Paper No. __
`Filed: November 8, 2021
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`
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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.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2021-01058
`U.S. Patent No. 7,636,142
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
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`
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`
`
`Filed: November 8, 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.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2021-01058
`U.S. Patent No. 7,636,142
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
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`
`
`
`
`
`U.S. Patent 7,636,142
`IPR2021-01058
`A holistic evaluation of the Fintiv factors favors institution. Petitioner’s
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`diligence in 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 is still going 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. Indeed, Patent Owner recently narrowed the
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`number of patents and claims. Ex. 1017, 3; Ex. 1018, 1 (Patent Owner’s election,
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`including withdrawal of three challenged claims of the ’142 patent). And the district
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`court fully expects further narrowing in advance of trial. Ex. 1019, 8-20 (October
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`26, 2021, district court status conference discussing narrowing); Ex. 1020, 2 (status
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`conference minutes ordering the parties to submit a joint notice by November 10 “re:
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`efforts to resolve or narrow outstanding claims and patents in the case.”). Thus, by
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`the expected institution date, it is entirely possible that the ’142 patent (or additional
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`claims) will be withdrawn from the district court, rendering factor 2 moot. At the
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`same time, should the challenged patent or claims be withdrawn before trial, Patent
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`Owner could still assert them against others, making it in the public interest for the
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`Board to address 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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`1
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`U.S. Patent 7,636,142
`IPR2021-01058
`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); Roku, Inc., v. Flexiworld Tech., Inc., IPR2021-00715, Paper 18 at
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`11, 15 (PTAB Oct. 26, 2021) (same by six months); R.J. Reynolds Vapor Company
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`v. Philip Morris Products S.A., IPR2021-00585, Paper 10 at 11, 14 (PTAB Sept. 13,
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`2021) (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
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`(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’s
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`cited pre-2021 Board decisions (POPR, 7) are distinguishable because they do not
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`involve a Sotera-type stipulation like here. The same is true for the decisions cited
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`in its IPR2021-01028, -01029 sur-replies. IPR2021-01028, Paper 10, 2-3; IPR2021-
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`01029, Paper 9, 2-3 (citing Samsung Elecs. Col., Ltd. v. Clear Imaging Research
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`LLC, IPR2020-01551, Paper 12 (PTAB Feb. 17, 2021); Cisco Systems, Inc. v. Oyster
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`Optics, LLC, IPR2021-00319, Paper 9 (PTAB June 8, 2021)).
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`Under factor 3, the Board considers Petitioner’s timing in filing the petition.
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 11 (PTAB Mar. 20, 2020)
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`(precedential). Here, Petitioner moved with speed and diligence in bringing the
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`present—and six related IPRs—five months after Patent Owner served its
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`infringement contentions. Preparing an IPR petition requires substantial time and
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`2
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`U.S. Patent 7,636,142
`IPR2021-01058
`effort. And this is particularly true in cases like this, where Patent Owner refused to
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`narrow the number of claims and issues until service of its infringement contentions
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`(Ex. 1012)—and even then, Patent Owner still asserted 135 claims from 15 patents
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`against more than 2,400 accused products, imposing a vastly greater burden on
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`Petitioner to assess the dispute and evaluate for which patents to request IPR.
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`Samsung, Paper 17 at 39-40; Roku, Inc., Paper 18 at 12-13. Further, Patent Owner
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`did not respond to Petitioner’s invalidity contentions before the petitions were filed.
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`Roku, Inc., Paper 18 at 12. And unlike Patent Owner’s cited Next Caller decisions,
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`any purported delay here is reasonably explained based on the number of asserted
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`patents and claims. Also, 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 institution, the district court’s
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`investment regarding the patentability of the ’142 patent will be nominal. The district
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`court issued a claim construction order, but it simply found the active language of
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`independent claim 1 denotes capability and does not require the actual “driving” of
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`liquid crystal molecules. Ex. 2004, 24, 27-29. This does not substantively impact the
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`Petition, which provides an analysis consistent with this construction.
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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 7,636,142
`IPR2021-01058
`is yet to come after institution. Moreover, the parties’ investment is neither
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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
`
`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’s
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`cited pre-2021 Board decisions (POPR, 9) are distinguishable as not involving any
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`stipulation—much less a Sotera-type stipulation like here.
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`Indeed, Petitioner’s broad Sotera-type stipulation (factor 4) strongly favors
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`institution. In its IPR2021-01028, -01029 sur-replies, Patent Owner states that
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`“Petitioner’s invalidity case [for five of the seven patents] involves alleged prior art
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`products in combination with the same references asserted in the respective petitions
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`and thus would be unaffected by the stipulation because the substance of those
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`references will still be at issue.” IPR2021-01028, Paper 10, 5; IPR2021-01029,
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`Paper 9, 5. That is not so. If the Board institutes, pursuant to Petitioner’s Sotera-type
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`stipulation, Petitioner will withdraw, from the district court, all grounds it raised, or
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`reasonably could have raised, in the present IPR. And Patent Owner does not dispute
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`4
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`
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`U.S. Patent 7,636,142
`IPR2021-01058
`that Petitioner could not have raised the system-art based invalidity challenge in the
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`petition. See Philip Morris Products, S.A., v. RAI Strategic Holdings, Inc., IPR2020-
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`01094, Paper 9 at 22-23 (PTAB Jan. 2021).
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`By stipulating to accept full IPR estoppel upon institution, Petitioner’s
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`stipulation mitigates concerns of duplicative efforts between the district court and
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`the Board, as well as concerns of potentially conflicting decisions. Sotera Wireless,
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`Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 23-24 (PTAB Dec. 1, 2020); see
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`also Samsung, Paper 17 at 38, 47 (instituting review less than two months before
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`district court trial, finding that “Petitioner’s stipulation has minimized any overlap
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`with the parallel district court litigation such that both the duplication of efforts and
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`the potential for conflicting decisions are minimized. Although the parties have
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`invested in the litigation, Petitioner filed this proceeding on a timely basis after
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`learning which of the eighty-four claims were being asserted. Accordingly, we
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`conclude that the minimization of overlap and the strength of the merits of the first
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`challenge outweigh the upcoming trial date.”). What’s more, the present IPR
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`challenges four additional claims not asserted in the district court (Ex. 1018, 1), and
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`by the expected institution date, the number of claims—and patents—in the district
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`court will be further narrowed, further “reducing the overlap between this
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`proceeding and the Texas case.” Apple Inc., v. Koss Corp., IPR2021-00600 Paper 9
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`at 18 (PTAB Sept. 1, 2021). Factor 4 thus weighs strongly against the Board
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`5
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`U.S. Patent 7,636,142
`IPR2021-01058
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`exercising discretion to deny institution.
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`Finally, factor 6 strongly favors institution because the merits of the present
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`IPR are strong. Patent Owner does not (and cannot) dispute that the combination of
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`Lee and No includes every feature of the claims. Instead, Patent Owner musters only
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`weak arguments that a person of ordinary skill in the art would not have been
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`motivated to combine the references. POPR, 22, 31. These arguments are unavailing.
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`The No reference—which was not before the Examiner during prosecution—
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`expressly discloses that arranging slits in an upper electrode over an opening in a
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`lower electrode prevents disclination at the end portions of the slits. See, e.g., Pet.,
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`37-39; Ex. 1006, 9-14. This feature was key to the patentability of the ’142 patent
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`during prosecution (Pet., 18-19), and as Petitioner explained, one would have been
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`motivated to modify Lee in view of No’s teachings to prevent disclination in the
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`same manner. Pet., 39-43. These references therefore collectively teach the same
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`LCD electrode structure claimed in the ’142 patent and employ that structure to solve
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`the exact same problem described in the patent: disclination. ’142 patent, 2:3-60.
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`None of Patent Owner’s arguments regarding motivation to combine rebut this. The
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`strength of the merits thus also favors institution. The Board should institute.
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`Dated: November 8, 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 7,636,142
`IPR2021-01058
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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 November 8, 2021, via email directed to
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`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
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`
`
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`Dated: November 8, 2021
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`
`
`
`
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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
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`7
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