Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 10
` Entered: July 10, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00490
`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 10
` Entered: July 10, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00490
`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)
`
`
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`
`I.
`
`INTRODUCTION
`
`LG Electronics, Inc. (“Petitioner” or “LG Electronics”) filed a Petition
`
`(Paper 2, “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 LGD IPR”). Mot. 1. Patent Owner filed a
`
`Preliminary Response (Paper 8), 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 IPR2014-01097. On January 13, 2015, we
`
`instituted a trial in the IPR2014-01097 on the following grounds:
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Pristash1
`
`Funamoto2
`
`Funamoto
`
`Kobayahi3
`
`Nishio4
`
`§ 103
`
`§ 102
`
`§ 103
`
`§102
`
`§ 102
`
`1, 4–6, and 28
`
`1, 16, 22, 23, 27, and 31
`
`4, 5, and 6
`
`28
`
`1, 4–6, and 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).
`3 Kobayashi, U.S. Patent No. 5,408,388, issued Apr. 18, 1995 (Ex. 1011).
`
`
`
`2
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case
`
`IPR2014-01097, slip. op. at 18 (PTAB January 13, 2015) (Paper 9) (“’1097
`
`Decision”).
`
`In view of the identity of the challenge in the instant Petition and in
`
`the petition in the IPR2014-01097, we institute an inter partes review in this
`
`proceeding on the same grounds as those on which we instituted inter partes
`
`review in IPR2014-01097. We do not institute inter partes review on any
`
`other grounds.
`
`III. REAL PARTY-IN-INTEREST
`
`
`
`Patent Owner contends that the Petition does not meet the
`
`requirements of 35 U.S.C. § 312(a) as it does not name all the real parties-in-
`
`interest. Prelim. Resp. 10. Specifically, Patent Owner contends that LG
`
`Display Co., Ltd. and LG Display America, Inc., should have been named as
`
`real party in interests. Id.
`
`Patent Owner made a similar assertion in the IPR2014-01097, as well
`
`as IPR2014-01096, with respect to Petitioner.5 For the reasons stated in
`
`Decision Instituting inter partes Review the IPR2014-01096, slip. op. at 16–
`
`17 (PTAB January 13, 2015) (Paper 11), we conclude that Patent Owner’s
`
`Preliminary Response fails to provide convincing evidence that the Petition
`
`should be denied on the grounds that it fails to name LG Display Co., Ltd.,
`
`and LG Display America, Inc., as real parties-in-interest.
`
`
`
`4 Nishio, U.S. Patent No. 5,598,280, issued Jan. 28, 1997 (Ex. 1012).
`5 In both IPR2014-01096 and IPR2014-01097, Patent Owner contended that
`the Petitioner here, LG Electronics, Inc., should have been named as a real
`party-in-interest, along with LG Display. IPR2014-01096, Paper 9, 18–20;
`IPR2014-01097, Paper 7, 2–4.
`
`
`
`3
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`IV. 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, Petitioner 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,
`
`http://www.uspto.gov/patentsapplication-process/appealing-
`
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`
`The Petition in this proceeding has been accorded a filing date of
`
`December 29, 2014 (Paper 6), which is before the date of institution in
`
`IPR2014-01097, which was instituted on January 13, 2015. The Petition,
`
`therefore, satisfies the joinder requirement of being filed within one month
`
`of our instituting a trial in IPR2014-01097. 37 C.F.R. § 42.122.
`
`
`
`In its Motion for Joinder, Petitioner contends that the grounds asserted
`
`in the instant Petition are
`
`the same grounds of unpatentability [LG Display Co. Ltd.
`(”LGD”)] asserted in the LGD IPR; Petitioner’s arguments
`regarding the asserted references are identical to the arguments
`
`
`
`4
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`
`LGD raised in the LGD IPR; and Petitioner has submitted, in
`support of their petition, the same declaration of the technical
`expert that LGD submitted in support of its petition (excluding
`some minor changes made to reflect Petitioner’s engagement of
`the same expert). Thus, this proceeding does not raise any new
`issues beyond those already before the Board in the LGD IPR.
`
`Mot. 6. Petitioner 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
`
`Petitioner, the Board can accomplish this by requiring “consolidated filings
`
`and coordination among petitioners.” Id. at 2. Thus, Petitioner contends, the
`
`instant proceeding does not raise any issues that have not already been raised
`
`in IPR2014-01097. 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
`
`IPR2014-01097 are identical, and has not provided any additional reasoning
`
`as to why joinder is appropriate. Paper 7, 6–7 (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 Unified Patents, 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 Petitioner that joinder with IPR2014-
`
`01097 would promote the efficient resolution of those proceedings.
`
`Petitioner has brought the same challenges as presented in IPR2014-01097,
`
`thus, the substantive issues in IPR2014-01097 would not be unduly
`
`complicated by joining with this proceeding because joinder merely
`
`
`
`5
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`introduces the same grounds presented originally in IPR2014-01097, 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 IPR2014-01097, 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, 7. Moreover, Patent Owner notes
`
`that the trial schedule has been set in IPR2014-01097, 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.
`
`
`
`We acknowledge that Patent Owner has filed its Response to the
`
`Petition in IPR2014-01097. IPR2014-01097, Paper 19. As the grounds on
`
`which 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 IPR2014-01097 should not affect that paper,
`
`or the Scheduling Order in IPR2014-01097 (IPR2014-01097, Paper 10).
`
`
`
`Finally, Patent Owner argues that it will seek additional discovery
`
`against Petitioner to determine if LGD is controlling or funding the instant
`
`proceeding, and the “potential for the additional discovery sought to prove
`
`LG[D]’s involvement in this IPR is beyond that already before the PTAB in
`
`IPR2014-01097, and thus weighs against joinder.” Paper 7, 9–10. 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.
`
`
`
`6
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`III. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`FURTHER ORDERED that IPR2015-00490 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
`
`Display Co. Ltd. and LG Electronics, Inc. will file papers, except for
`
`motions that do not involve the other party, as a single, consolidated filing;
`
`that the filing party (either LG Display Co. Ltd. or LG Electronics, Inc.) will
`
`identify each such filing as a Consolidated Filing;
`
`FURTHER ORDERED that IPR2015-00490 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.
`
`
`
`
`
`
`
`7
`
`
`
`IPR2015-00490
`Patent No. 7,300,194 B2
`
`FOR PETITIONER:
`
`Robert Pluta
`Amanda Streff
`Baldine Paul
`Anita Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@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 10
` Entered: July 10, 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
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-010971
`Patent 7,300,194 B2
`_______________
`
`
`
`
`1 Case IPR2015-00490 has been joined with this proceeding.
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