all times. This procedural concern of the Board is equally applicable to a
`
`petitioner’s co-defendants who rely on IPR challenges to gain a stay of active
`
`litigation. The mechanism at play here converts the Board from a venue for "just,
`
`8 
` 
`
`

`

`speedy, and inexpensive resolution of every proceeding" as specified in 37 C.F.R.
`
`§ 42.1(b), into an avenue for abuse of the administrative process for a patent
`
`owner. As it currently stands, Patent Owner must endure the expense of addressing
`
`the same unsuccessful Jinda arguments three more times (after IPR2015-00021).
`
`And while IPR2015-00021 was filed with just 8 supporting exhibits, IPR2015-
`
`00862 includes 17 exhibits, IPR2015-00863 includes 15 exhibits, and IPR2015-
`
`00885 against the ‘843 patent includes 11 exhibits. In sheer numbers alone
`
`(without regard for page count), the Second Round Petitions against the ‘843
`
`patent are supported by 43 exhibits, or nearly 550% of the evidence as compared to
`
`the First Round Petitions. This “more creative” strategy of co-defendant petitioners
`
`Samsung, Sony, LG, and Sharp runs contrary to the statutorily-mandated Board
`
`policy and works against rather than for the efficient and economical use of Board
`
`and party resources.
`
`This particular batch of cases reveals another practical danger. The initial
`
`Sharp petitions included no expert declaration. Only after the Board decided
`
`IPR2015-00022 did the Sharp petitioners, Sony, Samsung, and LG see the areas in
`
`which the Board identified the need for expert support beyond mere attorney
`
`argument. Thus, these parties were not only able to hold back prior art for
`
`successive attacks in the event of an unsuccessful first attempt, but were able to
`
`hold back on the use of an expert until they received Board feedback.
`
`9 
` 
`
`

`

`Recognizing these dangers, the Board has spoken to such strategies and
`
`denied institution in follow-on petitions where the petitioner “uses our prior
`
`Decision on Institution to bolster challenges that were advanced, unsuccessfully,
`
`in” the prior petition. See Jiawei Technology (HK) Ltd., et al. v. Richmond,
`
`IPR2015-00580, paper 22 at 7 (PTAB 5/2/2015); see also Conopco, Inc. dba
`
`Unilever v. The Proctor & Gamble Co., IPR2014-00628, paper 23 at 5 (rejecting
`
`an approach that “would allow petitioners to unveil strategically their best prior art
`
`and arguments in serial petitions, using our decisions on institution as a roadmap,
`
`until a ground is advanced that results in review—a practice that would tax Board
`
`resources, and force patent owners to defend multiple attacks.”). Such a practice
`
`was deemed by the Board as “abuse of the administrative process.” Id. The Second
`
`Round Petitions stand as perfect examples of abusive filings. Although this
`
`Petition was filed two days before the Board issued its decision on institution in
`
`IPR2015-00021, the Board’s decision on institution in IPR2015-00022 came
`
`before and was clearly educational to Petitioners. The Petition even includes
`
`comments regarding the positions taken in IPR2015-00021 that indicate that
`
`Petitioners intended to use Sharp’s IPR2015-00021 petition (and Patent Owner
`
`Surpass’s preliminary response) as a roadmap for future challenges. See, e.g., Pet.
`
`at 13-14.
`
`10 
` 
`
`

`

`In guiding how to proceed in this action, Jiawei Technology is instructive.
`
`There, the second petition included a claim construction that petitioner “could have
`
`offered” but did not in the first petition. Jiawei Technology , paper 22 at 5. That
`
`strategy, explained the Board, amounted to a “second bite at the apple” and
`
`contrary to policy. Id. at 5, 7. Additionally, references in the second petition “were
`
`available to Petitioner at the time of filing the earlier Petition.” Id. at 4. Like in
`
`Jiawei Technology, here Petitioners have used the Lee reference that was assigned
`
`to Petitioner Samsung Electronics Co., Ltd. and therefore available to co-
`
`defendants, including co-petitioner Sharp, at the time of filing the earlier First
`
`Round Petitions. Now, having recognized the defects in IPR2015-00021,
`
`Petitioners are taking another bite at the ‘843 patent with Jinda, a reference that
`
`was actually presented unsuccessfully, and with another reference that could have
`
`been presented in IPR2015-00021.
`
`Denial of the Petition here is the proper result here since a denial “removes
`
`an incentive for petitioners to hold back prior art for successive attacks from
`
`multifarious attacks on the same patent claims.” Conopco, Inc. d/b/a Unilever v.
`
`The Procter & Gamble Co., IPR2014-00628, paper 23 at 5; see also ZTE Corp. v.
`
`ContentGuard Holdings, Inc., IPR2013-00454, paper 12 at 5-6 (PTAB 9/25/2013)
`
`(“The Board is concerned about encouraging, unnecessarily, the filing of petitions
`
`which are partially inadequate.”). Although the Board’s rules do not permit a
`
`11 
` 
`
`

`

`petitioner to file a reply before the Board decides whether to institute an inter
`
`partes review, the Petitioners here have, in effect, rewritten the Board’s rules to
`
`create a procedural opportunity to not only respond to Patent Owner’s IPR2015-
`
`00021 Preliminary Response but also present new evidence (including Suzuki,
`
`Nitta, Lee, and an expert declaration) and argument in a second chance filing of 60
`
`pages, and seek reconsideration of the Board’s decision on Jinda. The Board
`
`should not permit this effective high-jacking of 37 C.F.R. § 42.1 et seq.
`
`Accordingly, this Petition for inter partes review of the ‘843 patent should
`
`be denied and no trial instituted pursuant to 35 U.S.C. § 325(d). Under that statute,
`
`the Board has broad discretion to deny a petition that raises “substantially the same
`
`prior art or arguments previously presented to the Office.” Unilever, Inc. dba
`
`Unilever v. The Proctor & Gamble Co., IPR2014-00506, paper 17 at 6 (PTAB
`
`7/7/2014). This case is a textbook example of the situation for which § 325(d)
`
`exists.
`
`Moreover, even on the merits of this Petition’s grounds based on Suzuki,
`
`Lee, Jinda, and Nitta references, this Petition should be denied and no trial
`
`instituted because there is no “reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). First, Petitioners argue that claim 1 of the ‘843 patent invokes 35 U.S.C.
`
`12 
` 
`
`

`

`§ 112(6)3, which is incorrect and contrary to the positions taken by co-petitioners
`
`Sharp and LG in their separate petitions. This error taints each of Petitioners’
`
`challenges. Second, each of the two combinations presented in the Petition lack a
`
`logical reason for the purported modifications to base references Suzuki and Jinda.
`
`For these reasons and more, the Petition fails to meet its burden in
`
`establishing a reasonable likelihood of success on any challenged claim.
`
`b. The Petition Recycles Art and Arguments Already Considered and
`Rejected by the Board
`
` 
`
`Ground 2 of this Petition include theories of unpatentability based on Jinda
`
`in combination with additional references. But in IPR2015-00021, substantially
`
`similar theories of unpatentability based on identical art were presented by the
`
`Sharp petitioners and rejected by the Board. This Petition provides no explanation
`
`why the Board should not simply dismiss this ground under 35 U.S.C. § 325(d).
`
`For example, Petitioners provide no argument that this ground based on Jinda is a)
`
`not redundant of or substantially similar to Sharp’s challenge in IPR2015-00021,
`
`or b) based on new arguments or art or expert testimony that were not available
`
`when the prior challenge based on Jinda was asserted.
`
`                                                            
`3 Now 35 U.S.C. § 112(f).
`
`
`
`13 
` 
`
`

`

`
`
`Further, in IPR2015-00021, Sharp argued for the modification of Jinda with
`
`the Miyai reference based on both references focusing on the exact same problem.
`
`See IPR2015-00021 Petition at 33. Here, Petitioners argue a substantially similar
`
`basis to modify Jinda with the teachings of Nitta and Lee since they are “directed
`
`to the same recognized issue in the field of LCD devices,” and they “address the
`
`problem in a similar way.” Pet. at 45, lines 1-5; see also Pet. at 46, 49, 52, 54, 55,
`
`and 59. The Board recognizes well that common technology alone is not a
`
`sufficient basis to support a combination of references. Similar attempts by prior
`
`petitioners before the Board have been unsuccessful. For example, in IPR2013-
`
`00183, the Board explained that such attempts at combination are insufficient:
`
`The fact that Murphy, Khairkhahan, and Lane all concern human heart
`repair is not in itself sufficient rationale for making the combination.
`Many heart repair devices exist. That fact alone would not make it
`obvious to combine their features. Petitioner must show some reason
`why a person of ordinary skill in the art would have thought to
`combine particular available elements of knowledge, as evidenced by
`the prior art, to reach the claimed invention. See KSR Int’l Co. v.
`Teleflex, Inc., 550 U.S. 398, 418 (2007). This, the Petitioner has not
`done. That the references relied upon all relate to human heart repair
`does not amount to “some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” See id.
`(internal quotations omitted).
`
`14 
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`

`

`Heart Failure Technologies, LLC v. Cardiokinetix, Inc., IPR2013-00183, paper 12
`
`(PTAB 7/31/2013) (Order by APJ Kamholz, for a panel consisting of APJs
`
`Giannetti, Fitzpatrick, and Kamholz). Similarly, the independent existence of
`
`“elements in various prior art references does not, itself, demonstrate that the
`
`combination of such elements is obvious.” Lake Cable, LLC v. Windy City Wire
`
`Cable & Tech. Prods., LLC, IPR2013-00528, paper 11 at 29-31 (PTAB
`
`2/19/2014).
`
`Just as the petitioners failed to do in the Heart Failure and Lake Cable cases,
`
`here the Petitioners have failed to show “some reason why a person of ordinary
`
`skill in the art would have thought to combine particular available elements of
`
`knowledge, as evidenced by the prior art, to reach the claimed invention.” Id.
`
`(emphasis in original). In additional insult to both the Board and Patent Owner
`
`Surpass, the Board has already ruled that substantially similar arguments for
`
`modifying Jinda based on common technology alone are not sufficient in an
`
`obviousness challenge. IPR2015-00021, paper 10 at 6-7. As such, the Petition
`
`includes insufficient basis to combine Jinda and Nitta/Lee in the manner proposed
`
`by Petitioners. This combination problem is fatal to Petitioners’ second ground of
`
`challenge 2 based on Jinda, Nitta, and Lee.
`
`Furthermore, Ground 2 of the Petition applies the Jinda/Nitta/Lee
`
`combination in a substantially similar way as the rejected Jinda/Miyai combination
`
`15 
` 
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`

`

`from IPR2015-00021, and Ground 1 applies the Suzuki/Nitta/Lee combination in a
`
`substantially similar way as the rejected Jinda/Miyai combination. The following
`
`table reflects the comparison between these challenges and the art relied upon by
`
`Petitioners:
`
`Claim 1
`
`IPR2015-00021
`
`IPR2015-00862
`
`IPR2015-00862
`
`(Jinda/Miyai)
`
`(Jinda/Nitta/Lee)
`
`(Suzuki/Nitta/Lee)
`
`(paper 1 at 34-35)
`
`(Pet. at 44-54)
`
`(Pet. at 13-30)
`
`1. A driving circuit
`
`Jinda
`
`Jinda; Nitta; Lee
`
`Suzuki; Nitta; Lee
`
`for driving an
`
`LCD panel,
`
`the LCD panel
`
`Jinda
`
`Jinda; Nitta
`
`Suzuki; Nitta
`
`comprising:
`
`a plurality
`of scan
`lines;
`a plurality of data
`
`lines; and
`
`Miyai
`
`
`
`Nitta
`
`Nitta
`
`Miyai
`
`Nitta
`
`Nitta
`
`16 
` 
`
`

`

`a plurality of
`
`Miyai
`
`Nitta
`
`Suzuki for
`
`pixels, …,
`
`“pixels”; Nitta for
`
`arrangement of
`
`pixels
`
`the driving circuit
`
`Jinda
`
`Jinda; also rely on
`
`Suzuki; also rely
`
`comprising: a blur
`
`clear converter for
`
`… ;
`
`Lee for “memory
`
`on Lee for
`
`controller”
`
`“memory
`
`element
`
`controller”
`
`element
`
`a source driver for
`
`Jinda; also relies
`
`Jinda; Nitta
`
`Suzuki; Nitta
`
`… ; and
`
`on Miyai for data
`
`lines
`
`a gate driver for …
`
`Miyai
`
`Jinda; Nitta
`
`Suzuki; Nitta
`
`.
`
`
`
`As seen above, just as the Sharp entities presented in their unsuccessful
`
`challenge based on Jinda/Miyai in IPR2015-00021, here Petitioners rely on Jinda
`
`for the driving circuit elements including the “blur clear converter” and “source
`
`driver.” Further, just as in IPR2015-00021, here Petitioners turn to a secondary
`
`reference (Nitta) for the gate driver and structural elements of the LCD panel that
`
`17 
` 
`
`

`

`are not disclosed in Jinda. This confirms that indeed Petitioners are presenting
`
`substantially similar arguments based on substantially the same secondary art—
`
`Miyai and Nitta—to allegedly remedy shortcomings in identical primary art—
`
`Jinda. This confirms also that dismissal under 35 U.S.C. § 325(d) is appropriate.
`
`Similarly, in Petitioners’ first ground of challenge, Petitioners modify a
`
`primary reference—Suzuki—by the same two secondary references, Nitta and Lee,
`
`as in ground 2 to provide the same gate driver and LCD panel structural elements
`
`as in IPR2015-00021. Pet at 13-30. Just as Petitioners’ challenge based on
`
`Jinda/Nitta/Lee is substantially similar to the rejected Jinda/Miyai ground from
`
`IPR2015-00021, Petitioners’ challenge based on Suzuki/Nitta/Lee is also
`
`substantially similar to the rejected Jinda/Miyai combination.
`
`Under 35 U.S.C. § 325(d), the Board possesses statutory discretion to
`
`dismiss grounds including where “the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” This case provides dual basis
`
`for the Board to exercise its discretion, namely that the same prior art and the same
`
`arguments have already been presented to, and rejected by, the Board.
`
`Jinda was not only presented unsuccessfully in IPR2015-00021, but was also
`
`considered by the examiner during prosecution, and the ‘843 patent was properly
`
`allowed over Jinda. These factors reinforce that dismissing this Petition under §
`
`325(d) is the appropriate action here. Ground 2 depends upon art (Jinda) and
`
`18 
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`

`

`arguments already considered and rejected by the Board in IPR2015-00021. These
`
`grounds should be denied again.
`
`Background
`
`a. About U.S. Patent No. 7,202,843 (the “‘843 patent” or “Shen”)
`
`II.
`
` 
`
` 
`
`The ‘843 patent was filed as U.S. Patent application no. 10/707,741 on
`
`January 8, 2004 and claims foreign priority to and the benefit of Taiwan
`
`application no. 92132122 A, filed on November 17, 2003. The title of the ‘843
`
`patent is “DRIVING CIRCUIT OF A LIQUID CRYSTAL DISPLAY PANEL
`
`AND RELATED DRIVING METHOD.” The ‘843 patent discloses a driving
`
`circuit for a liquid crystal display (“LCD”) panel and a method of driving.
`
`An LCD panel includes data lines arranged in a first direction, scan lines
`
`arranged in a second direction, and a matrix of pixels arranged at the intersection
`
`of each scan line and data line. Shen at Fig. 4. The LCD panel is driven by driving
`
`circuitry that applies “data impulses, scan voltages, and timing signals” according
`
`to frame data for the pixels. Id. at 1:29. The data impulses are applied to the pixels
`
`according to the appropriate grey levels required for a given frame. Id. at 1:50-52.
`
`However, as Shen explains, there is a “time delay when charging liquid crystal
`
`molecules” when applying a data impulse in order to allow the molecules to twist
`
`and achieve the correct gray levels for a pixel. Id. at 1:62-65. As a result of the
`
`19 
`