UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG DISPLAY CO., LTD.,
`Petitioner
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`v.
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`SOLAS OLED, LTD.,
`Patent Owner
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`Case IPR2020-01055
`U.S. Patent No. 7,907,137
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`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`LG DISPLAY CO., LTD.,
`Petitioner
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`v.
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`SOLAS OLED, LTD.,
`Patent Owner
`____________
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`Case IPR2020-01055
`U.S. Patent No. 7,907,137
`____________
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`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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`PATENT OWNER’S EXHIBIT LIST
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`Description
`Scheduling Order, Solas OLED Ltd. v. LG Display Co., Ltd., LG
`Electronics, Inc., and Sony Corporation, Case No. 6:19-cv-236-
`ADA (“Solas v. LG”), Dkt. 59 (W.D. Tex., Dec. 21, 2019)
`Solas’s preliminary infringement contentions cover pleading in So-
`las v. LG served on November 26, 2019
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`Defendants’ preliminary invalidity contentions cover pleading and
`exhibit charts C1 and C3 in Solas v. LG served on January 24, 2020
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`Order Setting Jury Selection and Trial, Solas v. LG, Dkt. 86 (W.D.
`Tex. Aug. 20, 2020)
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`Defendants’ final invalidity contentions cover pleading and exhibit
`charts C1 and C3 in Solas v. LG served on July 31, 2020
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`Ex.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`Law360 Article: West Texas Judge Says He Can Move Faster Than
`PTAB
`Joint Claim Construction Statement, Solas v. LG, Dkt. 76 (W.D.
`Tex. May 1, 2020)
`2008
`Defendant LG Display’s initial disclosures in Solas v. LG served
`May 29, 2020
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`2009 WDTex Divisional Standing Order Regarding Trials in Waco dated
`August 18, 2020
`Proof of Service, Solas v. LG, Dkt. 29 (W.D. Tex., Aug. 27, 2019)
`Defendants’ proposed constructions in Solas v. LG served on Feb-
`ruary 21, 2020
`Transcript of May 22, 2020 Markman Hearing in Solas v. LG
`Solas’s Second Supplemental Responses to Defendants’ First Set of
`Interrogatories in Solas v. LG served October 15, 2020 (excerpts)
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`2010
`2011
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`2012
`2013
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`i
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`Petitioner could have filed this IPR months earlier but delayed so that it could
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`(1) assert indefiniteness district court Markman proceedings and (2) avoid taking
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`IPR positions that might undermine those assertions. Only after the district court
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`issued its Markman ruling did Petitioner file this IPR. This timing is procedurally
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`unfair to Patent Owner and inefficient for the parties and the court. Under a balanced
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`assessment of § 314(a) and the Fintiv factors, institution should be denied.
`Fintiv Factor 1: Factor 1 weighs against institution because the specific facts
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`of this case undermine a potential stay. POPR at 3. In the WDTex case, Defendants
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`waited until after the Markman order to file IPRs on two of the three asserted patents
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`(the ’137 and ’068 patents), and the institution decisions won’t arrive until after ex-
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`pert reports. Id.; IPR2020-01238. Petitioner doesn’t dispute these facts but argue that
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`the ’068 patent might be stayed if an ITC action is instituted. But this is specula-
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`tive—at least because the WDTex case and ITC action involves different asserted
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`claims for the ’068 patent and different issues. Ex. 2002 at 2 (claims 1, 5, 10, 12, 13,
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`17 in WDTex); Ex. 1023 at 40 (claims 13–17 in the ITC).
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`Fintiv Factors 2 & 5: Petitioner doesn’t dispute that the parties are the same,
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`so Factor 5 weighs against institution. As to Factor 2, there is still no evidence that
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`the March 2021 WDTex trial will be postponed. Judge Albright recently started and
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`completed a patent jury trial due to a “meaningful decline” in new COVID-19 cases
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`around the Waco division. See Ex. 2009 (Order Resuming Jury Trials).
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`Indeed, this WDTex trial is more certain than the trials at issue in Fintiv and
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`Sand. In Fintiv, the trial had already been postponed by several months because of
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`1
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`COVID-19. Fintiv ID. at 13. And in Sand, there were significant adjustments to the
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`scheduling order and the calendared trial date included the qualifier “or as availa-
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`ble.” See IPR2019-01393, Paper 24 at 9. Here, there have been no significant adjust-
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`ments to the case schedule, nor any qualifications about the trial date.
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`Fintiv Factor 3: Petitioner unduly delayed in filing this Petition in June
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`2020—9.5 months after being served with a complaint in August 2019. Ex. 2010
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`(POS). Contrary to Petitioner’s argument, this was seven months after being notified
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`of the asserted claims. Ex. 2002. Petitioner’s reference to other exchanges after the
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`Petition was filed (Reply at 4) are irrelevant and cannot support diligence.
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`Indeed, Petitioner could and should have filed the Petition in February 2020,
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`when it already proposed constructions for the ’137 patent. Ex. 2011. Instead, Peti-
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`tioner waited until after the Markman order to take two bites at invalidity apple—
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`first indefiniteness in district court and, if unsuccessful, obviousness at the PTAB.
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`See POPR at 8–9. The Reply doesn’t even dispute that this timing was strategically
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`motivated and operated to unfairly prejudice Patent Owner.
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`Petitioner’s argument that waiting for the Markman ruling on indefiniteness
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`“cuts the other way” (Reply at 3) is frivolous. The Board has never approved such a
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`rationale—especially where, as here, the parties were “faced with the prospect of a
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`looming trial date.” Fintiv Order at 11; Ex. 2001. To the contrary, the Board’s rules
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`encourage petitioners to file petitions as expeditiously as possible and to adopt con-
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`sistent constructions between district court and the PTAB.
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`As to level of investment, Petitioner attempts to minimize all work by drawing
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`2
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`artificial, fine-grain distinctions. Reply at 3–4. But Factor 3 looks at the overall work
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`in the parallel litigation by the court and parties, including work on the patent. Fintiv
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`Order at 9–10. It isn’t limited to work on a particular issue or by a particular party.
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`Regardless, under any measure, the relevant investments are substantial.
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`First, the parties’ claim construction work on seven disputed terms of the ’137
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`patent alone constitutes substantial investment. POPR at 5 (citing hundreds of pages
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`of briefing, expert declarations, expert depositions, technology tutorials, and hearing
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`slides). Contrary to Petitioner’s assertion, the proper constructions of the ’137 claims
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`is directly relevant to invalidity. The Court’s investment in construing seven terms
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`was also substantial. It carefully reviewed the parties’ submissions, and the intrinsic
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`and extrinsic evidence, to determine that the terms aren’t indefinite or limited to
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`Defendants’ narrow proposals. The Markman hearing was nearly three hours long
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`and spans 112 pages of transcript. Ex. 2012. The Court also indicated that it plans to
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`issue a more detailed claim construction memorandum. Ex. 1024 at 2.
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`Second, by the time of the institution decision, the parties will have completed
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`all fact discovery and expert reports in the WDTex case, including on the ’137 pa-
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`tent. Solas has already invested work addressing invalidity in written discovery. Ex.
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`2013 (55-pages of rog responses on invalidity). And because Defendants haven’t
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`expressly waived any invalidity theories, the same IPR invalidity arguments in play
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`for expert reports. Defendants may well raise the same/similar arguments in its No-
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`vember 6, 2020 invalidity report. And Patent Owner will be required to address them
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`and all invalidity in its December 4, 2020 rebuttal report.
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`3
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`Fintiv Factor 4: Defendants stipulate that if the IPR instituted, they won’t
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`pursue the identical IPR invalidity grounds in the WDTex case. See Reply at 2; Ex.
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`2021. But concerns of duplicative remain. Defendants may still assert in WDTex the
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`same invalidity ground (obviousness) based on the Miyazawa primary reference
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`combined with other references. And Defendants may still rely on Childs as a sec-
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`ondary reference or even as a primary reference.
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`Under the Board’s precedents, Defendants’ narrow stipulation only “mitigates
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`to some degree” concerns about duplicative issues. See Sand Revolution II, LLC,
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`Continental Intermodal Grp. – Trucking LLC, IPR2019-013393, Paper 24 at 12, n.
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`5 (PTAB June 16, 2020) (a broader stipulation would “better address regarding du-
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`plicative efforts and potentially and potentially conflicting decisions in a much more
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`substantial way” and “help ensure that an IPR functions as true alternative to litiga-
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`tion”). Thus, Factor 4 “weighs marginally” against discretionary denial. Id. at 12.
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`That the IPR challenges two claims not asserted in WDTex is immaterial to
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`Factor 4 and other factors. POPR at 13 (citing PayPal); HP Inc. et al. v. Neodron
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`Ltd., IPR2020-00459, Paper 17 at (PTAB Sept. 14, 2020) (“We give no weight to
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`the unasserted claims that are challenged in this Petition”; that challenge “does not
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`affect how we exercise our discretion”) (emphasis added).
`Fintiv Factor 6: Petitioner’s strategy of waiting for its indefiniteness asser-
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`tions to be denied before launching this IPR is (a) procedurally unfair to Patent
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`Owner and (b) inefficient for all parties and supports. This supports discretionary
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`denial under Factor 6 and the Board’s overall assessment. See Fintiv Order at 14–
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`4
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`16; TRIAL PRACTICE GUIDE (Nov. 2019) at 35 (“The rules governing [IPRs] were
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`designed to promote fairness and efficiency.”).
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`Further, contrary to Petitioner’s assertion, the WDTex case is the only pro-
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`ceeding in which the ’137 patent is asserted. That case is fully equipped to address
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`parties’ invalidity disputes because the ’137 patent is one of three asserted patents
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`and represents 6 of 14 asserted claims. See Ex. 2002 at 2; cf. Apple. v. Seven Net-
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`works, IPR2020-00156, Paper 10 at 21–22 (June 20, 2020) (Factor 6 favoring insti-
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`tution because of “complicated and overlapping jury issues of ten patents”).
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`Finally, the Petition’s merits are questionable—particularly as to the limita-
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`tion “detects/detecting a threshold voltage.” See POPR 15–18. Petitioner’s argu-
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`ments for this limitation rely on various, unsupported inferences and its declarant’s
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`ipse dixit opinions. To take just one example, page 40 of the Petition asserts
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`Miyazawa and Childs could be combined and would yield a reasonable likelihood
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`of success based on little more than the assertion that circuit and timing arrangements
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`were “generally predictable” and “could be implemented” by a POSITA. The Peti-
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`tion cites to Hatalis paragraphs 149–51 as alleged support but the declaration offers
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`no more reasoning or evidence. Petitioner and its declarant’s assertions are conclu-
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`sory, lack adequate evidence, and fail to show obviousness.
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`Respectfully submitted,
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`Dated: October 15, 2020
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` /s/ Philip Wang
`Philip Wang (Reg. No. 74,621)
`Neil Rubin (Reg. No. 67,030)
`Russ August & Kabat
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`5
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`nrubin@raklaw.com
`rak_solas@raklaw.com
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`Counsel for Patent Owner
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`6
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`IPR2020-01055 (’137 patent)
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` POPR Sur-reply
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`October 15, 2020, by filing this document through the Patent Trial and Appeal Board
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`End to End system as well as delivering a copy via email upon the following attor-
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`neys of record for the Petitioner:
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`
`Gabriel S. Gross (Reg. No. 52,973)
`gabe.gross@lw.com
`Douglas E. Lumish
`doug.lumish@lw.com
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: 650.328.4600
`Fax: 650.463.2600
`
`
`
`
`
`Joseph H. Lee
`joseph.lee@lw.com
`Latham & Watkins LLP
`650 Town Center Drive, 20th Floor
`Costa Mesa, CA 92626-1925
`Telephone: 714.540.1235
`Fax: 714.755.8290
`
`Blake R. Davis
`blake.davis@lw.com
`Latham & Watkins LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111-6538
`Telephone: 415.391.0600
`Fax: 415.395.8095
`
`/s/ Philip Wang
`
`Philip Wang (Reg. No. 74,621)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`(310) 826-7474
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`Counsel for Patent Owner
`
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`Date: October 15, 2020
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