UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00885
`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 Unsuccessful Art and Arguments Already Considered
`and Rejected by the Board .................................................................................... 14
`II. Background ........................................................................................................ 19
`a. About U.S. Patent No. 7,202,843 (the “‘843 patent” or “Shen”) ................... 19
`b. Independent Claims 1 and 4 ........................................................................... 23
`c. Petitioner’s Grounds of Challenge ................................................................. 25
`III. Claim Construction ......................................................................................... 27
`a. A Person of Ordinary Skill in the Art ............................................................. 28
`b. Properly Construed, Claim 4 Requires Overdriving ...................................... 29
`IV. Argument ........................................................................................................ 35
`a. The Petition’s Lee Reference is Not Properly Presented and Lacks All
`Relied-Upon Features ........................................................................................... 36
`b. The Grounds of Challenge Based on Jinda, Alone or In Combination With
`Miyai, Remain Deficient ....................................................................................... 44
`V. Conclusion ......................................................................................................... 50
` 
`
`
`
`
`
`ii 
` 
`
`

`

`TABLE OF AUTHORITIES
`
`
`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ.,
` 212 F.3d 1272 (Fed. Cir. 2000)........................................................................... 45
`Bayer Healthcare Pharms., Inc., v. Watson Pharms., Inc.,
` 713 F.3d 1369 (Fed. Cir. 2013) ................................................................... 46, 47
`Biodelivery Sciences Int’l, Inc. v. RB Pharmaceuticals Ltd.,
` IPR2014-00998, paper 12 (PTAB 12/19/2014) .................................................. 19
`Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871 (Fed. Cir. 2008) ........................ 34
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Co.,
` IPR2014-00628, paper 23 (PTAB 3/20/2015) ......................................... 9, 11, 12
`Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365 (Fed. Cir. 2006) ........................... 45
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
` IPR2013-00183, paper 12 (PTAB 7/31/2013) .................................................... 49
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) .......................................................... 29
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................. 27
`Jiawei Technology (HK) Ltd., et al. v. Richmond,
` IPR2015-00580, paper 22 (PTAB 5/2/2015) ............................................... 11, 12
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................... 48
`Unilever, Inc. dba Unilever v. The Proctor & Gamble Co.,
` IPR2014-00506, paper 17 (PTAB 7/7/2014) ...................................................... 13
`Zenon Environmental, Inc. v. U.S. Filter Corp.,
` 506 F.3d 1370 (Fed. Cir. 2007)........................................................................... 45
`ZTE Corp. v. ContentGuard Holdings, Inc.,
` IPR2013-00454, paper 12 (PTAB 9/25/2013) .................................................... 12
`Statutes
`
`28 U.S.C. § 1746 ...................................................................................................... 36
`35 U.S.C. § 314(a) ................................................................................ 13, 35, 43, 50
`35 U.S.C. § 325(d) ........................................................................................... passim
`Rules
`
`37 C.F.R. § 42.1 ....................................................................................................... 13
`
`iii 
` 
`
`

`

`37 C.F.R. § 42.1(b) .................................................................................................... 9
`37 C.F.R. § 42.100(b) .............................................................................................. 27
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 43
`37 C.F.R. § 42.63(b) ................................................................................................ 36
`37 C.F.R. § 42.63(d)(2) ............................................................................................ 37
`37 C.F.R. § 42.65(a) .................................................................................... 18, 48, 49
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (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
`
`
`
`LG Display Co., Ltd. (“LG” or “Petitioner”) filed the current Petition for
`
`inter partes review of claims 1, 4, 8, and 9 of U.S. Patent No. 7,202,843 (“the ‘843
`
`patent”) on March 17, 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-defendants Samsung Electronics Co., Ltd., Samsung
`
`Display Co., Ltd. (collectively, “Samsung”), Sony Corporation (“Sony”), and
`
`Petitioner LG 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
`
`                                                                                                                                                                                                
`be denied in full. Background information regarding the ‘843 patent and its
`
`independent claims is provided in Section II.
`
`2 
` 
`
`

`

`benefited by prolonging the period during 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 LG, Sony and Samsung moved
`
`for a stay pending Sharp’s IPR requests, on November 13, 2104, counsel of record
`
`in two (now) co-pending petitions2 against the ‘843 patent 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 attempt 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
`                                                            
`2 IPR2015-00862 and IPR2015-00863. This counsel is also of record in IPR2015-
`
`00887 against the ‘550 patent.
`
`3 
` 
`
`

`

`March 18, 2015, the Board denied three of four grounds presented in Sharp’s
`
`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 the co-
`
`4 
` 
`
`

`

`defendant/petitioners’ approach of swapping out one co-defendant petitioner for
`
`another in this second round falls far short of being creative. It is against the
`
`Board’s policy to allow second bites at apple, particularly where the second bite is
`
`designed to cure the defects revealed by the first bite, and that is exactly what
`
`Petitioner LG has 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 the intent of co-
`
`defendant petitioners all along. This also strongly suggests that there was concerted
`
`strategic planning among the co-defendants, and reinforces that Petitioner LG here
`
`stands 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
`
`5 
` 
`
`

`

`Display Co., Ltd. in this case, is assigned to petitioner/co-defendant Samsung. The
`
`Ham reference used in IPR2015-00863 filed by Samsung and Sony is assigned to
`
`Petitioner LG.3 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 unsuccessfully against the ‘550 patent, in
`
`IPR2015-00022. No representations are made by petitioners 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. Focusing only on the
`
`challenges against the ‘843 patent, the following is a chart showing the references
`
`relied on in each of the four petitions asserted against the ‘843 patent, with
`
`references listed in bold font where appearing in both the First Round Petition and
`
`a Second Round Petition:
`
`
`                                                            
`3 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
`
`--U.S. Patent
`
`--Jinda
`
`Application
`
`--U.S. Patent
`
`--Jinda
`
`--Ham
`
`--Jinda
`
`--Miyai
`
`Publication No.
`
`Application
`
`--Suzuki
`
`--Korean Patent
`
`Application No.
`
`2000-0073673
`
`(“Lee”)
`
`
`
`2002/0044115
`
`Publication No.
`
`--Nitta
`
`(“Jinda”)
`
`2003/0156092
`
`
`
`--Japanese Patent
`
`(“Suzuki”)
`
`Laid-Open
`
`--Japanese Laid
`
`Publication No.
`
`Open Patent
`
`HEI 6-62355
`
`Application
`
`(“Miyai”)
`
`No. 2002-132224
`
`--U.S. Patent
`
`(“Nitta”)
`
`Application
`
`--U.S. Patent
`
`Publication No.
`
`Application
`
`2001/0038369
`
`Publication
`
`(“Adachi”)
`
`No. 2003/0214473
`
`--U.S. Patent
`
`
`
`Application
`
`Publication No.
`
`7 
` 
`
`

`

`2004/0196229
`
`(“Ham”)
`
`
`
`The Jinda reference, which was considered and denied in IPR2015-00021 is
`
`relied upon in each of the three Second Round Petitions against the ‘843 patent,
`
`including this Petition. Miyai, which was also unsuccessfully asserted in IPR2015-
`
`00021, makes another appearance in this Petition. And Ham, the basis for the only
`
`ground on which trial was instituted in IPR2015-00021, appears again in IPR2015-
`
`00863.
`
`A detailed comparison of the challenges based on Jinda and Miyai in this
`
`Second Round Petition reveals that they contain the same or substantially the same
`
`arguments, on the basis of the same prior art, as those challenges unsuccessfully
`
`presented in IPR2015-00021. See Section I.b below. For example, this Petition
`
`bases three grounds upon alternative readings of Jinda either alone or combined
`
`with Miyai. The same grounds were presented in IPR2015-00021 and dismissed
`
`without institution. Petitioner LG provides no reason why the arguments and
`
`evidence in this Petition could not have been presented in IPR2015-00021. Thus,
`
`Petitioner LG presents Jinda and Miyai for substantially the same reason and in
`
`support of substantially the same arguments as those presented unsuccessfully in
`
`8 
` 
`
`

`

`IPR2015-00021. 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). Petitioner LG stands 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 in place for as long as possible. 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, 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
`
`Surpass must endure the expense of addressing the same unsuccessful Jinda/Miyai
`
`arguments for a second time against a party who, at times, has merely copied and
`
`9 
` 
`
`

`

`pasted the unsuccessful arguments from IPR2015-00021 into a new Petition. 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.
`
`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,
`
`10 
` 
`
`

`

`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 one day 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 Petitioner LG. Indeed, LG’s ground based on
`
`a combination of Jinda/Miyai includes a footnote that expressly seeks to explain
`
`how LG’s use of the same art and same argument improves upon Sharp’s argument
`
`from IPR2015-00021. See Pet. at 40 n.3. The Petition includes other comments that
`
`indicate that LG intended to use Sharp’s IPR2015-00021 (and Patent Owner
`
`Surpass’s preliminary response in that case) as a roadmap for future challenges.
`
`See, e.g., Pet. at 10 n.2.
`
`In guiding how to proceed in this action, Jiawei Technology is instructive.
`
`There, the second petition included a claim construction that petitioner “could have
`
`11 
` 
`
`

`

`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 Petitioner LG has used the Lee reference that was
`
`assigned to Samsung Electronics Co., Ltd. and therefore available to co-
`
`defendants, including co-petitioners Sharp and Samsung, at the time of filing the
`
`earlier First Round Petitions. Now, having recognized the defects in IPR2015-
`
`00021, Petitioner LG is taking another bite at the ‘843 patent with Jinda and Miyai,
`
`two references that were actually presented unsuccessfully, and with a third
`
`reference that could have been presented in IPR2015-00021.
`
`Denial of the Petition by the Board 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 petitioner to file a reply before the Board decides whether to institute an
`
`inter partes review, Petitioner LG has, in effect, rewritten the Board’s rules to
`
`12 
` 
`
`

`

`create a procedural opportunity to not only respond to Patent Owner’s IPR2015-
`
`00021 Preliminary Response but also present new evidence (Lee, expert
`
`declaration) and argument in a second chance filing of 60 pages, and seek
`
`reconsideration of the Board’s decision on Jinda/Miyai. 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 the Lee,
`
`Jinda, and Miyai 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, the Lee reference is written in the Korean language, and LG fails to present
`
`Lee with the requisite proof of accurate translation. Thus, Lee is disqualified and
`
`not properly before the Board. Secondly, Lee does not disclose all features of the
`
`claims as alleged by Petitioner. Third, the alleged motivation to combine Jinda and
`
`13 
` 
`
`

`

`Miyai is no more than the recycled and rejected motivation presented in IPR2015-
`
`00021. Finally, Petitioner’s characterizations of Jinda and Miyai are accompanied
`
`by citations to the Zech declaration (Ex. 1011), but Zech’s paragraphs are nothing
`
`more than carbon copies of attorney argument and are entitled to little to no
`
`weight. These deficiencies will be addressed in greater detail in Section IV below.
`
`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 Unsuccessful Art and Arguments Already
`Considered and Rejected by the Board
`
` 
`
`Grounds 2-4 of this Petition include theories of unpatentability based on
`
`Jinda alone and Jinda in combination with Miyai. But in IPR2015-00021, those
`
`same theories of unpatentability were presented by the Sharp petitioners and
`
`rejected by the Board. The Petition attempts to sidestep the Board’s discretion to
`
`dismiss these grounds under 35 U.S.C. § 325(d) by arguing that this Petition does
`
`not merely recycle the arguments from IPR2015-00021. Petitioner specifically
`
`states:
`
`Petitioner’s assertion of Ground 2 differs from the similar ground
`asserted in prior petition IPR2015-00021, which was filed October 3,
`2014. See Ex. 1004. This Petition provides more robust treatment of
`the combination of Jinda and Miyai, it includes the declaration of an
`expert to provide support and additional explanation where necessary,
`
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`and it includes a separate and explicit section regarding the motivation
`to combine the two references. See, infra, pp.39-55; Ex. 1011, Zech.
`Decl.
`
`Pet. at 40. What is more telling is what Petition LG leaves out of this paragraph.
`
`Specifically, it offers no reason why the “more robust treatment” of Jinda and
`
`Miyai, the expert declaration, and the additional explanation could not have been
`
`presented in the Sharp entities’ IPR2015-00021 petition.
`
`
`
`Further, LG’s allegation that this Petition includes “more robust treatment”
`
`of the combination bends the reality of the two documents. Aside from LG’s use of
`
`an expert declaration, the arguments in Sharp’s IPR2015-00021 petition and the
`
`current Petition are nearly identical, at times down to the very word. A key
`
`example spans pp. 45-47 of LG’s Petition, where LG presents its “separate and
`
`explicit section regarding the motivation to combine the two references.” That
`
`section includes two arguments: 1) that “Jinda expressly teaches one of ordinary
`
`skill [in] the art to combine the disclosed driving circuit with the LCD panel of
`
`Miyai”; 2) that “both references focused on the exact same problem.” See Pet. at
`
`45-46 (emphasis in original). The majority of these arguments are presented word-
`
`for-word when held up to the same arguments in IPR2015-00021, right down to
`
`the same emphasis of “expressly.” Compare Pet. at 45 with IPR2015-00021
`
`Petition at 33.
`
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`
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`In additional insult to both the Board and Patent Owner Surpass, the Board
`
`has already ruled that these arguments are not sufficient, including that “Jinda does
`
`not, however, identify Miyai as being incorporated by reference … .” IPR2015-
`
`00021, paper 10 at 6-7.
`
`Further comparison of the two petitions reveals additional similarities that
`
`cannot be overlooked.
`
`First, just like in IPR2015-00021, the obviousness allegations based on Jinda
`
`and Miyai point to the same figures and paragraphs of Miyai to allege Miyai’s
`
`disclosure of the LCD panel and components thereof. Compare Pet. at 41 with
`
`IPR2015-00021 Petition at 34-35.Where IPR2015-00021 failed to establish these
`
`features as disclosed by Miyai, Petitioner LG acknowledges Miyai’s gaps but looks
`
`to theories of inherency to fill in all three missing elements from Miyai’s express
`
`disclosure. Pet. at 41. Essentially, Petitioner LG was able to sit back and wait for
`
`Patent Owner to pick apart the defects in Sharp’s petition, and then use that
`
`analysis as a roadmap for its subsequent attack.
`
`Moreover, despite having an available roadmap, Petitioner LG has failed to
`
`remedy Sharp’s shortcomings. Specifically, Petitioner LG relies upon the Zech
`
`declaration, ¶¶90-92 of Ex. 1011, to support its three inherency-based arguments
`
`related to Miyai. Pet. at 41. However, through a simple a comparison between the
`
`Petition’s arguments regarding inherency and the Zech declaration’s ¶¶90-92, it is
`
`16 
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`clear that Zech is merely parroting LG’s attorney argument in these paragraphs.
`
`See the example of Zech’s ¶90 below:
`
`Zech Declaration, Ex. 1011, ¶90
`
`Petition Argument at pp. 40-41
`
`“Though only one pixel, scan line, and
`
`“Though only one pixel, scan line, and
`
`data line are expressly depicted in
`
`data line are expressly depicted in
`
`Figure 3a, in order for the LCD to
`
`Figure 3a, in order for the liquid crystal
`
`function properly as a display device,
`
`panel to function properly as a display
`
`the panel would necessarily have
`
`device, the panel would necessarily have
`
`included a pixel array, including a
`
`included a pixel array, including a
`
`plurality of scan and data lines. Thus,
`
`plurality of scan and data lines. See Ex.
`
`Miyai inherently discloses an LCD
`
`1011, Zech Decl., at ¶90. Thus, Miyai
`
`panel comprising “a plurality of scan
`
`inherently discloses an LCD panel
`
`lines,” as required by Claim 1.”
`
`comprising “a plurality of scan lines,” as
`
`required by Claim 1.
`
`
`
`Zech offers no further technical discussion of why the allegedly inherency
`
`features are “necessarily disclosed” as required under a theory of inherency. He
`
`offers none of the required underlying facts or data on which his conclusion is
`
`based. See also Ex. 1011, ¶¶91-92. Further, delivering unsupported attorney
`
`argument from the mouth of an expert does not convert the attorney argument into
`
`17 
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`reliable evidence. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weight.”).
`
`Second, the Board was not convinced when Sharp presented its argument
`
`regarding prosecution before the European Patent Office. See IPR2015-00021,
`
`paper 10 at 7 (concluding that “Petitioner [Sharp] has not shown how the
`
`conclusions made by the EPO, presumably based on different laws and regulations,
`
`are relevant to demonstrate inherency under U.S. law in this proceeding.”). LG has
`
`again substantially performed a copy-and-paste4 of Sharp’s discussion on the
`
`European Patent Office’s examination and presented it again for Board
`
`(re)consideration.
`
`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.
`
`Further, 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
`
`                                                            
`4 Although LG did update the citations to its own exhibits.
`18 
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`under § 325(d) is the appropriate action here. Grounds 2-4 all depend upon
`
`references (Jinda