Paper No. 24
`Entered: October 4, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00914
`Patent No. 7,537,370 B2
`____________
`
`
`
`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
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`Entered: October 4, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00914
`Patent No. 7,537,370 B2
`____________
`
`
`
`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
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`I. INTRODUCTION
`
`
`VIZIO, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§
`311–319 to institute an inter partes review of claims 29 and 47 of U.S.
`Patent No. 7,537,370 (“the ’370 patent”). Paper 1 (“Pet.”). Concurrently,
`Petitioner filed a Motion for Joinder. Paper 3 (“Joinder Motion”). The
`Joinder Motion seeks to join this proceeding with K.J. Pretech Co., Ltd. v.
`Innovative Display Technologies LLC, IPR2015- 01867 (“the ʼ1867 IPR”),
`which concerns the ʼ370 patent at issue here. Joinder Motion 1. Innovative
`Display Technologies LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). We instituted trial in the ’1867 IPR on March
`17, 2016. ’1867 IPR, Paper 15 (“’1867 Institution Decision”). For the
`reasons described below, we institute an inter partes review of all
`challenged claims and grant Petitioner’s Motion for Joinder.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`A. References
`Petitioner relies on the same two references for which trial was
`instituted in the ʼ1867 IPR:
`Apr. 2, 1991
`Pristash
`US 5,005,108
`Suzuki
`JP H03-189679 Aug. 19, 1991
`
`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 the same Declaration of Thomas L. Credelle as was
`filed in the ʼ1867 IPR. Ex. 1004.
`
`Ex. 1007
`Ex. 10081
`
`
`
`
`
`
`2
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`
`B. Grounds Asserted
`The Petition in this proceeding asserts the same grounds as those on
`
`which we instituted review in the ʼ1867 IPR. Those are:
`References
`Basis
`Claims Challenged
` Suzuki
` § 103(a)
` 29
` Suzuki and Pristash
` § 103(a)
` 47
`
`C. Real Parties-in-Interest
`Petitioner contends that VIZIO, Inc. is the real party-in-interest. Pet.
`2. Patent Owner does not challenge this assertion.
`D. Related Matters
`Petitioner identified several lawsuits involving the ’370 patent brought
`
`by Patent Owner and several other inter partes review proceedings involving
`the ’370 patent and related patents. Pet. 2–3.
`E. Decision
`In view of the identity of the challenges to the ’370 patent in this
`Petition and in the petition in the ʼ1867 IPR, we institute an inter partes
`review in this proceeding on the same grounds as those on which we
`instituted inter partes review in the ʼ1867 IPR.
`We have considered the arguments advanced by Patent Owner in the
`Preliminary Response. Prelim. Resp. 3–14. We are not persuaded by those
`arguments for at least the reasons stated in our ’1867 Institution Decision.
`We are not persuaded by Patent Owner’s additional argument that the
`Petition is untimely. Prelim. Resp. 1. The Petition was timely filed under
`37 C.F.R. § 42.122. See infra.
`We do not institute inter partes review on any other grounds.
`
`
`
`
`
`3
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`III. MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`
`review, subject to the provisions of 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is entitled
`to the requested relief. 37 C.F.R. § 42.20(c).
`
`To be considered timely, a motion for joinder must be filed no later
`than one month after the institution date of the inter partes review for which
`joinder is requested. 37 C.F.R. § 42.122(b). The Petition in this proceeding
`has been accorded a filing date of April 18, 2016. Paper 4. This date is
`within one month of the date of institution in the ʼ1867 IPR, which was
`instituted on March 17, 2016. The Petition, therefore, is timely.
`
`A motion for joinder should: (1) set forth the reasons joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Frequently Asked Question H5,
`http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/trials/patent-review-processing-system-prps-0#heading-13 (last
`visited July 2, 2015).
`
`
`Petitioner contends that joinder with the ’1867 IPR is appropriate
`because the Petition here presents grounds of unpatentability that are
`identical to the grounds on which the Board instituted trial in the ’1867 IPR,
`
`
`
`4
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`relying on the same prior art, the same substantive arguments, and the same
`expert testimony as the ’1867 IPR Petition and our Institution Decision.
`Joinder Motion 4. Petitioner states the only differences are that the Petition
`here omits the grounds on which the Board did not institute review as well
`as formalities of different parties filing a petition. Id.
`
`Petitioner contends it would be prejudiced if joinder is denied, for
`example, if the petitioner in the ’1867 IPR, K.J. Pretech Co., Ltd. (“K.J.
`Pretech”), were to cease participating. Id. at 4–5. On the other hand,
`Petitioner contends that the parties to the ’1867 IPR would not be prejudiced
`if joinder were granted. Id. at 5. Petitioner states: “Given that [Petitioner] is
`relying on the same art, arguments, and evidence as [the petitioner in the
`’1867 IPR], its joinder in an understudy role will not impact Patent Owner,
`put it to any additional expense, or create any delay.” Id.
`
`Petitioner contends joinder will not negatively impact the trial
`schedule in the ’1867 IPR. Joinder Motion 6. Also, Petitioner contends
`discovery and briefing in the ’1867 IPR can be simplified because Petitioner
`“explicitly agrees to take an ‘understudy role.’” Id. at 6–7.
`
`
`While opposing granting of the Petition, Patent Owner has not
`opposed joinder.
`
`As discussed above, joinder is a matter within the Board’s discretion
`based on the particular circumstances of each proceeding. In this
`proceeding, we are persuaded that Petitioner has demonstrated that joinder
`with the ʼ1867 IPR would avoid duplication and promote the efficient
`resolution of both proceedings. Petitioner has brought the same challenges
`presented by the ʼ1867 IPR; thus, the substantive issues would not be unduly
`complicated by joining the proceedings. Joinder merely introduces the same
`
`
`
`5
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`grounds presented originally in the ʼ1867 IPR, where all the same prior art is
`involved. Patent Owner, therefore, will be able to address the challenges in
`a single proceeding.
`
`
`
`III. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`
`IPR2016-00914 and grant Petitioner’s motion to join that proceeding to
`IPR2015-01867.
`
`
`IV. ORDER
`In view of the foregoing, it is
`ORDERED that inter partes review in IPR2016-00914 is hereby
`instituted;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and IPR2016-00914 is joined with IPR2015-01867;
`FURTHER ORDERED that the grounds on which IPR2015-01867
`was instituted are unchanged, and no other grounds are included in the
`joined proceedings;
`FURTHER ORDERED that the Revised Scheduling Order entered in
`IPR2015-01867 (Paper 19) is not modified by this Order and shall govern
`the schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceedings,
`Petitioner and K.J. Pretech will file papers, except for motions that do not
`involve the other party, as a single, consolidated filing; that the filing party
`(either Petitioner or K.J. Pretech) will identify each such filing as a
`Consolidated Filing; and will conduct coordinated (not separate) discovery;
`
`
`
`6
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`
`FURTHER ORDERED that Petitioner shall not be permitted to raise
`any new grounds not already instituted by the Board in the ’1867 IPR, or
`introduce any argument or discovery not already introduced by K.J. Pretech;
`FURTHER ORDERED that PETITIONER shall be bound by any
`agreement between Patent Owner and K.J. Pretech in the ’1867 IPR
`concerning discovery or depositions;
`FURTHER ORDERED that PETITIONER shall not receive any
`direct, cross examination, or redirect time beyond that permitted for K.J.
`Pretech alone, under either 37 C.F.R. § 42.53 or any agreement between
`Patent Owner and K.J. Pretech;
`FURTHER ORDERED that IPR2016-00914 is terminated under 37
`C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2015-01867;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2015-01867; and
`FURTHER ORDERED that the case caption in IPR2015-01867 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`7
`
`
`
`IPR2016-00914
`Patent 7,537,370 B2
`
`PETITIONER:
`Brian Buroker
`Blair Silver
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`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
`
`PATENT OWNER:
`Justin B. Kimble
`Terry Saad
`Nicholas Kliewer
`BRAGALONE CONROY P.C.
`Jkimble-ipr@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`
`8
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`K.J. PRETECH CO., LTD. AND VIZIO, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-018671
`Patent 7,537,360 B2
`_______________
`
`
`
`
` Case IPR2016-00914 has been joined with this proceeding.
`
`9
`
`
`
`
`
`
`
` 1
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