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 B1
`October 3, 2016
`_____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_____________________
`
`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 B1
`October 3, 2016
`_____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ............................................................................................ 1
`I.
`CLAIM 29 IS RENDERED OBVIOUS BY SUZUKI .................................... 1
`II.
`III. CLAIM 47 IS RENDERED OBVIOUS BY SUZUKI IN VIEW OF
`PRISTASH ....................................................................................................... 8
`A.
`Suzuki Discloses Limitation [47.e] ........................................................ 9
`B.
`Pristash Discloses The Claimed Transition Region ............................... 9
`C.
`It Would Be Obvious To Combine Suzuki With Pristash ................... 12
`IV. MR. WERNER’S TESTIMONY IS ENTITLED TO LITTLE OR NO
`WEIGHT UNDER 37 CFR § 42.65(A) ......................................................... 15
`PETITIONER IS NOT TIME BARRED UNDER 35 U.S.C. § 315 (B) ....... 17
`V.
`VI. CONCLUSION ............................................................................................... 19
`
`
`
`
`-i-
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`
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Cases
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`GEA Process Eng’g, Inc. v. Steuben Foods, Inc.,
`IPR2014-00041 ......................................................................................................................... 18
`
`Statutes
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`35 U.S.C. § 101 ............................................................................................................................... 19
`
`35 U.S.C. § 315(b) ................................................................................................................ 1, 17, 19
`
`Other Authorities
`
`37 CFR § 42.65(A) ................................................................................................................... 15, 16
`
`U.S. Patent No. 5,005,108 ................................................................................................................ 1
`
`U.S. Patent No. 7,537,370 B2 .................................................................................................. passim
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`-ii-
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`I.
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`INTRODUCTION
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`
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`In its March 17, 2016 Institution Decision on U.S. Patent No. 7,537,370 B2
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`(the “’370 Patent”), the Board correctly found that: (1) Petitioner has demonstrated
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`a reasonable likelihood of prevailing in proving that claim 29 would have been
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`obvious over JP H03-189679 to Suzuki (“Suzuki”); (2) Petitioner has demonstrated
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`a reasonable likelihood of prevailing in proving that claim 47 would have been
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`obvious over Suzuki and U.S. Patent No. 5,005,108 to Pristash (“Pristash”); and
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`(3) the Petition is not time-barred under 35 U.S.C. § 315(b). See Institution
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`Decision (“Dec.”), Paper 15, at 15-17 and 18-19. In response to the Institution
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`Decision, Patent Owner filed a response on July 1, 2016 (“POR”). The POR
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`includes alleged distinctions between prior art and challenged claims that have
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`already been addressed by the Board while making the above-referenced findings.
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`Nothing in the POR should disturb these findings. Thus, for the reasons set forth
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`in the Petition and further explained below, claims 29 and 47 of the ’370 Patent are
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`unpatentable.
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`II. CLAIM 29 IS RENDERED OBVIOUS BY SUZUKI
`Patent Owner argues that claim 29 is not rendered obvious by Suzuki
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`because Suzuki does not disclose element [29.e] requiring “at least some of the
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`light extracting deformities on or in one of the sides vary in a different way or
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`manner than the light extracting deformities on or in the other side of the panel
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`-1-
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`member.” Mr. Werner agreed this is the sole limitation in dispute. See Ex. 1032,
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`Werner Dep. Tr. at 242:22-244:5.
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`Patent Owner’s primary argument is that the disclosure of “[e]mbossed
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`patterns having different pitches . . . on the front and back surfaces of the
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`transparent light guide” does not correspond to varying deformities in different
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`ways on one side of the panel member. POR at 4-7. This argument is inapposite
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`to the explicit disclosure of the ’370 Patent. As explained in the Institution
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`Decision and as admitted by Patent Owner, the ’370 Patent discloses that
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`deformities may be varied by, for example, varying the density of deformities on
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`the light guide. Dec. at 15-16; see also POR at 4-5. Patent Owner states that
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`changing the pitch of the deformities does not correlate to a change in density of
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`deformities. See POR at 5-6. Such a distinction is technically incorrect. As
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`explained by Mr. Credelle during his deposition, pitch “could be related to density
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`. . . [for example i]f you have five dots per inch versus two dot per inch, you would
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`have different densities, but you would have a pitch of five and a pitch of two.
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`They would have different densities. So that would be the relationship.” Ex. 2007
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`(Credelle Dep.) at 173:2-10. Thus, Mr. Credelle explained that as the density of
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`dots varied per square inch, the pitch also varied.
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`For example, Patent Owner does not dispute that Suzuki discloses that
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`“[e]mbossed patterns having different pitches may be formed on the front and back
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`-2-
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`
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`surfaces of the transparent light guide layer 2.” Ex. 1008 at 14; see also POR at 7;
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`Ex. 1032, 244:17-22. Patent Owner also does not dispute that the meaning of pitch
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`in the field of LCD backlighting is “the distance from the center to center of a
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`feature on the backlight.” POR at 5; see also Ex. 2007 at 169:15-23. Further,
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`Patent Owner agrees that Table 1 of Suzuki discloses a light guide that has
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`“embossed patterns on both sides.” POR at 6. Thus, if the same embossed
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`patterns were included on both sides of the light guide—as indisputably disclosed
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`by Suzuki—and the embossed pattern on the front surface had a different pitch
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`than the embossed pattern on the back surface—as also indisputably disclosed by
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`Suzuki—it would be readily understood that on one surface the distance from the
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`center to center of two deformities would be greater than the distance from the
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`center to center of two deformities on the other surface. Ex. 1004 at ¶¶ 151-153.
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`In other words, on one surface of the light guide the deformities would be more
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`densely packed compared to the deformities on the other side. Patent Owner’s
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`expert conceded as much during his deposition:
`
`Q. If the pitch [in Suzuki] was varied from two millimeters to
`one millimeter, wouldn't that mean that the distance when [sic,
`between] the optical elements would be smaller?
`A. That is correct. Well, if, indeed, the optical element is filling
`the entire matrix element, as is the case in 2-A [of Suzuki], then
`the a[nswer] is a clear yes.
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`-3-
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`Q. Wouldn't that then mean that the optical elements are now
`more densely packed?
`MR. KIMBLE: Object to the form.
`THE WITNESS: Again in the cases of 2-A, it would definitely
`mean that.
`
`Ex. 1032, 248:20-249:7 (emphasis added).
`
`Q. -- would it be a fair characterization that disclosure explains
`that on one side of Suzuki's panel guide, there might be an
`embossed pattern with pitch one centimeter and on the other
`side of the light guide, there would be a pitch of two
`centimeters?
`A. Right. Taking the numbers just as -- just as examples. Yes.
`That is what Suzuki is, is describing in that section.
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`Ex. 1032, 253:16-24 (emphasis added).
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`
`
`
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`Thus, by disclosing that embossed patterns having different pitches may be
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`formed on the front and back surfaces of light guide layer 2, Suzuki discloses that
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`“at least 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 other side
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`of the panel member.” See Ex. 1032, 255:8-13 (“Suzuki is talking at this point,
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`about a different pitch on the front and the back that was fixed and previously, in
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`Figure 5, he shows an example in which the pitch on one side -- I'm adding that for
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`clarification – is gradually changed.”).
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`-4-
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`The POR does not dispute that Suzuki also discloses varying deformities in a
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`different way when it discloses that the “angle of oblique surfaces increases as the
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`distance from the light source decreases.” Ex. 1008 at 19-20; see also Ex. 1004 ¶
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`152. The angle of the oblique surfaces on the first surface can remain constant at
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`45º while the angle of the oblique surfaces on the second surface can gradually
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`change in accordance with the teachings of Suzuki in Figure 19 because Suzuki
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`discloses that “[a]ll or some of these examples may also be employed in
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`combination.” Ex. 1008 at 20; see also Ex. 1004 ¶¶ 152. Thus, limitation [29.e] is
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`also disclosed for this additional reason.
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`Patent Owner also argues that Suzuki’s disclosure that “all or some of these
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`examples may also be employed in combination” only applies to examples
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`described by Table 2 (which only discloses light guides with patterns on one side.)
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`POR at 10. There, however, is no disclosure in Suzuki—nor does Patent Owner
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`identify one—that would cause this statement to narrowly apply to only one
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`portion of Suzuki’s disclosure. Suzuki provides multiple examples of embossed
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`patterns with varying pitches, shapes, angles, etc. Ex. 1008 at 9-20. At the end of
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`the discussion of all of these examples, and before the next section where
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`“Advantages of the Invention” are discussed, Suzuki discloses that all or some of
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`these examples may be employed in combination. Id. at 20. If Suzuki intended
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`only certain examples to be used in combination, Suzuki would have referred to
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`-5-
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`these examples by numbers as it refers to them elsewhere in the disclosure when
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`Suzuki meant to discuss only specific examples. Id. at 9 and 17 (referring to test
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`cases as “Example 1, 2, 3, 4, 5, 6”). Even Mr. Werner testified that “it’s possible”
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`that this disclosure of Suzuki is “talking about examples of Tables 1 and 2.” Ex.
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`1032 at 263:2-5.
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`Despite testifying that it is possible that this disclosure of Suzuki can apply
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`to combining examples from Tables 1 and 2, Mr. Werner continued to change his
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`position on what this disclosure means. Mr. Werner contradicted Patent Owner by
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`repeatedly asserting that this disclosure of Suzuki is “ambiguous” because it is not
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`clear whether it referring to examples in Tables 1 and Table 2 or the examples
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`disclosed in Figures 18, 19, and 20. See Ex. 1032, 261:1-11; see also id. at 262:1-
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`10 (“So when he talks about examples, is he talking about the examples of -- of 20,
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`19, 18, or is he talking about the examples of Table 1 and Table 2? I don't know.
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`It's ambiguous”); 262:21-263:1 (“I would say that given the context of the
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`statement, it's ambiguous.”).
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`Then, Mr. Werner testified that his opinion regarding this disclosure of
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`Suzuki “evolved” during the deposition and it is his opinion that this disclosure of
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`Suzuki is limited to examples shown in Figures 14-20, not to any examples shown
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`in any of Tables 1 and 2. Ex. 1032 at 268:10-14 (“Q. So it is your opinion that that
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`sentence, all or some of these examples are not referring to the tables but they're
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`-6-
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`referring to figures 14, 15, 16, 17, 18, 19, 20? A. Yes. As I have testified.”); see
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`also id. at 265:1-3 (“Q. So sitting here today, your opinion evolved? A. Yes. I
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`believe I just said that.”).
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`Thus, during this proceeding Patent Owner’s expert has taken the following
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`contradictory positions regarding the meaning of the clear disclosure in Suzuki that
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`“[a]ll or some of these examples may also be employed in combination:”
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` This disclosure only applies to the examples in Table 2. Ex. 2007 at
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`¶61.
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` This disclosure is ambiguous. Ex. 1032, 261:1-262:10.
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` It is possible that this disclosure is “talking about examples of Tables
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`1 and 2.” Id. at 263:2-5.
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` This disclosure only applies to examples of Suzuki from figures 14,
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`15, 16, 17, 18, 19, 20. Id. at 265:1-3.
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`
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`In view of Mr. Werner’s “evolving” and inconsistent positions, Patent
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`Owner’s argument should be rejected and weight should be given to Petitioner’s
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`understanding that this statement provides an indication that Suzuki encourages the
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`mixing and matching of all of the disclosed examples.
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`Patent Owner also asserts that examples in Table 2 cannot be combined with
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`examples from Table 1 because luminance results in Table 2 are much better than
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`luminance results in Table 1. POR at 10. This argument, however, is flawed. As
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`-7-
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`discussed above, Suzuki explicitly discloses multiples examples of embossed
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`patterns with varying shapes, pitches, angles, directions etc. In addition, Suzuki
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`provides luminance values for tests conducted with certain examples of light guide.
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`Suzuki, however, does not state that these were the only combinations that can be
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`employed and/or best luminance values were achieved out of all the combinations
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`that are available. To the contrary, Suzuki discloses that all of these examples may
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`be employed in combination and one of ordinary skill in the art would understand
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`that using a different combination by mixing and matching examples from Table 1
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`and Table 2 may provide a light guide that has an even better luminance value than
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`the one currently disclosed in the Tables. Id. at 20.
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`In conclusion, in view of the disclosure of: (1) multiple types of the
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`embossed patterns with varying characteristics; and (2) explicit suggestion to
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`employ such examples in different combinations, Suzuki discloses limitation
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`[29.e]. Accordingly, Patent Owner’s rehashed arguments from its preliminary
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`response should be rejected and claim 29 of the ’370 Patent should be found
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`unpatentable.
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`III. CLAIM 47 IS RENDERED OBVIOUS BY SUZUKI IN VIEW OF
`PRISTASH
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`Patent Owner argues that claim 47 is not rendered obvious by Suzuki in
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`view of Pristash because: (1) Suzuki does not disclose limitation [47.e] requiring
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`“at least some of the light extracting deformities on or in one of the sides vary in a
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`-8-
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`different way or manner than the light extracting deformities on or in the other side
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`of the panel member”; (2) Pristash does not disclose the claimed “transition
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`region”; and (3) it would not be obvious to combine Suzuki with Pristash. See
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`Paper No. 20 at 11-17.
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`As discussed below, however, each of these arguments have already been
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`rejected by the Board, and Patent Owner’s response has not added anything new
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`that would suggest a different result. See also Institution Decision at 16-17.
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`Accordingly, claim 47 should be found unpatentable as obvious by Suzuki in view
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`of Pristash.
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`Suzuki Discloses Limitation [47.e]
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`A.
`Limitation [47.e] is identical to limitation [29.e]. Accordingly, Suzuki
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`discloses limitation [47.e] for the same reasons as discussed above with respect to
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`limitation [29.e]. See supra §II.
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`Pristash Discloses The Claimed Transition Region
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`B.
`As this Board has already found, Pristash discloses the transition region
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`claimed in the ’370 Patent. Patent Owner once again argues that Pristash does not
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`disclose the claimed “transition region” arguing that the transition device of
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`Pristash is not positioned between at least one input edge and the patterns of light
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`extracting deformities. See Paper No. 20 at 12-13. This argument is incorrect and
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`has repeatedly been rejected by the Board.
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`-9-
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`As explained by Mr. Credelle and as described in the Petition, Pristash
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`discloses transition device 5 that is located between an input end 10 and
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`deformities 16. See Ex. 1007, at Fig. 1; see also Ex. 1004 at ¶¶ 116-119.
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`
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`Moreover, the Board previously found that, “Pristash discloses both integral
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`and separate transition devices” and that [i]f the transition device in Pristash is
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`integral with the panel, Pristash discloses a device that is arranged between input
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`end 10 and the pattern of light disruptions 16.” See IPR2014-01096, Paper No. 40,
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`20. The Final Written Decision in IPR2014-01096 also explained that if “the
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`transition device is not integral with the panel, then we agree with Petitioner that
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`the transition region meeting this claim element is the portion between the input
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`side 4 and the elements 16.” Id. Thus, Pristash clearly discloses the claimed
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`“transition region” and the Board should once again reject Patent Owner’s
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`arguments to the contrary.
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`-10-
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`Patent Owner also alleges that Petitioner “offers an incorrect construction of
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`the term ‘transition region’ . . . in order to avoid the positional requirement of the
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`transition region.” POR at 12. This is incorrect. The entire claim phrase is “a
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`transition region between the at least one input edge and the patterns of light
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`extracting deformities to allow the light from the at least one light source to mix
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`and spread.” As proposed in the Petition, Petitioner’s proposed construction only
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`construes “transition region” and provides that construction in the context of the
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`entire claim phrase, which includes the positional requirement:
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`Accordingly, for purposes of this proceeding, Petitioner submits that
`the term “a transition region between the at least one input edge and
`the patterns of light extracting deformities to allow the light from the
`at least one light source to mix and spread” should at least include any
`“region configured to transmit light [between the at least one input
`edge and the patterns of light extracting deformities to allow the light
`from the at least one light source to mix and spread].”
`
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`Pet. at 8. Thus, there is no support for Patent Owner’s argument.
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`Moreover, Patent Owner’s argument is a red herring because as determined
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`by the Board, Pristash discloses a transition device where the light will mix in
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`spread that is either: (1) placed between an input end 10 and deformities 16; or (2)
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`placed between input edge 4 and deformities 16. See IPR2014-01096, Paper No.
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`40, 18-21. Thus, Pristash discloses limitation [47.f].
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`-11-
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`It Would Be Obvious To Combine Suzuki With Pristash
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`C.
`Patent Owner primarily argues that it would not be obvious to combine
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`Suzuki with Pristash because “Suzuki does not disclose . . . point light sources as a
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`design choice for the surface light sources devices disclosed and claimed by
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`Suzuki.” POR at 14; see also Ex. 2006 at ¶72 (emphasis added). This argument is
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`directly contrary to the disclosure of Suzuki. Suzuki explicitly discloses that “[t]he
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`present invention relates to surface light source devices used for illumination or
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`the like, and more particularly, to illumination devices used as surface light sources
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`for uniformly illuminating a relatively large area by using light from a point light
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`source or a linear light source.” Ex. 1008 at 2 (emphasis added).
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` Patent Owner suggests the Board should ignore this disclosure of Suzuki
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`because “Suzuki refers to a point light source only once.” POR at 14. Instead,
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`Patent Owner attempts to limit Suzuki’s light source to a cold-cathode tube. POR
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`at 15 and 17; Ex. 2006 at ¶¶73, 78. By this logic, however, Suzuki’s light source
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`should also not be a cold-cathode tube because “cold-cathode tube” is also only
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`disclosed once in Suzuki. Ex. 1008 at 10. In any event, Suzuki’s explicit reference
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`to a point light source cannot simply be ignored, and Mr. Werner’s declaration
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`(and Patent Owner’s argument) in this regard should not be given any weight.
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`-12-
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`When pointed to the disclosure of a point light source in Suzuki, Mr. Werner
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`testified that he “misspoke” and Suzuki does, in fact, disclose a point light source.
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`See Ex. 1032, 282:22-283:8 (copied below (emphasis added)):
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`Q. Does Suzuki disclose a point light source?
`A: He -- he does disclose the possibility of using a point light source
`but does not discuss it in his embodiments.
`Q. Why do you state, then, Suzuki does not disclose using a point
`light source as a design choice?
`A. I misspoke.
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`Thus, all of Patent Owner’s arguments regarding the combination of Suzuki
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`and Pristash should be rejected because they are based on the false premise of
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`Suzuki using a cold-cathode tube light source instead of a point light source like
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`that used by Pristash.1
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`Further, Mr. Credelle also explained that it would be obvious to one of
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`ordinary skill in the art to use the transition region of Pristash with the light guide
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`of Suzuki because “[b]oth Pristash and Suzuki relate to the same field (back
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`lighting panel assemblies) and both disclose the same objective (“more efficient
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`utilization of light”) . . . [and] A person of ordinary skill in the art would have
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`1 Pristash is also not limited to point light sources and discloses that any
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`suitable type of light source may be used. Ex. 1007, at 3:9-14.
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`-13-
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`recognized that the transition regions disclosed in Figs. 1, 18, and 19 of Pristash
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`could be used to spread the light from the point light sources [of Suzuki] to the
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`edges of the light guide.” See Ex 1004 at ¶¶169-170. Instead of countering this
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`testimony of Mr. Credelle, Patent Owner provided arguments that require the
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`disclosure of Suzuki to be ignored; those arguments should be rejected.
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`Patent Owner and Mr. Werner further argue that it would not be obvious to
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`combine Pristash and Suzuki because Suzuki discloses a light guide that is 4mm
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`thick while Pristash’s light guide is 0.5mm thick, and Pristash requires spreading
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`light along a thinner panel. Paper 20 at 17; Ex. 2006 ¶ 77. This argument also
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`relies on a piecemeal analysis of Suzuki. Suzuki discloses that “an object of the
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`present invention is to provide an inexpensive surface light source device which
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`includes an extremely thin transparent light guide layer but emits light with a
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`brightness that is equivalent to or higher than that of light emitted by a structure of
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`the related art.” Ex. 1008 at 5; see also id. at 7 (“[a]s a result, a high brightness
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`surface light source including a relatively thin light guide layer can be
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`provided”); id. at 12 (“higher brightness can be achieved by a thinner light guide
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`layer compared to those of the related art.”). Mr. Werner also admitted that one of
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`the objectives of Suzuki is to provide a thin light guide. Ex. 1032, 288:6-9.
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`Indeed, the ’370 Patent contemplates panel members of similar “thinness” as the
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`Suzuki panel member: “For example, the panel members of the present invention
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`-14-
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`
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`may be made very thin, i.e., 0.125 inch [3.18mm] thick or less.” Ex. 1001, 8:23-25.
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`Thus, the capability of Pristash to use a thinner light guide by using transition
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`device 5 to spread light would provide additional motivation to one of ordinary
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`skill in the art to combine the teachings of Pristash and Suzuki because it would
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`enable one to use a thinner light guide in Suzuki, which is one of the stated
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`objectives of Suzuki. Reluctantly, even Mr. Werner admitted that a combination
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`of Suzuki and Pristash is “possible.” See Ex. 1032, 283:15-22 (emphasis added)
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`(“Q. Okay. So can Suzuki be used with the point light source and the transition
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`device of Pristash to -- to spread the light uniformly using the fibers? A. Yes. It
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`would be -- it would be possible to do that conceptually, although it would -- it
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`would not occur to anyone with skill in the art.”).
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`Thus, as explained above, Patent Owner’s arguments are contrary to prior
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`findings by the Board and the disclosures Suzuki and Pristash, and are based on
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`expert testimony that has now been retracted. Accordingly, claim 47 is
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`unpatentable for being obvious over Suzuki in view of Pristash.
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`IV. MR. WERNER’S TESTIMONY IS ENTITLED TO LITTLE OR NO
`WEIGHT UNDER 37 CFR § 42.65(A)
`
`37 CFR § 42.65(a) states that “[e]xpert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight.” As discussed above, Mr. Werner’s opinions contradict facts. See supra
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`§II (change in pitch does not effect density of deformities and disclosure of
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`-15-
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`embossed patterns having different pitches on the front and back surfaces does not
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`correspond to varying deformities in different ways on sides of the panel member);
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`see also supra § III (disclosure of using light from a point light source does not
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`mean that Suzuki discloses using a point light source).
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`Further, Mr. Werner is providing testimony about light guides with which he
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`has no familiarity. For example, Suzuki’s filing date indicates that Suzuki’s
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`disclosure relates to a light guide from approximately 1989. Ex. 1008 at 1.
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`Similarly, Pristash’s disclosure relates to a light guide from approximately 1989.
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`Ex. 1007. Mr. Werner, however, has not been involved in the design or
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`engineering of any liquid crystal displays of backlighting units since 1971. See Ex.
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`1026, 9:1-11:23 (testifying that since 1971 he has not done any hands-on design of
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`liquid crystal displays); see also IPR2014-01096, Paper No. 40, 20. Since 1971
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`Mr. Werner has merely been an editor of various magazines and has had no hands-
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`on experience with any display devices while the technology evolved from 1971
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`onwards. See id. and Ex. 2007 at Appendix A. Mr. Werner does not appear to
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`have any patents in his name. Id. Thus, Mr. Werner’s characterizations of Suzuki
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`and Pristash are based on statements that are not supported by any personal
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`experience with similar light guides and/or are based on how light guides worked
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`in or around 1971. Such testimony should be given little or no weight under 37
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`CFR § 42.65(a).
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`-16-
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`In contrast, Mr. Credelle worked with light guides and LCD devices from
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`1970 through 2015 in various capacities including for RCA, GE, Apple, Allied
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`Signal, and Motorola. See Ex. 1004 at ¶¶ 8-16. Further, Mr. Credelle is a named
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`inventor on over 70 patents related to flat panel display and LCD technology.
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`Thus, where applicable, the PTAB should give weight to the testimony of
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`Mr. Credelle in view of his direct experience with light guides and LCDs similar to
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`the ones disclosed in the prior art.
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`V.
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`PETITIONER IS NOT TIME BARRED UNDER 35 U.S.C. § 315 (B)
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`In the Institution Decision the Board correctly found that Petitioner was not
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`barred from filing this petition under 35 U.S.C. § 315(b). Dec. at 18-19. The
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`PTAB explained that “an important factor in determining real party in interest is
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`control or the ability to control the proceeding.” Id. at 18. Even with the benefit of
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`additional time and additional discovery in the district court litigation, Patent
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`Owner has not identified any evidence that establishes that any real party-in-
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`interest is controlling this proceeding other than Petitioner.
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`The only additional arguments that Patent Owner presents are red herrings.
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`Specifically, Patent Owner states that LG sought a stay of the district court
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`litigation in view of institution of IPRs and while arguing the motion
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`“inadvertently revealed that LG is actually in control of the proceeding.” See POR
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`18. First, the fact that LG sought stay of the district court litigation has no bearing
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`-17-
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`on whether LG has control on this proceeding because in order to streamline
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`litigation and preserve judicial resources, the Federal Circuit and Congress have
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`encouraged parties to seek stays of district court litigation when IPRs are pending
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`on the same patents. Second, LG’s counsel did not inadvertently reveal that LG is
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`in control of this proceeding but instead referred to himself and K.J. Pretech when
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`he used the word “we” while stating that “[we]’ll have one patent that completely –
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`and I’m presuming that we win the IPRs – that KJ Pretech wins the IPRs.” See
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`POR at 18. Counsel for Petitioner cleared as much by expanding on the “we” a
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`few words later and explicitly naming Petitioner. That LG and Petitioner here are
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`utilizing the same counsel has no bearing on the issue of control or privity. See,
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`e.g., GEA Process Eng’g, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper No.
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`23, at 6-7 (PTAB Apr. 22, 2014).
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`Similarly, Petitioner’s opposition to Patent Owner’s request for extension of
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`time to file a POR also does not provide any evidence of LG controlling this
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`proceeding. Patent Owner’s attempt to delay resolution of this proceeding was a
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`litigation gambit in an effort to obtain a jury verdict on related patents prior to the
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`resolution of these matters. Petitioner was well within its rights to oppose Patent
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`Owner’s request for an extension of time.
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`Like Patent Owner did with the disclosures of prior art, Patent Owner is
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`grasping at straws here to somehow salvage a patent that is invalid. None of the
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`-18-
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`purported “additional information” provides convincing evidence that LG is a real
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`party-in-interest. It is simply Patent Owner’s conjecture.
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`Accordingly, just like the Institution Decision, the Board should reject
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`Patent Owner’s arguments because Petitioner is not time-barred under 35 U.S.C. §
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`315(b).
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`VI. CONCLUSION
`In view of the foregoing, the Board should cancel claims 29 and 47 for being
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`unpatentable under 35 U.S.C. § 103(a) and reject Patent Owner’s assertion that the
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`petition is time-barred under 35 U.S.C. § 315(b).
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`Dated: October 3, 2016
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`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
`
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`Registration No. 67,394
`Saqib J. Siddiqui
`Registration No. 68,626
`
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`-19-
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`
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`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
`ssiddiqui@mayerbrown.com
`
`Counsel for K.J. Pretech Co., Ltd.
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`-20-
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned “Petitioner’s
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`Reply to Patent Owner’s Response” was served on October 3, 2016 upon the
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`attorneys of record by filing this document through the PTAB E2E System as well
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`as e-mailing a copy to: JKimble-IPR@bcpc-law.com; jbragalone@bcpc-law.com;
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`nkliewer@bcpc-law.com; tsaad@bcpc-law.com; and bkennedy@bcpc-law.com.
`
`/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 K.J. Pretech Co., Ltd.
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`
`
`Date: October 3, 2016 By:
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`-21-
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`CERTIFICATION PURSUANT TO 37 C.F.R. § 42.11
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`Pursuant 37 CFR 42.11, the undersigned certifies that this Reply is not being
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`presented for an improper purpose and that all legal contentions, allegations, and
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`denials are warranted and have evidentiary support.
`
`Date: October 3, 2016 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 K.J. Pretech Co., Ltd.
`
`
`
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`-22-
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`CERTIFICATION PURSUANT TO 37 C.F.R. § 42.24(d)
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`Pursuant 37 CFR 42.24(d), the undersigned certifies that this Petition and
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`complies with the type-volume limitation of 37 CFR §42.24(a). The word count
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`application of the word processing program used to prepare this Petition indicates
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`that the Petition contains 4386 words, excluding the parts of the brief exempted by
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`37 C.F.R. §42.24(a).
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`Date: October 3, 2016 By:
`
`
`
`
`/Robert G Pluta Reg
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