`571-272-7822
`
`
`
`
`Paper 6
`Entered: November 20, 2015
`
`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.
`____________
`
`Cases1
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are the same in each case. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`
`INTRODUCTION
`
`On November 17, 2015, a telephone conference call was held between
`
`respective counsel for Petitioner, K. J. Pretech Co., LTD., and Patent Owner,
`
`Innovative Display Technologies LLC, and Judges Bunting, Giannetti, and
`
`Quinn. The conference call was initiated by the Board in response to an
`
`email communication received from Patent Owner’s counsel.
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`Patent Owner requests, and Petitioner opposes, authorization to file a
`
`motion for additional discovery limited to the issue of whether LG Display
`
`or LG Electronics and Petitioner are privies. Patent Owner represented that
`
`it learned recently from the related district court litigation involving these
`
`patents of evidence of a supply agreement between Petitioner and LG
`
`Display or LG Electronics that may contain indemnification obligations.
`
`Patent Owner also referenced certain admissions of payment made in
`
`conjunction with discovery responses that may likewise substantiate its
`
`contentions. Patent Owner acknowledged that Petitioner is not a party to the
`
`aforementioned district court proceedings, and that these documents are
`
`under a protective order. Petitioner disagreed with Patent Owner’s
`
`contentions, arguing that Patent Owner contentions are clear speculation and
`
`that Patent Owner already knows the answers it seeks.
`
`After hearing the respective positions of the parties, the panel
`
`conferred and concluded that additional briefing is warranted. Patent Owner
`
`is authorized to file a Motion for Additional Discovery limited to the
`
`supplier agreement and referred-to discovery response admissions, of no
`
`2
`
`
`
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`more than 10 pages due no later than Tuesday, December 1, 2015. In
`
`particular, Patent Owner’s motion should address what evidence shows that
`
`the referred to supply agreement and discovery response admissions from
`
`the related district court proceeding are relevant to determining whether LG
`
`Display or LG Electronics and Petitioner are privies. In addition, Patent
`
`Owner should specify clearly the discovery response admissions it seeks to
`
`discover. Petitioner is authorized to file an Opposition to the Motion, also of
`
`no more than 10 pages, due no later than Tuesday, December 8, 2015.
`
`Patent Owner is cautioned that a motion for additional discovery is
`
`unlikely to be granted if it is unduly broad, and should reflect consideration
`
`and explanation of the five Garmin factors when discussing whether the
`
`additional discovery at issue is “necessary in the interest of justice.” 35
`
`U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2); Garmin Int’l, Inc. et. al. v.
`
`Cuozzo Speed Techs. LLS, Case IPR2012-00001, slip op. at 5–7 (PTAB
`
`March 13, 2013) (Paper 26).
`
`During the call, the parties were directed to meet and confer to work
`
`out any confidentiality issues regarding the requested discovery response
`
`admissions and supplier agreement.
`
`
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Patent Owner is authorized to file a motion for
`
`additional discovery by December 1, 2015, limited to 10 pages;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`
`opposition by December 8, 2015, limited to 10 pages;
`
`3
`
`
`
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`
`FURTHER ORDERED that no reply is authorized; and
`
`FURTHER ORDERED that the parties meet and confer and work out
`
`any confidentiality issues regarding the requested discovery response
`
`admissions and supplier agreement.
`
`
`
`4
`
`
`
`5
`
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`PETITIONER:
`
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`Saqib J. Siddiqui
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`Terry A. Saad
`Nicholas C. Kliewer
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
