Trials@uspto.gov
`571-272-7822
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` Paper 10
` Date: January 22, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`SOLAS OLED LTD.,
`Patent Owner.
`____________
`
`IPR2020-01238
`Patent 7,573,068 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

`

`IPR2020-01238
`Patent 7,573,068 B2
`
`
`I. INTRODUCTION
`LG Display Co., Ltd. (“Petitioner”) filed a Petition for inter partes
`review of claims 1, 5, 9–13, and 17 of U.S. Patent No. 7,573,068 B2
`(Ex. 1001, “the ’068 patent”). Paper 2 (“Pet.”). Solas OLED Ltd. (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). In
`accordance with Board authorization, Petitioner filed a Reply to the
`Preliminary Response (Paper 8, “Pet. Reply”) and Patent Owner filed a Sur-
`Reply (Paper 9, “PO Sur-Reply”).
`We have authority to determine whether to institute inter partes
`review. 35 U.S.C. § 314(a). For the reasons that follow, we exercise our
`discretion under 35 U.S.C. § 314(a) to deny institution of inter partes
`review.
`
`A. Related Matters
`The parties indicate that the ’068 patent is or has been the subject of,
`or relates to, the following proceedings: Solas OLED Ltd. v. LG Display
`Co., Ltd., et al., Case No. 6:19-cv-00236-ADA (W.D. Tex.) (“the underlying
`litigation”); Solas OLED Ltd. v. Apple Inc., Case No. 6:19-cv-00537-ADA
`(W.D. Tex.); and Solas OLED Ltd. v. HP Inc. f/k/a Hewlett-Packard Co.,
`Case No. 6:19-cv-00631-ADA (W.D. Tex.). Pet. 2; Paper 3, 2. The ’068
`patent also is the subject of IPR2020-01546, but a determination whether to
`institute inter partes review has not yet been made.
`In the underlying litigation, Patent Owner has asserted two other
`patents in addition to the ’068 patent: U.S. Patent Nos. 7,432,891 B2 (“the
`’891 patent”) and 7,907,137 B2 (“The ’137 patent”). Petitioner has
`challenged the ’891 patent in IPR2020-00177, and the panel instituted inter
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`IPR2020-01238
`Patent 7,573,068 B2
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`partes review in that case.1 Petitioner challenged the ’137 patent in
`IPR2020-01055, but the panel exercised discretion under 35 U.S.C. § 314(a)
`to deny institution of inter partes review.
`
`B. The ’068 Patent
`The Specification of the ’068 patent describes a transistor array
`substrate having a plurality of transistors which supply current to light-
`emitting elements. Ex. 1001, 1:16–20. A stated object of the invention is
`“to satisfactorily drive a light-emitting element while suppressing any
`voltage drop and signal delay.” Id. at 2:39–41. The ’068 patent describes
`achieving this objective by patterning thick feed interconnections. Id. at
`3:60–4:3.
`
`C. Illustrative Claim
`Petitioner challenges claims 1, 5, 9–13, and 17 of the ’068 patent.
`Claims 1 and 13 are independent claims. Claim 1 is reproduced below.
`1. A transistor array substrate comprising:
`a substrate;
`a plurality of driving transistors which are arrayed in a matrix on
`the substrate, each of the driving transistors having a gate, a
`source, a drain, and a gate insulating film inserted between
`the gate, and the source and drain;
`a plurality of signal lines which are patterned together with the
`gates of said plurality of driving transistors and arrayed to run
`in a predetermined direction on the substrate;
`a plurality of supply lines which are patterned together with the
`sources and drains of said plurality of driving transistors and
`arrayed to cross said plurality of signal lines via the gate
`insulating film, one of the source and the drain of each of the
`
`1 We note that in IPR2020-00177 Patent Owner did not file a preliminary
`response.
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`driving transistors being electrically connected to one of the
`supply lines; and
`a plurality of feed interconnections which are formed on said
`plurality of supply lines along said plurality of supply lines,
`respectively.
`Ex. 1001, 32:39–57.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 5, 9–13, and 17 are unpatentable based
`on the following grounds (Pet. 4):
`
`Reference(s)/Basis
`Shin3
`Shin
`Shin, Hector4
`
`Claim(s) Challenged
`1, 5, 10, 11, 13
`13
`1, 5, 9–13, 17
`
`35 U.S.C §
`102(e)2
`103(a)
`103(a)
`II. DISCUSSION
`Institution of inter partes review is discretionary. Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is
`permitted, but never compelled, to institute an [inter partes review]
`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`partes review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’068
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`3 WO 2004/090853 A1, published Oct. 21, 2004 (Ex. 1005, “Shin”).
`4 WO 03/079442 A1, published Sept. 25, 2003 (Ex. 1006, “Hector”).
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`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”).
`Patent Owner contends we should exercise our discretion to deny
`institution under 35 U.S.C. § 314(a). Prelim. Resp. 1; PO Sur-reply 1.
`Petitioner argues against discretionary denial based on § 314(a). Pet. 16;
`Pet. Reply 1. For the reasons provided below, we exercise our discretion to
`deny institution under 35 U.S.C. § 314(a).
`The Board has identified a non-exclusive list of factors to determine
`whether efficiency, fairness, and the merits favor discretionary denial in
`view of parallel district court litigation. Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)).
`Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11 at 5–6. In evaluating the factors, we take a holistic view of
`whether efficiency and integrity of the patent system are best served by
`denying or instituting review. Id. at 6.
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`A.
`
`
`Stay in the Underlying Litigation
`According to the parties, the underlying litigation has not been stayed,
`and neither party indicates Petitioner has sought a stay. Prelim. Resp. 6–8;
`Pet. Reply 2; PO Sur-reply 1–2. Patent Owner argues that the presiding
`judge in the underlying litigation “rarely grants stays pending IPR.” Prelim.
`Resp. 7. Patent Owner also argues that by the institution decision deadline,
`the parties will be less than a month from trial and it is “highly unlikely” that
`the presiding judge in the underlying litigation would entertain a stay at such
`a late juncture. Id. Petitioner argues that factor 1 is neutral. Pet. Reply 2.
`In the absence of any specific statements from the district court about
`its amenability to stay the underlying litigation, we decline to speculate
`about the presiding judge’s inclinations. See Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“We
`decline to infer, based on actions taken in different cases with different
`facts, how the District Court would rule should a stay be requested by the
`parties in the parallel case here.”). Thus, we find this factor is neutral.
`The Trial Date in the Underlying Litigation
`B.
`A jury trial is scheduled to begin in the parallel district court
`proceeding on March 29, 2021. Prelim. Resp. 2 (citing Ex. 2004), 8. Patent
`Owner argues that “[t]he statutory deadline for this FWD is March 1, 2022”
`such that “the district court trial will start almost a full year before the FWD
`deadline.” Id. at 8. Patent Owner further argues that there are no “non-
`speculative reasons to believe that the WDTex trial will be postponed in
`view of the COVID-19 pandemic,” and that it is unaware “of any orders
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`continuing jury trials in the Waco Division of the Western District of
`Texas.” Id. at 8–9.
`Petitioner argues that the trial date “cannot be accurately predicted
`given (1) the WDTX’s congested docket, (2) rising COVID rates, and (3) the
`Court having invited LG to revisit the trial date.” Pet. Reply 2 (citing Exs.
`1027–1031, 1034, 1035). We have considered Petitioner’s arguments and
`evidence. Petitioner, however, does not direct us to sufficient evidence that
`the presiding judge in the underlying litigation would be persuaded by any
`of these factors. As pointed out by Patent Owner in its Sur-reply, per a
`December 9, 2020 order, the presiding judge reiterated that the “Trial
`remains set for 3/29/21 at 9:00am.” PO Sur-reply 2 (citing Ex. 2015). The
`presiding judge so indicated, despite Petitioner’s August 31, 2020 filing with
`the court that it had a conflict with the trial date. Ex. 1035 ¶ 6.
`Despite the scheduled trial date in the underlying litigation, Petitioner
`argues that Patent Owner has asserted the ’068 patent against other
`defendants and that the most efficient way to resolve the “duplicative
`disputes is through this single IPR proceeding.” Pet. Reply. 1–2. We agree
`with Patent Owner that Petitioner’s argument is not particularly relevant to
`the facts of this case, as none of the identified defendants is “involved in this
`IPR or the underlying WDTex litigation.” PO Su-reply 1. In any event,
`Patent Owner directs us to evidence that at least with respect to some of the
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`“other defendants,” an agreement likely will lead to the dismissal of cases
`involving some of these “other defendants.” Id. (citing Ex. 2012).
`For the above reasons, this factor favors the exercise of discretionary
`denial.
`Investment by the Court and the Parties in the Underlying Litigation
`C.
`Patent Owner argues that at the time of the institution decision (March
`1, 2021), “the parties will have completed all fact discovery, expert reports,
`expert discovery, summary judgment and Daubert briefing, and the bulk of
`pretrial disclosures.” Prelim. Resp. 10 (citing Ex. 2005, 2–3). Patent Owner
`further contends “the court and parties have already invested heavily in the
`’068 patent through extensive Markman proceedings disputing six terms
`from the ’068 patent (see Ex. 2006), and completing all disclosures and fact
`discovery.” Id. at 12.
`Petitioner acknowledges that claim construction is complete, but
`argues that the “Court and the parties have made little relevant investment.”
`Pet. Reply 3. Petitioner also minimizes the investment related to invalidity
`contentions as having been borne primarily by Petitioner, not Patent Owner.
`Id. at 3–4.5
`This factor considers investment by both parties. Fintiv, Paper 11 at
`9–10. Thus, contrary to Petitioner’s arguments (Pet. Reply 3–4), we do
`consider Petitioner’s own efforts in the underlying litigation, including its
`
`
`5 Petitioner also argues that had the Board acted more swiftly in docketing
`this IPR, our “Institution Decision would have issued December 2 or 6 . . .
`well before the close of discovery, dispositive motions, etc.” Pet. Reply 4
`(citing Ex. 2005). Petitioner’s argument is speculative and not particularly
`relevant here to the timing of the underlying litigation events and the
`institution due date here.
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`work on invalidity contentions, for example. Notwithstanding, we also
`consider whether the alleged investment in the underlying litigation is
`tethered to the merits of the parties’ validity positions in that litigation and,
`by extension, their patentability positions here. See Sand Revolution II, LLC
`v. Continental Intermodal Group–Trucking LLC, IPR2019-01393, Paper 24
`at 10–11 (June 16, 2020) (informative) (“Sand Revolution”).
`Certain work underway or already completed in the underlying
`litigation has relevance to issues in the Petition. We note that Petitioner
`filed final invalidity contentions in the underlying litigation (Ex. 2010),
`along with its expert report (Ex. 2018). The vast majority of the work on the
`remaining tasks in the underlying litigation will likely be completed by the
`time this Decision issues. Exs. 2005, 2015. We additionally note that the
`court has completed claim construction. Ex. 2003. We have considered
`Petitioner’s argument that the summary nature of the court’s claim
`construction order does not exhibit the same level investment as detailed
`claim construction orders in other cases. Pet. Reply 3. Petitioner, however,
`overlooks the extensive court conducted hearing on claim construction with
`argument from both parties that led to oral claim construction rulings that
`were later finalized per written order. Ex. 1037. We determine that the
`claim construction hearing is additional case development relevant to the
`issues here. Taken together, we find that the court and the parties’
`investment in the underlying litigation weighs in favor of exercising
`discretion to deny institution.
`We also consider whether Petitioner unreasonably delayed in filing
`the Petition in this case. See Fintiv, Paper 11 at 11–12. Petitioner argues
`that the Petition was filed “less than seven weeks after learning the Court’s
`unexpected claim constructions, which expanded the number of relevant
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`prior art preferences and made plainer the invalidity of the ’068 patent.” Pet.
`16–17. Petitioner further argues that Shin could not have been identified
`sooner because it discloses the claimed “signal lines” and “feed
`interconnections” features apparent under the Court’s broad construction and
`not under the constructions for those terms that Petitioner asserted. Id. at 17;
`Pet. Reply 1. Nonetheless, Petitioner argues that the fact that it filed the
`Petition after learning of the claim construction in the underlying litigation,
`“weighs, at most, only ‘moderately’ in favor of denial.” Pet. Reply 3.
`Patent Owner argues that Petitioner was aware of the asserted claims
`in November 2019, and that Petitioner served invalidity contentions in
`January 2020, but Petitioner nonetheless waited to file the Petition until July
`2020. Prelim. Resp. 13; PO Sur-reply 3. Patent Owner also argues that the
`Petition followed closely after the court completed claim construction in
`May 2020 and, thus, was not filed “expeditiously,” causing prejudice to
`Patent Owner. Prelim. Resp. 13–14 (citing Fintiv, Paper 11 at 11). Patent
`Owner further contends that Petitioner’s justification for delay should be
`rejected because Petitioner’s invalidity contentions are based in part on
`Patent Owner’s infringement contentions and not limited to any
`construction, and Petitioner had notice of the court’s claim construction at
`least since receiving Patent Owner’s proposed constructions. Id. at 14; PO
`Sur-reply 3.
`Patent Owner identified its asserted claims in the underlying litigation
`on November 26, 2019. Ex. 2001. Petitioner served its preliminary
`invalidity contentions in the underlying litigation on January 24, 2020. Ex.
`2016. The court conducted a claim construction hearing on May 22, 2020,
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`and issued a claim construction order on June 9, 2020. Ex. 1037; Ex. 2003.
`The Petition was filed July 8, 2020.6
`Petitioner acknowledges that it waited to file the Petition until after
`the court’s claim construction ruling. Pet. 16–17. We agree with Patent
`Owner, however, that Petitioner was made aware of Patent Owner’s
`proposed construction (which the court adopted) for “signal lines” in
`February 2020. Prelim. Resp. 14. We further agree with Patent Owner that
`the court’s construction for “feed interconnections” was not wholly
`unexpected, as the construction is consistent with the claim language that the
`feed interconnections are “formed on along” supply lines, implying that the
`interconnections and supply lines are in different layers. Id. at 14–16.
`Petitioner does not respond to Patent Owner’s arguments in that regard. See
`generally Pet. Reply. Thus, we agree with Patent Owner that Petitioner fails
`to explain adequately why it could not have found Shin or Hector earlier
`through reasonable diligence. PO Sur-reply 4.
`For all of these reasons, we determine that Petitioner has not
`explained sufficiently why it did not file the Petition earlier, further favoring
`the exercise of discretionary denial.
`D. Overlap of Issues
`Petitioner contends that (1) claims 1, 5, 10, 11, and 13 are
`unpatentable as anticipated by Shin, (2) claim 13 would have been obvious
`based on Shin, and (3) claims 1, 5, 9–13, and 17 would have been obvious
`based on Shin in view of Hector. Pet. 4. In the underlying litigation,
`Petitioner challenges the validity of claims 1, 5, 10, 12, 13, and 17.
`
`6 We understand that the 35 U.S.C. § 315(b) statutory bar date in this case
`was August 26, 2020. Thus, the Petition was filed seven weeks from the
`statutory bar date. See IPR2020-01055, Ex. 2010.
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`Ex. 2010, 1. Petitioner lists Shin and Hector as asserted prior art references
`in the underlying litigation. Id. at 41, 44.
`Regarding overlap of issues, Petitioner argues that it “agrees to not
`pursue in court any specific ground that the Board instituted for challenging
`the ’068 patent.” Pet. 18; Pet. Reply 4 (citing Ex. 1033). Petitioner also
`argues that the Petition challenges additional claims that are not at issue in
`the underlying litigation. Pet. 18; Pet. Reply 4.7
`Patent Owner argues that Petitioner’s stipulation is narrow and
`contends that it “only ‘mitigates to some degree’ concerns about duplicative
`issues.” Prelim. Resp. 19–20. Patent Owner further argues that
`“Defendants’ invalidity expert report substantially overlaps with the Petition,
`asserting that claims 1, 5, 10, and 13 are anticipated by Shin (Ground 1) and
`that claim 13 is rendered obvious by Shin (Ground 2).” PO Sur-reply (4
`(citing Ex. 2017; Ex. 2018). Patent Owner contends that Petitioner’s narrow
`stipulation “is entitled to less weight here because of its late timing” as
`“[o]verlapping issues are guaranteed to remain in the WDTex case until a
`month before trial.” Id. Patent Owner also argues that the additional
`dependent claims challenged here are similar to the independent claims at
`issue in the underlying litigation and implicate the same issues. Id. (citing
`Fintiv, Paper 11 at 13 & 13 n.25 (citing Next Caller, Inc. v. TRUSTID, Inc.,
`IPR2019-00961, Paper 10 at 14 (PTAB Oct. 16, 2019) (denying institution
`because petitioner does not argue that the non-overlapping claims differ
`
`7 Despite Petitioner’s final invalidity contentions listing claims 1, 5, 10, 12,
`13, and 17 of the ’068 as involved in the underlying litigation (Ex. 2010, 1),
`the parties appear to agree that claim 12 is not involved in the underlying
`litigation. Prelim. Resp. 18, 21; Pet. Reply 4; PO Sur-reply 4. Thus, we
`assume for purposes of this decision that dependent claims 9, 11, and 12
`involved here are not involved in the underlying litigation.
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`significantly in some way or argue whether it would be harmed if institution
`of the non-overlapping claims is denied)).
`We agree with Patent Owner that Petitioner’s stipulation is similar to
`the one in Sand Revolution insofar as it focuses on the same grounds
`challenged in the Petition. Thus, it “mitigates to some degree the concerns
`of duplicative efforts between the district court and the Board, as well as
`concerns of potentially conflicting decisions.” Sand Revolution, Paper 24 at
`12 & n.5. Further, Petitioner is correct that three claims challenged here are
`not challenged in the underlying litigation. Pet. Reply 4. Thus, given
`Petitioner’s stipulation and the differences in asserted claims, we find this
`fact favors institution.
`E. Whether Petitioner is Unrelated to the Defendant in the Underlying
`Litigation
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv, Paper 11 at 13–14. Both parties acknowledge that Petitioner here is
`the defendant in the underlying litigation. Prelim. Resp. 22–23; Pet. Reply
`4; PO Sur-reply 2. Thus, this factor does not weigh against exercising
`discretionary denial.
`F. Other Considerations
`As indicated in Fintiv, a balanced assessment of factors may include
`consideration of the merits. Fintiv, Paper 11 at 14–15. Here, the parties
`make arguments related to the merits of Petitioner’s unpatentability
`challenges. Pet. 19–20; Prelim. Resp. 24–25; Pet. Reply 4–5; PO
`Sur-reply 5. The decision whether to exercise discretion to deny institution
`under § 314(a) is based on “a balanced assessment of all relevant
`circumstances in the case, including the merits.” Patent Trial and Appeal
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`Board Consolidated Trial Practice Guide 58 (Nov. 2019) (“Consolidated
`Trial Practice Guide”), available at https://www.uspto.gov/sites/default/
`files/documents/tpgnov.pdf. We have reviewed Petitioner’s
`unpatentability arguments in the Petition and Reply, and Patent Owner’s
`arguments in the Preliminary Response and Sur-reply. Based on the
`limited record before us, we do not find that the merits outweigh the other
`Fintiv factors.
`
`III. CONCLUSION
`Based on the particular circumstances of this case, we determine that
`instituting an inter partes review would be an inefficient use of Board
`resources. As discussed above, the trial in the parallel district court
`proceeding is currently scheduled for March 29, 2021, which is several
`months before we would reach a final decision in this proceeding. The court
`and parties have expended considerable time and effort in preparing for the
`upcoming trial and Petitioner has not explained adequately why it filed the
`Petition long into the development of the underlying litigation. Moreover,
`we note that the merits of the vast majority of Petitioner’s unpatentability
`contentions here are already being considered as part of its invalidity case in
`the underlying litigation. On balance, after a holistic consideration of the
`relevant facts, we conclude that efficiency and integrity of the system are
`best served by denying institution. Thus, we exercise our discretion under
`§ 314(a) to deny institution of inter partes review.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that no inter partes review is instituted.
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`Patent 7,573,068 B2
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` PETITIONER:
`
`Jonathan M. Strang
`Gabriel S. Gross
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`gabe.gross@lw.com
`
`
`
`PATENT OWNER:
`Philip Wang
`Neil A. Rubin
`Reza Mirzaie
`Kent Shum
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
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