Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 7
`Entered: December 21, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`____________
`
`IPR2020-01275
`Patent 7,446,338 B2
`____________
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`DECISION
`
`
`
`
`
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper No. 7
`Entered: December 21, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`____________
`
`IPR2020-01275
`Patent 7,446,338 B2
`____________
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`DECISION
`
`
`
`
`
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`
`I. INTRODUCTION
`
`A. Background
`On July 22, 2020, Apple Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–3 and 5–13 (“the
`challenged claims”) of U.S. Patent No. 7,446,338 B2 (Ex. 1001, “the ’338
`patent”). Concurrently with the Petition, Petitioner filed a Motion for
`Joinder (Paper 3, “Mot.”), requesting that this proceeding be joined with
`Samsung Display Co., Ltd. v. Solas OLED, Ltd., Case IPR2020-00320
`(“0320 IPR”). Mot. 1. Solas OLED, Ltd. (“Patent Owner”) did not file an
`Opposition to the Motion for Joinder or a Preliminary Response.
`For the reasons discussed below, we institute an inter partes review
`and grant Petitioner’s Motion for Joinder.
`B. Related Proceedings and Asserted Grounds of Unpatentability
`In the 0320 IPR, we instituted inter partes review of the ’338 patent
`on the following two grounds:
`1. Claims 1, 2, 5, 6, and 9–11 under 35 U.S.C. § 103(a) as
`unpatentable over Kobayashi1 and Shirasaki2; and
`2. Claims 1–3 and 5–13 under 35 U.S.C. § 103(a) as
`unpatentable over Childs3 and Shirasaki.
`0320 IPR, Paper 9, 32.
`The Petition in this proceeding challenges the same claims on
`identical grounds of unpatentability, and relies on the same evidence,
`
`
`1 U.S. Pat. App. Pub. No. 2002/0158835 A1 (Ex. 1003).
`2 U.S. Pat. App. Pub. No. 2004/0113873 A1 (Ex. 1004).
`3 Int’l. Pub. No. WO 03/079441 A1 (Ex. 1005).
`
`2
`
`
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`including the same declarant testimony, as presented in the 0320 IPR. Pet.
`7–8; Mot. 4.
`
`II. ANALYSIS
`An inter partes review may be joined with another inter partes
`review, subject to certain statutory provisions:
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`35 U.S.C. § 315(c) (2018); see also 37 C.F.R. § 42.122 (“Any request for
`joinder must be filed, as a motion under § 42.22, no later than one month
`after the institution date of any inter partes review for which joinder is
`requested.”).
`A motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB April 24, 2013). As the moving party,
`Petitioner bears the burden of proving that it is entitled to the requested
`relief. 37 C.F.R. § 42.20(c).
`As an initial matter, the present Motion for Joinder meets the
`requirements of 37 C.F.R. § 42.122(b) because the Motion was filed on July
`22, 2020, which is not later than one month after the 0320 IPR was instituted
`on June 23, 2020.
`
`3
`
`
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`In addition and as noted above, the present Petition challenges the
`same claims on the same grounds of unpatentability, and relies on the same
`evidence, including the same declarant testimony, as presented in the 0320
`IPR. Pet. 7–8; Mot. 4.
`Petitioner asserts that the General Plastic factors are inapplicable
`here, where the Petitioner seeks to join as a party to the 0320 IPR and take
`an understudy rule. Mot. 7–10. We need not determine the applicability of
`the General Plastic factors, however, because Petitioner has confirmed that
`it has not previously filed a petition requesting inter partes review of the
`’338 patent. Id. at 7–8.
`For the above reasons, and in particular the fact that the present
`Petition is virtually identical to the petition in the 0320 IPR, we determine
`Petitioner has demonstrated sufficiently under 35 U.S.C. § 315(c) that its
`Petition in this case warrants the institution of an inter partes review under
`35 U.S.C. § 314(a).
`Petitioner further contends joinder will not affect the schedule in the
`0320 IPR, agrees to assume an “understudy” role, and provides the
`following conditions that would apply as long as Solas OLED, Ltd. and
`Samsung Display Co., Ltd. (“the 0320 Petitioner”) remain active parties:
`(a) all filings by Petitioner in the joined proceeding be
`consolidated with the filings of the 0320 Petitioner, unless a
`filing solely concerns issues that do not involve the 0320
`Petitioner;
`(b) Petitioner shall not be permitted to raise any new grounds
`not already instituted by the Board in the 0320 IPR, or
`introduce any argument or discovery not already introduced by
`the 0320 Petitioner;
`
`4
`
`
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`(c) Petitioner shall be bound by any agreement between Patent
`Owner and the 0320 Petitioner concerning discovery and/or
`depositions; and
`(d) Petitioner at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted for the 0320
`Petitioner alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and the 0320 Petitioner.
`Mot. 4–6. Based on these conditions, Petitioner contends “[t]hese steps will
`minimize any potential complications or delay that potentially may result by
`joinder.” Id. at 6.
`Based on the facts and circumstances discussed above, we determine
`Petitioner has established good cause for joining this proceeding with the
`0320 IPR. Specifically, we find that joinder of this proceeding with the
`0320 IPR is unlikely to require any delay or modification to the scheduling
`order already in place for the 0320 IPR. We also determine that Patent
`Owner will not be prejudiced unduly by the joinder of this proceeding.
`Thus, we determine that granting the Motion for Joinder under these
`circumstances would help “secure the just, speedy, and inexpensive
`resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above
`reasons, we conclude that the Motion for Joinder should be granted.
`
`
`III. ORDER
`For the reasons given, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to 1–3 and 5–13 of the ’338 patent on the
`grounds set forth in the Petition;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and Petitioner is joined as a petitioner in IPR2020-00320;
`
`5
`
`
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2020-00320 remain unchanged and remain the
`only grounds on which trial has been instituted;
`FURTHER ORDERED that Petitioner shall have an “understudy” role
`in the 0320 IPR under the conditions reproduced above (Mot. 4–6);
`FURTHER ORDERED that Petitioner and 0320 Petitioner shall file
`all papers jointly unless Petitioner first receives authorization from the
`Board to make a separate filing; such authorization shall require a showing
`that Petitioner’s intended filing involves an issue unique to Petitioner or
`states a point of disagreement related to the 0320 Petitioner’s filing;
`FURTHER ORDERED that all further filings in the joined proceeding
`shall be made in IPR2020-00320 and that no further filings shall me made in
`IPR2020-01275;
`FURTHER ORDERED that copies of this Decision be entered into
`the records of IPR2020-00320 and IPR2020-01275; and
`FURTHER ORDERED that the case caption in IPR2020-00320 be
`modified to reflect the joinder of this proceeding with IPR2020-00320 in
`accordance with the attached example.
`
`
`
`
`
`
`6
`
`
`
`IPR2020-01275
`Patent 7,446,338 B2
`
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`PATENT OWNER:
`
`Philip Wang
`Neil Rubin
`Reza Mirzaie
`Kent Shum
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
`
`
`
`
`
`
`
`
`
`7
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG DISPLAY CO., LTD. and APPLE INC.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`_______________
`
`Case IPR2020-003201
`Patent 7,446,338 B2
`_______________
`
`
`
`
`1 Apple Inc., who filed a petition in IPR2020-01275, has been joined as a
`petitioner in this proceeding.
`
`8
`
`
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