Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 25
` Entered: May 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MERCEDES-BENZ USA, LLC, AND
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00360
`Patent 7,300,194 B2
`_______________
`
`Before LORA M. GREEN, THOMAS L. GIANNETTI, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 25
` Entered: May 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MERCEDES-BENZ USA, LLC, AND
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00360
`Patent 7,300,194 B2
`_______________
`
`Before LORA M. GREEN, THOMAS L. GIANNETTI, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`I.
`
`INTRODUCTION
`Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International,
`Inc. (collectively, “Petitioner” or “Mercedes-Benz”) filed a Petition (Paper
`1, “Pet.”) requesting an inter partes review of claims 1, 4–6, 16, 22, 23, 27,
`28, and 31 (“the challenged claims”) of U.S. Patent No. 7,300,194 B2
`(Ex. 1001, “the ’194 patent”), and concurrently filed a Motion for Joinder
`(Paper 3, “Mot.”). The Motion for Joinder seeks to join this proceeding with
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case
`IPR2014-01097 (“the LG IPR”). Mot. 1. Patent Owner filed a Preliminary
`Response (Paper 18), as well as an Opposition to the Motion for Joinder
`(Paper 7). For the reasons described below, we institute an inter partes
`review of all the challenged claims and grant Petitioner’s Motion for
`Joinder.
`
`II.
`
`INSTITUION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds as those on
`which we instituted review in the LG IPR. On January 13, 2015, we
`instituted a trial in the LG IPR on the following grounds:
`Reference(s)
`Basis
`Claims Challenged
`Pristash1
`§ 103
`1, 4–6, and 28
`Funamoto2
`§ 102
`1, 16, 22, 23, 27, and 31
`Funamoto
`§ 103
`4, 5, and 6
`Kobayahi3
`§102
`28
`
`
`1 Pristash, U.S. Patent No. 5,005,108, issued Apr. 2, 1991 (Ex. 1006).
`2 Funamoto, U.S. Patent No. 5,619,351, issued Apr. 8, 1997 (Ex. 1007).
`
`
`
`2
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`
`Nishio4
`
`§ 102
`
`1, 4–6, and 28
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case
`IPR2014-01097, slip. op. at 18 (PTAB January 13, 2015) (Paper 9).
`In view of the identity of the challenge in the instant Petition and in
`the petition in the LG IPR, we institute an inter partes review in this
`proceeding on the same grounds as those on which we instituted the LG IPR.
`We do not institute inter partes review on any other grounds.
`
`III. GRANT OF MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
`joinder of inter partes review proceedings:
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`As the moving party, Mercedes-Benz bears the burden of proving that
`it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for
`joinder should: (1) set forth the reasons joinder is appropriate; (2) identify
`any new grounds of unpatentability asserted in the petition; and (3) explain
`what impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5,
`
`
`3 Kobayashi, U.S. Patent No. 5,408,388, issued Apr. 18, 1995 (Ex. 1011).
`4 Nishio, U.S. Patent No. 5,598,280, issued Jan. 28, 1997 (Ex. 1012).
`
`
`
`3
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`http://www.uspto.gov/patentsapplication-process/appealing-
`patentdecisions/trials/patent-reviewprocessing-system-prps-0 (last visited
`April 1, 2015).
`The Petition in this proceeding has been accorded a filing date of
`December 4, 2014 (Paper 6), which is before the date of institution in the LG
`IPR, which was instituted on January 13, 2015 (LG IPR, Paper 9). The
`Petition, therefore, satisfies the joinder requirement of being filed within one
`month of our instituting a trial in the LG IPR. 37 C.F.R. § 42.122.
`
`In its Motion for Joinder, Mercedes-Benz contends that the grounds
`asserted in the instant Petition are
`[T]he same grounds of unpatentability LG asserted in the LG
`IPR; Petitioners’ arguments regarding the asserted references
`are identical to the arguments LG raised in the LG IPR; and
`Petitioners have submitted, in support of their petition, the same
`declaration of the technical expert that LG submitted in support
`of its petition (excluding some minor changes made to reflect
`Petitioners’ engagement of the same expert).
`
`
`Mot. 6. Mercedes-Benz represents that joinder will not prevent the Board
`from completing its review in “the statutorily prescribed timeframe,” and
`that “joinder will ensure the Board’s efficient and consistent resolution of
`issues surrounding the invalidity of the ’194 patent.” Id. at 1. According to
`Mercedes-Benz, the Board can accomplish this by requiring “consolidated
`filings and coordination among petitioners.” Id. at 2. Thus, Mercedes-Benz
`contends, the instant proceeding does not raise any issues that have not
`already been raised in the LG IPR. Id. at 6.
`
`Patent Owner opposes joinder, contending that Petitioner argues only
`that the grounds asserted in the instant Petition and the one asserted in the
`
`
`
`4
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`LG IPR are identical, and has not provided any, additional reasoning as to
`why joinder is appropriate. Paper 7, 6 (citing Unified Patents, Inc. v.
`Personalweb Technologies, LLC and Level 3 Communications, LLC, Case
`IPR2014-00702, slip. op. at 4 (PTAB January 13, 2015) (Paper 12)).
`
`As discussed above, joinder is discretionary. In IPR2014-00702, cited
`by Patent Owner, the panel noted that joinder is not automatic, but is
`discretionary based on the particular circumstances of each proceeding. In
`the instant proceeding, we agree with Mercedes-Benz that joinder with the
`LG IPR would promote the efficient resolution of those proceedings.
`Mercedes-Benz has brought the same challenges as presented by the LG
`IPR, thus, the substantive issues in this IPR would not be unduly
`complicated by joining with the LG IPR because joinder merely introduces
`the same grounds presented originally in the LG IPR, where all of the prior
`art is of record. Moreover, the instant proceeding was filed before we
`instituted trial in the LG IPR. Finally, Patent Owner will be able to address
`the challenges in a single proceeding.
`
`Patent Owner contends further that Petitioner in the instant proceeding
`filed its Petition well after the Petition was filed in the LG IPR, and thus it
`“should have known that a decision on institution on the first IPR was
`imminent and that its argument on this point would be moot by the time
`joinder briefing was completed.” Paper 7, 6. Moreover, Patent Owner notes
`that the trial schedule has been set in the LG IPR, asserting that Petitioner
`would most likely not agree to proceeding on that schedule, as it does not
`mention that possibility in its Motion for Joinder. Id. at 7.
`
`We acknowledge that Patent Owner has filed its Response to the
`Petition in IPR2014-01097. LG IPR, Paper 19. As the grounds on which
`
`
`
`5
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`we are instituting trial in the instant proceeding are identical to those on
`which we instituted trial in IPR2014-01097, as is the expert declaration,
`joinder of this proceeding with the LG IPR should not affect that paper, or
`the Scheduling Order in the LG IPR (LG IPR, Paper 10).
`
`Finally, Patent Owner argues that it will seek additional discovery
`against Petitioner to determine if LG Display Co. Ltd. (“LG”) is controlling
`or funding the instant proceeding, and the “potential for the additional
`discovery sought to prove LG’s involvement in this IPR is beyond that
`already before the PTAB in IPR2014-01097, and thus weighs against
`joinder.” Paper 7, 9. We do not find, given the facts and circumstances of
`the instant proceedings, that the possibility that Patent Owner may seek
`additional discovery to weigh against joinder in the instant proceeding.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that Petitioner’s Motion for Joinder is granted;
`FURTHER ORDERED that IPR2015-00360 is hereby instituted and
`joined with IPR2014-01097;
`FURTHER ORDERED that the ground on which IPR2014-01097 was
`instituted is unchanged and no other grounds are included in the joined
`proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2014-01097 (Paper 10) remains unchanged and shall govern the
`schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding, LG
`and Mercedes-Benz will file papers, except for motions that do not involve
`the other party, as a single, consolidated filing; that the filing party (either
`
`
`
`6
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`LG or Mercedes-Benz) will identify each such filing as a Consolidated
`Filing;
`FURTHER ORDERED that IPR2015-00360 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2014-01097;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2014-01097; and
`FURTHER ORDERED that the case caption in IPR2014-01097 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`7
`
`
`
`IPR2015-00360
`Patent No. 7,300,194 B2
`
`FOR PETITIONER:
`Scott W. Doyle
`Jonathan R. DeFosse
`FRIED, FRANK, HARRIS, SHRIVER
`& JACOBSON LLP
`Scott.Doyle@friedfrank.com
`Jonathan.DeFosse@friedfrank.com
`
`
`FOR PETITIONER:
`
`Robert G. Pluta
`Amanda K. Streff
`Jamie B. Beaber
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`jbeaber@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`FOR PATENT OWNER:
`Justin B. Kimble
`Jeffrey R. Bragalone
`T. William Kennedy, Jr.
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`jbragalone@bcpc-law.com
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 25
` Entered: May 22, 2015
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG DISPLAY CO., LTD.,
`and
`MERCEDES-BENZ USA, LLC AND
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-010971
`Patent 7,300,194 B2
`_______________
`
`
`
`1 Case IPR2015-00360 has been joined with this proceeding.
`
`
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