UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`LG DISPLAY CO., LTD.,
`Petitioner
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`____________
`
`Case IPR2020-01238
`U.S. Patent No. 7,573,068
`____________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`LG DISPLAY CO., LTD.,
`Petitioner
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`____________
`
`Case IPR2020-01238
`U.S. Patent No. 7,573,068
`____________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`I. BACKGROUND ............................................................................................... 1
`
`A. District Court Factual Background ................................................................. 1
`
`B. District Court Claim Constructions ................................................................ 3
`
`C. Related Proceedings ....................................................................................... 5
`
`II. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ........................ 5
`
`A. Factor 1 weighs against institution, as no court has granted a stay and no
`evidence exists that a stay may be granted. ........................................................... 6
`
`B. Factor 2 weighs strongly against institution, as the WDTex trial is scheduled
`to begin almost a full year before the FWD deadline. ........................................... 8
`
`C. Factor 3 weighs strongly against institution, as the WDTex court and parties
`will soon complete all pre-trial work. ................................................................... 9
`
`1. The court and parties have invested heavily in the ’068 patent and will
`continue to before this institution decision. ..................................................... 10
`2. Petitioner LG Display delayed in filing this Petition and unfairly
`prejudiced Patent Owner. ................................................................................. 12
`3. Petitioner’s justifications for delay should be rejected. ............................ 14
`D. Factor 4 weighs strongly against institution, as there is substantial overlap
`between this IPR and district court proceedings ................................................. 17
`
`1. LG Display purports to raise the same prior art and invalidity arguments in
`the WDTex case by “incorporating by reference” this IPR into its final
`invalidity contentions. ...................................................................................... 17
`
`
`
`i
`
`
`
`2. Petitioner’s agreement to not pursue “any specific ground that the Board
`institutes” is insufficient and fails to address duplicative efforts and potentially
`conflicting decisions. ....................................................................................... 19
`3. That this IPR challenges three additional, unasserted claims of the ’068
`patent is inconsequential. ................................................................................. 21
`E. Factor 5 weighs against institution, as Petitioner is a Defendant in the
`WDTex case and closely related to the other Defendants. .................................. 22
`
`F. Factor 6 weighs against institution, as many practical considerations support
`discretionary denial. ............................................................................................ 23
`
`G. Summary of Factors and Conclusion ........................................................... 25
`
`III. PETITIONER SHOULD NOT BE ALLOWED A REPLY ............................ 26
`
`IV. CONCLUSION ................................................................................................ 27
`
`
`
`ii
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`2002
`
`2003
`
`2004
`
`
`2005
`
`
`2006
`
`Exhibit No. Description
`2001
`Solas’s preliminary infringement contentions cover pleading in
`
`Solas OLED Ltd. v. LG Display Co., Ltd., LG Electronics, Inc.,
`and Sony Corporation, Case No. 6:19-cv-236-ADA (“Solas v.
`LG”) served on November 26, 2019
`
`Scheduling Order, Solas v. LG, Dkt. 59 (W.D. Tex., Dec. 21,
`2019)
`
`Claim Construction Order, Solas v. LG, Dkt. 79 (W.D. Tex., June
`9, 2019)
`
`Order Setting Jury Selection and Trial, Solas v. LG, Dkt. 86
`(W.D. Tex. Aug. 20, 2020)
`
`Amended Scheduling Order, Solas v. LG, Dkt. 133-1 (W.D. Tex.,
`Nov. 20, 2020)
`
`Joint Claim Construction Statement, Solas v. LG, Dkt. 76 (W.D.
`Tex. May 1, 2020)
`
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`
`WDTex Divisional Standing Order Regarding Trials in Waco
`dated August 18, 2020
`
`Judge Gilstrap Order regarding Eastern District of Texas in-
`person trials dated November 20, 2020.
`
`Defendants’ final invalidity contentions cover pleading in Solas v.
`LG served on July 31, 2020
`
`
`2009
`
`
`2007
`
`2008
`
`
`2010
`
`
`
`
`
`
`
`
`i
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`One of the primary objectives of the AIA was “to provide an effective and
`
`efficient alternative to district court litigation.” But this IPR cannot be an alternative
`
`(much less an effective and efficient one) to a WDTex trial between Petitioner and
`
`Patent Owner scheduled to almost a full year before the FWD deadline. The parties
`
`have invested heavily in that case and at the time of the institution decision, almost
`
`all the pretrial work on the ’068 patent, including on invalidity, will be done. Only a
`
`jury trial will remain. Under the PTAB’s precedential orders in NHK Spring and
`
`Fintiv, the Board should deny institution under § 314(a).
`
`I.
`
`BACKGROUND
`A. District Court Factual Background
`
`On August 23, 2019, Plaintiff Solas filed an amended complaint in the
`
`Western District of Texas against Defendants LG Display Co., Ltd., LG Electronics,
`
`Inc. and Sony Corporation asserting infringement of U.S. Patent No. 7,907,137
`
`(“’137 patent”). Solas OLED Ltd. v. LG Display Co., Ltd., LG Electronics, Inc., and
`
`Sony Corporation, Case No. 6:19-cv-236-ADA (“WDTex Case”), Dkt. 23 (W.D.
`
`Tex., Aug. 23, 2019). On August 26, or shortly thereafter, LG Display was served
`
`with the complaint. WDTex Case, Dkt. 29.
`
`On November 26, 2019, Solas served preliminary infringement contentions.
`
`The contentions identified the asserted claims of the ’068 as follows: claims 1, 5, 10,
`
`12, 13, and 17. Ex. 2001 (PICs Cover Pleading).
`
`
`
`1
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
` On December 21, 2019, the district court (Judge Albright) issued a
`
`scheduling order with all deadlines before the final pretrial conference to be
`
`completed by March 5, 2021. Ex. 2002 (Scheduling Order, WDTex Case, Dkt. 26).
`
`On January 25, 2020, Defendants served preliminary invalidity contentions.
`
`Id. at 2–3. From February to May, the parties engaged in claim construction
`
`proceedings,
`
`including exchanges, briefing, depositions, and pre-hearing
`
`submissions. On May 22, the district court conducted a claim construction hearing
`
`and issued final constructions at the hearing. See WDTex Case, Dkt. 79 (5/22/19
`
`Minute Entry) (“The Court kept the preliminary claim constructions.”). On June 9,
`
`the Court issued the claim construction order. (Ex. 2003, WDTex Case, Dkt. 79).
`
`On July 31, 2020, the parties served their final infringement and invalidity
`
`contentions. See WDTex Case, Dkt. 85. On August 20, the district court issued an
`
`order setting jury selection and trial for March 29, 2021. Ex. 2004 (Order Setting
`
`Trial, WDTex Case, Dkt. 89).
`
`On November 13, 2020, the parties completed fact discovery. In view of some
`
`discovery issues, the parties agreed to adjust the remaining scheduling order
`
`deadlines as follows (Ex. 2005, Amended Scheduling Order, Dkt. 133-1):
`
`Date
`
`Deadline
`
`December 3, 2020
`
`Opening Expert Reports
`
`
`
`2
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`December 31, 2020
`
`Rebuttal Expert Reports
`
`January 15, 2021
`
`Reply Expert Reports
`
`January 22, 2021
`
`Close of Expert Discovery
`
`January 29, 2021
`
`Dispositive motion deadline and Daubert motion deadline
`
`February-March, 2021 Pretrial disclosures, motions in limine, joint pretrial order
`and pretrial submissions
`
`
`
`Final Pretrial Conference. The Court expects to set the
`Pretrial Conference within 2-4 weeks of the trial date
`
`March 29, 2021
`
`Jury Selection/Trial
`
`
`
`B. District Court Claim Constructions
`
`The following chart shows the parties’ proposed constructions for the ’068
`
`patent, as well as the district court’s constructions (see Ex. 2006, Joint Claim
`
`Construction Statement, WDTex Case, Dkt. 76; Ex. 2003, Markman Order):
`
`Term
`
`Solas’s Proposal
`
`Defs.’ Proposal
`
`“formed on said
`plurality of supply
`lines along said
`plurality of supply
`lines” (claim 1)
`
`formed on said
`plurality of supply
`lines over the
`length or direction
`of said plurality of
`supply lines
`
`formed on said
`plurality of supply
`lines over the
`length of said
`plurality of supply
`lines
`
`Court’s
`Construction
`formed on said
`plurality of supply
`lines over the
`length or direction
`of said plurality of
`supply lines
`
`
`
`
`3
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`“connected to said
`plurality of supply
`lines along said
`plurality of supply
`lines” (claim 13)
`
`connected to said
`plurality of supply
`lines over the
`length or direction
`of said plurality of
`supply lines
`
`connected to said
`plurality of supply
`lines over the
`length of said
`plurality of supply
`lines
`
`connected to said
`plurality of supply
`lines over the
`length or direction
`of said plurality of
`supply lines
`
`“patterned”
`(claims 1, 13)
`
`formed in one or
`more layers
`
`formed in a single
`layer
`
`“patterned
`together” (claims
`1, 13)
`
`patterned to fit
`together
`
`patterned at the
`same time
`
`“signal lines”
`(claims 1, 13)
`
`conductive lines
`supplying signals
`
`conductive lines
`supplying a value
`corresponding to a
`luminance level
`
`No separate
`construction
`necessary
`
`“patterned to fit
`together,” wherein
`patterned may
`consist of one or
`more fabrication
`steps
`
`Plain and ordinary
`meaning wherein
`the plain and
`ordinary meaning
`is “conductive
`lines supplying
`signals”
`
`“feed
`interconnections”
`(claims 1, 10, 12,
`13, 17)
`
`conductive
`structures in a
`layer or layers that
`provide
`connections to a
`source that
`supplies voltage
`and/or current
`
`conductive
`structures, in a
`layer or layers
`different from the
`gates, sources and
`drains, that provide
`connections to a
`source that supplies
`voltage and/or
`current
`
`“conductive
`structures in a
`different layer or
`layers than the
`supply line that
`also provide
`connections to a
`source that
`supplies voltage
`and/or current”
`
`
`
`
`
`4
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`C. Related Proceedings
`
`When the Petition was filed, there were three cases in the Western District of
`
`Texas in which the ’068 patent was asserted: Solas OLED Ltd. v. LG Display Co.,
`
`Ltd. et al., No. 6:19-cv-00236-ADA; Solas OLED Ltd. v. Apple Inc., No. 6:19-cv-
`
`00537-ADA (“Apple Case”); and Solas OLED Ltd. v. HP Inc. f/k/a Hewlett-Packard
`
`Co., No. 6:19-cv-00631-ADA (“HP Case”). See Pet. at 2. The HP case was
`
`dismissed on August 11, 2020. See HP Case, Dkt. 65 (Order Granting Joint
`
`Stipulation of Dismissal). As to the Apple case, the parties have been working on a
`
`resolution that would terminate the case. Solas expects the Apple case to be
`
`dismissed within two weeks.
`
`Therefore, Solas expects that there will be only one related litigation involving
`
`the ’068 patent: the WDTex case against LG Display. Nor are there any pending ITC
`
`actions involving the ’068 patent. Although Solas filed an ITC action on the ’068
`
`patent and other patents, that ITC action was voluntarily dismissed.
`
`II. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION
`35 U.S.C. § 314(a) gives the Board discretion to deny institution because of
`
`because of the advanced state of parallel proceedings on the same patent. See NHK
`
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
`
`2018) (precedential, designated May 7, 2019) (“NHK Spring”). The PTAB recently
`
`
`
`5
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`promulgated six factors for determining whether discretionary denial due to the
`
`advanced state of parallel proceedings is appropriate (the “Fintiv factors”):
`
`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.
`
`Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential, designated May 5, 2020) (“Fintiv Order”) at 6; Apple Inc., v. Fintiv,
`
`Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (order denying institution)
`
`(“Fintiv ID”) at 7–8. Here, all six Fintiv factors weigh against institution.
`
`A.
`
`Factor 1 weighs against institution, as no court has granted a stay
`
`and no evidence exists that a stay may be granted.
`
`Factor 1 concerns whether the court granted a stay or evidence exists that one
`
`may be granted if IPR is instituted. Fintiv Order at 6; Fintiv ID at 12. This factor
`
`weighs against institution. There is one case, Solas OLED v. LG Display, et al. in
`
`
`
`6
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`WDTex, that involves the ’137 patent. That case is proceeding to trial in March 2020,
`
`and there is no evidence it will be stayed. See Ex. 2004 (Order Setting Trial)
`
`Defendants have never moved for a stay, likely because the district court
`
`judge, Judge Alan D. Albright, rarely grants stays pending IPR. See Ex. 2007
`
`(Law360 Article: West Texas Judge Says He Can Move Faster Than PTAB) (Judge
`
`Albright: “It’s my job to give people the opportunity to have their cases tried in a
`
`federal court . . . and I probably can get a patent trial resolved more quickly than the
`
`PTAB can.”). Further, by the institution decision deadline—March 1, 20211—the
`
`parties will be less than a month from trial. See Ex. 2004.
`
`It’s highly unlikely that Judge Albright would entertain a stay at that late
`
`juncture, especially since under a normal briefing and hearing schedule, a motion
`
`for stay wouldn’t even be heard before trial. Further, the parties will have completed
`
`all fact discovery, expert reports, expect discovery, summary judgment and Daubert
`
`briefing, and the bulk of pretrial disclosures. See Ex. 2005 (Amended Scheduling
`
`Order) at 2–3 (joint pretrial order and pretrial submissions, including “jury
`
`instructions, exhibits lists, witness lists, discovery and deposition designations” due
`
`
`1 The deadline for this POPR is November 27, 2020 because November 26 was
`Thanksgiving. Three months from the POPR deadline is Saturday, February 27,
`2021. Thus, the deadline for the institution decision is Monday, March 1, 2021.
`
`
`
`7
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`on March 5, 2021). And Judge Albright will likely have issued rulings on all
`
`summary judgment and Daubert motions, including those related to the ’068 patent.
`
`Because there is no evidence that the WDTex case will be stayed (and strong
`
`evidence it won’t be), Factor 1 weighs against institution.
`
`B.
`
`Factor 2 weighs strongly against institution, as the WDTex trial is
`
`scheduled to begin almost a full year before the FWD deadline.
`
`Factor 2 relates to proximity of the court’s trial date to the Board’s projected
`
`statutory deadline for a final written decision. Fintiv Order at 9; Fintiv ID at 12. The
`
`statutory deadline for this FWD is March 1, 2022. Meanwhile, the parallel WDTex
`
`trial on the ’068 patent is set for March 29, 2021.
`
`Thus, the district court trial will start almost a full year before the FWD
`
`deadline. Under Factor 2, this weighs strongly against institution. See Fintiv Order
`
`at 9 (“If the court’s trial date is earlier than the projected statutory deadline, the
`
`Board generally has weighed this fact in favor of exercising authority to deny
`
`institution under NHK.”); Fintiv ID at 13 (finding a much shorter two-month gap
`
`between trial and FWD to “weigh[] somewhat” in favor of discretionary denial).
`
`Nor are there any non-speculative reasons to believe that the WDTex trial will
`
`be postponed in view of the COVID-19 pandemic. Although the Eastern District of
`
`Texas recently continued in-person jury trials until March 1, 2020, that was after
`
`
`
`8
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`trials had successfully resumed for months2 and based on specific facts and events
`
`in the Eastern District. See Ex. 2009 (Gilstrap Order) at 1–2, n. 3. It was also based
`
`on the Eastern District’s “optimism that an efficacious vaccine may become widely
`
`available in the coming months.” Id. at 2.
`
`Here, Petitioner is not aware of any orders continuing jury trials in the Waco
`
`Division of the Western District of Texas, where this trial is located. Further, there
`
`is no evidence that the parties’ trial will be continued past April 2021. In sum, there
`
`are no non-speculative reasons to believe the March 29, 2021 trial will be postponed.
`
`See Fintiv ID at 13 (“We generally take courts’ trial schedules at face value absent
`
`some strong evidence to the contrary.”). Because this is almost a year after the FWD
`
`deadline, Factor 2 weighs strongly against institution.
`
`C.
`
`Factor 3 weighs strongly against institution, as the WDTex court
`
`and parties will soon complete all pre-trial work.
`
`Factor 3 relates to investment in the parallel proceeding by the court and the
`
`parties. Fintiv Order at 9; Fintiv ID at 14. Importantly, this factor is analyzed from
`
`the time of the institution decision, which here is due March 1, 2021.
`
`
`2 For example, Judge Albright recently started and completed a patent jury trial in
`October 2020 due to a “meaningful decline” in new COVID-19 cases around the
`Waco division. See Ex. 2008 (Order Resuming Jury Trials).
`
`
`
`9
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`1.
`
`The court and parties have invested heavily in the ’068
`
`patent and will continue to before this institution decision.
`
`By the time of the institution decision, the parties will have completed all fact
`
`discovery, expert reports, expect discovery, summary judgment and Daubert
`
`briefing, and the bulk of pretrial disclosures. See Ex. 2005 (Amended Scheduling
`
`Order) at 2–3. Indeed, the district court will likely have ruled on all summary
`
`judgment motions, including those related to the ’068 patent. And the WDTex court
`
`and parties will have expended the following efforts (see Exs. 2001 & 2005, Original
`
`and Amended Scheduling Orders):
`
`Court and Parties’ Investment in ’068 Patent
`
`Date
`
`Solas serves infringement contentions on ’068 patent
`
`Nov. 26, 2019
`
`Defendants serve invalidity contentions on ’068 patent
`
`Jan. 24, 2020
`
`May 2020
`
`reply claim
`responsive, and
`Parties complete opening,
`construction briefs;
`four expert declarations on claim
`construction; two expert depositions on claim construction;
`technology
`tutorials; and Markman hearing
`slides—all
`substantially addressing ’068 patent (WDTex Case, Dkt. Nos. 67–
`74 (briefing); 67-2, 68-2, 70-1, 71-2 (expert declarations); 73-3,
`74-3 (expert deposition transcripts); 80–81 (hearing slides))
`
`Court conducts Markman hearing
`
`May 22, 2020
`
`
`
`10
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`Court and Parties’ Investment in ’068 Patent
`
`Date
`
`Court issues Markman order (WDTex Case, Dkt. 82)
`
`June 6, 2020
`
`Parties serve final infringement and invalidity contentions on ’068
`patent
`
`July 31, 2020
`
`Parties complete fact discovery on ’068 patent
`
`Parties serve opening infringement and invalidity expert reports
`on ’068 patent
`
`Nov. 13, 2020
`
`Dec. 3, 2020
`
`Parties serve rebuttal non-infringement and validity expert reports
`on ’068 patent
`
`Dec. 31, 2020
`
`Parties serve reply non-infringement and validity expert reports on
`’068 patent
`
`Jan. 15, 2021
`
`Parties complete expert discovery on ’068 patent
`
`Jan. 22, 2021
`
`Parties file summary judgment motions on ’068 patent
`
`Jan. 29, 2021
`
`Deadline for Institution Decision
`
`Parties file pretrial order and pretrial submissions, including jury
`instructions, exhibits lists, witness lists, discovery and deposition
`designations
`
`Mar. 1 2021
`
`Mar. 5, 2021
`
`Jury Selection / Trial
`
`Mar. 29, 2021
`
`
`
`11
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`
`
`Here, 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. This investment
`
`will only accelerate in the next two months (December–January) as the parties
`
`complete expert reports, expert discovery, and file summary judgment motions.
`
`
`
`This level of investment is far greater than in the Fintiv v. Apple case where
`
`at the time of institution, fact discovery was still “in its early stages.” Fintiv ID at
`
`14. This isn’t surprising because, as Fintiv recognizes, the level of investment is
`
`closely related to proximity to trial. See Fintiv Order at 7, 9. Whereas the institution
`
`decision in Fintiv arrived ten months before the scheduled trial, here it would arrive
`
`less than a month before. See id. at 12–13. Thus, far less work effort will remain to
`
`be expended before trial. Thus, whereas Factor 3 in Fintiv “weighed somewhat in
`
`favor of discretionary denial,” here it weighs strongly. See id. at 14.
`
`
`
`Indeed, that the significant level of investment here cannot be reasonably
`
`disputed. By the time of the institution decision, the court and parties will have
`
`completed nearly all pre-trial work on the ’068 patent. Only a jury trial will remain.
`
`Under any measure, the overall work “in the parallel litigation” by the court and
`
`parties are significant and weigh strongly against institution. Fintiv Order at 9–10.
`
`2.
`
`Petitioner LG Display delayed in filing this Petition and
`
`unfairly prejudiced Patent Owner.
`
`
`
`12
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`
`
`Further, the facts surrounding the Petition’s timing also support discretionary
`
`denial. In the WDTex case, Solas served infringement contentions listing asserted
`
`claims on November 26, 2019. See Ex. 2002. The Court entered the scheduling order
`
`on December 21, 2019. See Ex. 2001. Yet Petitioner—with full awareness of the
`
`case schedule—waited until July 8, 2020 to file this Petition. That was almost two
`
`months after receiving the district court’s final constructions at the May 22 Markman
`
`hearing and less than months before the scheduled close of fact discovery.
`
`
`
`Thus, Petitioner failed to file the Petition “expeditiously.” See Fintiv Order at
`
`11. It was not “promptly after becoming aware of the claims being asserted” (eight
`
`months earlier in November 2019), nor around the time Defendants’ served
`
`preliminary invalidity contentions (six months earlier in January 2020).3 And this
`
`unjustified delay prejudiced Patent Owner in at least two ways.
`
`
`
`First, Petitioner’s timing imposes “unfair costs” to Patent Owner. Had
`
`Petitioner filed the Petition around January 2020 (when it already knew the case
`
`schedule and had Patent Owner’s asserted claims), the institution decision could
`
`
`3 See Fintiv Order at 11; Next Caller, Inc. v. TRUSTID, Inc., IPR2019-00961, Paper
`10 at 16 (PTAB Oct. 16, 2019) (weighing the petitioner’s unexplained delay in filing
`the petition in favor of denial of the petition and noting that had the petitioner filed
`the petition around the same time as the service of its initial invalidity contentions,
`the PTAB proceeding may have resolved the issues prior to the district court).
`
`
`
`13
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`have arrived in July or August—months before the close of fact discovery. Instead,
`
`Petitioner waited until only a few months before fact discovery and expert reports.
`
`This ensured that Patent Owner would continue to invest heavily and incur costs for
`
`depositions, interpreters, expert fees, etc.
`
`Second, Petitioner filed the Petition after all Markman proceedings (from
`
`February–May 2020) and after the Court issued final claim constructions at the May
`
`22, 2020 hearing. See Solas v. LG, Dkt. 79. This allowed Petitioner to (a) advance
`
`narrow claim constructions in the district court to argue for non-infringement, and
`
`(b) when unsuccessful, adopt allegedly broader constructions in an IPR to argue for
`
`invalidity. This allowed Petitioner to advance inconsistent claim constructions
`
`between the two proceedings, which prejudiced Patent Owner. For example, had
`
`Petitioner filed an IPR before district court claim construction proceedings (as it
`
`could and should have), it would have been required to apply the constructions it
`
`was arguing for in the district court.
`
`3.
`
`Petitioner’s justifications for delay should be rejected.
`
`Petitioner’s primary—if not only—justification on timing is that it was
`
`necessitated by the district court’s “unexpectedly broad” constructions. This
`
`argument should be rejected or discounted for several reasons. First, the
`
`constructions were not unexpected. Petitioner points only to the constructions for
`
`“signal lines” and “feed interconnections” as unexpected. Pet. at 16–17. But for
`
`
`
`14
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`signal lines, the court merely found that it takes its plain and ordinary meaning,
`
`which is “conductive lines supplying signals.” This was also Solas’s proposal.
`
`Petitioner has been (and should have been aware earlier) of this construction since
`
`Solas proposed it at the outset of claim construction exchanges in February 2020.
`
`Nor was the court’s construction for “feed interconnections” wholly
`
`unexpected as shown in the chart below. There was substantial agreement on the
`
`meaning of the term, including that feed interconnections are “conductive
`
`structures” and that they “provide connections to a source that supplies voltage
`
`and/or current. The only change that the Court made to the parties’ proposals was to
`
`specify that feed interconnections are “in a different layer or lawyers than the supply
`
`line.”
`
`Term
`
`Solas’s Proposal
`
`Defs.’ Proposal
`
`“feed
`interconnections”
`(claims 1, 10, 12,
`13, 17)
`
`conductive
`structures in a
`layer or layers that
`provide
`connections to a
`source that
`supplies voltage
`and/or current
`
`conductive
`structures, in a
`layer or layers
`different from the
`gates, sources and
`drains, that provide
`connections to a
`source that supplies
`voltage and/or
`current
`
`Court’s
`Construction
`“conductive
`structures in a
`different layer or
`layers than the
`supply line that
`also provide
`connections to a
`source that
`supplies voltage
`and/or current”
`
`
`
`
`
`15
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`But the Court’s construction is supported by the intrinsic evidence. For example,
`
`claim 1 recites that feed interconnections are “formed on along” supply lines,
`
`implying that the interconnections and supply lines are in different layers. Thus, this
`
`construction should not have been unexpected. And regardless, it is not such a
`
`significant departure that it justifies Petitioner’s timing. Petitioner also does not
`
`explain why it could not have located the prior art references earlier, particularly
`
`since both are publicly available patents or publications.
`
`
`
`Further, and more broadly, the PTAB has rarely approved Petitioner’s
`
`rationale of proposing narrow constructions and later filing an IPR on broader
`
`constructions if the narrow constructions were unsuccessful. To the contrary, the
`
`Board’s rules encourage petitioners to file petitions as expeditiously as possible and
`
`to adopt consistent constructions between district court and the PTAB—especially
`
`where, as here, the parties were “faced with the prospect of a looming trial date.”
`
`Fintiv Order at 11.
`
`
`
`Indeed, Petitioner appears to have adopted the strategy of proposing narrow
`
`constructions so it could argue for non-infringement. It decided to make non-
`
`infringement the focus of its defense, which is why it didn’t file any IPRs (or, by its
`
`own acknowledgement, plan to) until months after the claim construction ruling.
`
`Having made that decision, it should not complain about having to live with those
`
`
`
`16
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`consequences. Petitioner did not prioritize IPRs in any way and when it finally
`
`decided it, its IPR comes too late under the Board’s precedents and guidelines.
`
`Accordingly, Factor 3 weighs strongly against institution.
`
`D.
`
`Factor 4 weighs strongly against institution, as there is substantial
`
`overlap between this IPR and district court proceedings
`
`Factor 4 relates to overlap between issues raised in the petition and in the
`
`parallel proceeding. Fintiv Order at 12; Fintiv ID at 13. This factor weighs against
`
`institution because there is significant overlap in challenged claims, prior art, and
`
`invalidity theories and evidence between this IPR and the WDTex case.
`
`1.
`
`LG Display purports to raise the same prior art and
`
`invalidity arguments in the WDTex case by “incorporating
`
`by reference” this IPR into its final invalidity contentions.
`
`This IPR challenges claims 1, 5, 9–13, and 17 of the ’068 patent based on
`
`three grounds, all with Shin as the primary reference (Pet. at 4):
`
`
`
`17
`
`
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`LG Display’s final infringement contentions in the WDTex case provides
`
`significant overlap. It challenges the same claims (claims 1, 5, 10, 13, and 17) 4 based
`
`on the same invalidity theories (anticipation and obviousness) and prior art
`
`references (Shin and Hector):
`
`See Ex. 2010 (Final Invalidity Contentions Cover Pleading) at 1, 37–41, 45–46.
`
`And lest there be any doubt about the amount of overlap, the invalidity
`
`contentions purport to “incorporate by reference, as if set forth fully herein” this IPR
`
`(IPR2020-01238) into the contentions themselves (id. at 44):
`
`
`
`
`4 The only difference is that the IPR challenges three additional claims not asserted
`in the WDTex Case. But this is inconsequential as discussed in Section 3.D.3 below.
`
`
`
`18
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`Thus, LG Display would purportedly be able to make the same arguments and
`
`evidence as this IPR, even by copying its IPR Petition and declaration (or portions
`
`of them) into its invalidity expert report. This would provide near complete overlap
`
`between the invalidity grounds asserted in this IPR and the district court.
`
`
`
`Both this IPR and district court proceedings are governed by the same Phillips
`
`claim construction standard. And in both proceedings, LG Display allegedly applies
`
`the district court’s claim constructions or narrower constructions. Thus, this IPR
`
`would potentially involve the same invalidity disputes—and indeed even the same
`
`evidence—that will be at issue in the WDTex case. See NHK Spring at 19–20.
`
`2.
`
`Petitioner’s agreement to not pursue “any specific ground
`
`that the Board institutes” is insufficient and fails to address
`
`duplicative efforts and potentially conflicting decisions.
`
`Petitioner agrees that if this IPR instituted, it will “not pursue [in the WDTex
`
`Case] any specific ground that the Board institutes for challenging the ’068 patent.”
`
`Pet. at 18. As an initial matter, Petitioner’s narrow stipulation only “mitigates to
`
`
`
`19
`
`
`
`IPR2020-01238(’068 patent)
`Patent Owner Preliminary Response
`
`some degree” concerns about duplicative issues and would at most “weigh
`
`marginally” against discretionary denial under Factor 4.5 But more importantly,
`
`Petitioner’s agreement is altogether insufficient under the circumstances here.
`
`Factor 4 considers “concerns of inefficiency” and the overlap between the IPR
`
`and the “claims, grounds, arguments, and evidence as presented” in the district court
`
`proceeding. Fintiv Order at 12. It does not depend on whether the identical invalidity
`
`grounds are presented at the WDTex trial. Here, LG Display’s agreement would not
`
`come into play
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
