UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.,
`Petitioner,
`v.
`DELAWARE DISPLAY GROUP LLC,
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 7,434,973
`IPR Case No.: IPR2015-01666
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
`
`

`
`
`
`TABLE OF CONTENTSTABLE OF CONTENTS
`
`
`
`II.II.
`
`
`
`STATEMENT OF MATERIAL FACTS ....................................................1STATEMENT OF MATERIAL FACTS ....................................................1
`
`
`
`TABLE OF CONTENTS
`STATEMENT OF THE PRECISE RELIEF REQUESTED....................1
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ....................1STATEMENT OF THE PRECISE RELIEF REQUESTED ....................1
`
`I.I.
`STATEMENT OF MATERIAL FACTS ....................................................1
`II.
`III. LEGAL STANDARDS AND APPLICABLE RULES...............................4
`IV. ARGUMENT..................................................................................................5
`A. Joinder is appropriate because it will not impact the Board’s ability to
`
`A. Joinder is appropriate because it will not impact the Board’s ability toA. Joinder is appropriate because it will not impact the Board’s ability to
`complete the review in a timely manner.............................................................5
`
`complete the review in a timely manner.............................................................5complete the review in a timely manner.............................................................5
`C. Joinder will not prejudice DDG or LGD.....................................................6
`
`C. Joinder will not prejudice DDG or LGD.....................................................6C. Joinder will not prejudice DDG or LGD.....................................................6
`D. Without joinder, Petitioner may be prejudiced..........................................7
`
`D. Without joinder, Petitioner may be prejudiced..........................................7D. Without joinder, Petitioner may be prejudiced..........................................7
`E. Adding grounds through joinder is permitted............................................8
`
`E. Adding grounds through joinder is permitted............................................8E. Adding grounds through joinder is permitted............................................8
`E. Joinder Would Minimally Impact the Current Trial Schedule..............10
`
`E. Joinder Would Minimally Impact the Current Trial Schedule ..............10E. Joinder Would Minimally Impact the Current Trial Schedule ..............10
`IV. CONCLUSION ............................................................................................11
`
`III. LEGAL STANDARDS AND APPLICABLE RULES ...............................4III. LEGAL STANDARDS AND APPLICABLE RULES ...............................4
`
`
`
`IV. ARGUMENT ..................................................................................................5IV. ARGUMENT ..................................................................................................5
`
`
`
`IV. CONCLUSION ............................................................................................11IV. CONCLUSION ............................................................................................11
`
`i
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385 .................................5, 6
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`IPR2014-01097.................................................................................................1, 9
`
`SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306.................................................6
`
`Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1 Security
`Sols., Inc., IPR2013-00495 ...................................................................................6
`
`Taiwan Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -
`00782.....................................................................................................................1
`
`Statutes
`
`35 U.S.C. § 102(a) .................................................................................................3, 4
`
`35 U.S.C. § 102(b) .................................................................................................3, 4
`
`35 U.S.C. § 102(e) .................................................................................................3, 4
`
`35 U.S.C. § 103......................................................................................................3, 4
`
`35 U.S.C. §103(a) ......................................................................................................3
`
`35 U.S.C. § 315(c) .............................................................................................1, 4, 5
`
`Regulations
`
`37 C.F.R. § 42.22 ......................................................................................................1
`
`37 C.F.R. § 42.122(b) ................................................................................................1
`
`ii
`
`

`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), petitioner LG
`
`Electronics, Inc. (“Petitioner” or “LGE”) respectfully requests that it be joined as a
`
`party to the following initiated inter partes review proceeding concerning the same
`
`patent at issue here, U.S. Patent No. 7,434,973 (“the ’973 Patent”): LG Display
`
`Co., Ltd. v. Innovative Display Technologies LLC, IPR2015-00506 (the “LGD
`
`IPR”). Petitioner has filed concurrently herewith a “Petition for Inter Partes
`
`Review of Claims 1-5 of U.S. Patent No. 7,434,973,” in which it asserts the ground
`
`the Board instituted on in IPR2015-00506 and one additional ground of invalidity.
`
`This Motion is timely under 37 C.F.R. §§ 42.22 and 42.122(b) because it is
`
`being submitted within one month of institution of IPR2015-00506. See Taiwan
`
`Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -00782, Paper 5 (May 29,
`
`2014) at 3; 37 C.F.R. § 42.122(b).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On December 31, 2013, Delaware Display Group LLC (“DDG” or
`
`“Patent Owner”) filed a complaint in the United States District Court for the
`
`District of Delaware accusing Petitioner of infringing several patents.
`
`See
`
`Delaware Display Group LLC and Innovative Display Technologies LLC v. LG
`
`Electronics, Inc., LG Electronics U.S.A., Inc., LG Display Co., Ltd., and LG
`
`Display America, Inc., Case No. 1:13-cv-02109 (hereinafter, “the Underlying
`
`1
`
`

`
`Litigation”). The complaint did not accuse Petitioner of infringing the ’973 Patent.
`
`2.
`
`LG Display Co., Ltd. (“LGD”) filed a petition for inter partes review
`
`of the ’973 Patent on December 30, 2014 (the “LGD Petition”). See IPR2015-
`
`00506, Paper 2 (December 30, 2014).
`
`3.
`
`The LGD Petition includes the following five grounds for invalidity:
`
`a.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Being Obvious Over the ’389 Patent In View of Pelka;
`
`b.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §102(e) As
`
`Being Anticipated By Shinohara;
`
`c.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Obvious Over Shinohara In View of Yoshikawa;
`
`d.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Obvious Over Pelka In View of Funamoto; and
`
`e.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Obvious Over Hooker In View Of Mizobe.
`
`See id. at i-ii.
`
`4.
`
`On May 4, 2015, Patent Owner filed a motion to amend its complaint
`
`to assert the ’973 Patent.
`
`5.
`
`On July 28, 2015, the Court granted Patent Owner’s motion to amend
`
`its complaint to add the ’973 Patent.
`
`2
`
`

`
`6.
`
`In its Amended Complaint, DDG purports to be the owner of the ’973
`
`patent.
`
`7.
`
`On July 6, 2015, the Board granted IPR2015-00506 and instituted
`
`review based on the following ground: Claims 1-5 Are Unpatentable Under 35
`
`U.S.C. §102(e) As Being Anticipated By Shinohara. IPR2015-00506, Paper 8, at
`
`24.
`
`8.
`
`In its Institution Decision, the Board found that the ’973 Patent is
`
`entitled to an effective filing date of February 9, 2007, the filing date of the
`
`application that issued as the ’973 Patent.
`
`9.
`
`LGE is filing a petition for inter partes review of the ’973 Patent
`
`concurrently with this motion.
`
`10.
`
`LGE’s Petition is being filed within one month of institution of the
`
`IPR2015-00506 Petition.
`
`11.
`
`The LGE Petition contains the following two invalidity
`
`grounds:
`
`a.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §103(a) As
`
`Being Obvious Over the Parker Publication In View of Pelka;
`
`b.
`
`Claims 1-5 Are Unpatentable Under 35 U.S.C. §102(b) As
`
`Being Anticipated By Shinohara;
`
`12. Ground 2 in LGE’s Petition is the same as the instituted ground in
`
`3
`
`

`
`IPR2015-00506.
`
`13.
`
`For Ground 1, the Parker Publication is the published application that
`
`led to the ’389 Patent.
`
`14.
`
`Patent Owner’s Response in IPR2015-00506 is currently due
`
`September 14, 2015. IPR2015-00506, Paper 9, at 6.
`
`15.
`
`Petitioner’s reply is due November 20, 2015. Id.
`
`16. Oral argument is scheduled for March 1, 2016. Id.
`
`III. LEGAL STANDARDS AND APPLICABLE RULES
`
`The Board has discretion to join a properly filed IPR petition to a
`
`previously instituted IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R. §42.122(b);
`
`see also Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385. When
`
`considering joinder, the Board takes into account “the particular facts of each
`
`case, substantive and procedural
`
`issues, and other considerations,” while
`
`remaining “mindful that patent trial regulations, including the rules for joinder,
`
`must be construed to secure the just, speedy, and inexpensive resolution of every
`
`proceeding.” Dell, IPR2013-00385, Paper No. 17 (July 29, 2013) at 3.
`
`“A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`4
`
`

`
`may be simplified.” Id. at 4.
`
`IV. ARGUMENT
`
`Joinder is appropriate here for several reasons including efficiency and
`
`consistency as discussed in detail below.
`
`A.
`
`Joinder is appropriate because it will not impact the Board’s
`ability to complete the review in a timely manner.
`
`Joinder is appropriate because it will not impact the Board’s ability to
`
`complete its review of the LGD IPR within the statutorily prescribed timeframe.
`
`First, this inter partes review proceeding raises the same ground of unpatentability
`
`on which the Board instituted review in IPR2015-00506 Specifically, Petitioner
`
`asserts in its petition the same ground of unpatentability LGD asserted in the LGD
`
`IPR on which the Board instituted review, and asserts a new ground directed at the
`
`same claims. Thus, this proceeding does not raise new issues of unpatentability
`
`beyond those already before the Board in the LGD IPR, and this weighs in favor of
`
`joinder. See, e.g., Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385,
`
`Paper 17 (July 29, 2013) at 7, 10 (granting joinder where unpatentability grounds
`
`identical and noting “policy preference for joining a party that does not present
`
`new issues that might complicate or delay an existing proceeding”); Sony Corp. of
`
`Am. and Hewlett-Packard Co. v. Network-1 Security Sols., Inc., IPR2013-00495,
`
`Paper 13 (Sept. 16, 2013) at 5 (same); SAP Am. Inc. v. Clouding IP, LLC,
`
`IPR2014-00306, Paper 13 (May 19, 2014) at 4.
`
`5
`
`

`
`Moreover,
`
`the technical expert supporting IPR2015-00506 is the same
`
`individual supporting this petition. Exhibits supporting each respective petition are
`
`the same, and the instant petition only adds one new exhibit (Exhibit 1040).
`
`Joinder also promotes efficiency by avoiding duplicative reviews and filings
`
`of similar unpatentability issues across multiple PTAB proceedings. Joinder will
`
`also eliminate any risk of inconsistent results and piecemeal review.
`
`C.
`
`Joinder will not prejudice DDG or LGD.
`
`Permitting joinder will not prejudice DDG or LGD. The instituted ground
`
`overlaps in subject matter with the two grounds proposed in this petition, and
`
`therefore, joinder will not impact the scope or timing of IPR2015-00506. Both
`
`petitions are relying on similar testimony of the same technical expert to support
`
`the respective petitions, further avoiding any potential delay.
`
`Moreover, joinder is likely more convenient and efficient for DDG because
`
`it will provide a single trial on the ’973 Patent. By allowing all grounds of
`
`invalidity to be addressed in a single proceeding, the interests of all parties and the
`
`Board will be well served.
`
`Further, briefing and discovery can be simplified to minimize any impact on
`
`the participants and to streamline the filings for the Board. For example, upon
`
`granting joinder, the Board can adopt procedures similar to those adopted in Dell
`
`Inc.,
`
`IPR2013-00385 and SAP America Inc.,
`
`IPR2014-00306.
`
`In those
`
`6
`
`

`
`proceedings, the Board required that the petitioner make consolidated filings, for
`
`which the first petitioner was responsible, and allowed the new petitioner to file an
`
`additional seven-page paper addressing only points of disagreement with points
`
`asserted in the consolidated filing. See IPR2013-00385, Paper 17 at 11; IPR2014-
`
`00306, Paper 13 at 5. The Board also permitted the patent owner to respond to any
`
`separate filing, limiting the page limit to that used in the separate filing. See
`
`IPR2013-00385, Paper 17 at 11; IPR2014-00306, Paper 13 at 5. Adopting a
`
`similar procedure in this case will minimize any delay that could arise from
`
`lengthy briefing submitted by each party, while at the same time providing all
`
`parties an opportunity to be heard. See IPR2013-00385 at 8.
`
`As in these prior cases, LGD and Petitioner can also coordinate their
`
`questioning at depositions to avoid redundancy. See IPR2013-00385, Paper 17 at
`
`12; IPR2014-00306, Paper 13 at 6.
`
`For these reasons, joinder will not prejudice any party, but rather will
`
`promote the just, speedy, and inexpensive resolution of
`
`these proceedings
`
`involving the ’973 Patent.
`
`D. Without joinder, Petitioner may be prejudiced.
`
`Petitioner would be prejudiced if it is not permitted to join and participate in
`
`the LGD IPR, impacting not only Petitioner’s pending inter partes review petition,
`
`but also the Underlying Litigation. Any decision in the LGD IPR will likely
`
`7
`
`

`
`simplify, or even resolve, the issues in the Underlying Litigation.
`
`Joinder is
`
`necessary to allow Petitioner – a party to the Underlying Litigation – to protect its
`
`interests with respect to matters that are at issue in both the inter partes review
`
`proceedings and the Underlying Litigation.
`
`E.
`
`Adding grounds through joinder is permitted.
`
`Joinder of LGE’s petition with IPR2015-00506 is appropriate here because
`
`of the overlap in claims, the overlap in prior art for challenging claims, the overlap
`
`in expert testimony, and the overlap in exhibits.
`
`Indeed, courts have joined
`
`petitions adding grounds to the already instituted grounds in an earlier petition. For
`
`example, in Samsung v. Virginia, IPR2014-00557, the Board permitted joinder
`
`when a petitioner added subject matter that had relevance to the instituted claims,
`
`such that “the minimal amount of work required on the part of Patent Owner… is
`
`strongly outweighed by the public interest in having consistency of outcome
`
`concerning similar sets of claimed subject matter and prior art.” Samsung v.
`
`Virginia, IPR2014-00557, Paper 10, at 18. The Board has also granted motions for
`
`joinder when petitions “involved the same patent and parties… substantially the
`
`same exhibits… [and] substantial overlap in the asserted references.” Sony v.
`
`Yissum, IPR2013-00327, Paper 15, at 5. In that case, the Board dismissed Patent
`
`Owner’s argument that joinder would allow petitioners to undergo serial filings as
`
`an attempt to delay the resolution of a proceeding noting that “only very limited
`
`8
`
`

`
`new grounds for unpatentability are introduced by the petition in this proceeding.”
`
`See id at 3. Moreover,
`
`in Target Corporation v. Destination Maternity
`
`Corporation, IPR2014-00508, the Board found that joinder of issues is appropriate
`
`under §315(c) particularly when issues overlap and joinder could decrease
`
`litigation costs and conserve judicial resources. Paper 28, at 13-15. As with Target,
`
`Sony, and Samsung, the Board should join LGE’s petition with IPR2015-00506
`
`because the petition involves the same patent, the same claims, substantially the
`
`same exhibits, substantial overlap in prior art, and the same expert.
`
`LGE advances only one additional ground of unpatentability challenging the
`
`same claims already under review. See, e.g., Oxford Nanopore Technologies Ltd.
`
`v. University of Washington, IPR2015-00057, Paper 10, at 21 (finding joinder
`
`proper where “the instant case involves only a single additional ground, involving
`
`a single claim already under challenge”).
`
`Finally, joinder of LGE’s petition with IPR2015-00506 will promote the
`
`just, speedy, and inexpensive resolution of proceedings on the ’973 Patent. That is,
`
`Petitioner does not seek to “delay the resolution of a proceeding” by undergoing
`
`serial filings. See Target Corporation v. Destination Maternity Corporation.
`
`Instead, LGE’s advancement of Pelka in view of the Parker Publication is relevant
`
`to the instituted claims and reviewing this ground with the instituted ground
`
`promotes the “just, speedy, and inexpensive” resolution of proceedings, does not
`
`9
`
`

`
`substantially expand the scope of subject matter or references, and does not harass
`
`or prejudice the Patent Owner. There is also a strong public interest in advancing
`
`these grounds together, for consistency in the outcome of the claims,
`
`that
`
`outweighs any minor inconveniences to the Patent Owner because the claims are of
`
`the same subject matter and challenged on substantially the same references.
`
`E.
`
`Joinder Would Minimally Impact the Current Trial Schedule
`
`Joinder would minimally impact the schedule in IPR2015-00506 because the
`
`Board can adopt a procedure similar to the one used in Samsung and Sony to put
`
`both ’973 IPRs on the same schedule. For example, in Samsung the Board
`
`accelerated the due date on which Patent Owner’s preliminary response was due
`
`and contemporaneously issued a revised scheduling order in the IPR to be joined
`
`See, e.g., Samsung v. Virginia, IPR2014-00557, Paper 9, at 2-3; see also Sony v.
`
`Yissum, IPR2013-00327, Paper 7, at 2. The Board then issued its decisions within
`
`a month of the patent owner’s preliminary response. See Sony v. Yissum, IPR2013-
`
`00327, Paper 14. With this approach, following the institution and joinder
`
`decisions on the second petition, the patent owner response to both petitions were
`
`due on the same day based on only a minimally altered scheduling order. A
`
`similar procedure here would also only minimally impact the current schedule.
`
`10
`
`

`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,434,973 be instituted and that this
`
`proceeding be joined with LG Display Co., Ltd. v. Innovative Display Technologies
`
`LLC, IPR2015-00506.
`
`Although Petitioner believes that no fee is required for this Motion, the
`
`Commissioner is hereby authorized to charge any additional fees that may be
`
`required for this Motion to Deposit Account No. 130019.
`
`Dated: August 5, 2015
`
`Respectfully submitted,
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Amanda K. Streff
`Registration No. 65,224
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone:
`312-701-8641
`Facsimile:
`312-701-7711
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`(permission to file
`Jamie B. Beaber
`motion for pro hac vice admission to be
`sought)
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`
`11
`
`

`
`Registration No. 67,394
`Mayer Brown LLP
`1999 K Street, N.W.
`Washington, DC 20006
`Telephone:
`202-263-3000
`Facsimile:
`202-263-3300
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`Counsel for LG Electronics, Inc.
`
`12
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, on this 5th day of August , 2015, a true and
`
`correct copy of the foregoing MOTION FOR JOINDER PURSUANT TO 35
`
`U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) was served by UPS NEXT DAY AIR
`
`on the attorney of record for the patent owner, with a courtesy copy being sent by
`
`electronic mail to the attorneys of record in the co-pending litigation, at the
`
`following addresses:
`
`of
`Attorney
`Record for Patent
`Owner:
`
`Attorneys of
`Record In Co-
`Pending
`Litigation:
`
`Donald L. Otto, Esq.
`Renner, Otto, Boisselle & Sklar, LLP
`1621 Euclid Avenue
`19th Floor
`Cleveland, OH 44115
`
`Jeffrey R. Bragalone
`Patrick J. Conroy
`Justin B. Kimble
`T. William Kennedy, Jr.
`Daniel F. Olejko
`Bragalone Conroy PC
`2200 Ross Avenue
`Suite 4500W
`Dallas, TX 75201
`jbragalone@bcpc-law.com
`pconroy@bcpc-law.com
`jkimble@bcpc-law.com
`bkennedy@bcpc-law.com
`dolejko@bcpc-law.com
`
`

`
`Date: August 5, 2015
`
`By:
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile: 312-701-7711
`
`Counsel for LG Electronics, Inc.