Filed on behalf of: LG Display Co., Ltd.
`
`Entered: December 10, 2020
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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.
`_______________________
`Case IPR2020-01238
`Patent 7,573,068
`______________________
`
`
`PETITIONER’S REPLY TO THE
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Entered: December 10, 2020
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`
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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.
`_______________________
`Case IPR2020-01238
`Patent 7,573,068
`______________________
`
`
`PETITIONER’S REPLY TO THE
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`TABLE OF AUTHORITIES
`
`CASES
`
` Page(s)
`
`In re Adobe,
`823 F. App’x 929 (Fed. Cir. 2020) ....................................................................... 2
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) .............................................. 1, 3, 4, 5
`Apple Inc. v. Maxell,
`IPR2020-00204, Paper 11 (June 19, 2020) ........................................................... 3
`Apple Inc. v. Neodron,
`IPR2020-00778, Papers 1, 4, 10 (Apr. 16-Sept. 14, 2020) ................................... 4
`Apple Inc. v. Seven Networks,
`IPR2020-00506, Paper 11 (Sept. 1, 2020) .................................................... 2, 3, 4
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 1
`Google v. Parus Holdings,
`IPR2020-00846, Paper 9 (Oct. 21, 2020) ......................................................... 2, 3
`Henry v. INS,
`74 F.3d 1 (1st Cir. 1996) ....................................................................................... 4
`Medtronic v. Avanos Med. Sales,
`IPR2020-00895, Papers 3, 4, 16 (May 29-Oct. 23, 2020) .................................... 4
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................ 5
`Sand Revolution II v. Cont’l Intermodal Group-Trucking,
`IPR2019-01393, Paper 24 (June 16, 2020) ................................................... 2, 3, 4
`
`
`i
`
`
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`Exhibit List
`
`Ex. No.
`Description
`1001 U.S. Patent No. 7,573,068 (“’068 patent”)
`
`1002 Prosecution history for U.S. Patent Application No. 11/232,368 (“’068
`FH”)
`
`1003 Declaration of Miltiadis Hatalis, Ph.D., in Support of Petitioner’s
`Request for Inter Partes Review (“Hatalis”)
`
`1004 Curriculum Vitae of Miltiadis Hatalis, Ph.D.
`
`1005
`
`International Patent Publication No. WO 2004/090853 (“Shin”)
`
`1006
`
`International Patent Publication No. WO 03/079442 (“Hector”)
`
`1007 Thin Film Transistors, Materials and Processes, Volume 2:
`Polycrystalline Silicon Thin Film Transistors (Yue Kuo ed., 2004)
`(excerpts) (“Kuo”)
`
`1008 Solas’s Opening Claim Construction Brief, Solas OLED Ltd. v. LG
`Display Co., No. 6:19-cv-00236-ADA (W.D. Tex. Mar. 13, 2020),
`ECF No. 68 (“Solas’s Op. Claim Construction Br.”)
`
`1009 Defendants’ Opening Claim Construction Brief, Solas OLED Ltd. v.
`LG Display Co., No. 6:19-cv-00236-ADA (W.D. Tex. Mar. 13, 2020),
`ECF No. 67 (“Defendants’ Op. Claim Construction Br.”)
`
`1010 Claim Construction Order, Solas OLED Ltd. v. LG Display Co., No.
`6:19-cv-00236-ADA (W.D. Tex. June 9, 2020), ECF No. 82
`(“Markman Order”)
`
`1011 RESERVED
`
`1012
`
`Joint Revised List of Terms/Constructions, Solas OLED Ltd. v. LG
`Display Co., No. 6:19-cv-00236-ADA (W.D. Tex. Mar. 13, 2020),
`ECF No. 67-28 (“Parties’ Exchange of Constructions”)
`
`ii
`
`
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`Ex. No.
`Description
`1013 Defendants LG Display Co., Ltd., LG Electronics, Inc. and Sony
`Corporation’s Invalidity Contentions, Solas OLED Ltd. v. LG Display
`Co., No. 6:19-cv-00236-ADA (W.D. Tex. Jan. 24, 2020)
`
`1014 U.S. Patent No. 6,724,149 (“Komiya”)
`
`1015 U.S. Patent No. 6,281,552 (“Kawasaki”)
`
`1016 U.S. Patent No. 7,115,956 (“Nakamura”)
`
`1017 U.S. Patent Application Publication No. 2004/0113873 (“Shirasaki”)
`
`1018 Raymond A. Serway, Principles of Physics (2nd ed. 1998) (excerpts)
`(“Serway”)
`
`1019 U.K. Patent Application No. GB 2,389,952 (“Routley”)
`
`1020 U.S. Patent No. 6,809,706 (“Shimoda”)
`
`1021 U.S. Patent Application Publication No. 2002/0101172 (“Bu”)
`
`1022 Complaint for Patent Infringement Against Samsung Electronics Co.,
`Ltd., Samsung Electronics America, Inc., and Samsung Display Co.,
`Ltd., Solas OLED Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-
`307 (E.D. Tex. Sept. 15, 2020)
`
`1023 Complaint for Patent Infringement Against Dell Technologies Inc.,
`Solas OLED Ltd. v. Dell Technologies Inc., No. 6:20-cv-841 (W.D.
`Tex. Sept. 15, 2020)
`
`1024 Complaint for Patent Infringement Against Motorola Mobility LLC,
`Solas OLED Ltd. v. Motorola Mobility LLC, No. 6:20-cv-842 (W.D.
`Tex. Sept. 15, 2020)
`
`1025 Complaint Under Section 337 of the Tariff Act of 1930, as Amended,
`Certain Active Matrix OLED Display Devices and Components
`Thereof, Inv. No. 337-TA-1225 (U.S.I.T.C. Sept. 14, 2020) and related
`submissions
`
`iii
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`Ex. No.
`Description
`1026 Complainant’s Unopposed Motion to Terminate the Investigation in its
`Entirety Based on Withdrawal of Complaint and to Stay the Procedural
`Schedule and Request for Expedited Treatment, Certain Active Matrix
`OLED Display Devices and Components Thereof, Inv. No. 337-TA-
`1225 (U.S.I.T.C. Nov. 6, 2020)
`
`1027 Lex Machina report of civil cases pending before Judge Alan D.
`Albright
`
`1028 U.S. District Court for the Western District of Texas report of pending
`criminal cases
`
`1029 Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Ropes & Gray: Patents Post-Grant (July 24,
`2020), https://www.patentspostgrant.com/district-court-trial-dates-tend-
`to-slip-after-ptab-discretionary-denials/
`
`1030
`
`JB Smith, COVID-19 Cases Now Consume Almost One-Fifth of Waco-
`Area Hospital Capacity, Waco Tribune-Herald (Dec. 1, 2020),
`wacotrib.com/news/local/covid-19-cases-now-consume-almost-one-
`fifth-of-waco-area-hospital-capacity/article_ecd6bd1a-3439-11eb-96bf-
`5b2ac0e9563b.html
`
`1031 Transcript of Motion Hearing Proceedings (Via Zoom Conference)
`Before the Honorable Theresa C. Buchanan, United States District
`Court Magistrate Judge, RAI Strategic Holdings, Inc. v. Altria Client
`Services, LLC, No. 1:20-cv-393, (E.D. Va. Dec. 4, 2020)
`
`1032 Excerpt of e-mail exchange between counsel for LG Display Co., Ltd.
`and counsel for Solas OLED Ltd. (Oct. 27, 2020 – Nov. 2, 2020)
`
`1033 Letter from counsel for LG Display Co., Ltd. to counsel for Solas
`OLED Ltd. (Dec. 10, 2020)
`
`1034 Tenth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic (W.D.
`Tex. Nov. 18, 2020)
`
`iv
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`Ex. No.
`Description
`1035 Declaration of Gabriel S. Gross in Support of Petitioner’s Reply to the
`Patent Owner Preliminary Response
`
`1036 Notice of Conflict with Current Trial Setting, Solas OLED Ltd. v. LG
`Display Co., No. 6:19-cv-00236-ADA (W.D. Tex. Aug. 31, 2020),
`ECF No. 90
`
`1037 Transcript of Telephonic Markman Hearing Before the Honorable Alan
`D. Albright, Solas OLED Ltd. v. LG Display Co., No. 6:19-cv-00236-
`ADA (W.D. Tex. May 22, 2020),
`
`
`
`v
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`A “holistic” evaluation of the Fintiv factors confirms that instituting this IPR
`would further all three of the Board’s goals: ensuring patent quality, system
`efficiency, and fairness. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5-6
`(Mar. 20, 2020) (precedential) (“Fintiv”). The Board should institute this IPR.
`Congress created IPRs “not only to resolve patent-related disputes among
`parties, but also to protect the public’s ‘paramount interest in seeing that patent
`monopolies … are kept within their legitimate scope.’” Cuozzo Speed Techs. v.
`Lee, 136 S. Ct. 2131, 2135 (2016). But in court, Patent Owner Solas obtained
`broad constructions to support expansive infringement theories, and those
`constructions squarely encompass the prior art—confirming that the patents exceed
`their “legitimate scope” and are invalid. Pet. 17-18. Instituting this IPR (and
`cancelling all challenged claims) therefore would further patent quality and
`protect the public from invalid patent claims. And despite Solas’s false assertion
`that it will not assert the ’068 patent against anyone other than LG, see POPR 24,
`Solas already has sued (1) Samsung, (2) Motorola, and (3) Dell in court, and those
`three parties and LG again, plus (4) Apple, and (5) Sony in the ITC. Exs. 1022-
`1025. The most efficient way to resolve these multiple, duplicative disputes is
`through this single IPR proceeding—promoting system efficiency. Institution also
`would further fairness. Prompted by LG’s Reply in IPR2020-01055 (Paper 8 at 1),
`Solas realized that its duplicative ITC action to enforce the ’068 patent would
`trigger a statutory stay of its WDTX case over the same patent—mooting its
`NHK/Fintiv arguments here—and it withdrew its ITC Complaint to avoid the stay.
`Ex. 1026. It is unfair for Solas to shield its weak and oft-asserted patent from this
`
`1
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`Board’s review through such gamesmanship. Respectfully, institution is in order.
`Factor 1 is neutral. The Court has not stated whether it would consider a
`stay. Sand Revolution II v. Cont’l Intermodal Group-Trucking, IPR2019-01393,
`Paper 24 at 7-9 (June 16, 2020) (informative) (“Sand”); Apple Inc. v. Seven
`Networks, IPR2020-00506, Paper 11 at 7 (Sept. 1, 2020) (“Seven”). Solas
`disagrees, but relies only on a Law360 article that does not address this case and is
`not binding authority. POPR 6-8.
`Factor 2 favors institution. The parties in most of the parallel cases are
`different, as discussed above, and LG’s IPR will enhance efficiency for all of those
`cases, for numerous parties and tribunals. As for LG’s trial date, it 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 (which the Court
`had changed sua sponte) after the Court learned that LG’s lead counsel has an
`unresolvable conflict with a previously scheduled trial in another court. Ex. 1035;
`In re Adobe, 823 F. App’x 929, 932 (Fed. Cir. 2020) (finding court’s “ability to set
`a schedule” does not address “docket congestion”); Google v. Parus Holdings,
`IPR2020-00846, Paper 9 at 13 (Oct. 21, 2020) (“Google”) (692 civil and 140
`criminal cases pending); Exs. 1027-1028 (now 782 civil and 294 criminal cases).
`Indeed, “[i]n the WDTX, 70% of trial dates initially relied upon by the PTAB to
`deny petitions have slid.” Ex. 1029 at 3. And in the face of the current rising rate of
`COVID-19, it is unreasonable to assume the court can or will stay open. See Ex.
`1030 (increasing hospitalizations, restrictions, and shutdowns in the same and
`surrounding counties in December 2020). Indeed, the “WDTX has issued a new
`
`2
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`[COVID] suspension order every month for the past [now seven] months,” and
`“recently has continued this suspension through [now December 31].” Google at
`12-13; Ex. 1034. And when the Court can resume with normal jury trials, it must
`first hear criminal cases—delaying civil cases much longer. E.g., Ex. 1031 at 6:9-
`21 (EDVA explaining that it might not hear civil cases until the end of 2022,
`despite suspending trials only until early next year). And because LG diligently
`filed its Petition promptly after learning of the Court’s broad construction, that fact
`weighs, at most, only “moderately” in favor of denial, and does not outweigh the
`other trial dates or the many reasons favoring institution. Seven at 9 & n.6
`(instituting despite ten-month gap after trial); Apple Inc. v. Maxell, IPR2020-
`00204, Paper 11 at 18-19 (June 19, 2020) (instituting despite nine-month gap).
`Factor 3 favors institution. The Court and the parties have made little
`relevant investment. All of the other parallel court cases lag behind LG’s, and three
`of them (Dell, Motorola, and Samsung) remain in their infancy as they were just
`filed in September. In LG’s case, Markman is complete, but it occurred before
`discovery, and the “court’s [one]-page Markman Order” is merely a list of
`constructions devoid of analysis or an opinion and “does not demonstrate the same
`high level of investment … as the detailed Markman Order in Fintiv.” Sand at 10-
`11; Fintiv at 10 n.17 (claim construction due little weight when court “postpone[s]
`significant discovery until after [Markman]”); Ex. 2002 (postponing significant
`discovery until after Markman). Solas also points to discovery that has occurred,
`but fails to explain how discovery is relevant to validity—which is notable, as
`Solas has been actively avoiding discovery on invalidity, calling it “unduly
`
`3
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`burdensome.” Ex. 1032. Further, the Board cannot hold the Office’s delay against
`Petitioner, and similarly situated petitioners should be treated similarly. Henry v.
`INS, 74 F.3d 1, 6 (1st Cir. 1996). For example, the Board waited only 5 days (vs.
`49 days here) to assign a filing date in Apple Inc. v. Neodron, and instituted 37
`days before its due date to avoid NHK. IPR2020-00778, Papers 1, 4, 10 (Apr. 16-
`Sept. 14, 2020); see also Medtronic v. Avanos Med. Sales, IPR2020-00895, Papers
`3, 4, 16 (May 29-Oct. 23, 2020) (11 days to assign filing date and instituting 47
`days early in face of NHK arguments). If the Board treated this IPR as it treated the
`Apple or Medtronic IPRs, its Institution Decision would have issued on December
`2 or 6 (Medtronic or Apple speed), well before the close of discovery, dispositive
`motions, etc. Ex. 2005.
`Factor 4 favors institution. Defendants eliminated any possible overlap of
`the issues by stipulating they will not pursue any IPR grounds in the WDTX action
`if the Board institutes. Ex. 1033; Sand at 11-12; Fintiv at 12-13. In addition, the
`IPR will invalidate more claims than those at issue in the WDTX proceeding,
`including dependent claims 9, 11 and 12, and the number of asserted claims will be
`even further reduced on January 26, 2021. Ex. 2005.
`Factor 5 favors institution. The parties are different in most of the parallel
`cases, which favors institution. Only in LG’s court case are the parties the same,
`which at worst, weighs only slightly against institution. Seven at 15-16.
`Factor 6 favors institution. The merits of this IPR are exceptionally strong.
`Solas does not dispute the Petition’s actual substance with any particularity. Solas
`instead argues that LG gained an advantage by arguing for a narrower construction
`
`4
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`IPR2020-01238 (USP 7,573,068)
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`Petitioner’s Reply to POPR
`
`
`
`in court. POPR 23-25. But the Court agreed with Solas that its claims are broad,
`and so LG adopted those same broad constructions here, notably for the crucial
`“signal line” and “feed interconnection” terms. Pet. 15-16, 35, 47, 73. Solas does
`not dispute the Court’s constructions, and so the Board’s analysis should proceed
`according to those constructions. Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (terms only construed to extent
`necessary to resolve controversy).
`Solas also “wonder[s]” why the Petition has alternative grounds, but it never
`identifies a weakness in any of the grounds. POPR 25. At most, Solas takes issue
`with the “patterned together” and “along” claim elements, but merely concludes—
`without any support—that LG failed to demonstrate those elements are met. Not
`true. The Petition conservatively demonstrated that the art taught even narrower
`constructions of those claim elements. For example, Shin (like the ’068 patent)
`forms its signal lines at the same time “using photolithography and etching, by
`patterning a single conductive film formed on the entire surface of the insulating
`substrate.” Pet. 35-36 (quoting the ’068 patent 9:18-23); see also id. 49-51 (feed
`interconnection “along” the length of the supply lines, as described in the ’068
`patent).
`For all of the above reasons, and those in the Petition, the Board should
`institute LG’s strong petition to further Fintiv’s and Congress’s goals of improving
`“system efficiency, fairness, and patent quality.” Fintiv at 5-6.
`
`5
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`Dated: December 10, 2020
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`Respectfully submitted,
`
`By: / Jonathan M. Strang /
`
`
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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 (pro hac vice
`forthcoming)
`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 (pro hac vice forthcoming)
`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
`
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`Blake R. Davis (pro hac vice forthcoming)
`blake.davis@lw.com
`Allison K. Harms (pro hac vice forthcoming)
`allison.harms@lw.com
`Latham & Watkins LLP
`505 Montgomery Street, Suite 2000
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`6
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`IPR2020-01238 (USP 7,573,068)
`
`Petitioner’s Reply to POPR
`
`
`
`San Francisco, CA 94111-6538
`Telephone: 415.391.0600
`Fax: 415.395.8095
`
`Counsel for Petitioner
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`7
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`IPR2020-01238 (USP 7,573,068)
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`Petitioner’s Reply to POPR
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 10th day of December
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`2020, a true and correct copy of the foregoing Petitioner’s Reply to the Patent
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`Owner Preliminary Response and all Exhibits were served by electronic mail on
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`Patent Owner’s lead and backup counsel at the following email addresses:
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`Philip X. Wang
`pwang@raklaw.com
`Neil A. Rubin
`nrubin@raklaw.com
`Reza Mirzaie
`rmirzaie@raklaw.com
`Kent N. Shum
`kshum@raklaw.com
`Russ August & Kabat
`12424 Wilshire Boulevard, 12th Fl.
`Los Angeles, CA 90025
`Telephone: 310.826.7474
`Fax: 310.826.6991
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`By: / Jonathan M. Strang /
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`
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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
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`Counsel for Petitioner
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