Trials@uspto.gov
`571-272-7822
`
` Paper No. 15
` March 17, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K.J. PRETECH CO., LTD,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01867
`Patent 7,537,370
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
` Paper No. 15
` March 17, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K.J. PRETECH CO., LTD,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01867
`Patent 7,537,370
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2015-01867
`Patent 7,537,370
`
`
`K.J. Pretech Co., Ltd. (“Petitioner”) filed a Petition pursuant to 35
`
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1, 4, 5, 9, 13,
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`29, and 47 of U.S. Patent No. 7,537,370 (“the ’370 patent”). Paper 2
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`(“Pet.”). Innovative Display Technologies LLC (“Patent Owner”) filed a
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`Preliminary Response. Paper 11 (“Prelim. Resp.”). Applying the standard
`
`set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable
`
`likelihood that Petitioner would prevail with respect to at least one
`
`challenged claim, we the institute an inter partes review of claims 29 and 47.
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`We decline to institute a review as to the other claims challenged.
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`
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`I. BACKGROUND
`
`A. The ʼ370 patent (Ex. 1001)
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`The ʼ370 patent is titled “Light Emitting Panel Assemblies.” The
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`Abstract describes the subject matter as follows:
`
`Light emitting panel assemblies include an optical panel
`member having a pattern of light extracting deformities on or in
`one or both sides to cause light to be emitted in a predetermined
`output distribution. The pattern of light extracting deformities
`on or in one side may have two or more different types or
`shapes of deformities and at least one of the types or shapes
`may vary along the length or width of the panel member.
`Where the light extracting deformities are on or in both sides, at
`least some of the deformities on or in one side may be of a
`different type or shape or vary in a different way or manner
`than the deformities on or in the other side.
`
`Ex. 1001, Abstract.
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`2
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`B. Illustrative Claim(s)
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`Claim 1 is illustrative of the claims at issue:
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`1. A light emitting panel assembly comprising
`at least one light source,
`an optical panel member having at least one input edge
`for receiving light from the at least one light source, the panel
`member having front and back sides and a greater cross
`sectional width than thickness,
`both the front and back sides having a pattern of light
`extracting deformities that are projections or depressions on or
`in the sides to cause light to be emitted from the panel member
`in a predetermined output distribution,
`where the pattern of light extracting deformities on or in
`at least one of the sides varies along at least one of the length
`and width of the panel member and
`at least some of the light extracting deformities on or in
`one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member, and
`at least one film, sheet or substrate overlying at least a
`portion of one of the sides of the panel member to change the
`output distribution of the emitted light such that the light will
`pass through a liquid crystal display with low loss.
`
`
`C. Related Proceedings
`
`Patent Owner identifies numerous proceedings in which it has alleged
`
`infringement of the ʼ370 patent. See Paper 5 for a listing. In addition,
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`Patent Owner identifies several other petitions requesting inter partes review
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`of the ’370 patent and related patents. Id. In IPR2014-01096 (“IPR-1096”),
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`one such petition was granted as to claims 15 and 27 of the ʼ370 patent, and
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`an inter partes review was instituted by the Board as to those claims on
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`January 13, 2015. Ex. 1027. A second petition, in IPR2015-00493, relied
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`on the same prior art as the petition in IPR-1096, and was granted by the
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`Board. The Board also granted the petitioner’s motion for joinder of that
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`proceeding with IPR2014-01096. A Final Written Decision determining that
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`claims 15 and 27 are unpatentable was entered by the Board on December
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`18, 2015. IPR-1096, Paper 40.
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`D. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
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`As Petitioner points out, however, the ʼ370 patent expired on June 27,
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`2015. Pet. 6. For expired patents, we apply the claim construction standard
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`set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Id.
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`1. “deformities”
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`The first claim term for which Petitioner proposes a construction is
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`the term “deformities,” appearing in all challenged claims. Petitioner asserts
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`that the ʼ370 patent “expressly defines” this term to mean “any change in the
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`shape or geometry of a surface and/or coating or surface treatment that
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`causes a portion of light to be emitted.” Pet. 7 (citing Ex, 1001, col. 4, ll.
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`36–40).1 Patent Owner’s preliminary response takes no position on claim
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`construction.
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`The same construction was used in IPR-1096. We have considered
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`Petitioner’s construction of “deformities” and determined that at this stage it
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`should be adopted here, also.
`
`
`1 The supporting citation in the Petition (Ex. 1001, col. 6, ll. 6–10) is
`incorrect.
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`2. “transition region”
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`This term appears in challenged claims 13 and 47. Petitioner submits
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`that the term “a transition region between the at least one input edge and the
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`patterns of light extracting deformities to allow the light from the at least one
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`light source to mix and spread” should at least include any “region
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`configured to transmit light [between the at least one input edge and the
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`patterns of light extracting deformities to allow the light from the at least one
`
`light source to mix and spread].” Id. at 8. We discuss this further in
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`connection with our consideration of claim 47, infra.
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`E. References
`
`Petitioner relies on the following references:2
`
`Kobayashi
`Pristash
`Suzuki
` Murata
`
`Apr. 18, 1995
`US 5,408,388
`Apr. 2, 1991
`US 5,005,108
`JP H03-189679 Aug. 19, 1991
`US 4,929,866
`May 29, 1990
`
`Ex. 1006
`Ex. 1007
`Ex. 10083
`Ex. 1011
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`Petitioner also states that it is relying on Admitted Prior Art (“APA”)
`
`from the ʼ370 patent specification. Pet. 9 (citing Ex. 1001, col. 2, ll. 58–65).
`
`Petitioner also relies on a Declaration from Thomas L. Credelle (“Credelle
`
`Decl.”). Ex. 1004.
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`F. Grounds Asserted
`
`
`
`Petitioner challenges claims 1, 4, 5, 9, 13, 29, and 47 of the ʼ370
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`patent under 35 U.S.C. § 103(a) on the following grounds
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`Reference(s)
`Kobayashi
`
`Claims Challenged
`1, 4, and 29
`
`
`2 The references are ordered by exhibit number with effective dates asserted
`by Petitioner.
`3 Exhibit 1008 is the English translation of the Suzuki Japanese publication
`(Ex. 1009).
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`Kobayashi and Pristash
`Suzuki
`Suzuki and Pristash
`Suzuki and Murata
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`13 and 47
`1, 4, 5, 9, 13, 29, and 47
`13 and 47
`1, 4, 5, 9, and 13
`
`
`II. ANALYSIS
`
`A. Asserted Grounds Based On Kobayashi
`
`(Claims 1, 4, and 29)
`
`Petitioner contends that these claims are obvious over Kobayashi
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`under 35 U.S.C. § 103(a). Pet. 11–25. For the reasons that follow, we are
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`not persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on this ground.
`
`
`
`1. Kobayashi Overview
`
`This patent describes a planar illuminating device used as a backlight
`
`for liquid crystal displays. Ex. 1006, col.1, ll. 6–9. The device has a
`
`rectangular light transmitting plate of a transparent material. Id. at col. 4, ll.
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`10–11. One side of the plate has prismatic cuts. Id. at col. 4, l. 27. The
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`other side has a reflecting finish, e.g., an array of spot-shaped light reflecting
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`layers. Id. at col. 4, ll. 28–29. This is illustrated by Figure 2 of Kobayashi,
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`reproduced here:
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`In Figure 2 above, light plate 2, fluorescent lamps 3, and array of spot-
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`shaped reflective layers 22 (e.g., of white paint or aluminum vapor
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`deposition) are shown. Id. at col. 4, ll. 45–47.
`
`2. Discussion
`
`
`
`Petitioner recognizes that Kobayashi was considered by the Board in
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`IPR-1096. Pet. 11–12. There, the petitioner relied on the prismatic cuts and
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`array of spot-shaped light reflecting layers in Kobayashi to satisfy the
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`“deformities” limitation recited in the claims. In denying petitioner’s
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`request to institute trial, the Board observed that,
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`The language of the claims . . . specifies “a pattern of light
`extracting deformities that are projections or depressions.”
`Petitioner does not explain how the spot-shaped reflecting
`layers, produced by white paint or aluminum vapor deposition,
`qualify as “projections or depressions.”
`
`Ex. 1027, 14. The present Petition relies on different embodiments
`
`disclosed in Kobayashi, illustrated in Figures 5 and 6 reproduced below:
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`As described in Kobayashi, Figure 5 illustrates a main part of a planar
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`illuminating device. Id. at col. 6, ll. 27–27. Kobayashi describes the entire
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`rear portion of light transmitting plate 2 as having “a satin finish 24 which
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`comprises minute depressions having suitable shapes such as a concavity or
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`a hemisphere.” Id. at col. 6, ll. 30–33. Satin finish 24 also has a “large
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`number of spot-shaped layers 25,” which are made of a transparent paint of
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`substantially the same index of refraction as light transmitting plate 2 and
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`applied to the satin finish. Id. at col. 6, ll. 30–37. Each spot-shaped layer 25
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`“fully fills” depressions of the satin finish 24. Rear surfaces 25a of spot-
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`shaped layers 25 are described as “flat.” Id. at col. 6, ll. 37–40.
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`As further described in Kobayashi, in the Figure 6 embodiment, light
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`transmitting plate 7 has a rear portion comprising two portions 7a, 7a,
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`tapering in thickness moving away from both sources of light 3, 3. Ex.
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`1008, col. 7, ll. 1–12. The front portion of light transmitting plate 7 has
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`prismatic cuts 21 or hairline finish 23. The rear portion has a reflecting
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`finish of an array of reflecting spots 22 or of a combination of satin finish 24
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`and assembly of spot-shaped layers 25. Id. at col. 7, ll. 12–17.
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`Petitioner also relies on the Figure 6 embodiment of Kobayashi. Pet.
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`12. Specifically, Petitioner relies on Kobayashi’s disclosure of “minute
`
`depressions” to meet the requirement of these claims calling for “deformities
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`that are projections or depressions on or in the sides to cause light to be
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`emitted from the panel member in a predetermined output distribution.” Id.
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`at 13–15. The Petition (at page 15) includes an annotated version of
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`Kobayashi’s Figure 6 in which the depressions in satin finish 24 and spot-
`
`shaped layers 25 are identified as meeting this element. To the same effect
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`are the claim charts at pages 20–22 of the Petition.
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`Patent Owner responds that the same prior art and substantially the
`
`same arguments were considered and rejected by the Board in IPR-1096.
`
`Prelim. Resp. 13. We agree. In IPR-1096, in denying the petitioner’s
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`motion for rehearing, we relied on the dictionary definition of a layer as
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`“‘[a] single thickness, coating, or stratum spread out or covering a surface.’
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`The American Heritage Dictionary 742 (1975).” We also cited a definition
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`of a projection as: “‘Something that thrusts outward; a protuberance.’ Id. at
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`1046.” IPR-1096, Paper 21, 4.
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`In this proceeding, we are not persuaded that the spot-shaped layers in
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`the Figure 6 embodiment of Kobayashi are projections or depressions.
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`According to Kobayashi, the rear surfaces of the spot-shaped layers are
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`“flat.” Ex. 1006, col. 6, ll. 39–40. Moreover, each spot–shaped layer “fully
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`fills” depressions of the satin finish. Id. at col. 6, ll. 37–39. Petitioner has
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`not pointed to any part of Kobayashi that describes such a spot-shaped layer
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`as either a projection or a depression. We, therefore, determine that on this
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`record, Petitioner has not persuaded us that that the spot-shaped layers are
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`projections or depressions.
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`Likewise, we are not persuaded that the “minute” depressions in the
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`satin surface meet this requirement of the claims. The claims require that
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`the projections or depressions “cause light to be emitted from the panel
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`member in a predetermined output distribution.” As described by
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`Kobayashi, the desired effect of uniform surface illumination is achieved
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`through varying “the occupation ratio between part of the satin finish having
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`no spot-shaped layer 25 and part of the satin finish having a spot-shaped
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`layer 25.” Id. at col. 6, ll. 62–68. Thus, it is the placement of the spot-
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`shaped layers, which are neither projections nor depressions, and not the
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`satin finish, with its “minute depressions,” that achieves the desired output
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`distribution.
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`Finally, we note that Kobayashi also describes the surface of the panel
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`as “satin,” indicating that it is smooth, and further describes the depressions
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`as “minute.” Petitioner has not argued that Kobayashi’s drawings are made
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`to scale. Thus we are not persuaded to base our decision on the appearance
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`of the depressions in Figures 5 and 6, including their relative size in those
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`figures. See Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir.
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`2005)(patent drawings do not define the precise proportion of the elements).
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`In summary, we agree with Patent Owner that Petitioner has not
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`demonstrated a reasonable likelihood of prevailing in proving that claims 1,
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`4, and 29 would have been obvious over Kobayashi.
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`B. Asserted Ground Based On Kobayashi and Pristash
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`(Claims 13 and 47)
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`Petitioner’s reliance on Pristash is confined to the “transition region”
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`limitation of these claims, and not the claim limitation discussed above that
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`is missing from Kobayashi. Pet. 25–33. In view of this, for the foregoing
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`reasons, we decline to institute a trial on Petitioner’s challenge to claims 13
`
`and 47 based on Kobayashi and Pristash.
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`C. Asserted Grounds Based On Suzuki
`
`(Claims 1, 4, 5, 9, 13, 29, and 47)
`
`Petitioner’s analysis of these claim in relation to Suzuki appears at
`
`pages 33–52 of the Petition. Petitioner asserts that Suzuki discloses “each
`
`and every limitation” of independent claim 1. Pet. 34. Petitioner makes a
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`similar assertion for independent claims 13, 29, and 47. Id. at 39 (claim 13),
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`41 (claim 29), and 42 (claim 47). For the reasons that follow, we are not
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`persuaded that Petitioner has demonstrated a reasonable likelihood of
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`prevailing on this ground as to claims 1, 4, 5, 9, and 13. On this record, we
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`are persuaded that Petitioner has a reasonable likelihood of prevailing on this
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`ground as to claims 29 and 47.
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`1. Suzuki Overview
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`
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`Suzuki describes a surface light source device that includes an
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`extremely thin transparent light guide layer. Suzuki’s stated objective for
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`this device is to emit light with a brightness that is equivalent to or higher
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`than that of light emitted by a structure of the related art, which can be
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`reduced in size and weight, and which has a simple structure that can be
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`easily manufactured. Ex. 1008, 5. Several embodiments are disclosed.
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`Figures 1 and 2 of Suzuki are reproduced here:
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`Ex. 1008, 7. Figure 1 shows light diffusion layer 1 arranged to extend over
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`the entire area between tubular light sources 4, 4. Figure 1 also shows that
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`transparent light guide layer 2 and reflective layer 3 are successively stacked
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`below the light diffusion layer 1. In this embodiment, the transparent light
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`guide layer 2 was produced by forming an embossed pattern 21 on both
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`sides of acrylic resin plates over the entire area thereof. Id. at 8. Other
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`embodiments show an embossed pattern on one side of the transparent light
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`guide. Id. at 16.
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`In Figure 2A, the embossed pattern 21 is shown as a pattern of
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`quadrangular-pyramid-shaped recesses formed at a pitch of 0.5 mm and
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`having oblique surfaces at an angle of 45°. Id. at 8. Alternative patterns are
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`described in the disclosure, including triangular pyramids, conical shapes,
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`and mountain and valley shapes. Id. at 13. As described, the pyramids may
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`be either projections or depressions. Id. Suzuki also describes varying the
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`surface angles and the pitch of the embossed patterns. Id. at 13–14.
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`Suzuki presents a series of “studies” based on the embossed pattern
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`shown in Figure 2A supra. Id. at 8. The results appear in Table 1. Id. at 9.
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`2. Claims 1, 4, 5, 9, and 13
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`These claims call for a a light emitting panel having light extracting
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`deformities on both front and back sides. According to claim 1, “at least
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`some of the light extracting deformities on or in one of the sides are of a
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`different type than the light extracting deformities on or in the other side of
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`the panel member.” The other claims in this group contain the same
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`limitation.
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`Petitioner asserts that Suzuki meets this limitation. Pet. 35–38.
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`Specifically, Petitioner asserts that Suzuki discloses “various types or
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`shapes” of deformities. Id. at 35. To support this assertion, Petitioner cites a
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`statement in Suzuki to the effect that “all or some” of the patterns described
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`may be used “in combination.” Id. From this, Petitioner concludes, “Suzuki
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`discloses applying one of the patterns disclosed in Figs. 2-20 to a first
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`surface of the light guide and applying a different pattern to the second
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`surface of the light guide.” Id. at 35–36.
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`Patent Owner responds that Suzuki does not disclose putting
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`deformities on both sides of the light guide where those deformities are of a
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`different type. Prelim. Resp. 18–19. Patent Owner asserts that Suzuki’s
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`Table 1 shows that where Suzuki discloses using an embossed pattern on
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`both sides of the light guide, the pattern is of the same type. Id.
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`We agree with Patent Owner that Suzuki does not disclose a light
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`panel with an embossed pattern on both sides, where the pattern on one side
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`is of a different type than on the other side. In Table 1, the samples tested
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`either had no pattern, the embossed pattern was on a single side, or the same
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`pattern (quadrangular pyramid or hairline) was on both sides. Ex. 1008, 9.
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`We are not persuaded by Petitioner’s argument that it would have
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`been obvious to alter the light panels described in Suzuki to provide
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`different embossed patterns on the front and back surfaces of the light panel.
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`Pet. 36. The Petition does not set forth a sufficient rationale for making this
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`modification. The fact that Suzuki states that the various patterns can be
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`“used in combination” (Ex. 1008, 20) does not by itself suggest using
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`different types of patterns on the front and back surfaces. In fact, Suzuki
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`even states that “it is not necessary” to form the embossed pattern on both
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`sides of the panel. Id. at 13. Nor are we persuaded by the argument that
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`Suzuki’s reference to mixing projections and depressions or recesses would
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`lead one of ordinary skill to use projections on one side and depressions on
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`the other side of the panel. Pet. 36. The Petition provides no persuasive
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`rationale for making such an alteration to the panels described in Suzuki.
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`Moreover, we do not find the Credelle declaration helpful on this
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`issue. The declaration, like the Petition, states these conclusions without
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`appropriate factual support. Credell Decl. ¶¶ 134–40. For example, Mr.
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`Credelle testifies that one pattern “may be used” on one side of the
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`transparent light guide in Suzuki, while a different pattern “may be used” on
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`the other side. Id. at ¶ 139. This testimony, however, does not explain why
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`a person of ordinary skill would do so. Under our rules, expert testimony
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`that does have a proper basis is entitled to little or no weight. 37 C.F.R. §
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`42.65(a).
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`We conclude from the foregoing that Petitioner has not demonstrated
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`a reasonable likelihood of prevailing in proving that claims 1, 4, 5, 9, and 13
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`would have been obvious over Suzuki.
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`3. Claims 29 and 47
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`These claims do not require the patterns formed on the two sides of
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`the light panel to be of a different type. Instead, the claims require “at least
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`some of the light extracting deformities on or in one of the sides vary in a
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`different way or manner than the light extracting deformities on or in the
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`other side of the panel member.” (Emphasis added). Suzuki discloses that
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`the embossed patterns having different pitches may be formed on the front
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`and back surfaces. Ex. 1008, 14. Petitioner asserts that this variation in
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`pitch meets the above limitation. Pet. 41–42. Patent Owner responds that a
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`difference in pitch does not allow for varying in a different manner between
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`the front and back sides of the light panel. Prelim. Resp. 19.
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`We agree with Petitioner that this limitation is met by Suzuki. The
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`ʼ370 patent discusses varying the “density” of deformities to control the light
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`output. Ex. 1001, co. 4, ll. 62–65. Elsewhere, the patent describes varying
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`the “percentages and/or size” of deformities in a given area to control the
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`light output. Id. at col. 5, ll. 5–7. We understand these references to
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`“density” and “percentages” to express a difference in pitch. Therefore, we
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`are not persuaded by Patent Owner’s argument that a difference in pitch is
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`not sufficient to meet this limitation.
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`Claim 47 contains the additional requirement that the panel member
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`have a “transition region between the at least on input edge and the patterns
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`of light extracting deformities to allow the light from the at least one light
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`source to mix and spread.” To meet this limitation, Petitioner relies on
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`Suzuki’s statement that the region in which the pattern is formed is “not
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`limited” to the entire area of the light emitting surface. Pet. 39–40.
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`Alternatively, Petitioner relies on Pristash for this feature. Pet. 52–55.
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`Patent Owner responds that a one-sentence disclosure in Suzuki is
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`insufficient to support the conclusion that this limitation is met. Prelim.
`
`Resp. 20. We agree that the cited disculosure in Suzuki is insufficient to
`
`support this conclusion.
`
`
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`Patent Owner also asserts that Pristash does not disclose a transition
`
`region that meets the requirements of the claim. Id. at 15–17. Patent Owner
`
`contends that the transition region disclosed in Pristash is not positioned as
`
`called for in the claims. Id. This argument by Patent Owner was addressed
`
`in our institution decision and final decision in IPR2014-01096. Ex, 1027,
`
`9; IPR-1096, Paper 40, 17–21. In both decisions we concluded that
`
`Pristash’s transition region met this limitation of the claims. At this stage,
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`Patent Owner has not presented information that persuades us that this
`
`conclusion was incorrect. We, therefore, adopt our reasoning from those
`
`decisions.
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`Patent 7,537,370
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`Finally, we are persuaded that Petitioner has presented a sufficient
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`rationale for combining Suzuki and Pristash. Pet. 53–54. Suzuki discloses
`
`that a “point light source” may be used. Ex. 1008, 2. Pristash discloses a
`
`transition device for converting the light from point sources to the shape of
`
`edge of a light guide. Ex. 1007, col. 3, ll. 2–4. We are persuaded by
`
`Petitioner that following Suzuki’s suggestion to use a point light source
`
`requires reshaping the light and would, therefore, have led a person of
`
`ordinary skill to use Pristash’s transition device to spread the light from the
`
`point source to the edges of the light guide. Pet. 53–54; Credelle Decl.
`
`¶ 170.
`
`
`
`We conclude from the foregoing that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing in proving that claim 29 would have been
`
`obvious over Suzuki and claim 47 would have been obvious over Suzuki and
`
`Pristash.
`
`D. Asserted Grounds Based On Suzuki And Murata
`
`(Claims 1, 4, 5, and 13)
`
`
`
`Petitioner’s final ground asserts that these claims are obvious over
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`Suzuki and Murata. Pet. 55–57. Petitioner relies on Murata, which is
`
`directed to an automobile tail light, for teaching a light reflector having
`
`recesses on its rear face and projections on its front face. Pet. 56; Ex. 1011,
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`Fig. 7. Patent Owner responds that Petitioner has not explained why one of
`
`ordinary skill would look to a tail light patent to modify Suzuki’s back light.
`
`Prelim. Resp. 23. We agree with Patent Owner that Petitioner has not
`
`presented a sufficient rationale for combining these teachings. Pet. 56–58.
`
`The fact that both relate to providing uniform light illumination is
`
`insufficient. Credelle Decl. ¶ 178. As Patent Owner points out, a different
`
`
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`17
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`Patent 7,537,370
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`problem —reducing the size of the lamp— is addressed by Murata. Prelim.
`
`Resp. 23. See Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed.
`
`Cir. 2013) (prior art references that address different problems may not
`
`support an inference that the skilled artisan would consult both of them
`
`simultaneously).
`
`We conclude from the foregoing that Petitioner has not demonstrated
`
`a reasonable likelihood of prevailing in proving that claims 1, 4, 5 and 13
`
`would have been obvious over Suzuki and Murata.
`
`E. Statutory Time Bar - 35 U.S.C. § 315(b)
`
`Patent Owner contends that the Petition should be denied under the
`
`one year time-bar of 35 U.S.C. § 315(b). Prelim Resp. 8–12. Patent Owner
`
`asserts that the Petition fails to name a real party-in-interest, LG, who was
`
`served with a complaint charging infringement of the ʼ370 patent more than
`
`a year before this Petition was filed and therefore is barred from filing a
`
`petition under § 315(b). Id. at 10. According to Patent Owner, this Petition
`
`was filed by Petitioner “at the behest” of LG,” thus making LG a real party-
`
`in-interest. Id. at 11.
`
`We are not persuaded by this argument. As the Office Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2014), makes clear, an
`
`important factor in determining real party in interest is control or the ability
`
`to control the proceeding. Zoll Lifecor Corp. v. Philips Elect. North
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`America Corp, IPR2013-00609 (PTAB Mar. 20, 2014), Paper 15 slip op. at
`
`10. In Zoll, the Board relied on the fact that the party determined to be a real
`
`party-in-interest (Zoll Medical) controlled the petitioner (Zoll Lifecor).
`
`
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`Patent Owner has provided insufficient evidence of control of this
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`proceeding by LG. Patent Owner, therefore, fails to provide convincing
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`evidence at this stage that LG is a real party-in-interest. Patent Owner’s
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`argument is based on the timing of the petition filing in relation to its
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`pending district court action against LG, and the fact that Petitioner is a
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`supplier to LG of certain components used in products accused of
`
`infringement. Prelim. Resp. 10–12. This is not sufficient proof of control.
`
`Nor does the mere fact that Petitioner is a supplier to LG establish privity.
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`Id. at 12.
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`We, therefore, determine that the Petition should not be denied on this
`
`ground.
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`
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`III. SUMMARY
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`The information presented shows there is a reasonable likelihood that
`
`Petitioner will prevail on the challenge to patentability of claims 29 and 47
`
`the ʼ370 patent based on obviousness over Suzuki and Pristash.
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`The information presented does not show there is a reasonable
`
`likelihood that Petitioner will prevail on any of the other grounds in the
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`Petition.
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`At this stage of the proceeding, the Board has not made a final
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`determination as to the patentability of any challenged claim or the
`
`construction of any claim term.
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`
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`It is, therefore,
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted on the following ground:
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`19
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`Case IPR2015-01867
`Patent 7,537,370
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`Obviousness of claims 29 and 47 of the ʼ370 patent over Suzuki and
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`Pristash;
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`FURTHER ORDERED that no other proposed grounds of
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`unpatentability are authorized; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
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`commencing on the entry date of this decision.
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`Case IPR2015-01867
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`PETITIONER:
`
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`
`21
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