Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: January 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`K. J. PRETECH CO., LTD.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`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.
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 13
`Entered: January 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`K. J. PRETECH CO., LTD.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`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
`
`Patent Owner, Innovative Display Technologies LLC (“Patent
`
`Owner”), filed a motion for additional discovery (Paper 7, “Mot.”) in the
`
`instant proceedings, and Petitioner, K. J. Pretech Co., LTD. (“Petitioner),
`
`filed an opposition (Paper 9, “Opp.”).2 For the reasons stated below, Patent
`
`Owner’s motion is denied.
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`We authorized Patent Owner to file a motion for additional discovery
`
`limited to the issue of privity between LG Display, LG Electronics
`
`(collectively “LG”), and Petitioner. Specifically, the motion was to address
`
`production of the supplier agreement between LG and Petitioner, and
`
`referred to discovery response admissions. (Paper 6, 3) The parties were
`
`ordered to meet and confer to work out any confidentiality issues regarding
`
`the requested supplier agreement and discovery response admissions. Id. at
`
`4.
`
`
`
`In the present motion, Patent Owner requests production from
`
`Petitioner of:
`
`1. The intercompany agreements between KJ Pretech and LG
`regarding rights, obligations or indemnification for
`allegations of infringement of third party intellectual
`property rights, and any joint defense agreements among
`Petitioner and any of the defendants in the Delaware
`Litigation concerning the handling of intellectual property
`disputes.
`
`
`2 For purposes of convenience, all citations are to papers filed in Case
`IPR2015-01866, as representative, unless otherwise noted.
`
`2
`
`
`
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`2. Written communications between LG and KJ Pretech
`regarding either (a) indemnity for patent infringement claims
`made by Innovative Display Technologies, LLC, against LG
`or LG customers; and/or (b) the filing and maintenance of
`inter partes review actions against patents owned by
`Innovative Display Technologies, LLC.
`Mot. 9–10.
`
`
`
`Petitioner, in its opposition, avers that there are no privity issues, and
`
`that they “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.” Opp. 1. We note that LG, who is not a party in the
`
`present proceeding, agreed to the use in this proceeding, of the supplier
`
`agreement and specific discovery responses produced in the related district
`
`court litigation, and that Petitioner’s offer is contingent on entry of an
`
`appropriate protective order. Id. at 2. Based on Petitioner’s agreement to
`
`produce the supplier agreement between LG and Petitioner and specific
`
`discovery responses from the district court litigation, Petitioner asserts
`
`Patent Owner’s first request is “moot”. Id. at 2, 4–5.
`
`
`
`With regards to Patent Owner’s second request, Petitioner “confirms
`
`that no written communications in any form related to these IPRs exist
`
`between LG and Petitioner.” Id. at 5–6. As such, Petitioner asserts that
`
`Patent Owner’s second request “is also moot.” Id. at 6.
`
`
`
`We agree with Petitioner’s assertions. Petitioner agrees to provide
`
`Patent Owner with the supplier agreement between Petitioner and LG that
`
`was produced in the related district court litigation, as well as specific
`
`discovery responses. Petitioner seeks entry reasonably of a protective order
`
`3
`
`
`
`IPR2015-01866 (Patent 8,215,816)
`IPR2015-01867 (Patent 7,537,370)
`IPR2015-01868 (Patent 7,434,974)
`
`prior to providing this information. Moreover, Petitioner affirmatively states
`
`that it is not in privity with LG, and that “no written communications exist
`
`between the parties relating these proceedings.” Id. at 7.
`
`
`
`As such, the parties are to meet and confer by January 11, 2016 and
`
`agree to a protective order, to be entered in the record by close of business
`
`on January 13, 2016. Once the protective order is entered, Petitioner should
`
`produce the supplier agreement between Petitioner and LG and specific
`
`discovery responses by close of business on January 15, 2015. Should the
`
`parties be unable to agree to a protective order, the parties are to contact the
`
`panel via an email message to Trials@uspto.gov, if necessary, to facilitate
`
`the resolution of any remaining dispute.
`
`
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`
`denied;
`
`FURTHER ORDERED that the parties meet and confer by January
`
`11, 2016 and agree to a protective order, to be entered in the record by close
`
`of business on January 13, 2016;
`
`FURTHER ORDERED that after entry of the protective order,
`
`Petitioner shall serve on Patent Owner a copy of the supplier agreement
`
`between Petitioner and LG and specific discovery responses, by close of
`
`business on January 15, 2015.
`
`
`
`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
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