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: IPR2021-01058
`Patent No. 7,636,142
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC.’S PRE-INSTITUTION SUR-
`REPLY
`
`

`

`Patent Owner’s Pre-Institution Sur-Reply
`
`Contrary to Petitioner’s argument, “[a] holistic evaluation of the Fintiv
`factors,” which would weigh all six Fintiv factors, favors discretionary denial. Paper
`7 at 1 (“Reply”). Petitioner has never argued, nor could it, that factor 5 (“whether
`the petitioner and the defendant in the parallel proceeding are the same party”)
`weighs in favor of institution. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15
`at 8 (P.T.A.B. May 13, 2020). In its Reply, Petitioner appears to have abandoned its
`argument that factor 1 (“whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted”) “is, at best, neutral” given that its
`motion to transfer was denied. Id. at 7; Paper 2 at 11 (“Petition”); see also Ex. 2003
`(Order denying transfer motion). Further, an analysis of Fintiv factors 2, 3, 4, and 6
`demonstrates why Petitioner’s argument should be rejected.
`Fintiv Factor 2 considers the proximity of the court’s trial date to the projected
`statutory deadline for the Board’s final written decision. Petitioner recognizes that
`the district court trial date will precede the Board’s statutory deadline for a final
`written decision, Reply at 1, but ignores the eleven full months between the district
`court trial date (February 7, 2022) and the Board’s final written decision (January 8,
`2023). To evade this reality, Petitioner cites Samsung Electronics Co., Ltd., v. Acorn
`Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47 (P.T.A.B. Feb. 10, 2021) as a
`single example in which the Board instituted review despite a ten-month gap
`between the district court trial and the final written decision dates in the IPR. But
`Petitioner’s reliance is misplaced, because the two Fintiv factors that supported
`institution in Samsung swing the other way here. First, the Board found that the
`Samsung Petitioners’ Sotera-like stipulation preventing overlap of arguments
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`–1–
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`Patent Owner’s Pre-Institution Sur-Reply
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`between the Board and district court weighed in favor of institution under Fintiv
`Factor 4. Id. at 43. But more recent cases establish that these types of stipulations
`are not always dispositive of institution, and, as Patent Owner explains in detail
`below, Petitioner’s stipulation here does not appreciably simplify the district court
`case. Second, the Board found that the Samsung Petitioners had presented “a strong
`unpatentability challenge to every challenged claim” under Fintiv Factor 6. Id. at
`46. But here, as Patent Owner explains in its preliminary response (Paper 6 at 21-
`33), Petitioner has only presented weak challenges to every challenged claim. Third,
`the Samsung decision made no mention of a prior art products invalidity defense like
`the one put forward by Petitioner in the district court proceeding, which will require
`the district court to analyze the same prior art references asserted here.
`Additionally, a more recent Samsung decision, Samsung Elecs. Co., Ltd. v.
`Clear Imaging Research LLC, IPR2020-01551, Paper 12 at 13 (P.T.A.B. Feb. 17,
`2021) (“Samsung II”), denied institution when the trial was scheduled to begin more
`than ten months before the due date of the final written decision, and is more closely
`aligned with the facts here. Id. at 13. In Samsung II, the Board noted that the original
`trial date had never changed and was unlikely to ever be delayed. Id. at 11-14. The
`Board agreed with the Patent Owner that this factor weighed heavily in favor of
`denying institution, quoting Fintiv, Paper 11 at 9 (emphasis added) (“If 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 13. See also Cisco Systems, Inc. v. Oyster Optics, LLC, IPR2021-00319, Paper
`9 at 10-12 (P.T.A.B. June 8, 2021) (finding that trial date seven months before
`
`–2–
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`Patent Owner’s Pre-Institution Sur-Reply
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`Board’s written decision due date favored denial of petition). Such is also the case
`here—the judge in the district court has made clear his preference to maintain the
`current trial date. See Ex. 2001 (First Amended Docket Control Order).
`Petitioner speculates that “it is entirely possible” that Factor 2 may be
`rendered moot due to the district court’s order to narrow asserted claims. Reply at
`1. This inappropriate speculation should be accorded little weight because it
`attempts to take advantage of Petitioner’s extreme delay in filing its petition and the
`late stage of the parallel district court case. Petitioner is trying to have its cake and
`eat it, too—on the one hand, Petitioner complains about the scope of the district court
`case and demands the court there to force Patent Owner to narrow to a tiny fraction
`of the original case, then on the other, argues that the Board should rely on that
`narrowing demand to broaden Petitioner’s IPR case. This blatant gamesmanship is
`an attempt to waste the Board’s resources and should not be rewarded.
`Fintiv Factor 3 considers the timing of the petition and the investment in the
`proceeding by the court and the parties. Petitioner claims it “moved with speed and
`diligence” by filing the IPRs five months after Patent Owner served its infringement
`contentions. Reply at 2. Petitioner wrongly complains that Patent Owner “refused
`to narrow the number of claims and issues until service of its infringement
`contentions,” id., ignoring that (1) Petitioner had been on notice of its infringement
`since at least August 31, 2020, and (2) Patent Owner served infringement
`contentions at the time specified by the district court’s docket control order. In any
`event, the relevant date is the date of filing the complaint, not the serving of
`infringement contentions. 35 U.S.C. §315(b). This petition was filed on June 21,
`
`–3–
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`Patent Owner’s Pre-Institution Sur-Reply
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`2021, nine months after the complaint was filed. Further, this petition was filed three
`months after Petitioner served its invalidity contentions in the district court case,
`which, as Patent Owner has explained, significantly overlap with the grounds in this
`petition. This cuts against Petitioner’s claim of “speed and diligence.”
`Fintiv factor 3 also considers “the amount and type of work already completed
`in the parallel litigation by the court and the parties at the time of the institution
`decision,” including whether “the district court has issued substantive orders related
`to the patent at issue in the petition, this fact favors denial.” Fintiv, Paper 11 at 9-
`10. Petitioner’s statement that “[h]ere, by institution the court’s investment
`regarding the patentability of the ’142 patent will be nominal” is a gross
`understatement. Reply at 3. Petitioner recognizes that the district court has already
`expended resources addressing the parties’ claim construction positions and issuing
`a claim construction order.1 Id. But in arguing merely that “a substantial portion of
`work and trial is yet to come after institution,” Petitioner wholly discounts the
`significant efforts and resources the parties have expended and will expend prior to
`the institution date of January 8, 2022, and fails to provide any examples of the
`“substantial portion of work” that will occur later, apart from trial on February 7.
`The parties have already exchanged expert reports addressing infringement and
`validity of each of the 135 currently asserted claims. The parties have taken a
`collective fourteen days of expert depositions, and will take two more this week.
`Ex.2016 (Klein Decl., ¶5). Seven of those days are focused solely on validity. Id.
`
`1 In its expert report, Petitioner advocated for additional limitations on the term “window-shaped.” See Ex.2014 at
`11-12. To the extent Petitioner’s untimely claim construction proposals are allowed, Patent Owner has requested
`additional claim construction briefing that will impact Petitioner’s prior-art mappings. See id.
`
`–4–
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`Patent Owner’s Pre-Institution Sur-Reply
`
`Further, by January 8, many of the important pretrial deadlines will have passed:
`closing of expert discovery, filing dispositive and Daubert motions, responding to
`dispositive and Daubert motions, serving pretrial disclosures, serving objections to
`pretrial disclosures, and serving objections to rebuttal pretrial disclosures and filing
`motions in limine. See Ex.2001 at 1-3; Ex.1017 at 4. Thus, all the work relevant to
`claim construction, infringement, validity, claim construction, fact discovery, and
`expert discovery will be completed by the institution date. See Samsung Elecs.,
`IPR2020-01551, Paper 12 at 16 (finding significant investment of resources when
`“some of the work relevant to patent validity, including claim construction, fact
`discovery, and expert discovery” had been completed).
`Fintiv Factor 4 evaluates the overlap between issues raised in the Petition and
`in the district court proceeding. Fintiv, Paper 11 at 12. Petitioner leans heavily on
`its purported Sotera-like stipulation, but this stipulation will not serve to simplify
`the district court case. See Reply at 1-2, 4, and 5. Petitioner has filed petitions
`against only seven of the fifteen patents in the district court case. For five of those
`seven patents, Petitioner’s invalidity case involves alleged prior art products in
`combination with the same references asserted in the respective petitions and thus
`would be unaffected by the stipulation because the substance of those references will
`still be at issue. See Ex.2015 at 9-16 (Defendant’s Preliminary Invalidity
`Contentions). See also Defendant’s Motion for leave to Supplement Invalidity
`Contentions, Ex.2005 at 7 (“Here, [Petitioner] intends to use Plaintiffs’ recently
`produced prior art products, as modified by references of which Plaintiffs have been
`
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`Patent Owner’s Pre-Institution Sur-Reply
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`long aware, to invalidate seven of the asserted patents”). Thus, only two of the
`fifteen patents would be impacted, which is not an appreciable narrowing of the case.
`Petitioner concedes that its Sotera-type stipulation will not remove its alleged
`prior art invalidity defense because “Petitioner could not have raised a system-art
`based invalidity challenge in the petition.” Reply at 4-5; but see Revolution II, LLC
`v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 at 12 n.5
`(PTAB June 16, 2020) (“Further still, Petitioner could have expressly waived in the
`district court any overlapping patentability/invalidity defenses.”). In the district
`court case, Petitioner has asserted the following combination against the ’142 patent:
`an alleged prior art product ACX399CMP-7 in view of Lee-’015 and No-’245. Klein
`Decl., ¶6. Lee-’015 and No-’245 are the same references that Petitioner relies on in
`the Petition. Accordingly, if instituted, the analysis in the district court case and the
`instant proceeding will substantially overlap. Therefore, Fintiv factor 4 weighs
`against institution.
`Fintiv Factor 6 considers other circumstances that may impact the Board’s
`exercise of discretion, including the merits. Petitioner states, “Patent Owner does not
`(and cannot) dispute that the combination of Lee and No includes every feature of
`the claims.” Reply at 6. But this is a mischaracterization; Patent Owner presented
`arguments as to why the combination of Lee and No does not disclose claim
`limitation 1(e). See Paper 6 at 22-30. Further, Lee does not discuss disclination and,
`unlike the ‘142 patent, No only addresses it at only at the periphery of the pixel area.
`For at least the reasons set forth above, Patent Owner respectfully requests
`that the Board exercise its discretion to deny institution of the Petition.
`
`–6–
`
`

`

`Dated: November 15, 2021
`
`Respectfully submitted,
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`/Eric J. Klein/
`Eric J. Klein (Reg. No. 51,888)
`Lead Counsel for Petitioner
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Customer No. 22892
`TEL: (214) 220-7700
`FAX: (214) 220-7716
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in accordance with 37 C.F.R. §42.6(e) and 37
`C.F.R. §42.105, service was made on Petitioner as detailed below.
`Date of service November 15, 2021
`Manner of service Via electronic mail by agreement of the parties
`Documents served Patent Owner Japan Display Inc. and Panasonic Liquid
`Crystal Display Co., Ltd.’s Pre-Institution Sur-Reply 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
`
`–7–
`
`

`

`Persons served
`
`Lead Counsel
`Joshua L. Goldberg (Reg. No. 59,369)
`joshua.goldberg@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`Back-Up Counsel
`Qingyu Yin (Reg. No. 61,329)
`qingyu.yin@finnegan.com
`
`David C. Reese (Reg. No. 67,942)
`david.reese@finnegan.com
`
`Daniel F. Klodowski (Reg. No. 72,693)
`Daniel.klodowski@finnegan.com
`
`Gracie K. Mills (66,946)
`gracie.mills@finnegan.com
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`/Eric J. Klein/
`Eric J. Klein
`Lead Counsel for Petitioner
`Registration No. 51,888
`
`US 8432320
`
`–8–
`
`