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 PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 9,793,299 PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`
`IV.
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION ........................................................................................... 1
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION OF THE PETITION UNDER § 314(A) BASED ON
`THE FINTIV FACTORS ................................................................................. 1
`A.
`Fintiv Factor 1: Whether the court granted a stay or whether
`evidence exists that one may be granted if an IPR is instituted ............ 4
`Fintiv Factor 2: The proximity of the court’s trial date to the
`projected statutory deadline for the PTAB’s final written
`decision .................................................................................................. 7
`Fintiv Factor 3: The investment in the parallel proceeding by the
`court and the parties .............................................................................. 8
`Fintiv Factor 4: The overlap between issues raised in the petition
`and in the parallel proceeding .............................................................11
`Fintiv Factor 5: The petitioner and the defendant in the parallel
`proceeding are the same party .............................................................14
`Fintiv Factor 6: Other circumstances impact the PTAB’s exercise
`of discretion, including the merits .......................................................14
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION OF THE PETITION UNDER 35 U.S.C. § 325 ..................16
`A.
`The Becton Dickinson factors weigh in favor of denying
`institution of claims 1, 3-6, and 8-11 (Ground 1) ...............................17
`The Becton Dickinson factors weigh in favor of denying
`institution of claims 2 and 7 (Ground 2) .............................................23
`THE PETITION FAILS TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM .....................................................................27
`A.
`The Petition Fails to Prove that Maekawa in Combination with
`Takahata Render Obvious Claims 1, 3-6, and 8-11 (Ground 1) .........27
`
`E.
`
`F.
`
`B.
`
`–ii–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`C.
`
`B.
`
`The Petition Fails to Prove that Maekawa and Takahata in
`Combination with Nakanishi Renders Obvious Claims 2 and 7
`(Ground 2) ...........................................................................................42
`The Petition Fails to Prove that Maekawa and Takahata in
`Combination with Nagano Render Obvious Claims 15 and 16
`(Ground 3) ...........................................................................................48
`CONCLUSION ..............................................................................................52
`V.
`CERTIFICATE OF WORD COUNT ......................................................................53
`CERTIFICATE OF SERVICE ................................................................................54
`
`–iii–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`EXHIBIT LIST
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`[DKT 104] First Amended Docket Control Order in Japan Display
`Inc. and Panasonic Liquid Crystal Display Co., Ltd.; C.A. No. 2:20-
`cv-00283 (ED TX)
`
`Petitioner’s Patent Invalidity Contentions – Chart D-1 in Japan
`Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.; C.A.
`No. 2:20-cv-00283 (ED TX)
`
`[PAPER 3] Notice of Filing Date and Time for Preliminary Response
`in Tianma Microelectronics Co. Ltd. v. Japan Display Inc. and
`Panasonic Liquid Crystal Display Co., Ltd.; Case No. IPR2021-
`01028; Before the Patent Trial and Appeal Board
`
`[DKT 96] Petitioner’s P.R. 4-5(b) Responsive Claim Construction
`Brief in Japan Display Inc. and Panasonic Liquid Crystal Display
`Co., Ltd.; C.A. No. 2:20-cv-00283 (ED TX)
`
`[DKT 115] Memorandum Opinion and Order Denying Petitioner’s
`Motion to Transfer in Japan Display Inc. and Panasonic Liquid
`Crystal Display Co., Ltd.; C.A. No. 2:20-cv-00283 (ED TX)
`
`[DKT 123] Claim Construction Memorandum Opinion and Order in
`Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.;
`C.A. No. 2:20-cv-00283 (ED TX)
`[DKT 131] [REDACTED] Petitioner’s Motion for Leave to
`Supplement Invalidity Contentions in Japan Display Inc. and
`Panasonic Liquid Crystal Display Co., Ltd.; C.A. No. 2:20-cv-00283
`(ED TX)
`U.S. Patent No. 7,148,944 to Kinoshita et al.
`
`Ex. 2009
`
`G. Walker, “Part 2: Fundamentals of Touch Technologies other than
`Projected Capacitive,” SID Display Week 2014
`
`–iv–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`Ex. 2010
`
`Declaration of Mr. Thomas Credelle
`
`Ex. 2011
`
`Curriculum Vitae of Mr. Thomas Credelle
`
`Ex. 2012
`
`[DKT 142] Order granting Tianma Microelectronics Co. Ltd.’s
`Motion for Leave to Supplement Invalidity Contentions in Japan
`Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.; C.A.
`No. 2:20-cv-00283 (ED TX)
`
`–v–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`I.
`
`INTRODUCTION
`
`Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd. (“Patent
`
`Owner”) submit this Response to IPR2021-01028 for Inter Partes Review (“Pet.” or
`
`“Petition”) of U.S. Patent No. 9,793,299 (“the ’299 Patent”) filed by Tianma
`
`Microelectronics Co., Ltd. (“Petitioner”). The Petition is defective for three reasons:
`
`(1) weighing of the Fintiv factors for discretionary denial heavily favors denial;
`
`(2) weighing of the Becton Dickinson factors for discretionary denial heavily favors
`
`denial; and (3) Petitioner’s grounds for invalidity lack merit.
`
`Accordingly, Patent Owner respectfully requests that the Petition be denied
`
`institution.
`
`II.
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION OF THE PETITION UNDER § 314(a) BASED ON THE
`FINTIV FACTORS
`
`The Petition seeks to review a patent asserted in a pending district court
`
`litigation between the same parties, plaintiffs Japan Display Inc. and Panasonic
`
`Liquid Crystal Display, Co., Ltd. and defendant Tianma Microelectronics Co. Ltd.
`
`(Japan Display Inc. v. Tianma Microelectronics Co. Ltd., Case No. 2:20-cv-00283
`
`(E.D. Tex. Aug. 31, 2020)) (Ex. 1019) —involving essentially the same prior art and
`
`arguments—which is scheduled to be completed nearly ten months before a final
`
`written decision would be due. IPR2021-01028, Paper 3 at 1 (P.T.A.B. June 16,
`
`2021); First Amended Docket Control Order (Ex. 2001). Under Apple Inc. v. Fintiv,
`
`–1–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`Inc., “a parallel proceeding in an advanced state implicates considerations of
`
`efficiency and fairness, which can serve as an independent reason to apply discretion
`
`to deny institution.” IPR2020-00019, Paper 15 at 11 (P.T.A.B. May 13, 2020).
`
`Here, the district court case is already well-developed. The claim construction
`
`hearing was held on August 12, 2021, and the claim construction order issued on
`
`September 3, 2021. Ex. 1023; Ex. 2006. The parties have spent significant resources
`
`on discovery and related motion practice directly impacting invalidity, including
`
`challenges to the sufficiency of Defendant’s invalidity contentions and Defendant’s
`
`motion to compel discovery related to prior art products. By the time a decision on
`
`institution will be due (December 16, 2021), fact and expert discovery will have long
`
`been closed and the deadline for expert reports (October 1, 2021) and dispositive
`
`motions (November 8, 2021) will have passed. See First Amended Docket Control
`
`Order (Ex. 2001). The jury trial involving this patent is scheduled to begin on
`
`February 7, 2022, more than ten months before the Board would issue a final written
`
`decision in this proceeding, if instituted (December 16, 2022). See id.; IPR2021-
`
`01028, Paper 3 at 1 (P.T.A.B. June 16, 2021). Thus, given the advanced stage of the
`
`district court case relative to the Petition, the Petition should be denied institution
`
`under 35 U.S.C. § 314(a) to avoid needless expenditure of the Board’s resources.
`
`See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (P.T.A.B.
`
`Sept. 12, 2018) (denying institution where the district court proceeding had
`
`–2–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`progressed beyond the close of fact discovery and trial would take place before
`
`issuance of the Board’s final written decision); Fintiv, IPR2020-00019, Paper 15 at
`
`13 (finding that scheduling of a district court trial two months before issuance of the
`
`Board’s final written decision weighed “somewhat in favor” of discretionary denial).
`
`Indeed, the Board has identified factors relating to “whether efficiency, fairness, and
`
`the merits support the exercise of authority to deny institution in view of an earlier
`
`trial date in the parallel proceeding” in line with NHK Spring—each of which
`
`supports denial here. Fintiv, IPR2020-00019, Paper 11, at 6. The Fintiv factors
`
`include:
`
`1.
`
`2.
`
`3.
`4.
`
`5.
`
`6.
`
`whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the parties;
`overlap between issues raised in the petition and in the parallel
`proceeding;
`whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id.
`
`–3–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`As set forth below, a balancing of these factors demonstrates that efficiency
`
`and integrity of the America Invents Act are best served by denying institution of
`
`this Petition.
`
`A.
`
`Fintiv Factor 1: Whether the court granted a stay or whether
`evidence exists that one may be granted if an IPR is instituted
`
`“A district court stay of the litigation pending resolution of the PTAB trial
`
`allays concerns about inefficiency and duplication of efforts,” and thus “weigh[s]
`
`against exercising the authority to deny institution under NHK.” Fintiv, IPR2020-
`
`00019, Paper 11, at 6. The Defendant has not moved for a stay in view of this
`
`Petition and there is no reason to believe it will do so. The Patent Owner has no
`
`plans to move for a stay. Moreover, it is unlikely that Judge Gilstrap, the presiding
`
`judge in the district court case, would grant a stay at this late stage.
`
`Judge Gilstrap uses a three-factor test to determine whether to grant a stay
`
`pending IPR: “(1) whether the stay will unduly prejudice the nonmoving party, (2)
`
`whether the proceedings before the court have reached an advanced stage, including
`
`whether discovery is complete and a trial date has been set, and (3) whether the stay
`
`will likely result in simplifying the case before the court.” Memorandum Opinion
`
`and Order, Solas OLED Ltd. v. Samsung Display Co., No. 2:19-CV-00152-JRG,
`
`2020 WL 1905361 (E.D. Tex. Apr. 17, 2020) (Dkt, No. 133) (quoting NFC Techs.
`
`LLC v. HTC Am., Inc., Case No. 2:13-cv-1058-WCB, 2015 1069111, at *2 (E.D.
`
`Tex. Mar. 11, 2015). As a threshold issue, Judge Gilstrap “has a consistent practice
`
`–4–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`of denying motions to stay when the PTAB has yet to institute post-grant
`
`proceedings. Garrity Power Servs. LLC. v. Samsung Elecs. Co. Ltd., 2:20-cv-269-
`
`JRG, *2 (E.D. Tex. Feb. 17, 2021) (citing Trover Group, Inc. v. Dedicated Micros
`
`USA, No. 2:13-cv-1047-WCB, 2015 WL 1069179, at *6 (E.D. Tex. Mar. 11, 2015)
`
`(Bryson, J.) (“This Court’s survey of cases from the Eastern District of Texas shows
`
`that when the PTAB has not yet acted on a petition for inter partes review, the courts
`
`have uniformly denied motions for a stay.”). Accordingly, any motion to stay related
`
`to this Petition would be considered premature until after an institution decision is
`
`made in December. By that time, the first factor would weigh strongly against a stay
`
`because fact and expert discovery would be completed and trial would not be far off.
`
`Moreover, it is well established that Plaintiffs’ timely enforcement of their patent
`
`rights is entitled to some weight, even if that factor is not dispositive. Plaintiffs have
`
`also already incurred substantial expenses with this litigation, which would be
`
`further exacerbated by additional delay. Similarly, the second factor weighs against
`
`a stay for similar reasons – the case is in its later stages. Finally, the third factor –
`
`whether the stay will likely result in simplifying the case before the court – is at most
`
`neutral. The consolidated district court litigation involves fifteen patents. Ex. 1019.
`
`Including this Petition, Petitioner has challenged less than half of those patents via
`
`inter partes review. See IPR2021-01028, -01029, -01057, -01058, -01059, -01060,
`
`-01061. That is, the scope of the district court litigation is much broader than the
`
`–5–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`instant Petition (and all the petitions combined). Thus, even if the Board were to
`
`institute all seven petitions, there would remain significant invalidity issues for the
`
`Court to resolve. Moreover, Petitioner has put forward a sizeable prior art products
`
`defense—identifying hundreds of prior art products for the asserted patents.
`
`Petitioner has also integrated technical information from these prior art products into
`
`its invalidity defenses. As a result, removing the printed publication prior art from
`
`Petitioner’s invalidity case would have only a minor impact, if any. Therefore, it is
`
`extremely unlikely that Judge Gilstrap would grant a stay, even if Petitioner
`
`requested one.
`
`Petitioner argues that the Board should not “speculate how the district court
`
`will proceed with respect to any motion” for stay because, given Petitioner’s motion
`
`to transfer, “it remains uncertain when and where the related district court litigation
`
`will even be tried.” See Pet., 7-8. But, on August 25, 2021, the Court issued an
`
`order denying Defendant’s Motion to Transfer, rendering this argument moot. See
`
`Japan Display, Case No. 2:20-cv-00283, Dkt. No. 115 (Ex. 2005). Accordingly, for
`
`these reasons, this factor weighs in favor of the Board exercising its discretion to
`
`deny institution pursuant to § 314(a). At a minimum, since neither party has
`
`requested a stay, this factor does not weigh in favor or against denial under Fintiv.
`
`See Fintiv, IPR2020-00019, Paper 11, at 12.
`
`–6–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`B.
`
`Fintiv Factor 2: The proximity of the court’s trial date to the
`projected statutory deadline for the PTAB’s final written decision
`
`As explained in Fintiv, “[i]f 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.” Id. at 9. Such is the case here. As
`
`discussed above, the trial date is set for February 7, 2022 and the Board’s final
`
`written decision will issue—over ten months later—on December 16, 2022. Ex.
`
`2003; IPR2021-01028, Paper 3 at 1 (P.T.A.B. June 16, 2021). In Fintiv, the
`
`difference between the dates was only two months and the Board found that this
`
`factor weighed “somewhat in favor” of discretionary denial. Id. at 13. Here, with
`
`more than ten months between trial and the Board’s final written decision, this factor
`
`weighs even more heavily towards a discretionary denial of institution. See Intel
`
`Corp. v. VLSI Tech. LLC, IPR2020-00106, Paper 17, at 7 (P.T.A.B. May 5, 2020)
`
`(seven-month gap); Vizio, Inc. v. Polaris PowerLED Techs., LLC, IPR2020-00043,
`
`Paper 30, at 8 (P.T.A.B. May 4, 2020) (seven month gap); NHK Spring, IPR2018-
`
`00752, Paper 8, at 20 (six-month gap); Supercell, IPR2020-00310, Paper 13, at 10–
`
`12 (six-month gap).
`
`Petitioner argues that the current trial date is “speculative” given its Motion
`
`to Transfer to the Central District of California. Pet., 8-9. However, as noted above,
`
`the Court has denied Defendant’s Motion to Transfer, rendering this argument moot.
`
`See Japan Display, Case No. 2:20-cv-00283, Dkt. No. 115 (Ex. 2005). Further, the
`
`–7–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`Board takes the court’s current schedule at “face value.” See Fintiv, IPR2020-
`
`00019, Paper 15, at 13 (“We generally take courts’ trial schedules at face value
`
`absent some strong evidence to the contrary.”). Petitioner offers no other credible
`
`evidence demonstrating that the February 7, 2022, trial setting will be moved.
`
`Therefore, this factor weighs heavily in favor of discretionary denial.
`
`C.
`
`Fintiv Factor 3: The investment in the parallel proceeding by the
`court and the parties
`
`Given the activity in the case thus far, this factor strongly weighs in favor of
`
`discretionary denial. Petitioner states that “[b]y institution, the primary investment
`
`by the district court will be through any claim construction ruling….” Pet., 9. This
`
`admission alone is not insignificant, yet Petitioner’s assertion vastly understates the
`
`efforts that both the parties and the Court have expended in the district court
`
`litigation thus far. While Petitioner does not seek construction of any terms of the
`
`’299 patent in the instant Petition, in the district court litigation, Petitioner disputed
`
`whether the preamble in claims 1 and 6 was limiting. Ex. 1021, 5, 9. Moreover, the
`
`parties disputed the plain and ordinary meaning of “used in a hand-held electronic
`
`device.” Id. As a result, the parties have exchanged opening, responsive, and reply
`
`claim construction briefs and conducted an expert deposition. The Court heard
`
`arguments on these issues and issued a Markman Order construing these terms. See
`
`Japan Display, Case No. 2:20-cv-00283, Dkt. No. 123 (Ex. 2006). Moreover, the
`
`–8–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`parties have exchanged infringement contentions and invalidity contentions and held
`
`several 30(b)(6) depositions and six inventor depositions, including an inventor
`
`deposition for the ’299 Patent. See Intel Corp. v. VLSI Tech. LLC, IPR2020-00498,
`
`Paper 16 at 7-8 (P.T.A.B. August 19, 2021) (finding that issuance of a claim
`
`construction order and service of final infringement and invalidity contentions was
`
`sufficient investment to warrant discretionary denial.); E-One, Inc. v. Oshkosh
`
`Corp., IPR2019-00161, Paper 16, at 7 (P.T.A.B. May 15, 2019) (denying institution
`
`under § 314(a) where, inter alia, the district court had already “received briefing and
`
`heard oral argument on claim construction, and issued a claim construction ruling”).
`
`Further, the Court has invested time conducting two hearings between the parties to
`
`resolve Plaintiff’s motion to compel invalidity contentions, discovery disputes, and
`
`Petitioner’s failed motion to transfer. The Court has also appointed a technical
`
`advisor (Don Tiller) to assist in the case and, as of this response, the parties have
`
`paid over $20,000.00 for Mr. Tiller’s services. See Japan Display, Case No. 2:20-
`
`cv-00283, Dkt. Nos. 88, 106. By the time an institution decision issues in this
`
`proceeding, fact and expert discovery will be complete; expert reports and
`
`dispositive motions will have been filed; and the parties will have filed their motions
`
`in limine and be preparing for trial. See First Amended Docket Control Order (Ex.
`
`2001). Accordingly, the district court case is far along enough that the parties and
`
`the Court have invested significant resources in the case.
`
`–9–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`Petitioner asserts that it moved with “speed and diligence in bringing this
`
`challenge” by filing this Petition “five months after Patent Owner served its
`
`infringement contentions” as a way to counteract any claim that the investment in
`
`the case is already quite substantial. Pet., 9. But Petitioner omits that it benefited
`
`from a 90-day extension from its original answer deadline. The fact is that Petitioner
`
`waited nine months from the filing of the complaint to file this Petition. Petitioner’s
`
`unexplained delay in filing the instant Petition also weighs in favor of the Board
`
`exercising discretion to deny institution under § 314(a). Fintiv, IPR2020-00019,
`
`Paper 11, at 11–12 (“If … the evidence shows that the petitioner did not file the
`
`petition expeditiously …, or even if the petitioner cannot explain the delay in filing
`
`its petition, these facts have favored denial.”); see, e.g., Next Caller Inc. v. TrustID,
`
`Inc., IPR2019-00961, -00962, Paper 10, at 15–16 (P.T.A.B. Oct. 16, 2019)
`
`(“[Petitioner’s] delay in filing the Petition weighs in favor of the Board exercising
`
`discretion to deny institution under § 314.”). Indeed, the Board has recognized that
`
`“it may impose unfair costs to a patent owner if the petitioner, faced with the
`
`prospect of a looming trial date, waits until the district court trial has progressed
`
`significantly before filing a petition at the Office.” Fintiv, IPR2020-00019, Paper
`
`11, at 11.
`
`Therefore, this factor weighs in favor of discretionary denial.
`
`–10–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`D.
`
`Fintiv Factor 4: The overlap between issues raised in the petition
`and in the parallel proceeding
`
`“[I]f the petition includes the same or substantially the same claims, grounds,
`
`arguments, and evidence as presented in the parallel proceeding, this fact has favored
`
`denial.” Id. at 12. Here, as in Fintiv, the Petitioner challenges the same claims and
`
`relies on the same references in its Invalidity Contentions as in the Petition. See id.
`
`at 14. In the Petition, a single § 103 ground for unpatentability is asserted against
`
`each challenged claim (Pet., 3):
`
`Challenged Claim Ground of Unpatentability in Petition
`1, 3-6, and 8-11
`U.S. Patent Appl. Pub. No. 2005/0158665 (“Maekawa”)
`in combination with
`U.S. Patent Appl. Pub. No. 2004/0239641 (“Takahata”)
`(together, “Primary References”)
`
`2 and 7
`
`15 and 16
`
`Primary References in further combination with
`U.S. Patent Appl. Pub. No. 2005/0099402 (“Nakanishi”)
`
`Primary References in further combination with
`JP Patent Appl. Pub. No. 2004272059 (“Nagano”)
`
`–11–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
`
`In its Invalidity Contentions, Petitioner relies on the same Primary References
`
`(Maekawa 1 and Takahata 2) for claims 1, 3-6, and 8-11 and the same further
`
`combination with Nakanishi3 alone for claims 2 and 7. See Invalidity Contentions
`
`Chart D-1 (Ex. 2002). For claims 1, 3-6, and 8-11, Petitioner’s Invalidity
`
`Contentions also include disclosures from three other references Kinoshita-’944 (Ex.
`
`2008), Hashimoto-’091 (cited during prosecution) (Ex. 1014), and Toyomaki-’816
`
`(Ex. 1015), but these references are supplemental to the Primary References and do
`
`“not negate that the same combinations of references asserted in the Petition also are
`
`asserted in the Petitioner’s [Invalidity Contentions].” Intel, IPR2020-00498, Paper
`
`16 at 7-8.
`
`Petitioner recently filed a motion to amend its invalidity contentions to include
`
`references “raised
`
`in Inter Partes Review (IPR) petitions
`
`that Tianma
`
`Microelectronics filed in June.” See Defendant’s Motion for Leave to Supplement
`
`Invalidity Contentions (Ex. 2007, 1). On September 15, 2021, the Court granted
`
`Petitioner’s motion. See Order granting Tianma Microelectronics Co. Ltd.’s Motion
`
`1 Petitioner’s Invalidity Contentions identify the Maekawa reference as “Maekawa-’171.”
`Maekawa-’171 refers to U.S. Patent No. 8,053,171, which published as US2005/0158665 on July
`21, 2005. That is, Petitioner cites to the published application of Maekawa in its Petition and the
`issued patent in its Invalidity Contentions, but they are the same reference.
`2 Petitioner’s Invalidity Contentions identify the Takahata reference as “Takahata-’641,” but both
`short names refer to the same reference.
`3 Petitioner’s Invalidity Contentions identify the Nakanishi reference as “Nakanishi-’402,” but
`both short names refer to the same reference.
`
`–12–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`for Leave to Supplement Invalidity Contentions (Ex. 2012). Because this Petition
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`was filed on June 8, 2021, Petitioner has the opportunity to supplement its invalidity
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`case with any prior art raised in this Petition. In its Motion, Petitioner shows that it
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`intends to add the Nagano reference asserted in this Petition.4 See Ex. 2007 at 5. As
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`a result, the invalidity case in the district court will completely overlap with the
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`grounds raised in this Petition.
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`Petitioner tries to circumvent the “overlap” issue by offering a stipulation that
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`if the IPR is instituted, it “will not pursue in the related district court litigation any
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`ground that it raised or reasonably could have raised in this Petition,” precluding any
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`overlap. Pet., 11-12. Such stipulation, however, is a hollow promise since expert
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`reports are due on October 1, 2021, prior to the institution deadline for this Petition.
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`See First Amended Docket Control Order (Ex. 2001). Given the late stage of the
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`district court litigation, the parties will be forced to expend resources as if all of
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`Petitioners’ prior art is in the case. Petitioner’s recent motion to amend its Invalidity
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`Contentions to include art from this Petition demonstrates that it believes waiting for
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`a final written decision from the Board will be too late to not “pursue in the related
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`district court litigation any ground that it raised” in this Petition. See Motion for
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`4 Prior to the Court’s Order (Dkt. No. 142), the one difference between the asserted art was that for dependent claims
`15 and 16, Petitioner asserted Nagano in the Petition, but Toyomaki-’816 and Kinoshita-’944 in its Invalidity
`Contentions. See Pet., 3; Invalidity Contentions Chart D-1 (Ex. 2002), but this distinction no longer exists.
`
`–13–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`Leave to Supplement Invalidity Contentions (Dkt. No.131) (Ex. 2007); Pet., 11-12.
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`Because there is complete overlap of issues raised in the Petition and the district
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`court case, this favor weighs heavily in favor of denial.
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`E.
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`Fintiv Factor 5: The petitioner and the defendant in the parallel
`proceeding are the same party
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`The Petitioner is the Defendant in the district court action and the Patent
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`Owners are the Plaintiffs in the district court action. Therefore, this factor weighs
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`heavily in favor of discretionary denial.
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`F.
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`Fintiv Factor 6: Other circumstances impact the PTAB’s exercise
`of discretion, including the merits
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`Fintiv provides for taking into account the merits of the Petition in considering
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`whether the discretionary denial should be granted. Fintiv, IPR2020-00019, Paper
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`11 at 15. Fintiv stated that a full analysis is not necessary, but rather “the parties
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`may point out, as part of the factor-based analysis, particular ‘strengths or
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`weaknesses’ to aid the Board in deciding whether the merits tip the balance one way
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`or another.” Id.
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`Contrary to Petitioner’s assertion, the merits of this Petition are not strong.
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`Pet., 12. As explained in further detail below, Petitioner has failed to show how the
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`combination of Maekawa with Takahata renders obvious claims 1, 3-6, and 8-11
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`(Ground 1). First, these two references are not analogous art, but disclose different
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`types of devices: Maekawa discloses a liquid crystal display and Takahata discloses
`
`–14–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`a touch panel. A person of ordinary skill in the art, therefore, would not combine
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`them. Second, a person of ordinary skill in the art would not be motivated to
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`combine Maekawa with Takahata. Third, Takahata fails to disclose the adhesive
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`member and protective member required by the claims of the ’299 Patent and
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`missing from Maekawa.
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`Petitioner’s improper attempt to combine Maekawa with Takahata is also
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`fatal to its arguments for dependent claims 2, 7, 15, and 16. Moreover, Nakanishi
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`does not render claims 2 and 7 obvious because, like Takahata, Nakanishi is not
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`analogous art to the ’299 Patent and it would not be obvious to combine these
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`references. Nakanishi also fails to disclose the limitations in claims 2 and 7 because
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`Petitioner improperly conflates the hard coat layer of Nakanishi with the protective
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`member of the ’299 Patent. Pet., 62-63.
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`When “the same or substantially the same prior art or arguments” were
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`presented during prosecution as in the inter partes review petition, the Director may
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`deny institution of the petition under 35 U.S.C. § 325(d). In its discussion of Factor
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`6, Petitioner argues that it “relies upon materially different and non-cumulative
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`references not applied during prosecution.” Pet., 12. But later, Petitioner
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`acknowledges that Maekawa, the primary reference cited by the Examiner, is “the
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`primary reference for all [Petitioner’s] proposed Grounds." Pet., 14. Thus, the vast
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`majority of this Petition relies on the same reference presented during prosecution.
`
`–15–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,793,299
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`For the remaining claim limitations, Petitioner mainly exchanged one reference for
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`another.5 For example, Petitioner relies on Takahata to disclose limitations of
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`independent claims 1 and 6 having to do with the adhesive member. Pet., 14-15.
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`During examination, the examiner applied Hashimoto to disclose this same feature.
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`3/6/2017 Non-Final Rejection (Ex. 1004, 5). Petitioner relies on Nakanishi to
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`disclose the claimed “surface pencil hardness of the protective member is at least
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`3H” of claims 2 and 7. Pet., 62-64. During examination, the examiner applied
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`Hashimoto to those claims in the same manner. Id. at 5
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`Taken together, the Fintiv factors weigh in favor of denying institution.
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`Therefore, the Board should exercise its discretion to deny institution of the Petition.
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`III.
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`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION OF THE PETITION UNDER 35 U.S.C. § 325
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`Under 35 U.S.C. § 325(d), the Director may reject a petition for inter partes
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`review when “the same or substantially the same prior art or arguments were
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`previously presented to the Office.” The Board should deny institution of the inter
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`partes review petition under § 325 based on consideration of six factors articulated
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`in Becton Dickinson. Becton Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-
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`01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017). The factors are: (1) the similarities
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`5 The one exception is Nagano which Petitioner applied to claims 15 and 16. The examiner allowed claims 15 and 16
`without issuing an additional Office Action. See Ex. 1004.
`
`–16–
`