Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 10
` Entered: February 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`DELAWARE DISPLAY GROUP LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01666
`Patent 7,434,973 B2
`_______________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, 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: February 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`DELAWARE DISPLAY GROUP LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01666
`Patent 7,434,973 B2
`_______________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, 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)
`
`
`
`IPR2015-01666
`Patent No. 7,434,973 B2
`
`I.
`
`INTRODUCTION
`LG Electronics, Inc. (“Petitioner” or “LG Electronics”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–5 (“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.
`Delaware Display Group LLC, Case IPR2014-00506 (“the LGD IPR”).
`Mot. 1. Patent Owner filed a Preliminary Response (Paper 7), as well as an
`Opposition to the Motion for Joinder (Paper 8). In addition, the parties
`jointly filed a paper indicating that should joinder be granted, Petitioner
`would limit the instant petition to the grounds, arguments and evidence of
`record in the LGD IPR, and Patent Owner would not oppose. Paper 9, 1.
`For the reasons described below, we institute an inter partes review of 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 IPR2015-00506, plus one additional ground.1
`Pet. 17. On July 6, 2015, we instituted a trial in IPR2015-00506 on the
`following alleged ground of unpatentability: anticipation of claims 1–5 by
`Shinohara.2 LG Display Co., Ltd. v. Delaware Display Group LLC, Case
`IPR2015-00506, slip. op. at 24 (PTAB July 6, 2015) (Paper 8) (“’506
`Decision”).
`
`
`1 As discussed supra, Petitioner agreed to abandon this additional ground
`should this proceeding be joined with the LGD IPR. Paper 9, 1.
`2 Shinohara, US 6,167,182, issued Dec. 26, 2000 (Ex. 1010).
`
`
`
`2
`
`
`
`IPR2015-01666
`Patent No. 7,434,973 B2
`
`
`In view of the identity of the challenge in the instant Petition and in
`the petition in the IPR2015-00506, we institute an inter partes review in this
`proceeding on the same ground as we instituted inter partes review in
`IPR2015-00506. 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, 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
`August 5, 2015 (Paper 4), which is within thirty days of the date of
`institution in IPR2015-00506, which was instituted on July 6, 2015. The
`
`
`
`3
`
`
`
`IPR2015-01666
`Patent No. 7,434,973 B2
`
`Petition, therefore, satisfies the joinder requirement of being filed within one
`month of our instituting a trial in IPR2015-00506. 37 C.F.R. § 42.122.
`
`In its Motion for Joinder, Petitioner contends joinder is appropriate
`because “this inter partes review proceeding raises the same ground of
`unpatentability on which the Board instituted review in IPR2015-00506.”
`Mot. 5. Petitioner represents that joinder will not prevent the Board from
`completing its review of the LGD IPR “within the statutorily prescribed
`timeframe” (Id.) and that joinder “promotes efficiency by avoiding
`duplicative reviews and filings of similar unpatentability issues across
`multiple PTAB proceedings” (Id. at 6). According to Petitioner, the Board
`can accomplish this by requiring consolidated filings and coordination
`among petitioners. Id. at 6–7.
`
`Although Patent Owner opposes joinder, Patent Owner states that it
`“would withdraw its opposition in the event that (1) the additional ground
`(the Parker Publication in view of Pelka) is not instituted in this
`IPR; and (2) the schedule does not substantially change in the LGD IPR.”
`Opp. 1. As indicated above, Petitioner agrees not to pursue this additional
`ground, should we grant its motion for joinder. Paper 9, 1.
`
`Joinder is discretionary based on the particular circumstances of each
`proceeding. In the instant proceeding, we agree with Petitioner that joinder
`with IPR2015-00506 would promote the efficient resolution of these
`proceedings. Petitioner agrees to pursue the same challenge as presented in
`IPR2015-00506, thus, the substantive issues in IPR2015-00506 would not be
`unduly complicated by joining with this proceeding because joinder merely
`introduces the same ground in which we instituted trial in IPR2015-00506,
`
`
`
`4
`
`
`
`IPR2015-01666
`Patent No. 7,434,973 B2
`
`where all of the prior art is of record. Finally, Patent Owner will be able to
`address the challenges in a single proceeding.
`
`We acknowledge that Patent Owner has filed its Response to the
`Petition in IPR2015-00506, and Petitioner has filed its Reply. IPR2015-
`00506, Papers 19–20. Both parties have requested oral argument, which is
`scheduled for March 1, 2015. Papers 21–23. As the grounds on which we
`are instituting trial in the instant proceeding are identical to those on which
`we instituted trial in IPR2015-00506, as is the expert declaration, joinder of
`this proceeding with IPR2015-00506 should not affect that paper, the
`Scheduling Order in IPR2015-00506 (IPR2015-00506, Paper 9), nor the
`Joint Stipulation to modify Due Date 2. (IPR2015-00506, Paper 19).
`
`
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that Petitioner’s Motion for Joinder is granted;
`FURTHER ORDERED that IPR2015-01666 is hereby instituted and
`joined with IPR2015-00506;
`FURTHER ORDERED that the ground on which IPR2015-00506 was
`instituted is unchanged and no other grounds are included in the joined
`proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2015-00506 (Paper 9) and Joint Stipulation to modify Due Date 2 (Paper
`19) shall govern the schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding, and
`LG Electronics, Inc. and LG Display Co. Ltd. will file papers, except for
`motions that do not involve the other party, as a single, consolidated filing;
`
`
`
`5
`
`
`
`IPR2015-01666
`Patent No. 7,434,973 B2
`
`that the filing party (either LG Electronics, Inc. or LG Display Co. Ltd.) will
`identify each such filing as a Consolidated Filing;
`FURTHER ORDERED that IPR2015-01666 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2015-00506;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2015-00506; and
`FURTHER ORDERED that the case caption in IPR2015-00506 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`6
`
`
`
`IPR2015-01666
`Patent No. 7,434,973 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
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 10
` Entered: February 5, 2016
`
`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.
`
`DELAWARE DISPLAY GROUP LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-005061
`Patent 7,300,194 B2
`_______________
`
`
`
`1 Case IPR2015-01666 has been joined with this proceeding.
`
`
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