UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND
`PANASONIC LIQUID CRYSTAL DISPLAY CO., LTD.,
`Patent Owners
`_______________
`Case IPR No: IPR2021-01060
`Patent No. 10,330,989
`_______________
`
`PATENT OWNERS JAPAN DISPLAY INC. AND PANASONIC LIQUID
`CRYSTAL DISPLAY CO., LTD.’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,330,989 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. 10,330,989
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`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 ............ 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 .............................................................14
`Fintiv Factor 6: Other circumstances impact the PTAB’s exercise
`of discretion, including the merits .......................................................14
`THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT ANY ONE OF THE CHALLENGED CLAIMS
`IS UNPATENTABLE. ..................................................................................16
`A.
`Petitioner fails to show that Abe is prior art, which is fatal to
`Grounds 1 and 2. .................................................................................17
`Petitioner fails to show that Kurahashi qualifies as prior art,
`which is fatal to Grounds 3 and 4 of the Petition. ...............................18
`Ground 1: The Petition Fails to Show that Yuh in Combination
`Ohta Renders Claims 1 and 2 Obvious. ..............................................19
`Ground 2: The Petition Fails to Show that Yuh in Combination
`Ohta, Abe, and Kim Renders Claim 2 Obvious. .................................32
`
`B.
`
`C.
`
`D.
`
`–ii–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`E.
`
`Ground 3: The Petition Fails to Show that Yuh in Combination
`Kurahashi Renders Claims 1 and 2 Obvious. .....................................33
`Ground 4: The Petition Fails to Show that Yuh in Combination
`Kurahashi, and Kim Renders Claim 2 Obvious. .................................48
`IV. CONCLUSION ..............................................................................................49
`
`F.
`
`–iii–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`EXHIBIT LIST
`
`Ex.2001
`
`First Amended Docket Control Order (Dkt. No. 140)
`
`Ex.2002
`
`Order denying Defendant’s Motion to Transfer (Dkt. No. 115)
`
`Ex.2003
`
`Ex.2004
`
`Ex.2005
`
`Ex.2006
`
`Ex.2007
`
`Ex.2008
`
`Ex.2009
`
`Defendant’s Motion for Leave to Supplement Invalidity Contentions
`(Dkt. No. 131)
`Order granting Tianma Microelectronics Co. Ltd.’s Motion for
`Leave to Supplement Invalidity Contentions (Dkt. No. 142)
`Assignment of U.S. Patent Application No. 09/582,655 (issuing as
`Abe (Ex.1007))
`
`Assignment of U.S. Patent Application No. 10/237,911 (parent to
`’989 patent)
`
`Prosecution History for U.S. Patent Application No. 10/237,911
`(parent to ’989 patent)
`
`Assignment of U.S. Patent Application No. 09/977,352 (issuing as
`Kurahashi (Ex.1008))
`
`S. H. Lee, S.L. Lee, H.Y. Kim, T.Y. Eom, 16.4L: Late-News Paper:
`A novel Wide-Viewing-Angle Technology: Ultra-Trans View™,
`Hyundai Electronics Industries (1999 SID)
`
`Ex.2010
`
`Declaration of Thomas L. Credelle
`under 37 C.F.R. § 1.68
`
`Ex.2011
`
`Curriculum Vitae of Thomas L. Credelle
`
`–iv–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`I.
`
`INTRODUCTION
`
`Japan Display Inc. and Panasonic Liquid Crystal Display Co., Ltd. (together,
`
`“Patent Owner”) submit this Response to IPR2021-01060 for Inter Partes Review
`
`(“Petition”) of U.S. Patent No. 10,330,989 (“the ’989 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 relies on Factors 4 (lack of overlap) and 6 (strong merits) to “outweigh the
`
`other relevant factors.” Pet. 6. 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 the Petition’s
`
`merits are not strong. Petitioner’s arguments hinge on the combination of references
`
`that disclose fundamentally different configurations that would not be obvious to
`
`combine and certainly not in the manner proposed by the Petitioner. Moreover, each
`
`–1–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`ground asserted in the Petition relies on one of two Hitachi (the original assignee of
`
`the ’989 patent) references that are not prior art and cannot be used to render obvious
`
`any claims of the ’989 patent.
`
`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-00283 (E.D. Tex. Aug. 31, 2020)), which is scheduled
`
`to be completed nearly eleven months before a final written decision would be due.
`
`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 (January 8, 2022), fact
`
`–2–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`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, eleven months before the Board
`
`would issue a final written decision in this proceeding, if instituted (January 1, 2023).
`
`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 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.
`
`whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted;
`
`–3–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`2.
`
`3.
`4.
`
`5.
`
`6.
`
`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.
`
`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.
`
`–4–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`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-
`
`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 January 2022. 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
`
`–5–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`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 (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
`
`–6–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`to transfer, “it remains uncertain when and where the related district court litigation
`
`will even be tried.” See Pet., 6. 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.2002). 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.
`
`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 be due—eleven months later—on January 8, 2023. 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
`
`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,
`
`–7–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`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., 6-7; see Japan Display, Case
`
`No. 2:20-cv-00283, Dkt. No. 69. 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.2002). 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., 7-8. 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
`
`–8–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`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, held several
`
`30(b)(6) depositions and six inventor depositions, concluded fact discovery, and
`
`disclosed expert reports on invalidity. 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, expert
`
`discovery will be complete; dispositive motions will have been filed; and the parties
`
`–9–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`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
`
`the case is already quite substantial. Pet. 8. 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
`
`–10–
`
`

`

`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`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
`
`“[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 same claims and
`
`relies on the same references in the district court case as in the Petition. See id. at
`
`14. In the Petition, Petitioner asserts four grounds for unpatentability under Section
`
`103 against one or more of the challenged claims (Pet. 3):
`
`Challenged Claim Ground of Unpatentability in Petition
`1, 2
`U.S. Patent No. 6,577,368 (“Yuh”), U.S. Patent App. Pub.
`No. 2001/009447 (“Ohta”) and U.S. Patent No. 6,507,383
`(“Abe”)
`
`2
`
`1, 2
`
`2
`
`Yuh, Ohta, Abe, and U.S. Patent No. 6,580,487 (“Kim”)
`
`Yuh and U.S. Patent No. 6,600,541 (“Kurahashi”)
`
`Yuh, Kurahashi, and Kim
`
`In its Expert Report, Petitioner relies on four references, Yuh, Ohta, U.S. Patent App.
`
`Pub. No. 2001/0030717 A1 (“Kaneko”), and U.S. Patent No. 6,469,765
`
`(“Matsuyama”) in the following combinations:
`
`–11–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
`
`Challenged Claim Ground of Unpatentability in Petition
`
`1, 2
`
`1, 2
`
`1, 2
`
`1, 2
`
`Ohta and Kaneko
`
`Yuh, Ohta, and Kaneko
`
`Ohta and Matsuyama
`
`Yuh, Ohta, and Matsuyama
`
`Thus, Petitioner relies on the same primary reference (Yuh) in all four grounds of
`
`unpatentability that is asserted as the primary reference in two of the four
`
`combinations in its expert report. The other primary reference used in the expert
`
`report is Ohta, which Petitioner relies on as its secondary reference to Yuh in
`
`Grounds 1 and 2. Petitioner’s Expert Report also include disclosures from two other
`
`references Kaneko (cited during prosecution) and Matsuyama (cited during
`
`prosecution), but these references do “not negate that the same combinations of
`
`references asserted in the Petition also are asserted in the Petitioner’s [Expert
`
`Report].” Intel, IPR2020-00498, Paper 16 at 7-8.
`
`Petitioner’s invalidity case does not include Abe, Kim (cited during
`
`prosecution), or Kurahashi, 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, Dkt. 131 (Ex.2003). On September
`
`–12–
`
`

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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`15, 2021, the Court granted Petitioner’s motion. See Order granting Tianma
`
`Microelectronics Co. Ltd.’s Motion for Leave to Supplement Invalidity Contentions,
`
`Dkt. 142 (Ex.2004). 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. 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., 10. Such stipulation, however, is a hollow promise since expert
`
`reports are due on October 1, 2021, prior to the institution deadline for this Petition.
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`See First Amended Docket Control Order (Ex.2001). Given the late stage of the
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`district court litigation, the parties will be forced to expend resources as if all of
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`Petitioners’ prior art is in the case. Petitioner’s recent motion to amend its Invalidity
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`Contentions to include art from its IPR proceedings demonstrates that it believes
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`waiting for a final written decision from the Board will be too late to not “pursue in
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`the related district court litigation any ground that it raised” in this Petition. See
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`Motion for Leave to Supplement Invalidity Contentions (Dkt. No. 131) (Ex.2003);
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`Pet., 11-12. Because there will be complete overlap of issues raised in the Petition
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`and the district court case, this favor weighs heavily in favor of denial.
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`E.
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`Fintiv Factor 5: The petitioner and the defendant in the parallel
`proceeding are the same party
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`The Petitioner is the Defendant in the district court action and the Patent
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`Owner is the Plaintiff in the district court litigation. 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
`
`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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`Contrary to Petitioner’s assertion, the merits of this Petition are not strong.
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`As explained in further detail below, Petitioner relies on the combinations of
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`references that disclose fundamentally different device configurations that are not
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`obvious to combine and certainly not in the manner proposed in the Petition.
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`Specifically, for Ground 1, Petitioner seeks to combine a fringe-field-switching
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`(“FFS”) device (Yuh) with an in-plane-switching (“IPS”) device (Ohta), which
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`would not be obvious to combine due to the many different considerations involved
`
`in each configuration. Further, Petitioner’s proposed combination demonstrates that
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`it doesn’t really seek to combine these references, but merely plucks certain
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`disclosed features from Ohta and inserts them into Yuh without regard to the
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`teachings or motivations provided in either reference. Petitioner’s argument for
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`Ground 3 takes a similar approach only with the Kurahashi reference. Moreover,
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`Kurahashi is not even prior art. Kurahashi was filed on October 16, 2001, which is
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`after the priority date for the ’989 patent (October 15, 2001). Petitioner incorrectly
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`alleges that the ’989 patent is not entitled to its foreign priority claim because the
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`face of the patent mistakenly refers to a different foreign application number than
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`what is included in the specification. But the ’989 patent’s priority benefit is clear
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`and correctly claimed from the original parent application and through each
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`continuation leading to the ’989 patent. Grounds 2 and 4 assert the same prior art
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`references as in Grounds 1 and 3, respectively, with the addition of Kim to shore up
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`its arguments for dependent claim 2. But both of these grounds fail to articulate how
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`the limitations of independent claim 1 are met and therefore fail for lack of evidence.
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`Finally, Grounds 1 and 2 rely on Abe as the sole evidence for invalidity of certain
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`claim limitations in Grounds 1 and 2. Petitioner states that Abe is “prior art at least
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`under pre-AIA 35 U.S.C. § 102(e).” But the subject matter in Abe was owned by
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`Hitachi Ltd., who also owned the subject matter claimed in the ’989 patent. Thus,
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`Abe is not prior art because it is exempted under 35 U.S.C. § 103(c)(1). For at least
`
`–15–
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`these reasons, Petitioner fails to establish a reasonable likelihood that any of the
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`challenged claims are unpatentable based on it proposed combination of references.
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`Taken together, the Fintiv factors weigh in favor of denying institution.
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`Therefore, the Board should exercise its discretion to deny institution of the Petition.
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`III. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT ANY ONE OF THE CHALLENGED CLAIMS
`IS UNPATENTABLE.
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`For the Board to institute an inter partes review proceeding, the Petition must
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`demonstrate “that there is a reasonable likelihood that at least one of the claims
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`challenged in the petition is unpatentable.” 37 C.F.R. § 42.108. Petitioner relies on
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`Yuh as the primary reference for each of the four grounds for unpatentability, but
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`Yuh fails to disclose several limitations of the ’989 patent, including an organic
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`insulation layer (and all related limitations related thereto) and the structure of the
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`pixel electrode. To cure these deficiencies, Petitioner cherry-picks these missing
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`features from references that are either (1) not prior art references or (2) would not
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`be obvious to combine with Yuh. Petitioner also makes broad statements about what
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`was known in the prior art to argue that the unique configurations in the ’989 patent
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`would have been obvious. See, e.g., Pet. 1(“Planar counter electrodes were known
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`. . . as were pixel electrodes having slits not parallel with gate lines and drain lines
`
`in LCD devices.”). Petitioner’s invalidity theories would essentially preclude any
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`new innovation in the TFT-LCD space because at this stage of the technology many
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 10,330,989
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`improvements are made though novel and non-obvious configurations of known
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`elements. For at least the reasons stated below, Petitioner’s arguments that the
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`challenged claims would have been obvious in light of the prior art fail.
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`A.
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`Petitioner fails to show that Abe is prior art, which is fatal to
`Grounds 1 and 2.
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`Petitioner states that “Abe, U.S. Patent No. 6,507,383, is a national stage of a
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`PCT application having a § 102(e) date of June 29, 2001, and constitutes prior art at
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`least under pre-AIA 35 U.S.C. § 102(e).” Pet. 19; see also Ex.1007. But Abe is
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`excepted from the prior art under pre-AIA Section 103(c)(1), which states
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`Subject matter developed by another person, which
`qualifies as prior art only under one or more of subsections
`(e), (f), and (g) of section 102, shall not preclude
`patentability under this section where the subject matter
`and the claimed invention were, at the time the claimed
`invention was made, owned by the same person or subject
`to an obligation of assignment to the same person.
`Abe names a different set of inventors (see Ex.