UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG DISPLAY CO., LTD;
`AND SONY CORPORATION,
`Petitioners
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00887
`Patent 7,420,550
`
`_______________
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG DISPLAY CO., LTD;
`AND SONY CORPORATION,
`Petitioners
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00887
`Patent 7,420,550
`
`_______________
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Introduction and Argument ................................................................................. 1
`I.
`a. The Serial Nature of This Petition is an Abuse of the Administrative Process
`
`1
`b. Petitioners’ Grounds of Challenge Rehash Unsuccessful Art and Arguments
`Already Considered and Rejected by the Board ................................................... 13
`c. Despite Sharp’s Earlier Petition Attempt, this Petition Remains Deficient in
`Establishing the Requisite Likelihood of Success ................................................ 15
`II. Background ........................................................................................................ 30
`a. About U.S. Patent No. 7,420,550 (the “‘550 patent” or “Shen”) ................... 30
`b. The Independent Claims at Issue .................................................................... 32
`III. Conclusion ...................................................................................................... 34
`
`
`
`
`
`
`i
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Co.,
` IPR2014-00628, paper 23 (PTAB 3/20/2015) ......................................... 9, 10, 12
`In re Oelrich, 666 F.2d 578 (CCPA 1981) .............................................................. 22
`In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) .......................................................... 22
`Jiawei Technology (HK) Ltd., et al. v. Richmond,
` IPR2015-00580, paper 22 (PTAB 5/2/2015) ............................................... 10, 11
`MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362 (Fed. Cir. 1999) ............. 22
`Unilever, Inc. dba Unilever v. The Proctor & Gamble Co.,
` IPR2014-00506, paper 17 (PTAB 7/7/2014) ...................................................... 13
`ZTE Corp. v. ContentGuard Holdings, Inc.,
` IPR2013-00454, paper 12 (PTAB 9/25/2013) .................................................... 12
`Statutes
`
`28 U.S.C. § 1746 ...................................................................................................... 30
`35 U.S.C. § 314(a) ............................................................................................ 13, 16
`35 U.S.C. § 325(d) .................................................................................. 9, 13, 30, 35
`Other Authorities
`
`M.P.E.P. § 2112(IV) ................................................................................................ 22
`Rules
`
`37 C.F.R. § 42.1 ....................................................................................................... 12
`37 C.F.R. § 42.1(b) .................................................................................................... 9
`37 C.F.R. § 42.63(b) ................................................................................................ 29
`37 C.F.R. § 42.65(a) .......................................................................................... 19, 27
`
`
`
`
`
`
`ii
`
`
`
`
`
`
`Exhibit
`
`2001
`
`
`2002
`
`
`2003
`
`
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`
`
`Description
`
`“Petitioner and His Money are Soon Parted: Separate Fee
`Payments Do Not Reduce Risk of Non-Institution of Redundant
`Grounds”; Authored by M. Carniaux and M. Sander;
`interpartesreviewblog.com, dated November 13, 2014 (accessed
`June 1, 2015)
`
`Joint Stipulation to Stay Cases Pending Inter Partes Review,
`filed November 20, 2014
`
`Order Granting Joint Stipulation to Stay Cases Pending Inter
`Partes Review, entered November 21, 2014
`
`
`iii
`
`
`
`
`IPR2015-00887
`U.S. Patent No. 7,420,550
`
`I.
`
`Introduction and Argument
`
`
`
`
`
`a. The Serial Nature of This Petition is an Abuse of the Administrative
`Process
`
`Samsung Electronics Co., Ltd., Samsung Display Co., Ltd. (collectively,
`
`“Samsung”), and Sony Corporation (“Sony”) (Sony and Samsung are collectively
`
`referred to as the “Petitioners”) filed the current Petition for inter partes review of
`
`claims 1-5 of U.S. Patent No. 7,420,550 (“the ’550 patent”) on March 16, 2015.
`
`But this filing represents only the most recent of many similar requests for Board
`
`resources filed by a common group of accused infringers in litigation with Patent
`
`Owner Surpass Tech Innovation LLC (“Surpass”).
`
`More than five months previously, on October 3, 2014, three Sharp entities
`
`filed two petitions for IPR against Surpass: IPR2015-00021 challenging claims 1,
`
`4, 8, and 9 of U.S. Patent No. 7,202,843; and IPR2015-00022 challenging claims
`
`1-5 of the ‘550 patent (hereinafter these petitions will be collectively referred to as
`
`the “First Round Petitions”).1
`
`
`1 Because Patent Owner Surpass has already introduced the ‘550 patent and its
`
`claims in its preliminary response in IPR2015-00022, this Preliminary Response
`
`will begin by explaining the many reasons why this second-bite at the apple should
`
`
`
`1
`
`
`
`On the basis of the First Round Petitions, the Sharp entities moved for a stay
`
`of the pending litigation between the Sharp entities and Surpass. Other co-
`
`defendants in litigation with Surpass over the ‘550 and ‘843 patents were aware of
`
`the Sharp Petitioners’ efforts to challenge certain claims of these patents. These
`
`other co-defendants also sought to gain the benefit of Sharp’s First Round
`
`Petitions. Specifically, co-defendant LG Display Co., Ltd. (“LG”), Petitioner and
`
`co-defendant Sony, and Petitioner and co-defendant Samsung were aware of
`
`Sharp’s First Round Petitions at least as early as October 3, 2014 (and likely much
`
`earlier), and they each joined the Sharp entities in seeking a stay of all of their co-
`
`pending litigations with Surpass on the basis of Sharp’s First Round Petitions. Ex.
`
`2002 at 2. This request was filed with the U.S. District Court for the District of
`
`Delaware on November 20, 2014 (id.), and was granted the following day. Ex.
`
`2003 at 1-2. Included as part of the paper filed with the Court was the request that
`
`“each Action shall be stayed as long as all of the patents asserted in that Action are
`
`subject to: a pending request for IPR; or a pending IPR proceeding in which a final
`
`written determination has not issued.” Ex. 2002 at 3. Thus, by the very language of
`
`this request, the moving defendants are benefited by prolonging the period during
`
`
`be denied in full. Background information regarding the ‘550 patent and its claims
`
`is provided in Section II.
`
`2
`
`
`
`
`which there is at least one request for IPR pending against Patent Owner Surpass’s
`
`‘843 and ‘550 patents.
`
`Not remarkably, around this same time that Petitioners Sony and Samsung
`
`moved for a stay pending Sharp’s IPR requests, on November 13, 2014, counsel of
`
`record in this Petition published a blog post entitled “Petitioner and His Money are
`
`Soon Parted: Separate Fee Payments Do Not Reduce Risk of Non-Institution of
`
`Redundant Grounds.” Ex. 2001. As the title suggests, that blog post discussed the
`
`Board’s treatment of redundant grounds filed over multiple IPR petitions against
`
`common target claims. The post concludes by stating, “As simply throwing money
`
`at the problem appears to no longer be a viable option, Petitioners may need to
`
`come up with more creative strategies to get multiple, parallel bites at the
`
`invalidity apple.” Id. at 3. What followed is a perfect example of Samsung, Sony,
`
`LG, and Sharp’s attempts to get multiple bites at the invalidity apple against the
`
`‘843 and ‘550 patents.
`
`On March 10, 2015, the Board denied all six grounds presented in Sharp’s
`
`IPR2015-00022 petition against claims 1-5 of the ‘550 patent, and dismissed the
`
`petition in full. See IPR2015-00022, paper 9. Thus, as of this date, there was no
`
`pending request for IPR or IPR proceeding effective as to the ‘550 patent. Then, on
`
`March 18, 2015, the Board denied three of four grounds presented in Sharp’s
`
`3
`
`
`
`
`IPR2015-00021 petition against claims 1, 4, 8, and 9 of the ‘843 patent. See
`
`IPR2015-00021, paper 10.
`
`Only after the Board issued its denial-in-full of the petition against the ‘550
`
`patent in IPR2015-00022 did any of the other co-defendants take action. Indeed,
`
`more than five months after Sharp Petitioners first filed IPR2015-00021 and -
`
`00022 and about four months after each of Sony, Samsung, LG, and Sharp
`
`Petitioners relied upon the First Round Petitions to gain a stay of the pending
`
`litigations in District Court, five new inter partes petitions were filed against
`
`Surpass. Using Surpass’s preliminary responses and the institution decisions in the
`
`First Round Petitions as roadmaps for further challenges, Sony, Samsung, and LG
`
`sought inter partes review of the ‘843 patent in IPR2015-00862, -00863, and -
`
`00885. Similarly, Petitioners Samsung and Sony, and the Sharp entities (for the
`
`second time) attacked the ‘550 patent in IPR2015-00887 and IPR2015-00913,
`
`respectively. These five new petitions are referred to as the “Second Round
`
`Petitions.”
`
`Although Sony, Samsung, and LG were not named as petitioners in the First
`
`Round Petitions, these co-defendants relied on Sharp’s First Round Petitions in
`
`order to stay the pending litigations. Further, this batch of Second Round Petitions
`
`is a perfect example of Petitioners’ “more creative” strategy to get multiple bites at
`
`the invalidity apple (See Ex. 2001 at 3), though Petitioners’ approach of swapping
`
`4
`
`
`
`
`out one co-defendant petitioner for another in this second round falls far short of
`
`being creative. It is against the Board’s policy to allow second bites at apple,
`
`particularly where the second bite – or third or fourth bite—is designed to cure the
`
`defects revealed by the first bite, and that is all that Petitioners have done here.
`
`Further, counsel’s blog, which suggested a need to contort the Board’s rules to
`
`acquire second chances, occurred nearly concurrently with the stay motion filed
`
`with the District Court based on Sharp’s petitions. This timing strongly suggests
`
`that filing serial IPR petitions against Patent Owner Surpass, and therefore abusing
`
`the administrative process, was Petitioners’ intention all along. This also strongly
`
`suggests that there was concerted strategic planning among the co-defendants, and
`
`reinforces that Petitioners here stand in the same shoes as the Sharp Petitioners.
`
`Now coming before the Board, Sony, Samsung, and LG have made no
`
`representation to the Board that the prior art and arguments in the Second Round
`
`Petitions were not known or available to the parties at the time of Sharp’s First
`
`Round Petitions.
`
`Further, the references in these Second Round Petitions appear to have been
`
`passed around the various petitioners/co-defendants in order to avoid the reality
`
`that in fact many references were known and available at the time of Sharp’s First
`
`Round Petitions. For example, the Lee reference in IPR2015-00885, filed by LG, is
`
`assigned to Petitioner Samsung. The Ham reference used in IPR2015-00863 filed
`
`5
`
`
`
`
`by Petitioners Samsung and Sony was assigned to LG, the petitioner in IPR2015-
`
`00885.2 The Kubota reference in this Petition was assigned to Sharp’s Japanese
`
`entity, Sharp Kabushiki Kaisha (aka Sharp Corporation) and was already used once
`
`against the ‘550 patent, unsuccessfully. No representations are made in the Second
`
`Round Petitions that these references were not known or available to the parties at
`
`the time of Sharp’s First Round Petitions. Indeed, the assignment data for each of
`
`these references informs that in fact these references were all available to the co-
`
`defendants and were necessarily in the hands of co-defendants prior to the date of
`
`the First Round Petitions.
`
`Further, the overlap between the grounds of challenge in the First Round
`
`Petitions and the Second Round Petitions is extensive. The following is a chart
`
`showing the references relied on in each of the three petitions asserted against the
`
`‘550 patent, with references listed in bold font where appearing in both the First
`
`Round Petition and a Second Round Petition:
`
`
`
`
`
`
`2 This Ham reference is also the parent application of the Ham reference used in
`
`IPR2015-00021.
`
`6
`
`
`
`
`
`
`IPR2015-00022
`
`IPR2015-00887
`
`IPR2015-00913
`
`References (institution
`
`References
`
`References
`
`denied by the Board)
`
` U.S. Patent No.
`
` Janssen ’708
`
` Shimada
`
`6,081,250 to
`
`Shimada et al.
`
`(“Shimada”)
`
` Kubota
`
` APA
`
` U.S. Patent Appl.
`
` U.S. Patent No.
`
`Pub. No.
`
` U.S. Patent No.
`
`6,407,795 to
`
`Kamizono et al.
`
`(“Kamizono”)
`
`6,300,927 to
`
`2002/0186190 to
`
` Japanese Patent
`
`Kubota et al. (Ex.
`
`Janssen et al.
`
`Application
`
`1004) (“Kubota”)
`
`(“Janssen ’190”)
`
`Publication No.
`
` Background of
`
` Japanese Patent
`
`‘550 patent
`
`Application
`
`H08-305322 and
`
`Certified English
`
`(“Admitted Prior
`
`Publication No. 2-
`
`Translation Thereof
`
`Art” or “APA”)
`
`214818 by Horii et
`
`(“Sharp
`
` International
`
`al. (“Horii”)
`
`Reference”)
`
`Publication No.
`
`WO 02/075708 to
`
`7
`
`
`
`
`Janssen et al. (Ex.
`
`1003) (“Janssen
`
`‘708”)
`
` U.S. Patent No.
`
`6,157,056 to
`
`Takeuchi et al. (Ex.
`
`1005) (“Takeuchi”)
`
`
`
`As shown above, four of the five references relied upon (and denied in full)
`
`in IPR2015-00022 are also relied upon in one of the two Second Round Petitions
`
`against the ‘550 patent. Moreover, a detailed comparison of the challenges in the
`
`Second Round Petitions reveal that they contain the same or substantially the same
`
`prior art and arguments as those presented in IPR2015-00022. For example, this
`
`case’s Petition presents seven grounds, six of which are obviousness challenges
`
`based on the prior-considered Janssen ’708 reference (grounds 2-7), and four of
`
`which are obviousness challenges based on the prior-considered APA and/or
`
`Kubota references (grounds 4-7).
`
`Thus, Petitioners here present the Janssen ‘708, Kubota, and APA references
`
`for substantially the same reason and in support of the substantially same
`
`8
`
`
`
`
`arguments as those presented unsuccessfully in IPR2015-00022. This similarity
`
`compels dismissal of these grounds of the Petition under 35 U.S.C. § 325(d).
`
`As noted above, Board policy further supports dismissal of the Second
`
`Round Petitions under 35 U.S.C. § 325(d). Petitioners Samsung and Sony stand in
`
`a common position with the Sharp entities, having relied upon the earlier Sharp
`
`First Round Petitions to gain a litigation advantage and stay of the litigation
`
`proceedings pending the outcome of Sharp’s petitions. As the Board has
`
`recognized previously, the granting of successive petitions “would incentivize
`
`petitioners to hold back prior art for successive attacks, should a first petition be
`
`denied.” Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Co., IPR2014-
`
`00628, paper 23 at 3 (PTAB 3/20/2015). That incentive is even more prevalent in
`
`this instance, since the litigation stay also incentivizes petitioners to plan
`
`successive attacks to keep at least one pending inter partes review at all times. This
`
`procedural concern of the Board is equally applicable to a petitioner’s co-
`
`defendants who rely on IPR challenges to gain a stay of active litigation. The
`
`mechanism at play here converts the Board from a venue for "just, speedy, and
`
`inexpensive resolution of every proceeding" as specified in 37 C.F.R. § 42.1(b),
`
`into an avenue for abuse of the administrative process for a patent owner, and
`
`works against rather than for the efficient and economical use of Board and party
`
`resources.
`
`9
`
`
`
`
`This particular batch of cases reveals another practical danger. The initial
`
`Sharp petitions included no expert declaration. Only after the Board decided
`
`IPR2015-00022 did the Sharp Petitioners, Sony, Samsung, and LG see the areas in
`
`which the Board identified the need for expert support beyond mere attorney
`
`argument. Thus, these parties were not only able to hold back prior art for
`
`successive attacks in the event of an unsuccessful first attempt, but were able to
`
`hold back on the use of an expert until they learned the arguments that required
`
`further evidentiary support according to the Board.
`
`Recognizing these dangers, the Board has spoken to such strategies and
`
`denied institution in follow-on petitions where the petitioner “uses our prior
`
`Decision on Institution to bolster challenges that were advanced, unsuccessfully,
`
`in” the prior petition. See Jiawei Technology (HK) Ltd., et al. v. Richmond,
`
`IPR2015-00580, paper 22 at 7 (PTAB 5/2/2015); see also Conopco, Inc. dba
`
`Unilever v. The Proctor & Gamble Co., IPR2014-00628, paper 23 at 5 (rejecting
`
`an approach that “would allow petitioners to unveil strategically their best prior art
`
`and arguments in serial petitions, using our decisions on institution as a roadmap,
`
`until a ground is advanced that results in review—a practice that would tax Board
`
`resources, and force patent owners to defend multiple attacks.”). Such a practice
`
`was deemed by the Board as “abuse of the administrative process.” Id. The Second
`
`Round Petitions stand as perfect examples of abusive filings, where Petitioners
`
`10
`
`
`
`
`expressly cite to or respond to the occurrences in IPR2015-00022 no fewer than
`
`five times throughout the Petition in an attempt to explain why this Petition is
`
`different and should not be dismissed as well. See Pet. at 14, 15, 16, 23, and 58.
`
`Further, while IPR2015-00022 was filed with just 6 supporting exhibits, IPR2015-
`
`00887 against the ‘550 patent includes 15 exhibits and IPR2015-00913 includes 9
`
`exhibits. In sheer numbers alone (without regard for page count), the Second
`
`Round Petitions are supported by 400% of the evidence compared to the First
`
`Round Petitions.
`
`In guiding how to proceed in this action, Jiawei Technology is instructive.
`
`There, the second petition included a claim construction that petitioner “could have
`
`offered” but did not in the first petition. Jiawei Technology , paper 22 at 5. That
`
`strategy, explained the Board, amounted to a “second bite at the apple” and
`
`contrary to policy. Id. at 5, 7. Additionally, references in the second petition “were
`
`available to Petitioner at the time of filing the earlier Petition.” Id. at 4. Like in
`
`Jiawei Technology, here Petitioners have used references that were assigned to and
`
`therefore available to their co-defendants, including petitioner Sharp, at the time of
`
`filing the earlier First Round Petitions. Further, although the Sharp petitioners
`
`could have presented a claim construction argument for “gate drivers” and “source
`
`drivers”, they elected not to do so. Now, having recognized the defects in
`
`IPR2015-00022, Petitioners are taking their second bite with a claim construction
`
`11
`
`
`
`
`argument and references that could have been presented in IPR2015-00022. The
`
`Sharp petitioners are taking a similar tact in IPR2015-00913 by proposing a
`
`construction for “the gate drivers” and the “source drivers.” See IPR2015-00913,
`
`paper 1 at 21-22.
`
`Denial by the Board of the Petitions in both IPR2015-00887 and IPR2015-
`
`00913 is the proper result here since a denial “removes an incentive for petitioners
`
`to hold back prior art for successive attacks from multifarious attacks on the same
`
`patent claims.” Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Co.,
`
`IPR2014-00628, paper 23 at 5; see also ZTE Corp. v. ContentGuard Holdings,
`
`Inc., IPR2013-00454, paper 12 at 5-6 (PTAB 9/25/2013) (“The Board is concerned
`
`about encouraging, unnecessarily, the filing of petitions which are partially
`
`inadequate.”). Moreover, although the Board’s rules do not permit a petitioner to
`
`file a reply before the Board decides whether to institute an inter partes review,
`
`Petitioners have, in effect, rewritten the Board’s rules to create a procedural
`
`opportunity to not only respond to Patent Owner’s IPR2015-00022 Preliminary
`
`Response but also present new evidence and argument in a second chance filing of
`
`60 pages, and seek reconsideration of the Board’s decision on Janssen ‘708, APA,
`
`and Kubota. The Board should not permit this effective high-jacking of 37 C.F.R. §
`
`42.1 et seq.
`
`12
`
`
`
`
`Accordingly, this Petition for inter partes review of the ‘550 patent should
`
`be denied and no trial instituted pursuant to 35 U.S.C. § 325(d). Under that statute,
`
`the Board has broad discretion to deny a petition that raises “substantially the same
`
`prior art or arguments previously presented to the Office.” Unilever, Inc. dba
`
`Unilever v. The Proctor & Gamble Co., IPR2014-00506, paper 17 at 6 (PTAB
`
`7/7/2014). This case and IPR2015-00913 are textbook examples of the situation for
`
`which § 325(d) exists.
`
`Moreover, even on the merits, this Petition should be denied and no trial
`
`instituted because there is no “reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a).
`
`b. Petitioners’ Grounds of Challenge Rehash Unsuccessful Art and
`Arguments Already Considered and Rejected by the Board
`
`
`
`The asserted grounds identified in the Petition rely upon four prior art
`
`references and the background of the ‘550 patent (referred to by Petitioners as
`
`“Admitted Prior Art” or “APA”). The Petition presents seven obviousness-based
`
`challenges.
`
`The purported grounds of rejection are as follows, with references already
`
`considered by the Board in IPR2015-00022 presented in bold font:
`
`13
`
`
`
`
`Ground Claim(s)
`
`Reference
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`1
`
`1-3
`
`1-3
`
`1-3
`
`4-5
`
`4-5
`
`4-5
`
`
`
`Janssen ‘190
`
`Janssen ‘708 in view of Janssen ‘190
`
`Janssen ‘708 in view of Horii
`
`Janssen ‘708 in view of APA
`
`Janssen ‘708 in view of Janssen ‘190, further in
`
`view of Kubota
`
`Janssen ‘708 in view of Horii, further in view of
`
`Kubota
`
`Janssen ‘708 in view of APA, further in view of
`
`Kubota
`
`In IPR2015-00022, the Sharp petitioners acknowledged the shortcomings of
`
`primary reference Janssen ‘708 and attempted to modify Janssen ‘708 by
`
`secondary references Kubota and, alternatively, APA to disclose thin film
`
`transistors and a plurality of gate drivers. See IPR2015-00022, paper 1 at 44-45;
`
`55. The Board was not convinced of these asserted modifications, and dismissed
`
`the petition in full. See IPR2015-00022, paper 9 at 10-11. Of the seven grounds
`14
`
`
`
`
`now presented by the Petitioners in this Petition, six grounds rely on the rejected
`
`Janssen ‘708 reference from Sharp’s unsuccessful IPR2015-00022 petition as the
`
`primary reference. These six grounds present six redundant and insubstantial
`
`variations on the rejected “Janssen ‘708 + [secondary reference]” grounds from
`
`IPR2015-00022. Indeed, Petitioners even present a challenge based on Janssen
`
`‘708 and APA, one of the exact combinations that was rejected by the Board in
`
`IPR2015-00022. These challenges based on Janssen ‘708 are therefore
`
`substantially similar to the unsuccessful grounds in Sharp’s denied IPR2015-00022
`
`petition and should be dismissed.
`
`Indeed, none of the grounds in this Petition should be instituted for reasons
`
`explained above and below.3
`
`
`
`
`
`c. Despite Sharp’s Earlier Petition Attempt, this Petition Remains
`Deficient in Establishing the Requisite Likelihood of Success
`
`
`3 Patent Owner reserves its right to present further argument and evidence related to
`
`these prior art references and the content of the Petition and supporting Exhibits if
`
`Inter Partes review is instituted, consistent with the Board’s Rules and practice.
`
`No waiver is intended by any argument withheld by Patent Owner at this stage of
`
`the proceeding.
`
`15
`
`
`
`
`The institution of an inter partes review requires Petitioner to establish that
`
`there is a “reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Despite having
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`the opportunity to use the institution denial in IPR2015-00022 as a roadmap,
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`Petitioners have failed to establish a “reasonable likelihood that the petitioner[s]
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`would prevail with respect to at least 1 of the claims challenged in the petition.” 35
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`U.S.C. § 314(a).
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`Janssen ‘190:4 Beginning with Petitioners’ ground 1 against the ‘550
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`patent’s claim 1, a clear substantive defect arises immediately. Janssen ‘190’s Fig.
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`1 discloses an embodiment in which each “Col driver 1” electrically connects the
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`shared transistor sources s of transistors in a column via an electrode 60, while Fig.
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`2 discloses an embodiment in which each “Col driver 1” includes two separate sub-
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`drivers. Janssen ‘190’s implementations of “Col driver 1” are shown below.
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`4 Petitioners claim that Janssen ‘190 was published on June 8, 2001. Pet. at 18.
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`This is not true. Janssen ‘190 was published on December 12, 2002.
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`16
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`
`
`
`FIG. 1
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`FIG. 2
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`
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`According to claim 1 of the ‘550 patent, “the first data lines and the second
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`data lines of each group of data lines are connected with the same source driver.”
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`‘550 patent at 19:63-65. Petitioners cite to Janssen ‘190’s “Col driver 1” of Fig. 2
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`to disclose the “the same source driver” as recited in claim 1 of the ‘550 patent.
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`Pet. at 21. But Janssen ‘190 explains that “Col driver 1” is actually made up of
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`“two separate column sub-drivers, A and B, which divide up the addressing load
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`17
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`
`
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`within a single column.” Ex. 1003 at ¶19. Further, as compared to Janssen ‘190’s
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`Fig. 1, which includes one “Col driver 1” per column (and no sub-drivers), Janssen
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`‘190 explains that Fig. 2 “employs double the number of column drivers 40.” Ex.
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`1003 at ¶19 (emphasis added). This means that, according to Janssen ‘190, “Col
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`driver 1” of Fig. 2 represents “double the number of column drivers 40” as
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`compared to “Col driver 1” of Fig. 1. Since they represent “double the number,”
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`Janssen ‘190 considers each sub-driver as its own driver. Therefore, Petitioners
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`have not presented evidence sufficient to overcome Janssen’s own characterization
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`of the “Col driver 1” as “double the number of column drivers 40” and therefore
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`cannot establish the necessary burden of proof that the first column data lines of
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`Janssen ‘190 are connected to the “same source driver” as required by claim 1.
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`While the Sharp entities failed to include expert testimony in support of their
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`petition in IPR2015-00022, here Petitioners include an expert declaration at Ex.
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`1013. Petitioners’ expert, Dr. Liu, opines that a “POSA would understand that the
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`pair of DACs labeled as a single ‘Col driver’ in [Fig. 2] of Janssen ‘190 is a single
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`source driver for the column.” Pet. at 21; Ex. 1013 at ¶52. But Dr. Liu fails to
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`explain why a person of ordinary skill in the art (“POSA” as used in the Petition
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`and Ex. 1013) would reach that characterization and fails to explain this statement
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`in context of Janssen ‘190. Her statement is presented without any “underlying
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`18
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`
`
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`facts or data” on which the statement is based, in violation of 37 C.F.R. § 42.65(a),
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`and therefore is entitled to little or no weight.
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`Further, Dr. Liu never addresses and reconciles the disclosure of Janssen
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`‘190 that conflicts with her conclusion. Specifically, as noted above, Janssen ‘190
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`explains that the “Col driver 1” of Fig. 2 represents double the number of column
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`drivers 40 as compared to “Col driver 1” of Fig. 1 and therefore considers each
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`sub-driver to be its own driver. Ex. 1003 at ¶19. Dr. Liu provides no explanation
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`how a POSA would interpret Janssen ‘190’s statements, how these statements can
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`be reconciled with Dr. Liu’s conclusion that runs contrary to Janssen’s disclosure,
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`and why these statements would not compel a different conclusion to a POSA
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`since Janssen ‘190 considers the sub-drivers of Fig. 2 to be double in number
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`relative to the one-driver-per-column embodiment of Fig. 1.
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`As already explained, Dr. Liu’s characterization of how a POSA would
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`interpret Janssen ‘190 is entitled to little or no weight since it is presented without
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`any “underlying facts or data” on which the statement is based, in violation of 37
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`C.F.R. § 42.65(a). Additionally, Dr. Liu’s conclusion regarding her interpretation
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`of Janssen ‘190’s sub-drivers in Fig. 2 (showing two DACs connected to two data
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`lines) as one source driver, runs contrary to her opinion in ¶32 of Ex. 1013, where
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`she correlates multiple source drivers to “multiple DACs connected to the data
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`19
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`lines.” Ex. 1013 at ¶32. This further inconsistency renders her testimony entirely
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`unreliable and unhelpful to the Board.
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`Further confusing the issue, though Dr. Liu provides an opinion on the
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`construction of “the source drivers,” she never provides an opinion on the
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`construction of “same source driver” as it appears in both claims 1-2. She
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`acknowledges in ¶28 that the “data driver” term is described in the ‘550 patent, and
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`concludes that the “source driver” and “data driver” can be used interchangeably.
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`Ex. 1013 at ¶28. But Dr. Liu never goes on record with an opinion on the proper
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`construction of “same source driver.” The Petition also fails to present a
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`construction for this term. See Pet. at 11-14. Given the history of Petitioners’ serial
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`attacks against Patent Owner Surpass, one could reasonably wonder if Petitioners
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`(or their co-defendants) are saving this argument for a third round of petitions in
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`the event that second round is also unsuccessful.
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`Petitioners also note that Janssen ‘190 discloses insulated-gate field effect
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`transistors (IGFETS), and argue that a POSA “understood that a TFT is a form of
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`IGFET transistor.” Pet. at 19-20. But the citations that follow do not compel
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`Petitioners' conclusion. Rather, Ex. 1012 at 244, Ex. 1015 at 334, and Ex. 1013 at
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`¶50 support the conclusion that a TFT is an IGFET, but do not support that every
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`IGFET is a TFT. For example, Ex. 1015 states that a “TFT is an IGFET” but does
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`not disclose the contrary. Dr. Liu tries to shore up the defect, stating that “a POSA
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`20
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`
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`would understand the IGFETs of Janssen ‘190 to be thin film transistors because
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`‘LCD devices, such as high definition television’ disclosed in Janssen ‘190 would
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`require TFTs due to the large panel sizes of such devices.” Ex. 1013 at ¶50
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`(quoting Janssen ‘190 at ¶3). This statement falls short of convincing testimony.
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`Janssen ‘190’s paragraph 3 appears in the Background of the Invention and simply
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`mentions the high definition television as a modern use of LCD devices. This
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`statement of Janssen ‘190 does not link Janssen ‘190’s Fig. 2 to the use of high
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`definition televisions. Further, neither this statement nor Janssen ‘190’s Fig. 2 is
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`described as having a large panel size. Effectively, Dr. Liu draws a conclusion
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`about the type of IGFET used in Janssen ‘190 based on unsupported assumptions
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`of Janssen’s use and implementation characteristics. Dr. Liu’s final statement in
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`¶50 takes this unsupported assumption even further, and reveals a further defect in
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`her reasoning. There, she states that “[b]y the time the Janssen ‘190 reference was
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`filed in 2001, the transistors in flat panel high definition LCD displays were
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`normally TFTs because TFTs are compatible with fabrication on large area glass or
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`quartz substrates.” Ex. 1013 at 33. Once again, she is imposing unsupported and
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`undisclosed assumptions on the use and dimension of Janssen ‘190’s Fig. 2 device,
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`and then drawing conclusions from the unsupported assumptions.
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`Here, by claiming that the transistors were “normally TFTs,” her testimony
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`also rings of inherency. For a theory of inherency to succeed, it is not enough that
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`21
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`the missing disclosure could be present. Rather, the missing disclosure must
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`nec
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