Paper No. __
`Filed: November 8, 2021
`
`
`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 Owner.
`_____________________________
`
`Case No. IPR2021-01061
`U.S. Patent No. 10,423,034
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`Filed: November 8, 2021
`
`
`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 Owner.
`_____________________________
`
`Case No. IPR2021-01061
`U.S. Patent No. 10,423,034
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`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
`
`district court trial, which is still going through a substantial narrowing process.
`
`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. 1025, 3; Ex. 1026, 1 (Patent Owner’s election,
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`including withdrawal of three challenged claims of the ’034 patent). And the district
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`court fully expects further narrowing in advance of trial. Ex. 1027, 8-20 (October
`
`26, 2021, district court status conference discussing narrowing); Ex. 1028, 2 (status
`
`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 ’034 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.
`
`1
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`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`In any case, the trial date is not determinative. Samsung Electronics Co., Ltd.,
`
`v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47 (PTAB Feb. 10, 2021)
`
`(instituting review with over ten months between district court trial and final written
`
`decision dates); Roku, Inc., v. Flexiworld Tech., Inc., IPR2021-00715, Paper 18 at
`
`11, 15 (PTAB Oct. 26, 2021) (same by six months); R.J. Reynolds Vapor Company
`
`v. Philip Morris Products S.A., IPR2021-00585, Paper 10 at 11, 14 (PTAB Sept. 13,
`
`2021) (same by five months); Boston Scientific Corp., and Boston Scientific
`
`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, 7-8) are distinguishable because they do not
`
`involve a Sotera-type stipulation like here. The same is true for the decisions cited
`
`in its IPR2021-01028, -01029 sur-replies. IPR2021-01028, Paper 10, 2-3; IPR2021-
`
`01029, Paper 9, 2-3 (citing Samsung Elecs. Col., Ltd. v. Clear Imaging Research
`
`LLC, IPR2020-01551, Paper 12 (PTAB Feb. 17, 2021); Cisco Systems, Inc. v. Oyster
`
`Optics, LLC, IPR2021-00319, Paper 9 (PTAB June 8, 2021)).
`
`Under factor 3, the Board considers Petitioner’s timing in filing the petition.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 11 (PTAB Mar. 20, 2020)
`
`(precedential). Here, Petitioner moved with speed and diligence in bringing the
`
`present—and six related IPRs—five months after Patent Owner served its
`
`2
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`infringement contentions. Preparing an IPR petition requires substantial time and
`
`effort. And this is particularly true in cases like this, where Patent Owner refused to
`
`narrow the number of claims and issues until service of its infringement contentions
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`(Ex. 1020)—and even then, Patent Owner still asserted 135 claims from 15 patents
`
`against more than 2,400 accused products, imposing a vastly greater burden on
`
`Petitioner to assess the dispute and evaluate for which patents to request IPR.
`
`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.
`
`Roku, Inc., Paper 18 at 12. And unlike Patent Owner’s cited Next Caller decisions,
`
`any purported delay here is reasonably explained based on the number of asserted
`
`patents and claims. Also, the Next Caller cases did not involve any stipulations.
`
`The Board also considers, under factor 3, “the amount and type of work
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`already completed in the parallel litigation by the court and the parties at the time of
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`the institution decision.” Fintiv, Paper 11 at 9. Here, by institution, the district court’s
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`investment regarding the patentability of the ‘034 patent will be nominal. The district
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`court has issued a claim construction order (Ex. 1029), but it construed no ’034 claim
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`term. Although by the expected institution date there will have been additional
`
`investment by the parties in the district court, a substantial portion of work and trial
`
`is yet to come after institution. Moreover, the parties’ investment is neither
`
`determinative nor weighed in isolation. Instead, it must be considered in light of the
`
`3
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`nominal substantive investment by the district court, petitioner’s diligence bringing
`
`the challenge, and in concert with the other applicable factors. See, e.g., Samsung,
`
`Paper 17, 39-40, 47 (instituting review after close of fact and expert discovery,
`
`service of expert reports, dispositive motions and responses, and Daubert motions
`
`and responses); R.J. Reynolds, Paper 10 at 12, 14 (instituting review after completion
`
`of fact and expert discovery, pre-trial conference, dispositive motion practice, and
`
`exchanging of witness and exhibit lists and deposition designations). Patent Owner’s
`
`cited pre-2021 Board decisions (POPR, 9), are distinguishable as not involving any
`
`stipulation—much less a Sotera-type stipulation like here.
`
`Indeed, Petitioner’s broad Sotera-type stipulation (factor 4) strongly favors
`
`institution. In its IPR2021-01028, -01029 sur-replies, Patent Owner states that
`
`“Petitioner’s invalidity case [for five of the seven patents] involves alleged prior art
`
`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
`
`references will still be at issue.” IPR2021-01028, Paper 10, 5; IPR2021-01029,
`
`Paper 9, 5. That is not so. If the Board institutes, pursuant to Petitioner’s Sotera-type
`
`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
`
`that Petitioner could not have raised the system-art based invalidity challenge in the
`
`petition. See Philip Morris Products, S.A., v. RAI Strategic Holdings, Inc., IPR2020-
`
`4
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`01094, Paper 9 at 22-23 (PTAB Jan. 2021). By stipulating to accept full IPR estoppel
`
`upon institution, Petitioner’s stipulation mitigates concerns of duplicative efforts
`
`between the district court and the Board, as well as concerns of potentially
`
`conflicting decisions. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper
`
`12 at 23-24 (PTAB Dec. 1, 2020); see also Samsung, Paper 17 at 38, 47 (instituting
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`review less than two months before district court trial, finding that “Petitioner’s
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`stipulation has minimized any overlap with the parallel district court litigation such
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`that both the duplication of efforts and the potential for conflicting decisions are
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`minimized. Although the parties have invested in the litigation, Petitioner filed this
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`proceeding on a timely basis after learning which of the eighty-four claims were
`
`being asserted. Accordingly, we conclude that the minimization of overlap and the
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`strength of the merits of the first challenge outweigh the upcoming trial date.”).
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`What’s more, the present IPR challenges four additional claims not asserted
`
`in the district court (Ex. 1026, 1), and by the expected institution date, the number
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`of claims—and patents—in the district court will be further narrowed, further
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`“reducing the overlap between this proceeding and the Texas case.” Apple Inc., v.
`
`Koss Corp., IPR2021-00600 Paper 9 at 18 (PTAB Sept. 1, 2021). Factor 4 thus
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`weighs strongly against the Board 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. Contrary to Patent Owner’s assertions (POPR, 24), the Petition
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`5
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`explains in detail how the prior art renders obvious each limitation of the challenged
`
`claims,
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`including how Ochiai discloses Claim 1(k) under both possible
`
`interpretations of “connected to.” Pet., 39-48. Patent Owner’s position relies on a
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`misinterpretation of the prior art, such as its assertion that Ochiai’s electroconductor
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`is not “optional” in the device. POPR, 26. This is plainly contradicted by the
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`reference itself, and in any event, is onlyd even relevant to one possible interpretation
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`of “connected to.” Pet. 41-42; Ex. 1005, ¶157. Patent Owner also misinterprets the
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`Petition’s obviousness position, such as by arguing that Ando does not disclose a
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`spacer positioned over a common electrode as required by Claim 1(p). POPR, 31.
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`But even assuming that were correct, the ground at issue involves modifying
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`Ochiai’s LCD device to have a spacer positioned in the undisputed location
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`disclosed by Ando (and to achieve the same benefits taught by Ando). Pet. 49-51,
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`55-62. Patent Owner does not dispute that a spacer implemented in this location of
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`Ochiai’s LCD meets every relevant element of the claims, because it cannot. Its
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`arguments for the dependent claims fail for similar reasons. The strength of the
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`merits thus also favors institution under § 314. Petitioner respectfully requests the
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`Board institute this IPR and cancel all of the challenged claims.
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`Dated: November 8, 2021
`
`Respectfully submitted,
`
`
`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Reg. No. 59,369
`
`
`
`6
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Pre-Institution Reply was served on November 8, 2021, via email directed to
`
`counsel of record for Patent Owner at the following:
`
`Eric J. Klein (Reg. No. 51,888)
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`
`
`
`Dated: November 8, 2021
`
`
`
`
`
`
`Abigail Lubow (Reg. No. 75,839)
`alubow@velaw.com
`VINSON & ELKINS L.L.P.
`555 Mission Street, Suite 2000
`San Francisco, CA 94105
`Tel: (415) 979-6963
`Fax: (415) 358-5770
`
`Jeffrey R. Swigart (Reg. No. 77,008)
`jswigart@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201-2975
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`Tianma-JDIVETeam@velaw.com
`
`
`
`By: /Valencia Daniel/
`Valencia Daniel
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`7
`
`
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