Trials@uspto.gov
`571-272-7822
`
` Paper No. 10
` Entered: July 20, 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 IPR2015-00496
`Patent 8,215,816 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BEVERLY M. BUNTING, AND
`MICHELLE N. WORMEESTER Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Dismissal of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`571-272-7822
`
` Paper No. 10
` Entered: July 20, 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 IPR2015-00496
`Patent 8,215,816 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BEVERLY M. BUNTING, AND
`MICHELLE N. WORMEESTER Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Dismissal of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`Case IPR2015-00496
`Patent 8,215,816 B2
`
`
`
`LG Electronics, Inc. (“Petitioner”) filed a petition (“Petition”)
`
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`
`claims 1–4 (“the challenged claims”) of U.S. Patent No. 8,215,816 B2 (Ex.
`
`1001, “the ’816 patent”). Paper 2 (“Pet.”). With the Petition, Petitioner
`
`filed a motion for joinder (Paper 3 (“Joinder Motion”)), seeking to join with
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case
`
`IPR2014-01095 (PTAB) (“the 1095 IPR”).1 Joinder Motion 1. Innovative
`
`Display Technologies LLC (“Patent Owner”) filed an opposition to the
`
`Joinder Motion (Paper 7) and a Preliminary Response (Paper 8).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), and for the
`
`reasons that follow, we deny this Petition and dismiss the Joinder Motion.
`
`
`
`I. BACKGROUND
`
`A. Related Proceedings
`
`The parties state that Patent Owner has asserted infringement of the
`
`’816 patent in Delaware Display Group LLC v. LG Electronics Inc., No.
`
`1:13-cv-02109 (D. Del., filed Dec. 31, 2013). Pet. 1; Paper 5, 2. Patent
`
`Owner identifies other proceedings in which it has alleged infringement of
`
`the ʼ816 patent. Paper 5, 2–6. In addition to the 1095 IPR, Patent Owner
`
`identifies another petition challenging the patentability of the ’816 patent,
`
`Mercedes-Benz, LLC v. Innovative Display Technologies LLC, IPR2015-
`
`00366 (PTAB) (terminated). Id. at 6. Further, Patent Owner cites additional
`
`
`1 At the time Petitioner filed its motion for joinder with the 1095 IPR, the
`Board had not yet decided whether to institute an inter partes review. We
`subsequently denied inter partes review of claims 1–4 on all asserted
`grounds. See 1095 IPR, Paper 9.
`
`
`
`2
`
`
`
`Case IPR2015-00496
`Patent 8,215,816 B2
`
`petitions challenging the patentability of patents related to the ’816 patent.
`
`Id. at 6–7.
`
`
`
`
`
`B. References
`
`Petitioner relies on the following references (Pet. 8–11), the Admitted
`
`Prior Art (“APA”) discussed in the ’816 patent (id. at 8) and the Declaration
`
`of Dr. Michael J. Escuti (Ex. 1004):
`
`References
`
`Pristash
`Funamoto
`Gyoko
`Murase
`Tsunoda
`Imai
`
`
`
`Patents/Printed
`Publications
`US 5,005,108
`US 5,619,351
`JP H6-273756
`US 5,178,447
`JP H6-051130
`US 5,253,089
`
`Date
`
`Exhibit
`
`April 2, 1991
`April 8, 19971
`Sept. 30, 19942
`Jan. 12, 1993
`Feb. 25, 19943
`Oct. 12, 1993
`
`1006
`1007
`1008
`1011
`1012
`1015
`
`
`
`C. Grounds Asserted
`
`Petitioner challenges claims 1–4 of the ’816 patent on the following
`
`grounds. Pet. 11.
`
`
`1 Petitioner relies on Funamoto’s 35 U.S.C. § 371 date of May 10, 1994.
`Pet. 9.
`2 Gyoko is a Japanese unexamined patent application, and Petitioner relies
`on the September 30, 1994 application publication date. Id. at 10.
`3 Tsunoda is a Japanese unexamined patent application, and Petitioner relies
`on the February 25, 1994 publication date. Id.
`
`
`
`3
`
`
`
`Claims Challenged
`
`Case IPR2015-00496
`Patent 8,215,816 B2
`
`
`References
`Pristash, Tsunoda, or in
`the alternative Imai
`Funamoto, Tsunoda, or
`in the alternative Imai
`Gyoko, Tsunoda, or in
`the alternative Imai
`Murase, Tsunoda, or in
`the alternative Imai
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`1–4
`
`1–4
`
`1–4
`
`1–4
`
`
`
`II. ANALYSIS
`
`In the 1095 IPR, applying the standard set forth in 35 U.S.C. § 314(a),
`
`we denied the Petition and declined to institute an inter partes review of
`
`claims 1–4 of the ’816 patent based on any of the asserted grounds. 1095
`
`IPR, Paper 9, 2. Now, in the instant Petition, Petitioner challenges these
`
`same claims, and Petitioner relies on the same arguments we found
`
`unavailing in the 1095 IPR. Pet. 11–50. Indeed, Petitioner acknowledges
`
`that “the invalidity grounds raised in this IPR are identical to the invalidity
`
`grounds raised in the LGD IPR.” Mot. 1.
`
`In view of the identity of the challenges to the ʼ816 patent, and
`
`reliance on essentially the same arguments and evidence presented in both
`
`this Petition and the 1095 IPR, we deny institution of inter partes review in
`
`this proceeding of claims 1–4 for the same reasons we denied institution of
`
`inter partes review in the 1095 IPR. See 1095 IPR, Paper 9.
`
`
`
`III. SUMMARY
`
`For the foregoing reasons, we conclude Petitioner has not
`
`demonstrated a reasonable likelihood that at least one challenged claim is
`
`unpatentable based on the asserted grounds. We, therefore, do not institute
`
`
`
`4
`
`
`
`Case IPR2015-00496
`Patent 8,215,816 B2
`
`an inter partes review on any of the asserted grounds as to any of the
`
`challenged claims. Because the petition in IPR2014-01095 was denied and
`
`inter partes review was not instituted, Petitioner’s Joinder Motion is
`
`dismissed as moot. See 35 U.S.C. § 315(c) (permitting joinder if Director
`
`institutes inter partes review).
`
`
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims and
`
`no trial is instituted;
`
`FURTHER ORDERED that the Motion for Joinder is dismissed.
`
`
`
`
`
`5
`
`
`
`Case IPR2015-00496
`Patent 8,215,816 B2
`
`PETITIONER:
`
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`6
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