Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND PANASONIC LIQUID CRYSTAL DISPLAY CO.,
`LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01028
`Patent No. 9,793,299
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC. AND PANASONIC LIQUID
`CRYSTAL DISPLAY CO., LTD.’S RESPONSE TO PETITIONER’S
`OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. § 42.64(b)(1)
`
`–1–
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND PANASONIC LIQUID CRYSTAL DISPLAY CO.,
`LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01028
`Patent No. 9,793,299
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC. AND PANASONIC LIQUID
`CRYSTAL DISPLAY CO., LTD.’S RESPONSE TO PETITIONER’S
`OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. § 42.64(b)(1)
`
`–1–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`Patent Owner hereby responds to Tianma Microelectronics Co. Ltd.’s
`
`(“Petitioner”) objections to Evidence under 37 C.F.R. § 42.64(b)(1) (Paper 17), as
`
`served on December 29, 2021 (“Objections to Evidence”).
`
`Exhibit 2009 – G. Walker, Part 2: Fundamentals of Touch Technologies other
`than Projective Capacitance, Society for Information Display Week ’14,
`Updated October 2013.
`
`Petitioner’s objections to Exhibit 2009 (a presentation by Geoff Walker,
`
`Senior Touch Technologist at Intel Corp. given during the Society for Information
`
`Display’s (“SID”) Display Week) are baseless. First, Petitioner objects that Exhibit
`
`2009 lacks authentication under Federal Rule Evidence (“FRE”) 901 “because
`
`sufficient evidence has not been provided to establish its authenticity, date, or public
`
`availability.” Paper 17 at 1. FRE 901, however, does not require a showing of public
`
`availability or date of publication (as would be required for an asserted prior art
`
`reference). Even so, the presentation states that it was updated in October 2013 (Ex.
`
`2009, 197) and made available at the SID Display Week on June 1, 2014 (id., 1).
`
`Exhibit 2009 also provides a download link, indicating that it is publicly accessible.1
`
`1 Exhibit 2009 has also been cited in at least five other inter partes review
`proceedings ranging from 2014 through 2021 and involving different parties (and
`experts)—further demonstrating that this presentation has been publicly available.
`See Samsung Display Co., Ltd. v. Solas OLED Ltd., IPR2019-01668 (P.T.A.B. Mar.
`03, 2021); Samsung Elecs. Co., Ltd. v. Neodron Ltd., IPR2020-00334 (P.T.A.B. Apr.
`
`–2–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`See
`
`id.
`
`(providing
`
`download
`
`instructions
`
`for
`
`the web
`
`address:
`
`http://www.walkermobile.com/Touch_Technologies_Tutorial_Latest_Version.pdf)
`
`; Ex. 2016, ¶8. FRE 901 does provide that “[t]he appearance, contents, substance,
`
`internal patterns, or other distinctive characteristics of the item, taken together with
`
`all the circumstances” can authenticate an item of evidence. FRE 901(b)(4). Exhibit
`
`2009 includes (1) a title page identifying the author by name, title, employer, and
`
`photograph; and (2) a footer indicating that the presentation was given at SID
`
`Display Week 2014 with the author’s employer’s logo (Intel). SID Display Week is
`
`a well-known conference for professionals in the display industry and the contents
`
`of the presentation are consistent with the type of information that would be
`
`presented at SID Display Week. Ex. 2016, ¶5. Further, pursuant to 37 C.F.R.
`
`42.64(b)(2), Patent Owner includes a screen capture of the 2014 archive from the
`
`Display Week website showing that Geoff Walker provided a presentation on touch
`
`technology on June 1, 2014, as supplemental evidence of Exhibit 2009’s
`
`authenticity. See Ex. 2017 (http://www.displayweek.org/2014/Program/Sunday-
`
`Short-Courses). FRE 901 also provides that a witness with knowledge can provide
`
`27, 2020); Samsung Elecs. Co., Ltd. v. UUSI, LLC d/b/a Nartron, IPR2016-00908
`(P.T.A.B. May 8, 2017); Samsung Elecs. Co., Ltd. v. UUSI, LLC d/b/a Nartron,
`IPR2016-00908 (P.T.A.B. Apr. 15, 2016); Wintek Corp. v. TPK Touch Solutions
`Inc., IPR2013-00567, -00568 (P.T.A.B. June 27, 2014).
`
`–3–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`testimony that an item is what it is claimed to be. FRE 901(b)(1). Patent Owner
`
`attaches a supplemental declaration of Thomas L. Credelle (Ex. 2016) that provides
`
`such testimony. In addition, FRE 902 provides that evidence is self-authenticating
`
`when the evidence contains “[a]n inscription, sign, tag, or label purporting to have
`
`been affixed in the course of business and indicating origin, ownership, or control.”
`
`Exhibit 2009 includes Intel’s logos on each page and at the end of the presentation
`
`along with contact information for the author, Geoff Walker. The photograph of the
`
`author and SID logo are further indicia indicating origin, ownership, and control.
`
`Second, Petitioner argues that because “there is no admissible evidence
`
`establishing [Exhibit 2009’s] public availability,” it is “irrelevant, prejudicial,
`
`confusing, and/or a waste of time” under FRE 401, 402, and 403. Paper 17 at 1.
`
`Petitioner is mistaken both on the facts and the law. As explained above, Exhibit
`
`2009 is a publicly available document and has been since at least 2014. See also
`
`supra n.1. The Board can take judicial notice of the fact that this presentation was
`
`filed as an exhibit in a 2014 inter partes review proceedings, which puts it
`
`undeniably in the public domain. See Wintek Corp. v. TPK Touch Sols., Inc.,
`
`IPR2013-00567, Ex. 2008 (P.T.A.B. June 27, 2014) (attached as Ex. 2018). Exhibit
`
`2009 is also relevant to Mr. Credelle’s arguments concerning the Maekawa and
`
`Takahata prior art references, namely that Maekawa and Takahata are not from the
`
`same field of endeavor because Maekawa does not mention a touch screen and
`
`–4–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`Takahata discloses a resistive touch screen, and that thermal warpage issues
`
`associated with an air gap are unique to resistive touch screens such as the touch
`
`screen described in the Takahata reference. See Ex. 2010 at ¶¶41-42. Petitioner
`
`concedes that the cited portions of Exhibit 2009 are relevant, and fails to identify
`
`“with sufficient particularity” why the uncited portions relating to touch screen
`
`technology are irrelevant. See Paper 17, 1; 37 C.F.R. 42.64. Patent Owner included
`
`the entire presentation for authentication purposes and to avoid running afoul of the
`
`rule of completeness. See FRE 106. Moreover, Petitioner fails to explain how or
`
`why the public availability of Exhibit 2009 makes it “prejudicial, confusing, or a
`
`waste of time” under FRE 401, 402, and 403. Id.
`
`Third, Petitioner objects to Exhibit 2009 as “inadmissible hearsay and/or
`
`hearsay within hearsay that does not fall under any exceptions.” Paper 17, 1.
`
`Petitioner is incorrect. Exhibit 2009 qualifies as an exception to the hearsay rule
`
`under at least FRE 803(18) for Statements in Learned Treatises, Periodicals, or
`
`Pamphlets. As previously noted, Exhibit 2009 was published for the SID’s Display
`
`Week in 2014, a well-known conference for professionals in the display field. See
`
`Ex. 2016 at ¶¶5-6. Mr. Credelle considers Exhibit 2009 to be a reliable source of
`
`information related to the subject matter at issue. Id., ¶ 6. Other expert’s use of the
`
`same presentation demonstrates that they consider Exhibit 2009 to be a reliable
`
`authority on touch panel technology. See supra n.1. Moreover, even if the Board
`
`–5–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`finds that Exhibit 2009 is hearsay, it would still be permissible under FRE 703 for
`
`Mr. Credelle to rely on that presentation because it is the type of resource that experts
`
`in the display field reasonably rely on in forming technical opinions. See, e.g., Mylan
`
`Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., IPR2020-00040, Paper 91,
`
`*68 (P.T.A.B. May 7, 2021).
`
`For these reasons, Petitioner’s objections should be overruled.
`
`Exhibit 2010 – Declaration of Thomas L. Credelle
`
`Petitioner’s objections to paragraph 41 of Exhibit 2010 are also without merit.
`
`First, Petitioner claims that paragraph 41 relies “on unauthenticated and hearsay
`
`evidence (e.g. Exhibit 2009).” Paper 17, 2.2 But, as discussed above, Exhibit 2009
`
`is authenticated and qualifies as a hearsay exception under FRE 803(18); thus, Mr.
`
`Credelle’s opinions involving the same are not irrelevant. Moreover, even if the
`
`Board finds that Exhibit 2009 is hearsay, FRE 703 expressly allows expert opinion
`
`based data that would otherwise be inadmissible if those kinds of facts or data are
`
`reasonably relied on by experts in a particular field. As previously discussed,
`
`2 Petitioner does not identify which portion(s) of paragraph 41 of Ex. 2010 it believes
`to be “unauthenticated and hearsay evidence (e.g. Exhibit 2009),” Paper 17 at 2, and,
`therefore, fails to “identify the grounds for the objection with sufficient particularity
`to allow correction in the form of supplemental evidence,” as required by 37 C.F.R.
`§ 42.64(b)(1).
`
`–6–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`Exhibit 2009 is the type of resource experts in the display field would reasonably
`
`rely on.
`
`Second, Petitioner objects to paragraph 41 “as irrelevant and more prejudicial
`
`than probative as being based on inadmissible evidence under FRE 401, 402, and
`
`403.” Paper 17, 2. This objection is void of any particularity to allow correction in
`
`the form of supplemental evidence and is exactly the type of boilerplate recitation of
`
`the Rules of Evidence that Section 42.64(b)(1) was intended to preclude.
`
`For these reasons, Petitioners objections should be overruled.
`
`Dated: January 13, 2022
`
`Respectfully submitted,
`
`By: /Eric J. Klein/
`Eric J. Klein (Reg. No. 51,888)
`Lead Counsel
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`Email: eklein@velaw.com
`
`Jeffrey R. Swigart (Reg. No. 77,008)
`jswigart@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`–7–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`Abigail Lubow (Reg. No. 75,839)
`alubow@velaw.com
`VINSON & ELKINS L.L.P.
`555 Mission Street, Suite 2000
`San Francisco, CA 94101
`Tel: (415) 979-6963
`Fax: (415) 358-5770
`
`ATTORNEYS FOR PATENT OWNERS
`JAPAN DISPLAY INC. and
`PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. §42.6(e) and 37
`
`C.F.R. §42.105, service was made on Patent Owner as detailed below.
`
`Date of service January 13, 2022
`Manner of service Via electronic mail per agreement of the parties
`Documents served Patent Owner Japan Display Inc. and Panasonic Liquid
`Crystal Display Co., Ltd.’s Response
`to Petitioner’s
`Objections to Evidence under 37 C.F.R. § 42.64(b)(1)
`
`–8–
`
`
`
`Patent Owner’s Response to Petitioner’s Objections to Evidence
`
`Persons served
`
`Lead Counsel
`Joshua L. Goldberg (Reg. No. 59,369)
`joshua.goldberg@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`Back-Up Counsel
`Qingyu Yin (Reg. No. 61,329)
`qingyu.yin@finnegan.com
`
`David C. Reese (Reg. No. 67,942)
`david.reese@finnegan.com
`
`Daniel F. Klodowski (Reg. No. 72,693)
`Daniel.klodowski@finnegan.com
`
`Gracie K. Mills (66,946)
`gracie.mills@finnegan.com
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`/Eric J. Klein/
`Eric J. Klein
`Lead Counsel
`Registration No. 51,888
`
`US 8583797
`
`–9–
`
`
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
