throbber
Trials@uspto.gov
`571-272-7822
`
` Paper 11
` Entered: January 13, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01096
`Patent 7,537,370
`____________
`
`Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`VIZIO EX. 1027
`
`K.J. Pretech Ex. 1027
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`

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`Case IPR2014-01096
`Patent 7,537,370
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`
`LG Display Co., Ltd. (“Petitioner”) filed a Corrected Petition1
`
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`
`claims 1, 4, 8, 13, 15, 27, 29, and 47 of U.S. Patent No. 7,537,370 (“the ’370
`
`patent”). Paper 4 (“Pet.”). Innovative Display Technologies LLC (“Patent
`
`Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying
`
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`
`a reasonable likelihood that Petitioner would prevail with respect to at least
`
`one challenged claim, we grant the Petition and institute an inter partes
`
`review of claims 15 and 27. We deny the Petition as to the other claims
`
`challenged.
`
`
`
`I. BACKGROUND
`
`A. The ʼ370 patent (Ex. 1001)
`
`The ʼ370 patent is entitled “Light Emitting Panel Assemblies.” The
`
`Abstract describes the subject matter as follows:
`
`Light emitting panel assemblies include an optical panel
`member having a pattern of light extracting deformities on or in
`one or both sides to cause light to be emitted in a predetermined
`output distribution. The pattern of light extracting deformities
`on or in one side may have two or more different types or
`shapes of deformities and at least one of the types or shapes
`may vary along the length or width of the panel member. Where
`the light extracting deformities are on or in both sides, at least
`some of the deformities on or in one side may be of a different
`type or shape or vary in a different way or manner than the
`deformities on or in the other side.
`
`Ex. 1001, Abstract.
`
`
`
`
`1 In this proceeding we will refer to the Corrected Petition as “the Petition.”
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`2
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`B. Illustrative Claim(s)
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`Claim 1 is illustrative of the claims at issue:
`
`1. A light emitting panel assembly comprising
`at least one light source,
`an optical panel member having at least one input edge
`for receiving light from the at least one light source, the panel
`member having front and back sides and a greater cross
`sectional width than thickness,
`both the front and back sides having a pattern of light
`extracting deformities that are projections or depressions on or
`in the sides to cause light to be emitted from the panel member
`in a predetermined output distribution,
`where the pattern of light extracting deformities on or in
`at least one of the sides varies along at least one of the length
`and width of the panel member and
`at least some of the light extracting deformities on or in
`one of the sides are of a different type than the light extracting
`deformities on or in the other side of the panel member, and
`at least one film, sheet or substrate overlying at least a
`portion of one of the sides of the panel member to change the
`output distribution of the emitted light such that the light will
`pass through a liquid crystal display with low loss.
`
`
`C. Related Proceedings
`
`Patent Owner states that it has asserted infringement by Petitioner of
`
`the ʼ370 patent in the following proceeding: Delaware Display Group LLC
`
`et al. v. LG Electronics, Inc. et al., No. 1:13-cv-02109 (D. Del., filed Dec.
`
`31, 2013). Paper 7.
`
`Patent Owner identifies numerous other proceedings in which it has
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`alleged infringement of the ʼ370 patent. See Paper 7 for a listing.
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`In addition, there are four other pending requests for inter partes
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`review by Petitioner for patents related to the ’370 patent. Id. Those are as
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`follows:
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`1. IPR2014-01092 (U.S. Patent No. 7,434,974);
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`2. IPR2014-01094 (U.S. Patent No. 7,404,660)
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`3. IPR2014-01095 (U.S. Patent No. 8,215,816); and
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`4. IPR2014-01097 (U.S. Patent No. 7,300,194).
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`
`
`D. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
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`The only claim term for which Petitioner proposes a construction is
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`the term “deformities,” appearing in all challenged claims. Petitioner asserts
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`that the ʼ370 patent “expressly defines” the term to mean “any change in the
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`shape or geometry of a surface and/or coating or surface treatment that
`
`causes a portion of light to be emitted.” Pet. 7 (citing ʼ370 patent, Ex. 1001,
`
`col. 4, ll. 36–40). Patent Owner takes no position on claim construction.
`
`Prelim. Resp. 4. Patent Owner points out, however, that the construction of
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`“deformities” proffered by Petitioner was agreed to and adopted by the
`
`district court. Id. at 5.
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`We have considered Petitioner’s construction of “deformities” and
`
`determined that at this stage it should be adopted here.
`
`We have further determined that, except as may be indicated in the
`
`discussion below, the remaining terms should be given their plain and
`
`ordinary meaning.
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`Petitioner relies on the following references2:
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`E. References
`
`Pristash
`Ohe
`Kobayashi
`
`
`Apr. 2, 1991
`US 5,005,108
`EP 0 500 960 A1 Feb. 9, 1992
`US 5,408,388
`Apr. 18, 1995
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`
`Petitioner also states that it is relying on Admitted Prior Art (“APA”)
`
`from the ʼ974 patent specification. Pet. 8; Ex. 1001, col. 2, ll. 58–65.
`
`Petitioner also relies on a Declaration from Michael J. Escuti, Ph.D. (“Escuti
`
`Decl.”). Ex. 1004.
`
`F. Grounds Asserted
`
`
`
`Petitioner challenges claims 1, 4, 8, 13, 15, 27, 29, and 47 of the ʼ370
`
`patent on the following grounds.
`
`Claims Challenged
`1, 4, 8, 13, 15, 27, 29, and 47
`1, 4, 8, and 29
`1, 4, and 29
`13, 15, 27, and 47
`
`Basis
`§ 103(a)
`§ 102(b)
`§ 102(a)
`§ 103(a)
`
`
`
`References
`
`Pristash
`Ohe
`Kobayashi
`Kobayashi and Pristash
`
`II. ANALYSIS
`
`A. Asserted Grounds Based On Pristash
`
`(Claims 1, 4, 8, 13, 15, 27, 29, and 47)
`
`Petitioner contends that these claims are obvious over Pristash under
`
`35 U.S.C. § 103(a). Pet. 11–25. For the reasons that follow, we are not
`
`persuaded that Petitioner has a reasonable likelihood of prevailing on this
`
`ground.
`
`2 The references are ordered by exhibit number with effective dates
`asserted by Petitioner.
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`1. Pristash Overview
`
`This patent describes a thin panel illuminator that includes a solid
`
`transparent panel member having one or more deformed output regions. Ex.
`
`1006, Abstract. The arrangement causes light entering the panel along an
`
`input edge to be emitted along the length of the panel. Id.
`
`This is illustrated in Figure 1 of Pristash, reproduced here:
`
`
`
`
`
`In the above Figure 1, light emitting panel 2 and disruptions 16 in the
`
`exterior surface 18 of the panel are shown. Ex. 1006, col. 3, ll. 9–48.
`
`
`
`2. Discussion
`
`Petitioner asserts that “Pristash discloses Claims 1, 4, 8, 13, 15, 27,
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`29, and 47 of the ʼ370 Patent and therefore those claims are obvious under
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`35 U.S.C § 103.” Pet. 14. For example, Petitioner identifies the claimed
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`“light emitting panel assembly” with Figure 1 of Pristash. Pet. 14.
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`
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`a. Claims 1, 4, 8, and 13
`
`
`
`Patent Owner asserts that Pristash fails to disclose the following
`
`feature of independent claims 1 and 13: “light extracting deformities on or in
`
`one of the sides are of a different type than the light extracting deformities
`
`on or in the other side of the panel member.” Prelim. Resp. 3. Patent Owner
`
`asserts that Petitioner’s claim charts and the Escuti Declaration do not
`
`provide sufficient proof that this feature is present. Prelim. Resp. 5–6.
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`Patent Owner asserts that for this reason, among others3, Petitioner’s
`
`obviousness challenge to these claims based on Pristash fails. Id. at 5–7.
`
`
`
`We agree with Patent Owner that the references in the Petition to
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`Figures 5 and 6 of Pristash, and the cited portions of the Escuti Declaration,
`
`establish only that: (1) Pristash discloses different types of deformities
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`(Escuti Decl. ¶ 83), and (2) Pristash discloses deformities on both sides of
`
`the panel member (id. ¶ 84). Prelim. Resp. 6. We determine that this is
`
`insufficient to establish a disclosure or suggestion in Pristash of having
`
`different deformities on both sides of the panel. We are, therefore, not
`
`persuaded by the Escuti Declaration’s conclusion that “one of ordinary skill
`
`in the art would understand Pristash to disclose that deformities on one side
`
`may be of a different type than deformities on the other side” (Escuti Decl.
`
`¶ 85). Neither the Petition nor the Declaration provides any convincing
`
`rationale for that conclusion. For claims 1 and 13 (and for their dependent
`
`claims 4 and 8), Petitioner, therefore, fails to present sufficient evidence to
`
`meet the standard of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
`
`
`3 Patent Owner asserts also that Pristash does not describe the claimed
`“transition region.” Prelim. Resp. 8. This argument is discussed infra in our
`analysis of claim 27.
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`(2007)(Obviousness showing requires “some articulated reasoning with
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`some rational underpinning to support the legal conclusion of obviousness.”)
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`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For the foregoing
`
`reasons, therefore, we agree with Patent Owner that Petitioner has not
`
`demonstrated a reasonable likelihood of prevailing in proving that
`
`independent claims 1 and 13 (and dependent claims 4 and 8) would have
`
`been obvious over Pristash.
`
`
`
`
`
`
`
`b. Claim 15
`
`Petitioner’s analysis of claim 15 in relation to Pristash appears at
`
`pages 22–24 of the Petition and at paragraphs 114–123 of the Escuti
`
`Declaration. As the Declaration states, “[c]laim 15 is similar to claim 1,
`
`except that claim 15 further requires that the pattern of light extracting
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`deformities on or in the at least one side has at least two different types of
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`light extracting deformities with one type along the length of the panel
`
`member.” Escuti Decl. ¶ 115. That is, where claims 1 and 13 require
`
`opposite sides of the panel to have different types of deformities, claim 15
`
`requires the same side of the panel to have different types of deformities.
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`
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`Patent Owner’s response does not address claim 15 in its discussion of
`
`Pristash. See Prelim. Resp. 5–14. We have reviewed Petitioner’s analysis of
`
`Pristash, particularly with respect to this feature (Pet. 22–23, citing Pristash
`
`Figs. 5 and 6), and find it sufficient to demonstrate that Petitioner has a
`
`reasonable likelihood of prevailing on this challenge to claim 15 based on
`
`obviousness over Pristash.
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`
`
`
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`
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`c. Claim 27
`
`Independent claim 27 contains the following language similar to that
`
`in claim 15: “the pattern of light extracting deformities on or in the at least
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`one side has at least two different types of light extracting deformities.”
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`Petitioner’s analysis of claim 27 in relation to Pristash appears at pages
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`24–25 of the Petition and at paragraphs 51–52 of the Escuti Declaration. We
`
`determine for the reasons stated above for claim 15, that Petitioner has
`
`demonstrated it is reasonably likely to prevail on this challenge to claim 27.
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`
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`As stated in the Escuti Declaration, one respect in which claim 27
`
`differs from claim 1 is in requiring a “transition region” between the input
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`edge of the panel and the pattern of deformities. Escuti Decl. ¶ 125.
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`Petitioner identifies item 5 in Fig. 1 of Pristash as a “transition device”
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`meeting the transition region recitation. Id. ¶ 107. Patent Owner responds
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`that transition device 5 in Pristash is not a “transition region” as claimed
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`because it is not “part of the panel member.” Prelim. Resp. 8, 11. We are
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`not persuaded by Patent Owner’s argument. Patent Owner points to nothing
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`in the ʼ370 patent specification that requires the transition region to be
`
`integral with the panel, and not a separate part as shown in the ʼ370 patent.
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`We, therefore, do not construe the phrase “the panel member has a transition
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`region” as requiring an integral structure. The transition device described in
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`Pristash, therefore, meets this limitation.
`
`
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`Finally, Patent Owner contends that Petitioner fails to demonstrate
`
`that the requirement that “at least one side of the transition region contains
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`optical elements” is met by Pristash. Prelim. Resp. 11. A similar limitation
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`appears in claim 13. According to Patent Owner, the single lens disclosed in
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`Figure 19 of Pristash (Escuti Decl. ¶ 112) does not meet this requirement for
`
`plural “optical elements.” Prelim. Resp. 12, 14. We are not persuaded by
`
`this argument. Nothing in the ʼ370 patent specification suggests that
`
`“optical elements” should be restricted to one lens, or that using two or more
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`lenses instead of one would not have been obvious. Moreover, Figures 15
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`and 18 of Pristash show multiple “optical elements.” Ex. 1006, col. 7, ll. 18,
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`50–51.
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`
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`
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`
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`d. Claims 29 and 47
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`These independent claims contain the following language similar to
`
`language in claims 1 and 13: “at least some of the light extracting
`
`deformities on or in one of the sides vary in a different way or manner than
`
`the light extracting deformities on or in the other side of the panel member.”
`
`For the reasons discussed above for claims 1 and 13, we determine that
`
`Petitioner has not demonstrated a reasonable likelihood of prevailing on its
`
`challenge to claims 29 and 47 over Pristash.
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`
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`
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`B. Asserted Grounds Based On Ohe (Claims 1, 4, 8, and 29)
`
`Petitioner contends that these claims are anticipated by Ohe under
`
`35 U.S.C. § 102(b). Pet. 22–37.4 For the reasons that follow, we are not
`
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on this challenge.
`
`
`
`1. Ohe Overview
`
`Ohe describes a surface light source element for a surface light source
`
`device that can be used as a back light for a liquid crystal display. Ex. 1007,
`
`p. 2, ll. 3–5. The device has a rectangular light guide with a light emitting
`
`surface, a diffusing member, and a light source. This is illustrated by Figure
`
`4 of Ohe reproduced here:
`
`
`4 The heading for this section in the Petition (Pet. 29) also lists claim 15, but
`because no analysis is provided we do not consider this ground of challenge.
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`In Figure 4 above, light guide 1, reflective layer 2, light diffusing
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`member 3, light source 4, reflector 5, light emitting surface 6, and flat areas
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`8 formed on the roughened surface 9 are shown. Ex. 1007, p. 4, l. 56–p. 5, l.
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`10. The ratio of the flat areas to the roughened surface varies so that the
`
`ratio increases as the distance from the light source increases to regulate the
`
`light through the light emitting surface and make it uniform. Id. at p. 5, ll.
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`7–10.
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`
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`
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`2. Discussion
`
`Petitioner contends that Ohe “discloses each and every element” of
`
`claims 1, 4, 8, and 29. Pet. 30–38. Patent Owner responds that Ohe fails to
`
`meet the element “light extracting deformities on or in one of the sides are of
`
`a different type than the light extracting deformities on or in the other side of
`
`the panel member” in claim 1 and the similar language appearing in claim
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`29. See discussion supra.
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`
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`Both claims 1 and 29 also require “a pattern of light extracting
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`deformities that are projections or depressions.” (Emphasis added.)
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`Petitioner identifies the roughened surfaces 9 in Ohe as these “deformities.”
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`Pet. 32; Escuti Decl. ¶¶ 164. According to the Escuti Declaration, “one of
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`ordinary skill in the art would understand the roughened surfaces of Ohe to
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`be deformities as defined by the ʼ370 patent.” Id.
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`
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`Our construction of the term “deformities” includes “any change in
`
`the shape or geometry of a surface and/or coating or surface treatment that
`
`causes a portion of light to be emitted.” See supra. The language of claims
`
`1 and 29, however, is narrower, specifying “deformities that are depressions
`
`or projections.” Petitioner does not explain how Ohe’s “roughened
`
`surfaces” are “projections” or “depressions,” as required by the claims.
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`Thus, Petitioner has not demonstrated that this limitation is met by Ohe.
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`
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`Petitioner’s analysis of Ohe in relation to these claims is unavailing
`
`for another reason. To meet the requirement of having different types of
`
`deformities on opposite sides of the panel, Petitioner cites the description in
`
`Ohe of the dies used to form the plastic light guide 1. Escuti Decl. ¶¶ 166–
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`67. According to Petitioner, the use of different dies (Die 2 and Die 3)
`
`provides different types of deformities on the opposite sides of the light
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`guide. Id. We are not persuaded by this argument. As noted, the claim
`
`language requires “a pattern of light extracting deformities that are
`
`projections or depressions.” As described by Ohe, Die 3 is produced from a
`
`brass plate whose surface is “polished by a buff with an emery-paper No.
`
`800.” Ex. 1007, p.6, ll. 37–38 (emphasis added). This suggests that the
`
`resulting plastic surface would be flat, not roughened. Petitioner has not
`
`shown there are “deformities that are projections or depressions” on the
`
`opposing surface 6 formed by Die 3, or that any such pattern arrangement of
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`deformities that would result.
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`C. Asserted Grounds Based on Kobayashi (1, 4, and 29)
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`Petitioner contends that these independent claims are anticipated by
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`Kobayashi under 35 U.S.C. § 102(b). Pet. 38–46. For the reasons that
`
`follow, we are not persuaded that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on this ground.
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`
`
`1. Kobayashi Overview
`
`This patent describes planar illuminating device used as a backlight
`
`for liquid crystal displays. Ex. 1008, col.1, ll. 6–9. The device has a
`
`rectangular light transmitting plate of a transparent material. Id., col. 4, ll.
`
`10–11. One side of the plate has prismatic cuts. Id., col. 4, l. 27. The other
`
`side has a reflecting finish, e.g., an array of spot-shaped light reflecting
`
`layers. Id., col. 4, ll. 28–29. This is illustrated by Figure 2 of Kobayashi,
`
`reproduced here:
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`
`
`In Figure 2 above, light plate 2, fluorescent lamps 3, and array of spot-
`
`shaped reflective layers 22 (e.g., of white paint or aluminum vapor
`
`deposition) are shown. Id., col 4, ll. 45–47.
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`2. Discussion
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`Petitioner contends that Kobayashi discloses all elements of claims 1,
`
`4, and 29. Pet. 40. Patent Owner identifies both the prismatic cuts and the
`
`array of spot-shaped light reflecting layers as “deformities.” See Pet. 39
`
`(“prismatic cuts 21 on both the top surface and a spot shaped light reflecting
`
`layer 22 on the bottom surface (surface deformities)”); Escuti Decl. ¶ 203.
`
`The language of the claims, however, specifies “a pattern of light extracting
`
`deformities that are projections or depressions.” Petitioner does not explain
`
`how the spot-shaped reflecting layers, produced by white paint or aluminum
`
`vapor deposition, qualify as “projections or depressions.” The analysis in
`
`the Escuti Declaration (¶ 203) states: “‘deformities’ are understood to be
`
`‘any change in the shape or geometry of the panel surface and/or coating or
`
`surface treatment that causes a portion of the light to be emitted.’” The
`
`Escuti Declaration, however, does not take into account the claim language
`
`limiting “deformities” to “projections or depressions.” Accordingly, we
`
`determine that Petitioner has not demonstrated a likelihood of prevailing on
`
`this challenge.
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`
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`D. Asserted Grounds Based on Kobayashi and Pristash
`
` (Claims 13, 15, 27, and 47)
`
`Petitioner contends that these claims would have been obvious in light
`
`of Kobayashi and Pristash. Pet. 46–58. For the reasons that follow, we are
`
`persuaded that Petitioner has shown a reasonable likelihood of prevailing on
`
`this challenge to claims 15 and 27, but not claims 13 or 47.
`
`Claims 13, 27, and 47 all require a “transition region.” Petitioner
`
`acknowledges that Kobayashi does not “explicitly” disclose a transition
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`region. Pet. 47. Petitioner, therefore, contends that it would have been
`
`obvious to combine Pristash’s transition region with Kobayashi. Petitioner
`
`asserts that this combination would have been obvious because “transition
`
`devices were known at the time for mixing and spreading light from the light
`
`source to the light guide.” Id. The Escuti Declaration (¶¶ 230–33) provides
`
`additional support for this contention.
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`Patent Owner responds (Prelim. Resp. 17) by restating its assertion
`
`that Pristash does not disclose a transition region. See supra. For the
`
`reasons previously stated, we are not persuaded by Patent Owner’s
`
`argument. We conclude, therefore, that Petitioner has provided a sufficient
`
`rationale for combining Pristash and Kobayashi, and that combining the
`
`references would provide a structure meeting the claims.
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`
`
`1. Claims 13 and 47
`
`Claim 13 requires “light extracting deformities on or in one of the
`
`sides are of a different type than the light extracting deformities on or in the
`
`other side of the panel member.” See discussion supra. Claim 47 contains
`
`similar language.
`
`As discussed supra, we determine that Petitioner has failed to present
`
`sufficient proof that this arrangement is described either in Kobayashi or
`
`Pristash. Therefore, we conclude that even by combining these references,
`
`Petitioner has not shown it is reasonably likely to succeed in this challenge
`
`to claims 13 and 47.
`
`
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`2. Claims 15 and 27
`
`As noted, claim 15 requires that “the pattern of light extracting
`
`deformities on or in the at least one side has at least two different types of
`
`light extracting deformities,” with one type varying along the length of the
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`
`panel member. Claim 27 contains similar language. Petitioner relies on
`
`Figures 5 and 6 of Pristash as meeting this limitation. Patent Owner does
`
`not challenge this argument. We have reviewed this argument and find it
`
`convincing. For claim 27, Patent Owner’s additional argument is that the
`
`requirement in the claim that at least one side of the transition region
`
`contains “optical elements” is not met. Prelim. Resp. 18. For the reasons
`
`previously stated, we do not find this argument convincing.
`
`Based on this record, we determine that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on this challenge.
`
`
`
`
`
`E. Real Party-in-Interest
`
`Patent Owner contends that the Petition should be denied because
`
`Petitioner has failed to name two real parties-in-interest. Pet. 18. They are
`
`LG Electronics Inc. and LG Electronics U.S.A. Inc. Id.
`
`Patent Owner fails to provide convincing evidence that LG
`
`Electronics Inc. is a real party-in-interest. According to Patent Owner, “[w]e
`
`know LG Electronics Inc. is a real party in interest because it owns 37.9% of
`
`Petitioner and because it has admitted to being a related party to Petitioner.”
`
`Id. We are not persuaded by this argument. As the Office Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2014), makes clear, and as
`
`Patent Owner acknowledges (Prelim. Resp. 19), an important factor in
`
`determining real party in interest is control or the ability to control the
`
`proceeding. Zoll Lifecor Corp. v. Philips Elect. North America Corp,
`
`IPR2013-00609 (PTAB Mar. 20, 2014), Paper 15, slip op. at 10. In Zoll, the
`
`Board relied on the fact that the party determined to be a real party-in-
`
`interest (Zoll Medical) controlled 100 % of the petitioner (Zoll Lifecor).
`
`
`
`16
`
`Pretech_001009
`
`

`
`Case IPR2014-01096
`Patent 7,537,370
`
`Here, LG Electronics Inc. is not even a majority owner of Petitioner. And
`
`the fact that the attorneys representing Petitioner here also represent LG
`
`Electronics Inc. in a district court lawsuit involving the ʼ370 patent, without
`
`more, is insufficient evidence of control of this proceeding by LG
`
`Electronics.
`
`Patent Owner also fails to provide convincing evidence that LG
`
`Electronics U.S.A. Inc. is a real party-in-interest. Patent Owner sole
`
`argument states “[w]e know that LG Electronics U.S.A., Inc. is a real party-
`
`in-interest because it is 100 % owned by LG Electronics, Inc.” Prelim.
`
`Resp. 18–19. But Patent Owner has not provided sufficient proof that LG
`
`Electronics Inc. is a real party-in-interest. See supra. Therefore, Patent
`
`Owner’s contention that LG Electronics U.S.A. Inc. also is a real party-in-
`
`interest simply because it is “100% owned by LG Electronics, Inc.” is not
`
`persuasive.
`
`We therefore determine that the Petition should not be denied on this
`
`ground.
`
`
`
`III. SUMMARY
`
`The information presented shows there is a reasonable likelihood that
`
`Petitioner will prevail on the following challenges to patentability of the
`
`ʼ370 patent:
`
`A. Anticipation of claims 15 and 27 by Pristash; and
`
`B. Obviousness of claims 15 and 27 over Kobayashi and Pristash.
`
`The information presented does not show there is a reasonable
`
`likelihood that Petitioner will prevail on any of the following challenges to
`
`patentability of the ʼ370 patent:
`
`
`
`17
`
`Pretech_001010
`
`

`
`Case IPR2014-01096
`Patent 7,537,370
`
`
`C. Obviousness of claims 1, 4, 8, 13, 29, and 47 over Pristash;
`
`D. Anticipation of claims 1, 4, 8, 15, and 29 by Ohe;
`
`E. Anticipation of claims 1, 4, and 29 by Kobayashi; and
`
`F. Obviousness of claims 13 and 47 over Kobayashi and Pristash.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the patentability of any challenged claim or the
`
`construction of any claim term.
`
`
`
`It is, therefore,
`
`IV. ORDER
`
`ORDERED that the Petition is granted as to claims 15 and 27 of the
`
`ʼ370 patent and denied as to all other challenged claims;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`
`partes review is hereby instituted on the following grounds:
`
`A. Anticipation of claims 15 and 27 by Pristash; and
`
`B. Obviousness of claims 15 and 27 over Kobayashi and Pristash;
`
`FURTHER ORDERED that no other proposed grounds of
`
`unpatentability are authorized; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`
`commencing on the entry date of this decision.
`
`
`
`
`
`18
`
`Pretech_001011
`
`

`
`Case IPR2014-01096
`Patent 7,537,370
`
`PETITIONER:
`
`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
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`
`19
`
`Pretech_001012

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