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.
`
`Inter Partes Review of U.S. Patent No. 7,537,370
`
`IPR Case No.: IPR2015-01867
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S FIRST MOTION
`FOR ADDITIONAL DISCOVERY ON PRIVITY FROM K.J. PRETECH
`
`

`
`TABLE OF CONTENTS
`INTRODUCTION .........................................................................................1
`
`INTRODUCTION ....................................................................................... ..1
`
`TABLE OF CONTENTS
`
`LEGAL STANDARDS AND APPLICABLE RULES...............................3
`
`LEGAL STANDARDS AND APPLICABLE RULES ............................. ..3
`
`I.
`
`I.
`
`II.
`
`II.
`
`A. Privity..............................................................................................................3
`A. Privity ............................................................................................................ ..3
`
`B. Additional Discovery .....................................................................................3
`B. Additional Discovery ................................................................................... ..3
`
`III. ARGUMENT..................................................................................................4
`
`III. ARGUMENT ................................................................................................ ..4
`
`A. IDT’s Request For The Supplier Agreement And Certain District Court
`A.
`IDT’s Request For The Supplier Agreement And Certain District Court
`Discovery ...............................................................................................................4
`Discovery ............................................................................................................. ..4
`
`B. IDT’s Request For Communications Between LG And K.J. Pretech Is
`B.
`IDT’s Request For Communications Between LG And K.J. Pretech Is
`Overbroad and Futile...........................................................................................5
`Overbroad and Futile ......................................................................................... ..5
`
`1. Factor 1: More Than a Possibility and Mere Allegation..............................6
`1. Factor 1: More Than a Possibility and Mere Allegation ............................ ..6
`
`2. Factor 2: Litigation Positions and Underlying Basis ...................................8
`2. Factor 2: Litigation Positions and Underlying Basis ................................. ..8
`
`3. Factor 3: Ability to Generate Equivalent Information by Other Means......8
`3. Factor 3: Ability to Generate Equivalent Information by Other Means .... ..8
`
`4. Factor 4: Easily Understandable Instructions ..............................................9
`4. Factor 4: Easily Understandable Instructions ............................................ ..9
`
`5. Factor 5: Requests Not Overly Burdensome to Answer..............................9
`5. Factor 5: Requests Not Overly Burdensome to Answer ............................ ..9
`
`IV. CONCLUSION ............................................................................................10
`
`IV. CONCLUSION .......................................................................................... ..10
`
`i
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`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. Achates Reference Publishing Inc.,
`IPR2013-00080, Paper No. 18, at 3 (PTAB Apr. 3, 2013)...............................3, 7
`
`Broadcom Corp. v. Telefonaktiebolaget LM Ericsson (Publ),
`IPR2013-00601, Paper No. 20, at 7 (PTAB Jan. 24, 2014) .................................6
`
`Bros, Inc. v. W.E. Grace Mfg. Co.,
`261 F.2d 428 (5th Cir. 1958) ................................................................................6
`
`Garmin Int’l v. Cuozzo Speed Tech.,
`IPR2012-00001, Paper No. 26, at 7 (PTAB Mar. 13, 2013) ............................3, 6
`
`GEA Process Eng’g, Inc. v. Steuben Foods, Inc.,
`IPR2014-00041, Paper No. 23, at 6-7 (PTAB Apr. 22, 2014) .............................7
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`IPR2014-01357, Paper No. 9, at 2 (PTAB Dec. 9, 2014) ....................................5
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`IPR2014-01362, Paper No. 9, at 2 (PTAB Dec. 9, 2014) ....................................5
`
`Wavemarket Inc. v. Locationnet Systems Ltd.,
`IPR2014-00199, Paper No. 34, at 5 (PTAB Aug. 11, 2014)................................7
`
`Statutes
`
`35 U.S.C. § 315(b) .....................................................................................................3
`
`35 U.S.C. § 316(a)(5).................................................................................................1
`
`Other Authorities
`
`37 C.F.R. § 42.51(b)(2)(i)..........................................................................................1
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (Aug.
`14, 2012) ...............................................................................................................3
`
`ii
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`

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`I.
`
`INTRODUCTION
`
`The Board authorized Patent Owner to file a narrow Motion for Additional
`
`Discovery, limited to “the supplier agreement and referred-to discovery response
`
`admissions.” Order, Paper 6, at 2. The Board noted that “Patent Owner’s motion
`
`should address what evidence shows that the referred to supply agreement and
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`discovery response admissions from the related district court proceeding are
`
`relevant to determining whether LG Display or LG Electronics and Petitioner are
`
`privies.” Id. at 3. In addition, the Board noted that Patent Owner should specify
`
`clearly the discovery response admissions [from the related district court
`
`proceeding] it seeks to discover.” Id.
`
`Knowing there are no privity issues, KJ Pretech reached out to Patent
`
`Owner prior to the filing of the motion to agree to provide the supply agreement
`
`and to relay LG’s agreement to permit cross use of the relevant discovery
`
`responses (i.e., the materials the Board permitted Patent Owner to move for
`
`discovery on) in order to avoid motion practice. Patent Owner ignored KJ
`
`Pretech’s request to meet and confer on this issue to avoid motion practice and
`
`now improperly seeks to expand the discovery sought outside that authorized by
`
`the Board. Further, even if authorized, Patent Owner’s requested additional
`
`discovery is not “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); 37
`
`C.F.R. § 42.51(b)(2)(i). And, Petitioner’s agreement to produce the materials the
`
`1
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`

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`Board authorized to be sought renders Patent Owner’s Motion moot.1 Any
`
`discovery sought beyond these items is a fishing expedition. Simply put,
`
`Petitioner is not in privity with LG, and the related district court discovery
`
`demonstrates that LG had no control or funding of the K.J. Pretech IPRs.
`
`II. FACTUAL BACKGROUND
`
`LG Display Co., Ltd.
`
`(“LGD”) and LG Electronics,
`
`Inc.
`
`(“LGE”)
`
`(collectively, “LG”) were sued in a related district court proceeding, and both
`
`LGD and LGE separately filed inter partes review (“IPR”) petitions. Mot., at 2.
`
`During the underlying litigation, Patent Owner sought identification of LG’s
`
`suppliers in an attempt to get materials from backlight unit (“BLU”) suppliers,
`
`one of which is Petitioner K.J. Pretech. Ex. 1028, 7/28/15 Ltr. J. Perkins to J.
`
`Beaber; Ex. 1029, 8/6/15 Redacted Discovery Dispute Letter, Case No. 1:13-cv-
`
`02109-RGA, Dkt. 75 (Aug. 6, 2015), at 1-3. The Court in the related proceeding
`
`ordered LG to use best efforts to get those materials from its suppliers. Ex. 1030,
`
`Order, Case No. 1:13-cv-02109-RGA, Dkt. 84 (Aug. 17, 2015), at ¶5.
`
`In response to the Court’s order, LG contacted Petitioner K.J. Pretech and
`
`1 Petitioner agrees to produce the supplier agreement produced in the district court
`
`litigation in the IPRs once an appropriate protective order is entered. Additionally,
`
`LG has agreed to permit Patent Owner to use specific discovery responses from the
`
`district court litigation in these proceedings.
`
`2
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`

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`sought
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`the technical materials relating to backlight units.
`
`Subsequently,
`
`concerned about
`
`independently protecting its interests and its supply chain
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`against Patent Owner’s potential further direct infringement assertions, Petitioner
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`contacted lawyers at Mayer Brown and ultimately engaged the undersigned
`
`counsel to file the present petitions for inter partes review. Therefore, K.J.
`
`Pretech’s actions of filing the underlying IPR petitions were independent and
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`done to protect its own business.
`
`II.
`
`LEGAL STANDARDS AND APPLICABLE RULES
`
`A. Privity
`
`Under 35 U.S.C. § 315(b) , “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
`
`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” Privity depends on whether the
`
`relationship between a party and its alleged privy is “sufficiently close such that
`
`both should be bound by the trial outcome and related estoppels.” Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012).
`
`B. Additional Discovery
`
`Discovery in IPR proceedings is “less than what is normally available in
`
`district court patent litigation” because “Congress intended inter partes review to
`
`be a quick and cost effective alternative to litigation.” Apple Inc. v. Achates Ref.
`
`Pub. Inc., IPR2013-00080, Paper No. 18, at 3 (PTAB Apr. 3, 2013). The Board
`
`3
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`

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`must
`
`therefore be “conservative in authorizing additional discovery.”
`
`Id.
`
`Additional discovery is permitted only when “necessary in the interest of justice.”
`
`Id. at 4. The moving party must present evidence – not vague allegations – that
`
`shows discovery has a likelihood of producing of useful evidence. See Garmin
`
`Int’l v. Cuozzo Speed Tech., IPR2012-00001, Paper No. 26, at 7 (PTAB Mar. 13,
`
`2013).
`
`III. ARGUMENT
`
`Instead of confining its motion to the topics authorized by the Board—the
`
`supplier agreement and certain discovery responses from the district court
`
`litigation—Patent Owner broadly seeks communications between LG and
`
`Petitioner. Petitioner has already agreed to provide the supplier agreement, and LG
`
`has agreed to produce certain discovery responses to Patent Owner once an
`
`appropriate protective order is in place. Any request for further discovery fails to
`
`meet the Garmin Factors, and in any event would be futile because Petitioner is not
`
`in privity with LG.
`
`A. IDT’s Request For The Supplier Agreement And Certain District
`Court Discovery
`
`Given the limited basis for the Motion as dictated by the Board’s Order,
`
`Petitioner reached out to Patent Owner to further meet and confer on the issue.
`
`Patent Owner declined to respond and filed its Motion. After receiving the Motion,
`
`both K.J. Pretech and LG agreed that Patent Owner may use the supplier
`
`4
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`

`
`agreement produced in the district court litigation in these proceedings once an
`
`appropriate protective order is entered. Additionally, LG has agreed to permit
`
`Patent Owner to use specific discovery responses from the district court litigation
`
`in these proceedings. Therefore, the Motion as to these requests is moot.
`
`B. IDT’s Request For Communications Between LG And K.J.
`Pretech Is Overbroad and Futile
`
`The Board provided clear direction on a limited motion for discovery, yet
`
`Patent Owner also requested “communications, including emails, between LG and
`
`KJ Pretech regarding the decision to file and substance of this petition.” Mot., at
`
`1. Patent Owner argues, without support, that “[s]uch written communications
`
`are part of and complete the intercompany agreements.” Id. These overly broad
`
`requests are not within the scope of the Board’s Order. See Order, at 2. Similar to
`
`Patent Owner’s attempts in other IPRs on this family of patents, Patent Owner’s
`
`request is no more than a fishing expedition and not likely to lead to the discovery
`
`of useful information. See, e.g., LG Display Co., Ltd. v. Innovative Display
`
`Technologies LLC, IPR2014-01357, Paper No. 9, at 2 (PTAB Dec. 9, 2014)
`
`(denying Patent Owner’s request for authorization to file a motion for additional
`
`discovery); LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`
`IPR2014-01362, Paper No. 9, at 2 (PTAB Dec. 9, 2014) (same).
`
`In any event, and to conserve further expenditure of resources by the Board
`
`and the parties, Petitioner confirms that no written communications in any form
`
`5
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`

`
`related to these IPRs exist between LG and Petitioner, and therefore, Patent
`
`Owner’s request in this regard is also moot.
`
`Even if Patent Owner’s broad requests are arguably permitted under the
`
`Board’s Order, these requests do not meet the Garmin Factors and no discovery
`
`should be authorized. Garmin, IPR2012-00001, Paper No. 20, at 2-3.
`
`1. Factor 1: More Than a Possibility and Mere Allegation
`Patent Owner, despite all its rhetoric, fails to satisfy this first Garmin factor.
`
`Privity requires a showing that Petitioner would be bound to the outcome of the
`
`related district court proceeding. To be bound, in normal situations, Petitioner must
`
`have had control over the related district court proceeding. See Broadcom Corp. v.
`
`Ericsson, IPR2013-00601, Paper No. 20, at 7 (PTAB Jan. 24, 2014).
`
`Patent Owner merely relies on the following so-called “evidence” to show
`
`privity: 1) K.J. Pretech is a supplier of at least one component of accused products
`
`in the litigation; 2) K.J. Pretech’s IPRs were filed by the same lawyers at the same
`
`law firm that filed the LG IPRs; and 3) the K.J. Pretech IPRs were presented
`
`during the Motion to Stay Hearing in the related district court proceeding. Mot., at
`
`6-7.
`
`This “evidence” fails to amount to more than a “mere possibility” that
`
`Petitioner controlled, or could have controlled, the related district court proceeding.
`
`Nor does this evidence show that Petitioner filed its Petitions at the behest of LG.
`
`In fact, the related district court litigation discovery, which Patent Owner is in
`
`6
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`

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`possession of, demonstrates that LG had no control or funding of the K.J. Pretech
`
`IPRs; as such Petitioner questions the motives of Patent Owner seeking the
`
`discovery that is the subject of this Motion. Ex. 1031, LG’s Obj. and Resp. to Req.
`
`for Prod., Resp. to RFP No. 61, at 13. Nonspecific indemnity obligations normally
`
`do not establish privity or control. Neither does the overlap in attorneys. See, e.g.,
`
`Wavemarket Inc. v. Locationnet Systems Ltd., IPR2014-00199, Paper No. 34, at 5
`
`(PTAB Aug. 11, 2014); Apple Inc. v. Achates Reference Publishing Inc., IPR2013-
`
`00080, Paper No. 18, at 5-7 (PTAB Apr. 3, 2013); GEA Process Eng’g, Inc. v.
`
`Steuben Foods, Inc., IPR2014-00041, Paper No. 23, at 6-7 (PTAB Apr. 22, 2014).
`
`Patent Owner’s further speculative and vague assertions that “‘intercompany
`
`agreements’ between KJ Pretech and LG [] lay out the relationship and obligations
`
`between the companies when intellectual property suits arise, including indemnity
`
`obligations,” and “[l]imited discovery of the existence and details of the agreement
`
`related to rights, obligations or indemnification for allegations of infringement of
`
`third party intellectual property rights is highly relevant to determining the privity
`
`and RPI issue” do not warrant authorization for further discovery. Mot., at 6-7. As
`
`stated above, Petitioner agrees to provide the requested supplier agreement, and
`
`has confirmed that no written communications exist between the parties relating to
`
`these proceedings.
`
`7
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`

`
`Patent Owner further asserts that Petitioner filed IPR petitions that “‘fill in
`
`the gaps’ of the claims asserted in the Delaware Litigation that were not covered
`
`by LG’s denied IPRs” Mot., at 1, 3. Patent Owner’s allegation is mere conjecture
`
`and Patent Owner fails to show how the filed petitions were pursuant to any
`
`intercompany agreement. Nor does Patent Owner show control over the district
`
`court litigation. The evidence presented is mere speculation that any of Petitioner’s
`
`activities constitutes evidence of collusion with LG in the related district court
`
`litigation in a manner that would bind Petitioner to the outcome thereof.
`
`2. Factor 2: Litigation Positions and Underlying Basis
`
`Petitioner does not have any litigation positions related to the instant
`
`proceedings, and thus, this factor is irrelevant. Accordingly, this factor does not
`
`weigh either in favor or against granting Patent Owner’s motion.
`
`3. Factor 3: Ability to Generate Equivalent Information by
`Other Means
`
`Patent Owner asserts that it has no ability to generate equivalent information
`
`because “KJ Pretech’s control and funding of the KJ Pretech IPRs [] is not publicly
`
`available,” and because Patent Owner is precluded from using information
`
`produced in the Delaware litigation subject to a protective order. Mot., at 8. This
`
`argument
`
`fails because, as previously discussed,
`
`there is no “equivalent
`
`information” for Patent Owner to generate because the information Patent Owner
`
`seeks will not establish Petitioner is in privity with LG. Indeed, the materials that
`
`8
`
`

`
`Petitioner and LG have agreed to allow Patent Owner to use in this proceeding (the
`
`materials within the scope of the Board’s Order) confirm this fact. Accordingly,
`
`there is no ability to generate equivalent information by this or other means, and
`
`indeed, information already in Patent Owner’s possession shows precisely the
`
`opposite. This factor weighs against granting Patent Owner’s Motion.
`
`4. Factor 4: Easily Understandable Instructions
`
`Although Patent Owner’s requests are short, the language is quite vague. For
`
`example,
`
`the first request asks for “agreements…concerning the handling of
`
`intellectual property disputes.” Mot., at 9. “Handling” is a vague term, and
`
`“intellectual property disputes” is broad and can include, patent,
`
`trademark,
`
`copyright, trade secrets, and any other dispute involving intellectual property, for
`
`example, a contract dispute regarding a patent. Therefore, the confusion of the
`
`instructions springs from the language used in the requests, not the length of the
`
`requests themselves. Accordingly,
`
`this factor weighs against granting Patent
`
`Owner’s Motion.
`
`5. Factor 5: Requests Not Overly Burdensome to Answer
`
`Patent Owner’s requests are overly broad because they are not limited to the
`
`patents-at-issue, nor to the specific claims-at-issue, nor to any specific parties.
`
`Instead, Patent Owner seeks any intercompany agreements regarding “rights,
`
`obligations or indemnifications for allegations of infringement of third party
`
`intellectual property rights, and any joint defense agreements among Petitioner and
`
`9
`
`

`
`any of the defendants in the Delaware Litigation concerning the handling of
`
`intellectual property disputes.” Mot., at 9. Patent Owner did not tailor the request
`
`to the patents or claims that are the subject matter of Petitioner’s IPR petitions.
`
`Nor did Patent Owner tailor the request to the plaintiffs in the Delaware litigation,
`
`but
`
`instead broadly seeks information regarding “infringement of third party
`
`intellectual property rights.” Finally, Patent Owner did not tailor the requests to
`
`only the LG defendants, but any of the defendants in the Delaware Litigation.
`
`For its improper second request, Patent Owner also fails to tailor the request
`
`to specific patents and claims, nor did Patent Owner specify these particular IPR
`
`proceedings. Instead, Patent Owner requests communications regarding the filing
`
`and maintenance of any IPR actions against any patents owned by Patent Owner.
`
`Mot., at 10. Patent Owner’s requests are overly burdensome, and therefore, weigh
`
`against granting Patent Owner’s motion.
`
`Considering the five Garmin factors, Patent Owner has not met the standard
`
`to show that its Motion for Additional Discovery should be granted as “necessary
`
`in the interest of justice.”
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests Patent Owner’s
`
`Motion be denied.
`
`10
`
`

`
`Dated: December 8, 2015
`
`Respectfully submitted,
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Amanda K. Streff
`Registration No. 65,224
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone:
`312-701-8641
`Facsimile:
`312-701-7711
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`Registration No. 67,394
`Saqib J. Saddiqui
`Registration No. 68,626
`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.
`
`11
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, on this 8th day of December , 2015, a true and
`
`correct copy of the foregoing OPPOSITION TO PATENT OWNER’S FIRST
`
`MOTION FOR ADDITIONAL DISCOVERY ON PRIVITY FROM K.J.
`
`PRETECH was served by e-mail pursuant
`
`to Patent Owner’s consent
`
`in its
`
`Mandatory Notices Pursuant to 37 C.F.R. §§ 42.8(a)(2) and 42.8(b): JKimble-
`
`IPR@bcpc-law.com;
`
`jbragalone@bcpc-law.com;
`
`nkliewer@bcpc-law.com;
`
`tsaad@bcpc-law.com; and bkennedy@bcpc-law.com.
`
`Date: December 8, 2015
`
`By:
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile: 312-701-7711
`
`Counsel for K.J. Pretech Co., Ltd.