Paper No. __
`Filed: October 15, 2021
`
`
`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 No. IPR2021-01029
`U.S. Patent No. 9,310,654
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`Filed: October 15, 2021
`
`
`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 No. IPR2021-01029
`U.S. Patent No. 9,310,654
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`
`U.S. Patent 9,310,654
`IPR2021-01029
`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
`
`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
`
`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. 1015, 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
`
`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 ’654 patent will be
`
`withdrawn from the district court, rendering factor 2 moot. At the same time, should
`
`the challenged patent or claims be withdrawn before trial, Patent Owner could still
`
`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.
`
`In any case, the district court trial date is not determinative. Samsung
`
`Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47
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`(PTAB Feb. 10, 2021) (instituting review with over ten months between district
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`court trial and final written decision dates); R.J. Reynolds Vapor Company v. Philip
`
`Morris Products S.A., IPR2021-00585, Paper 10 at 11, 14 (PTAB Sept. 13, 2021)
`
`1
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`
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`U.S. Patent 9,310,654
`IPR2021-01029
`(same by five months); Boston Scientific Corp., and Boston Scientific
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`Neuromodulation Corp., v. Nevro Corp., IPR2020-01562, Paper 14 at 18-20, 25
`
`(PTAB March 16, 2021) (same by five months); see also id. at 20 (“we consider all
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`factors holistically and do not rely upon [] factor [2] in isolation.”). Patent Owner
`
`cites pre-2021 Board decisions (POPR, 8), but they are distinguishable because they
`
`do not involve any stipulation—much less a Sotera-type stipulation like here (and in
`
`the cases cited above).
`
`Under factor 3, the Board first considers Petitioner’s timing in filing the
`
`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,
`
`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
`
`six related IPRs—approximately five months after Patent Owner served its
`
`infringement contentions. Preparing an IPR petition requires substantial effort even
`
`after the references and basic theories have been identified. This is particularly true
`
`in cases like this, where Patent Owner refused to narrow the number of claims and
`
`2
`
`
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`U.S. Patent 9,310,654
`IPR2021-01029
`issues until service of its infringement contentions (Ex. 1020)—and even then,
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`Patent Owner still asserted 135 claims from 15 patents against more than 2,400
`
`accused products, imposing a vastly greater burden on Petitioner to assess the
`
`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
`
`extension from its original answer deadline” (POPR, 11) because the extension pre-
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`dated service of Patent Owner’s infringement contentions. And unlike Patent
`
`Owner’s cited Next Caller decisions (id.), any purported delay here is reasonably
`
`explained based on the large number of asserted patents and claims. Pet., 22-24.
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`Also, the Next Caller cases did not involve any stipulations.
`
`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
`
`challenged patent will be nominal. The district court has issued a claim construction
`
`order (Ex. 1014), but it has no impact on the present IPR as no ’654 claim term was
`
`construed in the order.
`
`Although by the expected institution date of the petition there will have been
`
`additional investment by the parties in the district court, a substantial portion of work
`
`and trial is yet to come after institution. Moreover, the parties’ investment is not
`
`3
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`
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`U.S. Patent 9,310,654
`IPR2021-01029
`determinative nor weighed in isolation. Instead, it must be considered in light of the
`
`nominal substantive investment by the district court, petitioner’s diligence bringing
`
`the challenge, and in concert with the other applicable factors. See, e.g., Samsung,
`
`Paper 17, 39-40, 47 (instituting review after close of fact and expert discovery,
`
`service of expert reports, dispositive motions and responses, and Daubert motions
`
`and responses); R.J. Reynolds, Paper 10 at 12, 14 (instituting review after completion
`
`of fact and expert discovery, pre-trial conference, dispositive motion practice, and
`
`exchanging of witness and exhibit lists and deposition designations). Patent Owner
`
`cites pre-2021 Board decisions (POPR, 10), but they are distinguishable as not
`
`involving any stipulation—much less a Sotera-type stipulation like here.1 POPR, 9.
`
`Indeed, Petitioner’s broad Sotera-type stipulation (factor 4) that if the Board
`
`institutes, it will not pursue any grounds that were raised or reasonably could have
`
`been raised in the ’654 IPR in the related district court proceeding strongly favors
`
`institution. By stipulating to accept full IPR estoppel upon institution, Petitioner
`
`removes any “concerns of duplicative efforts between the district court and the
`
`Board, as well as concerns of potentially conflicting litigation.” Sotera Wireless, Inc.
`
`v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020). Moreover,
`
`by the expected institution date, the number of claims (and potentially patents) in the
`
`
`1 IPR2020-00498, Paper 16, issued on August 19, 2020 (not 2021).
`
`4
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`
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`U.S. Patent 9,310,654
`IPR2021-01029
`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).
`
`Patent Owner makes much of Petitioner supplementing its invalidity
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`contentions in the district court with IPR references. POPR, 11-13. But Petitioner
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`did not and will not supplement its invalidity contentions with the art in this IPR.
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`Moreover, Patent Owner misses the point. Petitioner’s Sotera-type stipulation does
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`not apply unless the Board institutes the petition. Until then, it is irrelevant what
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`references and grounds Petitioner pursues in the district court. If the Board institutes,
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`there is sufficient time before trial for Petitioner to withdraw grounds in the district
`
`court that were raised or reasonably could have been raised in the ’654 IPR. This
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`strongly favors institution. Sotera, Paper 12, at 19; see also Samsung, Paper 17 at
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`38, 47 (instituting review less than two months before district court trial, finding that
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`“Petitioner’s stipulation has minimized any overlap with the parallel district court
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`litigation such that both the duplication of efforts and the potential for conflicting
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`decisions are minimized. Although the parties have invested in the litigation,
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`Petitioner filed this proceeding on a timely basis after learning which of the eighty-
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`four claims were being asserted. Accordingly, we conclude that the minimization of
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`overlap and the strength of the merits of the first challenge outweigh the upcoming
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`trial date.”).
`
`5
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`
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`U.S. Patent 9,310,654
`IPR2021-01029
`Finally, factor 6 strongly favors institution because the merits of the present
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`IPR are strong. The Petition raises a single issue that was never addressed during
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`prosecution—the challenged claims of the ’654 patent are not entitled to the benefit
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`of the filing date of the ’654 patent’s Parent Application, so the publication of the
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`Parent Application (i.e., Atarashiya) is prior art that anticipates the challenged
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`claims of the ’654 patent because its disclosure substantially overlaps with the
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`specification of the ’654 patent. Patent Owner disputes whether the claims of the
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`’654 patent are entitled to the benefit of the filing date of the ’654 patent’s Parent
`
`Application. POPR, 15-24. But Patent Owner does not point to a single place in the
`
`Parent Application that discloses Alternative A, as discussed in the Petition. Instead,
`
`despite Alternative A only being 5 lines of text, Patent Owner spends more than 8
`
`pages trying to cobble together different parts of the Parent Application to arrive at
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`Alternative A. But the law does not allow for this. Pet. 12-13. The merits of the
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`petition are strong and Patent Owner’s counterarguments are weak. Accordingly,
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`Petitioner respectfully requests the Board institute this IPR and cancel all of the
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`challenged claims.
`
`Dated: October 15, 2021
`
`Respectfully submitted,
`
`
`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Reg. No. 59,369
`
`
`
`6
`
`
`
`U.S. Patent 9,310,654
`IPR2021-01029
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Pre-Institution Reply was served on October 15, 2021, via email directed to
`
`counsel of record for Patent Owner at the following:
`
`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
`
`
`
`
`Dated: October 15, 2021
`
`
`
`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
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`7
`
`
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