`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01058
`Patent No. 7,636,142
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC.’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF UNITED STATES
`PATENT NO. 7,636,142 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. 7,636,142
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`I.
`II.
`
`III.
`
`IV.
`
`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 .............................................................13
`Fintiv Factor 6: Other circumstances impact the PTAB’s exercise
`of discretion, including the merits .......................................................13
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION OF THE PETITION UNDER 35 U.S.C. § 325 ..................14
`A.
`The Becton Dickinson factors weigh in favor of denying
`institution of claims 1-3, 5, 6, and 8 ....................................................15
`THE PETITION FAILS TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM .....................................................................21
`A.
`The Petition Fails to Prove that Lee in Combination with No
`Renders Obvious Claims 1-3, 5, 6 and 8 (Ground 1) ..........................21
`CONCLUSION ..............................................................................................33
`V.
`CERTIFICATE OF WORD COUNT ......................................................................34
`
`–ii–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`CERTIFICATE OF SERVICE ................................................................................35
`
`–iii–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`EXHIBIT LIST
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`[DKT 140] 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 M-1 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 Application Publication No. 2006/0215081 to Song
`
`Ex. 2007
`
`U.S. Patent Application Publication No. 2006/0203157 to Ozawa
`
`Ex. 2008
`
`Declaration of Mr. Thomas Credelle
`
`Ex. 2009
`
`Curriculum Vitae of Mr. Thomas Credelle
`
`–iv–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`Ex. 2010
`
`Ex. 2011
`
`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)
`[DKT 88] Order Appointing Don Tiller As Technical Advisor in
`Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd.;
`C.A. No. 2:20-cv-00283 (ED TX)
`
`[DKT 106] Invoice for Technical Advisor Donald Tiller as of
`08/172-21 in Japan Display Inc. and Panasonic Liquid Crystal
`Display Co., Ltd.; C.A. No. 2:20-cv-00283 (ED TX)
`
`Ex. 2013
`
`Japanese Patent Publication No. 2005-107535 – Lee [Japanese with
`Certified Translation]
`
`–v–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
`
`I.
`
`INTRODUCTION
`
`Japan Display Inc. (“Patent Owner”) submits this Response to IPR2021-
`
`01058 for Inter Partes Review (“Pet.” or “Petition”) of U.S. Patent No. 7,636,142
`
`(“the ’142 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, plaintiff Japan Display Inc. and defendant
`
`Tianma Microelectronics Co. Ltd. (Japan Display Inc. v. Tianma Microelectronics
`
`Co. Ltd., Case No. 2:20-cv-00285 (E.D. Tex. Aug. 31, 2020)) — involving
`
`substantially similar prior art and arguments — which is scheduled to be completed
`
`nearly eleven months before a final written decision would be due. IPR2021-01058,
`
`Paper 3 at 1 (P.T.A.B. July 8, 2021); First Amended Docket Control Order (Ex.
`
`–1–
`
`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`2001). 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. Ex. 2001; Ex. 2004. 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 (January 8, 2022), 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 eleven months before
`
`the Board would issue a final written decision in this proceeding, if instituted
`
`(January 8, 2023). See id.; IPR2021-01058, Paper 3 at 1 (P.T.A.B. July 8, 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
`
`–2–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`district court proceeding had 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–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`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–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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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. 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 instant Petition
`
`–5–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`(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., 11. 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. 2003). 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–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`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 eleven months later—by January 8, 2023.
`
`IPR2021-01058, Paper 3 at 1 (P.T.A.B. July 8, 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. Fintiv at 13. Here, with more than
`
`eleven 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., 12. 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. 2003). Further, the
`
`–7–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`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., 13. 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
`
`’142 patent in the instant Petition, in the district court litigation, Petitioner disputed
`
`the
`
`plain
`
`and
`
`ordinary meaning
`
`of
`
`“[a]
`
`liquid
`
`crystal
`
`display
`
`device…wherein...liquid crystal molecules are driven by applying a voltage between
`
`the lower electrode and the upper electrode.” Ex. 1013, 9, 20. 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 this term, among others. See Japan Display,
`
`–8–
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`
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`Case No. 2:20-cv-00283, Dkt. No. 123 (Ex. 2004, 24). Moreover, the parties have
`
`exchanged infringement contentions and invalidity contentions and held several
`
`30(b)(6) depositions and six inventor depositions. 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 (Exs. 2011, 2012). 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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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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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., 13. 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. 7,636,142
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`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 substantially the
`
`same claims and intends to rely 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., 2):
`
`Challenged Claim Ground of Unpatentability in Petition
`1-3, 5, 6, and 8
`U.S. Patent No. 7,599,015 (“Lee”)
`in combination with
`Korean Laid-Open Patent No. 2002-0085245 (“No”)
`
`In its Invalidity Contentions, Petitioner relied on the Fujita and Ono references for
`
`claims 1, 3, 5, 6, and 8.1 See Invalidity Contentions Chart M-1 (Ex. 2002).
`
`But 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. 2005, 3). On September 15, 2021, the Court granted
`
`Petitioner’s motion. See Order granting Tianma Microelectronics Co. Ltd.’s Motion
`
`1 Petitioner’s Invalidity Contentions do not include claim 2 although the Petition includes claim 2.
`
`–11–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`for Leave to Supplement Invalidity Contentions (Ex. 2010). Because this Petition
`
`was filed on June 21, 2021, Petitioner has the opportunity to supplement its
`
`invalidity case with any prior art raised in this Petition. In its Motion, Petitioner
`
`shows that it intends to add the Lee2 and No3 references asserted in this Petition. See
`
`Ex. 2005, 5, 10. As a result, the invalidity case in the district court will completely
`
`overlap with the grounds raised in this Petition.
`
`Petitioner tries to circumvent the “overlap” issue by offering a stipulation 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., 15-16. Such stipulation, however, is a hollow promise since expert
`
`reports were due on October 1, 2021, prior to the institution deadline for this Petition.
`
`See First Amended Docket Control Order (Ex. 2001). Given the late stage of the
`
`district court litigation, the parties will be forced to expend resources as if all of
`
`Petitioners’ prior art is in the case. Petitioner’s recent motion to amend its Invalidity
`
`Contentions to include art from this Petition demonstrates that it believes waiting for
`
`a final written decision from the Board will be too late to not “pursue in the related
`
`2 Petitioner’s Invalidity Contentions identify the Lee reference as “Lee-’015” but both short names
`refer to the same reference.
`3 Petitioner’s Invalidity Contentions identify the No reference as “No-’245,” but both short names
`refer to the same reference.
`
`–12–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`district court litigation any ground that it raised” in this Petition. See Motion for
`
`Leave to Supplement Invalidity Contentions (Dkt. No.131) (Ex. 2005); Pet., 15-16.
`
`Because there will be a complete overlap of issues raised in the Petition and the
`
`district court case, this factor 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
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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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`Petitioner has failed to show how the combination of Lee with No renders
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`obvious claims 1-3, 5, 6, and 8. First, a person of ordinary skill in the art would not
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`combine the references because the contact hole of Lee is located in the active pixel
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`area and No does not disclose an analogous contact hole. Ex. 1005, Fig. 1; Ex. 1006,
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`–13–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`Figs. 3, 4a, 4b. Second, combining Lee with No would not preserve light
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`transmittance and would degrade the liquid crystal. Taken together, the Fintiv
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`factors weigh in favor of denying institution. Therefore, the Board should exercise
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`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 and “the petitioner has demonstrated that the
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`Office erred in a matter material to the patentability of the challenged claims.”
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`Advanced Bionics, LLC v. Med-El Elektromedizinische Gerate GmbH, IPR 2019-
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`01469, Paper 6 at 8 (P.T.A.B. Feb. 13, 2020) (precedential); 35 U.S.C. § 325(d).
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`The Board should deny institution of the inter partes review petition under § 325(d)
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`based on consideration of six factors articulated in Becton Dickinson. Becton
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`Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18
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`(PTAB Dec. 15, 2017). The factors are: (1) the similarities and material differences
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`between the asserted art and the prior art involved during examination; (2) the
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`cumulative nature of the asserted art and the prior art evaluated during examination;
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`(3) the extent to which the asserted art was evaluated during examination; (4) the
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`extent of the overlap between the arguments made during examination and the
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`manner in which a petitioner relies on the prior art or a patent owner distinguishes
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`–14–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`the prior art; (5) whether a petitioner has pointed out sufficiently how the Office
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`erred in evaluating the asserted prior art; and (6) the extent to which additional
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`evidence and facts presented in the petition warrant reconsideration of the prior art
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`or arguments.
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`A.
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`The Becton Dickinson factors weigh in favor of denying institution
`of claims 1-3, 5, 6, and 8
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`1.
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`The similarities and material differences between the
`asserted art and the prior art involved during examination
`The primary reference in the inter partes review petition, Lee, is very similar
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`to the primary reference considered during examination, Song. Declaration of
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`Thomas Credelle ¶32 (Ex. 2008) (“Credelle Decl.”). The Song reference (U.S.
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`Patent Application Publication No. 2006/0215081, Ex. 2006), which the examiner
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`stated is “a close prior art of record,” (Ex. 1004, 14), discloses a thin film transistor
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`array substrate and counter substrate used in vertically aligned liquid crystal display
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`in which the pixel region is divided into subparts to improve viewing angle. Ex.
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`2006, Abstract, ¶3; Credelle Decl. ¶32. The transistor substrate includes data lines,
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`gate lines, and pixel electrodes in each pixel region. Abstract. The Song reference
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`further discloses opening portions 410, 420, and 430 in the common electrode to
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`enhance viewing angle. Ex. 2006, ¶¶47, 49, 61, 64, 65.
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`Similarly, the Lee reference discloses a thin-film transistor array panel used
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`in a liquid crystal display. Credelle Decl. ¶33. The thin film transistor array panel
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`–15–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,636,142
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`includes gate lines, data lines, and thin film transistors, among other features. Ex.
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`1005, Abstract. In addition, Lee discloses a common electrode with an opening 275
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`“for exposing the color filter 230 on the upper part of the drain electrode 175.” Id.
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`at 6:17-18. Neither Song nor Lee mentions methods of suppression of disclination.
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`Credelle Decl. ¶33.
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`Secondarily, the examiner considered Ozawa (U.S. Patent Application
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`Publication No. 2006/0203157, Ex. 2007) and Lee JP ’535 (Ex. 2013). Credelle
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`Decl. ¶34. Petitioner’s secondary reference is No (Ex. 1006). Id. All of these
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`references address the issue of suppression of liquid crystal disclination. Id. Ozawa
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`discloses a transflective liquid crystal display device designed to provide high-
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`contrast display with a wide viewing angle. Ex. 2007, Abstract. The liquid crystal
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`display device is vertically aligned and includes a design to reduce the effects of
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`disclination. Namely, “[t]he liquid crystal molecules are 50B are aligned along the
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`potential lines, thus being aligned smoothly without generating disclination due to
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`the insulating film.” Id. at ¶78. Similarly, Lee JP ’535 discloses suppression of
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`disclination by adjusting the shape of the slits in the pixel electrode of a fringe field
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`switching LCD. Ex. 2013 at ¶¶ 1, 4, 10.
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`Petitioner relies on No as a secondary reference to disclose claim limitation
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`1(e): “wherein one end portion of the electric field opening part in the longitudinal
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`direction around the window-shaped opening part is disposed to be overlapped with
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`–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. 7,636,142
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`the window-shaped opening part in a plan view.” Ex. 1001, claim 1; Pet., 37-43;
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`Credelle Decl. ¶35. Like Ozawa and Lee JP ’535, No addresses suppression of
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`disclination. Id. No discloses “suppressing the occurrence of disclination lines, by
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`furnishing holes in each edge portion on each end of the counter electrode that is
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`disposed at each end of the respective slit of the pixel electrode.” Ex. 1006 at 12.
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`Petitioner has not pointed to any substantive differences between Lee and
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`Song or between No and the pair of Ozawa and Lee JP ‘535 as a basis