UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v.
`JAPAN DISPLAY INC.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01029
`Patent No. 9,310,654
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC.’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF UNITED STATES
`PATENT NO. 9,310,654 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. 9,31,654
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`
`INTRODUCTION ........................................................................................... 1
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION OF THE PETITION UNDER § 314(a) BASED ON
`THE FINTIV FACTORS ................................................................................. 2
`A.
`Fintiv Factor 1: Whether the court granted a stay or whether
`evidence exists that one may be granted if an IPR is instituted ............ 5
`Fintiv Factor 2: The proximity of the court’s trial date to the
`projected statutory deadline for the PTAB’s final written
`decision .................................................................................................. 8
`Fintiv Factor 3: The investment in the parallel proceeding by the
`court and the parties .............................................................................. 9
`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 .............................................................13
`Fintiv Factor 6: Other circumstances impact the PTAB’s exercise
`of discretion, including the merits .......................................................13
`THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT ANY ONE OF THE CHALLENGED CLAIMS
`IS UNPATENTABLE. ..................................................................................14
`A.
`The Parent Application discloses a “light shielding film” used in
`conjunction with a pixel electrode employed as the second
`electrode. .............................................................................................18
`The Parent Application reasonably conveys to a person skilled in
`the art that the inventor had possession of a liquid crystal device
`with a light shielding film configured to overlap with the pixel
`electrode. .............................................................................................20
`IV. CONCLUSION ..............................................................................................24
`CERTIFICATE OF WORD COUNT ......................................................................25
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`B.
`
`–ii–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,31,654
`
`CERTIFICATE OF SERVICE ................................................................................26
`
`–iii–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,31,654
`
`EXHIBIT LIST
`
`Ex.2001
`
`First Amended Docket Control Order (Dkt. No. 140)
`
`Ex.2002
`
`Defendant’s Preliminary Invalidity Contentions
`
`Ex.2003
`
`Declaration of Thomas L. Credelle
`under 37 C.F.R. § 1.68
`
`Ex.2004
`
`Curriculum Vitae of Thomas L. Credelle
`
`Ex.2005
`
`Ex.2006
`
`Defendant’s Motion for Leave to Supplement Invalidity Contentions
`(Redacted) (Dkt. No. 131)
`
`Order granting Tianma Microelectronics Co. Ltd.’s Motion for
`Leave to Supplement Invalidity Contentions (Dkt. No. 142)
`
`–iv–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`I.
`
`INTRODUCTION
`
`Japan Display Inc. (“Patent Owner”) submits this Response to IPR2021-
`
`01029 for Inter Partes Review (“Petition”) of U.S. Patent No. 9,310,654 (“the ’654
`
`Patent”) (Ex.1001) filed by Tianma Microelectronics Co., Ltd. (“Petitioner”). This
`
`Petition should be denied for two reasons: (1) weighing of the Fintiv factors for
`
`discretionary denial under 35 U.S.C. § 314(a) heavily favors denial, and (2)
`
`Petitioner fails to establish a reasonable likelihood that any of the challenged claims
`
`is unpatentable.
`
`Petitioner essentially concedes that none of the Fintiv factors weigh in its
`
`favor but Factors 4 (lack of overlap) and 6 (strong merits), which it relies on to
`
`“outweigh the other relevant factors.” Pet. 19. Factors 4 and 6, however, do not
`
`weigh in Petitioner’s favor. Petitioner attempts to avert the overlap between the
`
`district court litigation and this Petition by stipulating that is will not pursue any
`
`ground that it raised or reasonably could have raised in this Petition. But by the time
`
`a decision on institution is due for this Petition, the parties will have already
`
`completed the vast majority of work related to invalidity and only trial will remain.
`
`Moreover, Factor 6 does not weigh in Petitioner’s favor because its invalidity
`
`challenge hinges upon a meritless attack to the priority claim of the ’654 patent in
`
`–1–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`order to transform the Parent Application 1 to the ’654 patent into a prior art
`
`reference. Petitioner contravenes fundamental principles of patent law related to the
`
`written description analysis to conclude that the ’654 patent’s priority benefit should
`
`be disregarded. Applied correctly, the relevant law shows that the Parent
`
`Application fully supports the claims of the ’654 patent. Further, Petitioner’s expert
`
`is silent on the critical tests used to determine whether the written description is
`
`sufficient. The Petition’s failure to demonstrate the ’654 patent is not entitled to the
`
`priority benefit of its Parent Application is fatal to its invalidity claims because the
`
`asserted reference is not prior art.
`
`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, plaintiff Japan Display Inc. and defendant
`
`Tianma Microelectronics Co. Ltd. (Japan Display Inc. v. Tianma Microelectronics
`
`Co. Ltd., Case No. 2:20-cv-00284 (E.D. Tex. Aug. 31, 2020)), which is scheduled
`
`to be completed nearly ten months before a final written decision would be due.
`
`1 The Parent Application to the ’654 Patent is U.S. Patent Application No.
`12/397,408, which published as U.S. Patent Application Publication No.
`2009/0225267 (the “Parent Application”) (Ex.1002). The Petition refers to the
`Parent Application as “Atarashiya.” Pet. 2.
`
`–2–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`Under Apple Inc. v. Fintiv, 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. 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). 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 progressed beyond the
`
`–3–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`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.
`
`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.
`
`–4–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`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 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-
`
`–5–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`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. In another case involving
`
`“a prior art challenge pendent on application of 35 U.S.C. § 112,” similar to
`
`Petitioner’s challenge in the instant Petition, Judge Gilstrap found the second factor
`
`weighed “heavily against a stay” and noted that “[g]iven the complexity of legal
`
`issues before the PTAB . . . , the possibility of further delays due to appeal is almost
`
`certain.” Acorn Semi, LLC v. Samsung Elecs. Co., Ltd., Case No. 2:19-cv-00347-
`
`JRG, Dkt. 288 at 2 (E.D. Tex. Mar. 22, 2021). 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. Including this
`
`–6–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`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 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., 20. 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. 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
`
`–7–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`factor does not weigh in favor or against denial under Fintiv. See Fintiv, IPR2020-
`
`00019, Paper 11, at 12.
`
`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 10 months later—on December 16, 2022. 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; see Japan Display, Case
`
`No. 2:20-cv-00283, Dkt. No. 69. However, as noted above, the Court has denied
`
`–8–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`Defendant’s Motion to Transfer, rendering this argument moot. See Japan Display,
`
`Case No. 2:20-cv-00283, Dkt. No. 115. Further, the 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., 21. 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. 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 its Markman Order construing these terms. See Japan
`
`Display, Case No. 2:20-cv-00283, Dkt. No 123. Moreover, the parties have
`
`exchanged infringement contentions and invalidity contentions and held several
`
`30(b)(6) depositions and six inventor depositions, including an inventor deposition
`
`–9–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`for the ’654 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, 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. Accordingly, the district court case is far along enough that the parties and
`
`the Court have invested significant resources in the case.
`
`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
`
`–10–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`the case is already quite substantial. Pet. 22. 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.
`
`D.
`
`Fintiv Factor 4: The overlap between issues raised in the petition
`and in the parallel proceeding
`
`Petitioner offers to stipulate that if the IPR is instituted, it “will not pursue in
`
`the related district court litigation any ground that it raised or reasonably could have
`
`raised in this Petition,” precluding any overlap. Pet. 24. Such stipulation, however,
`
`–11–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`is a hollow promise since expert reports are due on October 1, 2021, and dispositive
`
`motions are due on November 8, 2021—both of which are prior to the institution
`
`deadline for this Petition. Given the late stage of the district court litigation, the
`
`parties will be forced to expend resources as if all of Petitioner’s prior art is in the
`
`case.
`
`Petitioner also 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 1 (Ex.2005). On September 15, 2021, the Court granted
`
`Tianma’s motion. See Order granting Tianma Microelectronics Co. Ltd.’s Motion
`
`for Leave to Supplement Invalidity Contentions (Ex.2006). Because this Petition
`
`was filed on June 9, 2021, Petitioner has the opportunity to supplement its invalidity
`
`case with any prior art raised in this Petition. As a result, the invalidity case in the
`
`district court will completely overlap with the grounds raised in this Petition.
`
`Moreover, Petitioner’s stipulation doesn’t address the actual “overlap”
`
`between the issue raised in the Petition and in the parallel proceeding. The Petition
`
`seeks to transform the parent application of the ’654 patent into Section 102 art by
`
`attacking the ’654 patent’s priority claim via a written description challenge under
`
`35 U.S.C. § 112. Petitioner has also raised three different written description
`
`arguments in the district court litigation. See Defendant’s Invalidity Contentions
`
`–12–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`35-36 (Ex.2002). Petitioner will not be precluded from making these other written
`
`description arguments because they do not impact the ’654 patent’s priority claim
`
`(i.e., create Section 102 art), thus they could not have been raised in this Petition.
`
`See 35 U.S.C. § 311(b) (limiting grounds to those “raised under section 102 or 103
`
`and only on the basis of prior art consisting of patents or printed publications). As
`
`a result, both the district court and the Board will be examining whether the ’654
`
`patent meets the written description requirement. Because there is overlap of issues
`
`raised in the Petition and the district court case, this favor weighs heavily in favor of
`
`denial.
`
`E.
`
`Fintiv Factor 5: The petitioner and the defendant in the parallel
`proceeding are the same party
`
`The Petitioner is the Defendant in the district court action and the Patent
`
`Owner is the Plaintiff in the district court litigation. Therefore, this factor weighs
`
`heavily in favor of discretionary denial.
`
`F.
`
`Fintiv Factor 6: Other circumstances impact the PTAB’s exercise
`of discretion, including the merits
`
`Fintiv provides for taking into account the merits of the Petition in considering
`
`whether the discretionary denial should be granted. Fintiv, IPR2020- 00019, Paper
`
`11 at 15. Fintiv stated that a full analysis is not necessary, but rather “the parties
`
`may point out, as part of the factor-based analysis, particular ‘strengths or
`
`–13–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
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`weaknesses’ to aid the Board in deciding whether the merits tip the balance one way
`
`or another.” Id.
`
`Contrary to Petitioner’s assertion, the merits of this Petition are not strong.
`
`As explained in further detail below, Petitioner has failed to show that the ’654 patent
`
`is not entitled to the priority benefit of its Parent Application. Petitioner argues that
`
`“the Parent Application fails to provide support for the claimed priority under 35
`
`U.S.C. § 112 and [the Parent Application] is therefore prior art to the ’654 patent.”
`
`Pet. 3. But the single limitation that Petitioner identifies as lacking support is in fact
`
`disclosed (1) by the original claims of the Parent Application (the analysis of which
`
`is completely omitted by the Petition) and (2) in detail in other embodiments where
`
`the primary difference is the inversion of two claim elements. These disclosures
`
`reasonably convey to those skilled in the art that the inventor had possession of the
`
`claimed subject matter, thus, the Parent Application meets the written description
`
`requirement under Section 112.
`
`Taken together, the Fintiv factors weigh in favor of denying institution.
`
`Therefore, the Board should exercise its discretion to deny institution of the Petition.
`
`III. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT ANY ONE OF THE CHALLENGED CLAIMS
`IS UNPATENTABLE.
`
`For the Board to institute an inter partes review proceeding, the Petition must
`
`demonstrate “that there is a reasonable likelihood that at least one of the claims
`
`–14–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`challenged in the petition is unpatentable.” 37 C.F.R. § 42.108. Petitioner provides
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`a single ground for unpatentability for each of the challenged claims based on the
`
`Parent Application of the ’654 patent. But to find that the ’654 patent’s Parent
`
`Application qualifies as an anticipatory reference, Petitioner must demonstrate that
`
`the ’654 patent is not entitled to priority under 35 U.S.C. § 120. For the reasons
`
`stated below, Petitioner has failed to do so. Accordingly, the Parent Application is
`
`not prior art to the ’654 patent and does not anticipate any of its claims.
`
`To be entitled to the priority date of the Parent Application, Patent Owner
`
`must show that Parent Application discloses what the ’654 patent claims, “according
`
`to the written description requirement of pre-AIA 35 U.S.C. § 112.” Hologic, Inc.
`
`v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018). The test to
`
`determine whether the written description requirement is met “is whether the
`
`disclosure of the [earlier] application relied upon reasonably conveys to those skilled
`
`in the art that the inventor had possession of the claimed subject matter” as of the
`
`earlier filing date.” Id.
`
`Petitioner challenges the sufficiency of the Parent Application’s written
`
`description with regard to claims 1 and 14. Claim 1 recites:
`
`1. A liquid crystal device, comprising:
`a first substrate and a second substrate that are disposed
`to face each other, the first substrate including a
`plurality of data lines and a plurality of scan lines
`which intersect each other;
`
`–15–
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`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`a liquid crystal layer that is sandwiched between the
`first substrate and the second substrate;
`a first electrode that is provided on a liquid crystal layer
`side of the first substrate;
`an insulating layer that is provided on the liquid crystal
`layer side of the first electrode;
`a second electrode that is provided on the liquid crystal
`layer side of the insulating layer; and
`a light shielding film configured to overlap with at least
`one of the data lines or at least one of the scan lines
`which is at least bent in plan view, the light
`shielding film being provided on the second
`substrate,
`wherein:
`sub-pixels are formed at regions surrounded by the data
`lines and the scan lines;
`the second electrode has a plurality of linear electrodes
`that are disposed with gaps therebetween;
`each of the plurality of linear electrodes extends in a
`long-axis direction of the sub-pixels, and at least
`one of the linear electrodes or at least one of the
`gaps has at least one bent portion, the bent portion
`provided in a central portion of the respective sub-
`pixels;
`the bent portion has such a shape that both sides thereof
`are inclined in opposite directions with respect to
`the long-axis direction of the sub-pixels; and
`the data lines or the scan lines are bent in an extending
`direction of the linear electrodes having the bent
`portion,
`
`–16–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`wherein the first and second electrodes are a
`combination of either
`a pixel electrode as the second electrode
`including the linear electrodes and gaps, and
`that is provided over a common electrode as
`the first electrode, or
`a common electrode as the second electrode
`including the linear electrodes and gaps, and
`that is provided over a pixel electrode as the
`first electrode, and
`wherein the light shielding film is configured to
`overlap with the second electrode which is bent
`in plan view.
`’654 patent, claim 1 (emphasis added). 2 Petitioner describes the emphasized
`
`language from claim 1 (above) as presenting two alternatives:
`
`Alternative A
`a pixel electrode as the second electrode
`including the linear electrodes and gaps,
`and that is provided over a common
`electrode as the first electrode, . . .
`wherein the light shielding film is
`configured to overlap with the [pixel]
`electrode which is bent in plan view
`
`Alternative B
`a common electrode as the second
`electrode including the linear electrodes
`and gaps, and that is provided over a
`pixel electrode as the first electrode,
`wherein the light shielding film is
`configured
`to overlap with
`the
`[common] electrode which is bent in
`plan view
`
`See Pet. 2. Petitioner claims that the “Parent Application only discloses Alternative
`
`B, not Alternative A.” Pet. 2-3. Yet Petitioner’s actual challenge is even more
`
`2 Claim 14 includes the same limitations as those emphasized in claim 1.
`
`–17–
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`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,310,654
`
`limited than that: Petitioner concedes Alternative B is fully disclosed and that
`
`“Embodiments 1-3 disclose [the first limitation of Alternative A],” but argues
`
`incorrectly that, with regard to those embodiments, the Parent Application does “