Paper No. __
`Filed: October 15, 2021
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`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 No. IPR2021-01028
`U.S. Patent No. 9,793,299
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
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`
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`
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`Filed: October 15, 2021
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`
`
`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 No. IPR2021-01028
`U.S. Patent No. 9,793,299
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
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`
`
`U.S. Patent 9,793,299
`IPR2021-01028
`A holistic evaluation of the Fintiv factors favors institution. Petitioner’s
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`diligence filing the present and six related IPRs, Sotera-type stipulation, and the
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`petition’s strong merits outweigh other applicable factors, including the date of the
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`district court trial, which must still go through a substantial narrowing process.
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`Trial is currently set in the district court for February 2022, and thus before
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`the Board’s anticipated statutory deadline for final written decision (factor 2). But
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`as recognized by Patent Owner, and ordered by the district court, not all 15 asserted
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`patents and 135 claims will go to trial. Ex. 1024, 3 (October 12, 2021, order granting
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`Patent Owner’s proposal to limit, by October 25, the asserted claims to no more than
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`eight claims from each patent and no more than a total of thirty-five claims). Thus,
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`by the expected institution date, it is entirely possible that the ’299 patent will be
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`withdrawn from the district court, rendering factor 2 moot. At the same time, should
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`the challenged patent or claims be withdrawn before trial, Patent Owner could still
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`assert them against others, making it in the public interest for the Board to address
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`the patentability of the challenged patent and claims here.
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`In any case, the trial date is not determinative. Samsung Electronics Co., Ltd.,
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`v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47 (PTAB Feb. 10, 2021)
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`(instituting review with over ten months between district court trial and final written
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`decision dates); R.J. Reynolds Vapor Company v. Philip Morris Products S.A.,
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`IPR2021-00585, Paper 10 at 11, 14 (PTAB Sept. 13, 2021) (same by five months);
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`1
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`
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`U.S. Patent 9,793,299
`IPR2021-01028
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`Boston Scientific Corp., and Boston Scientific Neuromodulation Corp., v. Nevro
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`Corp., IPR2020-01562, Paper 14 at 18-20, 25 (PTAB March 16, 2021) (same by five
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`months); see also id. at 20 (“we consider all factors holistically and do not rely upon
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`[] factor [2] in isolation.”). Patent Owner cites pre-2021 Board decisions (POPR, 7),
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`but they are distinguishable because they do not involve any stipulation—much less
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`a Sotera-type stipulation like here (and in the cases cited above).
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`Under factor 3, the Board first considers Petitioner’s timing in filing the
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`petition. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 11 (PTAB Mar. 20,
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`2020) (precedential). If a petitioner, “faced with the prospect of a looming trial date,
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`waits until the district court trial has progressed significantly before filing a
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`petition,” that decision “may impose unfair costs to a patent owner.” Id. On the other
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`hand, “[i]f the evidence shows that the petitioner filed the petition expeditiously,
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`such as promptly after becoming aware of the claims being asserted, this fact has
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`weighed against exercising the authority to deny institution.” Id.
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`Here, Petitioner moved with speed and diligence in bringing the present—and
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`six related IPRs—approximately five months after Patent Owner served its
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`infringement contentions. Preparing an IPR petition requires substantial effort even
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`after the references and basic theories have been identified. This is particularly true
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`in cases like this, where Patent Owner refused to narrow the number of claims and
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`issues until service of its infringement contentions (Ex. 1020)—and even then,
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`2
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`U.S. Patent 9,793,299
`IPR2021-01028
`Patent Owner still asserted 135 claims from 15 patents against more than 2,400
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`accused products, imposing a vastly greater burden on Petitioner to assess the
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`dispute and evaluate which patents to request IPR. Samsung, Paper 17 at 39-40.
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`Contrary to Patent Owner’s assertion, Petitioner did not “benefit[] from a 90-day
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`extension from its original answer deadline” (POPR, 10) because the extension pre-
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`dated service of Patent Owner’s infringement contentions. And unlike Patent
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`Owner’s cited Next Caller decisions (id.), any purported delay here is reasonably
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`explained based on the large number of asserted patents and claims. Pet., 9-11. Also,
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`the Next Caller cases did not involve any stipulations.
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`The Board also considers, under factor 3, “the amount and type of work
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`already completed in the parallel litigation by the court and the parties at the time of
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`the institution decision.” Fintiv, Paper 11 at 9. Here, by the expected institution date,
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`the district court’s substantive investment regarding the patentability of the
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`challenged patent will be nominal: a claim construction order simply finding the
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`preambles of independent claims 1 and 6 limiting and denoting capability of the
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`apparatus. Ex. 2006, 26-29. This does not substantively impact the patentability of
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`the ’299 patent. Indeed, as the petition presents, the preambles under the court’s
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`claim construction findings encompass the prior-art mappings. Pet., 15-19, 54.
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`Although by the expected institution date there will have been additional
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`investment by the parties in the district court, a substantial portion of work and trial
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`3
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`U.S. Patent 9,793,299
`IPR2021-01028
`is yet to come after institution. Moreover, the parties’ investment is not
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`determinative nor weighed in isolation. Instead, it must be considered in light of the
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`nominal substantive investment by the district court, petitioner’s diligence bringing
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`the challenge, and in concert with the other applicable factors. See, e.g., Samsung,
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`Paper 17, 39-40, 47 (instituting review after close of fact and expert discovery,
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`service of expert reports, dispositive motions and responses, and Daubert motions
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`and responses); R.J. Reynolds, Paper 10 at 12, 14 (instituting review after completion
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`of fact and expert discovery, pre-trial conference, dispositive motion practice, and
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`exchanging of witness and exhibit lists and deposition designations). Patent Owner
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`cites pre-2021 Board decisions (POPR, 9), but they are distinguishable as not
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`involving any stipulation—much less a Sotera-type stipulation like here. POPR, 9.1
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`Indeed, Petitioner’s broad Sotera-type stipulation (factor 4) that if the Board
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`institutes, it will not pursue any grounds that were raised or reasonably could have
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`been raised in the ’299 IPR in the related district court proceeding strongly favors
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`institution. By stipulating to accept full IPR estoppel upon institution, Petitioner
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`removes any “concerns of duplicative efforts between the district court and the
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`Board, as well as concerns of potentially conflicting litigation.” Sotera Wireless, Inc.
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`v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020). Moreover,
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`by the expected institution date, the number of claims (and potentially patents) in the
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`1 IPR2020-00498, Paper 16, issued on August 19, 2020 (not 2021).
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`4
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`U.S. Patent 9,793,299
`IPR2021-01028
`district court will be significantly narrowed, further “reducing the overlap between
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`this proceeding and the Texas case.” Apple Inc., v. Koss Corp., IPR2021-00600
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`Paper 9 at 18 (PTAB Sept. 1, 2021).
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`Patent Owner makes much of Petitioner supplementing its invalidity
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`contentions in the district court with IPR references. POPR, 12-14. But Patent Owner
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`misses the point. Petitioner’s Sotera-type stipulation does not apply unless the Board
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`institutes the petition. Until then, it is irrelevant what references and grounds
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`Petitioner pursues in the district court. If the Board institutes, there is sufficient time
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`before trial for Petitioner to withdraw grounds in the district court that were raised
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`or reasonably could have been raised in the ’299 IPR. This strongly favors
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`institution. Sotera, Paper 12 at 19; see also Samsung, Paper 17 at 38, 47 (instituting
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`review less than two months before district court trial, finding that “Petitioner’s
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`stipulation has minimized any overlap with the parallel district court litigation such
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`that both the duplication of efforts and the potential for conflicting decisions are
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`minimized. Although the parties have invested in the litigation, Petitioner filed this
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`proceeding on a timely basis after learning which of the eighty-four claims were
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`being asserted. Accordingly, we conclude that the minimization of overlap and the
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`strength of the merits of the first challenge outweigh the upcoming trial date.”).
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`Finally, factor 6 strongly favors institution because the merits of the present
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`IPR are strong. Each ground in the petition relies on Takahata, a materially different
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`5
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`U.S. Patent 9,793,299
`IPR2021-01028
`and non-cumulative reference not applied during prosecution that teaches the very
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`feature that led to the allowance of the independent claims—a protective member
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`having a thickness of at least 0.2 mm and no greater than 1.0 mm. Pet., 14-15 (citing
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`Ex. 1004, 26). Patent Owner improperly focuses on the petition’s reliance on
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`Takahata to address use of an adhesive member (a well-known feature not identified
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`by the Examiner as a reason for allowance)—not the claimed protective member
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`thickness. POPR, 15-16. Patent Owner further alleges that Petitioner “has not
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`pointed to any substantive differences between Takahata and Hashimoto as a basis
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`for unpatentability and, therefore, little weight can be given to the fact that these are
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`different references.” POPR, 18. As presented in the petition, however, during
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`prosecution, the Examiner considered Maekawa and Hashimoto but could not find a
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`reference for the claimed thickness of the protective member. Pet., 14-15 (citing Ex.
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`1004, 26). The petition relied on Takahata to provide that missing thickness (Pet.,
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`14-17, 44-49, 58), and Takahata was not considered by the Examiner. The strength
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`of the merits thus also favors institution under §§ 314 and 325(d). Accordingly,
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`Petitioner respectfully requests the Board institute this IPR and cancel all of the
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`challenged claims.
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`Dated: October 15, 2021
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`Respectfully submitted,
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`
`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Reg. No. 59,369
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`
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`6
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`U.S. Patent 9,793,299
`IPR2021-01028
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Pre-Institution Reply was served on October 15, 2021, via email directed to
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`counsel of record for Patent Owner at the following:
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`Eric J. Klein (Reg. No. 51,888)
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`
`
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`Dated: October 15, 2021
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`
`
`
`
`
`Abigail Lubow (Reg. No. 75,839)
`alubow@velaw.com
`VINSON & ELKINS L.L.P.
`555 Mission Street, Suite 2000
`San Francisco, CA 94105
`Tel: (415) 979-6963
`Fax: (415) 358-5770
`
`Jeffrey R. Swigart (Reg. No. 77,008)
`jswigart@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201-2975
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`Tianma-JDIVETeam@velaw.com
`
`
`
`By: /Valencia Daniel/
`Valencia Daniel
`Senior Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`7
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