UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
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`LG DISPLAY CO., LTD.,
`Petitioner
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`____________
`
`Case IPR2020-01238
`U.S. Patent No. 7,573,068
`____________
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`
`
`PATENT OWNER PRELIMINARY RESPONSE SUR-REPLY
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`
`
`____________
`
`
`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 SUR-REPLY
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`Ex.
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`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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`2008
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`2009
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`2010
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`2011
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`2012
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`PATENT OWNER’S EXHIBIT LIST
`
`Description
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`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
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`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
`
`Institution Decision, LG Display v. Solas, IPR2020-01055
`
`Email chain with counsel regarding Apple and Motorola cases
`
`
`
`
`i
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`
`
`Ex.
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`2013
`
`
`2014
`
`
`2015
`
`
`2016
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`2017
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`
`2018
`
`
`2019
`
`Description
`
`Order Transferring Trial Venue in VLSI Technology LLC v. Intel
`Corporation, USDC WD Tex Case No. 1:19-cv-00977
`
`“U.S. Starts Vaccine Rollout as High-Risk Health Care Workers Go
`First,” NYTimes article (available at https://www.ny-
`times.com/live/2020/12/14/world/covid-19-coronavirus
`/the-weapon-that-will-end-the-war-vaccinations-begin-across-virus-
`ravaged-america)
`
`Order Granting Motion to Extend Scheduling Deadlines, Solas v. LG
`Display, USDC WD Tex. Case No. 6:19-cv-00236
`
`Defendants’ Invalidity Contentions, served on January 24, 2020
`
`Mass Engineered Design, Inc., etc. v. Ergotron, Inc., et al., 250
`F.R.D. 284 (2008)
`
`Excerpts from Douglas Holberg Corrected Expert Report regarding
`Invalidity, served on December 5, 2020
`
`Appendix B-1 to the Expert Report of Douglas Holberg regarding In-
`validity, served on December 5, 2020
`
`
`ii
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`IPR2020-01238 (’068 patent)
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`
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`POPR Sur-reply
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`This IPR has similar facts to the -1055 IPR in which the Board denied institu-
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`tion under the Fintiv factors. IPR2020-01055, Paper 10 (Ex. 2011). But compared to
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`the -1055 IPR: (a) this Petition was filed more than a month later and (b) the institu-
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`tion decision won’t arrive until 2.5 months later. Thus, most of the Fintiv factors,
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`including Factors 1–4, weigh more strongly against institution.
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`Petitioner’s primary argument—that the ’068 patent is “oft-asserted” and in-
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`stituting review is needed to “protect the public” (Reply at 1)—is wrong on the facts
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`and law. Patent Owner has reached an agreement in principle that will lead to dis-
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`missals of the Apple, Motorola, and Dell cases. See Ex. 2012. The only other case
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`will be Samsung, who hasn’t even answered the complaint.
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`Regardless, the existence of other defendants is nearly irrelevant where, as
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`here, they aren’t involved in this IPR or the underlying WDTex litigation. The rele-
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`vant “parallel proceeding” is the one against Petitioner set for trial in March. And
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`despite Petitioner’s invitation, the Board shouldn’t issue advisory opinions on valid-
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`ity to “protect” other/future defendants, who are capable of filing their own IPRs.
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`Fintiv Factor 1: Factor 1 weighs against institution. By the time of the insti-
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`tution decision, the parties will have completed expert reports and summary judg-
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`ment motions on the ’068 patent and be one month before trial. And at least one of
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`the three asserted patents (the ’137 patent) won’t be subject to any IPRs. These facts
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`are specific to this case and undermine the possibility of a stay. See Fintiv Order at
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`7–8 (“proximity of the court’s trial date and investment of time are relevant” to as-
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`sess the court’s willingness to stay) (citing DMF, Inc. v. AMP Plus, Inc., Case No.
`
`
`
`1
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`
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`IPR2020-01238 (’068 patent)
`
`
`
`POPR Sur-reply
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`2-18-cv-07090 (C.D. Cal. July 12, 2019 (denying motion to stay after PTAB insti-
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`tuted in view of approaching trial date and advanced discovery)).
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`Fintiv Factors 2 & 5: Petitioner is a defendant in the WDTex case and closely
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`related to the other LG/Sony Defendants. See POPR at 22–23. Thus, Factor 5 weighs
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`against institution. As to Factor 2, Petitioner’s assertions about court congestion,
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`COVID-19,1 and possible conflicts with trial (Reply at 2–3) are speculative at best.
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`The WDTex case is set for trial in Waco. And just last month, Judge Albright trans-
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`ferred a case from Austin to Waco for purposes of conducting a January 2021 trial.
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`See Ex. 2013 at 1 (“if the Austin courthouse does not reopen in time for a January
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`trial, the trial for the -00254 case will be held in Waco”). In doing so, Judge Albright
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`emphasized the importance of speedy trials and the harm from delay. See id. at 5–6
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`(“delaying one trial further delays other trials) (“because patents have a limited term,
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`the Court does not believe it should unnecessarily delay a trial date”).
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`Indeed, last week, Judge Albright issued a docket entry in the WDTex case
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`reiterating the March 2021 trial date. Ex. 2015 (Dkt. 139 on 12/9/21) (“Trial remains
`
`set for 3/29/21 at 9:00am”). This is nearly a full year before the March 2022 FWD
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`deadline. Thus, even if trial were delayed by three months (and there’s no non-spec-
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`ulative reason it will be), this would still be nine months before the FWD deadline.2
`
`
`1 On December 13, 2020, the US began the most ambitious vaccination campaign in
`its history, which Gov. Cuomo called “the weapon that will end the war.” Ex. 2014.
`2 Petitioner’s reliance on the Seven and Maxell (Reply at 3) is unavailing. Both found
`Factor 2 to favor denial and instituted review because of unique circumstances not
`
`
`
`2
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`
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`IPR2020-01238 (’068 patent)
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`
`
`POPR Sur-reply
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`Factor 2 weighs strongly against institution.
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`Fintiv Factor 3: This decision is expected to arrive 2.5 months after the -1055
`
`decision, in which the Board found that the court and parties’ investment in the
`
`WDTex case weighed against institution. Ex. 2011 at 10. In the additional 2.5
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`months here, the parties will complete three rounds of infringement and invalidity
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`expert reports, expert depositions, and summary judgment motions. POPR at 10–11.
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`This increased investment weighs strongly against institution.
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`Petitioner’s only justification for delay—that “Solas obtained broad construc-
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`tions to support expansive infringement theories” (Reply at 1)—fails for many rea-
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`sons. First, Petitioner’s invalidity contentions (served in Jan. 2021) expressly state
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`they are “based in part” on Solas’s infringement contentions and weren’t limited to
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`particular constructions. Ex. 2015 at 3–4 (“These invalidity contentions are made
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`under a variety of alternatives and do not represent Defendants’ agreement or view
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`as to the meaning . . . of any claim contained therein.”).
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`Second, the court’s constructions weren’t unexpected and Petitioner had rea-
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`sonable notice of them at least since receiving Solas’s proposed constructions. See
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`MASS Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284, 286 (E.D. Tex.
`
`2008) (Ex. 2016) (unexpected constructions are those that “greatly differed from
`
`
`present here. In Seven the PTAB had already instituted 10 IPRs on the asserted pa-
`tents. IPR2020-00506, Paper 11 at 11–18. And in Maxell, the district court “signaled
`its willingness to entertain a renewed motion for stay,” which the PTAB emphasized
`in instituting review. IPR2020-00204, Paper 11 at 13, 20.
`
`
`
`3
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`
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`IPR2020-01238 (’068 patent)
`
`
`
`POPR Sur-reply
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`what the parties proposed”). (Defendants weren’t required to ask for leave or show
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`good cause to add references to their final invalidity contentions.)
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`Third, Shin and Hector are English patent publications, and Petitioner “knew
`
`or should have known” of them since its preliminary invalidity contentions. Peti-
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`tioner provides no evidence for why it couldn’t find them earlier through reasonable
`
`diligence. See General Plastic, IPR2016-01357, Paper 19 at 19–20 (precedential).
`
`This is especially true since Petitioner now contends that Shin discloses feed inter-
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`connections “Just like the ’068 patent’s ‘feed interconnections.’” Pet. at 26.
`
`Fintiv Factor 4: As expected, Defendants’ invalidity expert report substan-
`
`tially 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). Exs.
`
`2017, 2018 Petitioner’s narrow stipulation “if the PTAB institutes” is entitled to less
`
`weight here because of its late timing. POPR at 19–20. Overlapping issues are guar-
`
`anteed to remain in the WDTex case until a month before trial. Id.
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`Petitioner also doesn’t dispute that the additional dependent claims challenged
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`in this IPR are similar to the independent claims at issue in the WDTex case and
`
`implicate the same issues. See POPR at 21–22; Fintiv Order at 13 & n.25 (similarity
`
`of non-overlapping claims weigh against institution) (citing Next Caller, IPR2019-
`
`00961, Paper 10 at 14 (denying institution because “petitioner does not argue that
`
`that the non-overlapping claims differ significantly in some way or argue that it
`
`would be harmed if institution of the non-overlapping claims is denied”)).
`
`
`
`4
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`
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`IPR2020-01238 (’068 patent)
`
`
`
`POPR Sur-reply
`
`Fintiv Factor 6: The Petition depends on two constructions Petitioner disa-
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`grees with and may appeal to the Federal Circuit. Pet. at 16 & n.3 (“Petitioner re-
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`serves right the appeal the district court’s construction.”). This creates the risk of
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`inconsistent outcomes/constructions between this IPR and the underlying litigation.
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`Further, to promote efficiency, the Board should reject Petitioner’s justifica-
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`tion of waiting for district court claim constructions before preparing an IPR. “Such
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`a policy would encourage future accused infringers to propose narrow constructions
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`focused on non-infringement [in district court] while sidelining potential invalidity
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`defenses [before the PTAB] until the Court issues its claim construction opinion.”
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`MASS Engineered at 286. This is also antithetical to the Board’s policies that en-
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`courage petitioners to file IPRs expeditiously. See Fintiv Order at 11.
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`Finally, the Petition isn’t strong on the merits—at least because it fails to ad-
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`equately explain and apply each of the constructions it purports to adopt. See POPR
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`25. For example, each challenged claim requires “supply lines” and “signal lines”
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`be “arrayed to cross . . . via the gate insulating film.” ’068 patent, claims 1, 13. The
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`Petition asserts that Shin discloses this because “gate insulating layer N19 is not
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`etched where N10 and N33 cross.” Pet. at 44. But Shin doesn’t teach or suggest that
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`N19 is the structure that prevents the supply lines and signal lines from shorting
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`where they cross. And none of Shin’s cited disclosures show how the supply lines
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`are insulated from the scan lines. To fill this gap, Petitioner relies on unsupported
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`arguments, such as creating a “modified” version of Shin Fig. 22 that adds a new
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`label and annotation for “gate insulating film N19.” See Ex. 1004 ¶ 141.
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`
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`5
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`
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`IPR2020-01238 (’068 patent)
`
`
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`POPR Sur-reply
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`
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`Dated: December 16, 2020
`
`Respectfully submitted,
`
`/s/ Philip Wang
`Philip Wang (Reg. No. 74,621)
`Neil Rubin (Reg. No. 67,030)
`Russ August & Kabat
`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
`
`Counsel for Patent Owner
`
`
`
`6
`
`
`
`IPR2020-01238 (’068 patent)
`
`
`
`POPR Sur-reply
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on
`
`December 16, 2020, by filing this document through the Patent Trial and Appeal
`
`Board End to End system as well as delivering a copy via email upon the following
`
`attorneys of record for the Petitioner:
`
`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
`
`Counsel for Patent Owner
`
`
`Date: December 16, 2020
`
`
`
`
`
`
`
`
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