UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`_______________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioners
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00913
`Patent 7,420,550
`
`_______________
`
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`PRELIMINARY RESPONSE
`
`
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`_______________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioners
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00913
`Patent 7,420,550
`
`_______________
`
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`
`
`Introduction .......................................................................................................... 1
`I.
`a. The Serial Nature of This Petition is an Abuse of the Administrative Process
`
`1
`b. Petitioners’ Grounds of Challenge Raise New Art that was in Petitioners’
`Possession Prior to Filing IPR2015-00022, and Rehash Unsuccessful Art and
`Arguments Already Considered by the Board ........................................................ 5
`II. Background ........................................................................................................ 23
`a. About U.S. Patent No. 7,420,550 (the “‘550 patent” or “Shen”) ................... 23
`b. The Independent Claims at Issue .................................................................... 25
`III. Conclusion ...................................................................................................... 28
`
`ii
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Co.,
` IPR2014-00628, paper 23 (PTAB 3/20/2015) .................................. 16, 17, 20, 22
`Jiawei Technology (HK) Ltd., et al. v. Richmond,
` IPR2015-00580, paper 22 (PTAB 5/2/2015) ............................................... 17, 21
`Samsung Electronics Co., Ltd. et al. v. Affinity Labs of Texas, LLC,
` IPR2015-00821, paper 10 (PTAB 5/15/2015) .................................................... 21
`Unilever, Inc. dba Unilever v. The Proctor & Gamble Co.,
` IPR2014-00506, paper 17 (PTAB 7/7/2014) ...................................................... 23
`VMware, Inc. v. Electronics and Telecommunications Research Institute,
` IPR2014-00901, paper 7 (PTAB 7/14/2014) ...................................................... 22
`ZTE Corp. v. ContentGuard Holdings, Inc.,
` IPR2013-00454, paper 12 (PTAB 9/25/2013) .................................................... 22
`Statutes
`
`35 U.S.C. § 325(d) ........................................................................................... passim
`Rules
`
`37 C.F.R. § 42.1(b) .................................................................................................. 16
`
`
`
`
`
`iii
`
`
`
`
`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
`
`
`
`
`Exhibit
`
`2001
`
`
`2002
`
`
`2003
`
`
`
`iv
`
`
`
`
`IPR2015-00913
`U.S. Patent No. 7,420,550
`
`
`
`I.
`
`Introduction
`
`
`
`a. The Serial Nature of This Petition is an Abuse of the Administrative
`Process
`
`
`
`The Sharp entities (the “Sharp 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 20, 2015. But this filing is the second attempt by the Sharp Petitioners
`
`to challenge the validity of the ‘550 patent within a six-month period, and
`
`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”).
`
`On October 3, 2014, the Sharp Petitioners 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 Petitioners moved for a
`
`stay of the pending litigation between the Sharp Petitioners 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-defendants Sony Corporation (“Sony”), Samsung
`
`Electronics Co., Ltd. and Samsung Display Co., Ltd. (collectively, “Samsung”),
`
`and LG Display Co., Ltd. (“LG”) 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 Petitioners 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
`
`
`be denied in full. Background information regarding the ‘550 patent and its claims
`
`is provided in Section II.
`
`2
`
`
`
`
`defendants are benefited by prolonging the period during 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 Sharp’s co-defendants Sony and
`
`Samsung moved for a stay pending Sharp’s IPR requests, on November 13, 2014,
`
`counsel of record in IPR2015-00887 against the ‘550 patent, and IPR2015-00862
`
`and -00863 against the ‘843 patent, 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 at 1. As the title suggests, that blog
`
`post discussed the Board’s treatment of redundant grounds filed over multiple
`
`review of multiple petitions filed against common 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.” What followed is a perfect example
`
`of Sharp, Sony, Samsung, and LG’s attempt 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
`
`Petitioners’ IPR2015-00022 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
`
`3
`
`
`
`
`Petitioners’ IPR2015-00021 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 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 Board’s 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,
`
`Samsung, Sony, and the Sharp Petitioners (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
`
`out one co-defendant petitioner for another in this second round falls far short of
`
`4
`
`
`
`
`being creative. It is against the Board’s policy to allow second—and third and
`
`fourth—bites at the apple, particularly where the second 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 the co-defendant petitioners and the Sharp Petitioners stand in the
`
`same shoes as bringing abusive and redundant challenges to the Board.
`
`
`
`
`
`b. Petitioners’ Grounds of Challenge Raise New Art that was in
`Petitioners’ Possession Prior to Filing IPR2015-00022, and
`Rehash Unsuccessful Art and Arguments Already Considered by
`the Board
`
`The asserted grounds identified in the Petition rely upon three prior art
`
`references in four challenges. None of these grounds should be instituted. The
`
`purported grounds of rejection are as follows:
`
`
`
`5
`
`
`
`
`Ground Claim(s)
`
`Reference
`
`1
`
`2
`
`3
`
`4
`
`1-3
`
`Anticipated by the “Sharp Reference”
`
`1-3 and 5
`
`Obvious over the “Sharp Reference”
`
`1-5
`
`1-5
`
`
`
`Obvious over the “Sharp Reference” in view of
`
`Kamizono
`
`Obvious over Shimada in view of Kamizono
`
`In the other Second Round Petitions, 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. The Sharp Petitioners fare no better in this regard. The Sharp
`
`Petitioners allege in this second Petition (IPR2015-00913) against the ‘550 patent
`
`that the “present Petition relies on completely new grounds, as it includes prior art
`
`which [the Sharp] Petitioners were not aware of at the time that the earlier petition
`
`was filed.” Pet. at 8 (emphasis added). This statement was submitted without any
`
`declaration or evidence to substantiate these asserted facts.
`
`Even more remarkably, the Sharp Petitioners go on to describe this allegedly
`
`new prior art, which is relied upon for the first three of four grounds, as the “Sharp
`
`6
`
`
`
`
`Reference” because it is “owned by Petitioner Sharp Corporation.” Id. at 4
`
`(emphasis added). If the Sharp Petitioners were not aware of this reference at the
`
`time the earlier petition was filed, as alleged by counsel, the only explanation is
`
`Sharp Corporation’s lack of diligent searching during the preparation of the First
`
`Round Petitions. No second bite at the apple should be given to Sharp under such
`
`circumstances.
`
`Further, the references in the other 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 Display Co., Ltd., is assigned to Samsung Electronics Co., Ltd., which
`
`is the co-petitioner in the IPR2015-00862, -00863, and -00887 petitions. The Ham
`
`reference used in IPR2015-00863 filed by Samsung and Sony was assigned to LG
`
`Display Co., Ltd., the petitioner in IPR2015-00885.2 The Kubota reference in
`
`IPR2015-00887 filed by Samsung and Sony was assigned to Sharp’s Japanese
`
`entity, Sharp Kabushiki Kaisha (aka Sharp Corporation), the current case’s
`
`Petitioner. No representations are made in the Second Round Petitions that these
`
`other references were not known or available to the parties at the time of Sharp’s
`
`2 This Ham reference is also the parent application of the Ham reference used by
`
`the Sharp Petitioners in IPR2015-00021.
`
`7
`
`
`
`
`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. For example, in IPR2015-
`
`00885 filed against the ‘843 patent, petitioner LG bases three of four challenges on
`
`references that were previously asserted (and denied) in IPR2015-00021 (see, e.g.,
`
`IPR2015-00885, paper 2 at 40-60, basing three of four challenges on the already-
`
`rejected Jinda and Miyai references). Similar overlaps occur in the challenges of
`
`the ‘550 patent. 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 a First Round Petition and a Second Round Petition:
`
`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
`
`8
`
`
` U.S. Patent No.
`
`6,407,795 to
`
`Kamizono et al.
`
`
`
` U.S. Patent No.
`
` U.S. Patent Appl.
`
`(“Kamizono”)
`
`6,300,927 to
`
`Pub. No.
`
` Japanese Patent
`
`Kubota et al. (Ex.
`
`2002/0186190 to
`
`Application
`
`1004) (“Kubota”)
`
`Janssen et al.
`
`Publication No.
`
` Background of
`
`(“Janssen ’190”)
`
`H08-305322 and
`
`‘550 patent
`
` Japanese Patent
`
`Certified English
`
`(“Admitted Prior
`
`Application
`
`Translation Thereof
`
`Art” or “APA”)
`
`Publication No. 2-
`
`(“Sharp
`
` International
`
`214818 by Horii et
`
`Reference”)
`
`Publication No.
`
`al. (“Horii”)
`
`WO 02/075708 to
`
`Janssen et al. (Ex.
`
`1003) (“Janssen
`
`‘708”)
`
` U.S. Patent No.
`
`6,157,056 to
`
`Takeuchi et al. (Ex.
`
`1005) (“Takeuchi”)
`
`
`
`9
`
`
`
`
`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 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, IPR2015-00887
`
`presents seven grounds, six of which are obviousness challenges based on the
`
`prior-considered and unsuccessful Janssen ’708 reference as a primary reference
`
`(grounds 2-7), and four of which are obviousness challenges based on the prior-
`
`considered APA and/or Kubota references (grounds 4-7). The remaining
`
`challenges based on Janssen ‘708 (grounds 2-3) are insubstantial modifications of
`
`the already-rejected challenges based on Janssen ‘708 from IPR2015-00022.
`
`In this case IPR2015-00913, the Shimada reference is again relied upon as
`
`the basis of an obviousness challenge despite the Board denying a substantially
`
`similar challenge in IPR2015-00022. Moreover, under detailed scrutiny of the
`
`grounds in this Petition, it is clear that all grounds presented raise substantially the
`
`same art and arguments as the Shimada-based grounds denied-in-full in IPR2015-
`
`00022. This similarity compels dismissal of these grounds of the Petition under 35
`
`U.S.C. § 325(d).
`
`10
`
`
`
`
`In IPR2015-00022, the Sharp Petitioners presented six grounds of challenge,
`
`including the following grounds 1-2 based on Shimada, without any supporting
`
`expert declaration:
`
`
`
`Ground Claims Challenge
`
`Outcome in IPR2015-00022
`
`1
`
`1-5
`
`Obvious over
`
`“Petitioner acknowledges that Shimada fails
`
`Shimada +
`
`to disclose ‘multiple, individual gate drivers
`
`Kubota
`
`and source drivers housed within’ ‘Gate
`
`2
`
`1-3
`
`Obvious over
`
`Driving Circuit’ 109 and ‘Driving Circuit’
`
`Shimada +
`
`108, and, therefore, cannot teach all the
`
`APA
`
`features of the ‘550 patent’s claims 1–5 on its
`
`own. Pet. 30.” See paper 9 at 8.
`
`Petitioner fails to “support the conclusion that
`
`it would have been obvious to one of ordinary
`
`skill in the art to have modified Shimada with
`
`either Kubota or APA.” Id. at 9.
`
`
`
`Using the Board’s decision in IPR2015-00022 as guidance, Sharp Petitioners
`
`have come back for another chance, now armed with an expert declaration,
`
`11
`
`
`
`
`proposed claim constructions for “gate drivers” and “source drivers,” and an
`
`allegedly new reference called the “Sharp Reference.” Each of these strategies
`
`could have been, but was not, presented in IPR2015-00022. Further, the challenges
`
`in IPR2015-00913 are still trying to resolve the same deficiencies noted above with
`
`respect to Shimada in IPR2015-00022. Thus, here the Sharp Petitioners present the
`
`following substantially similar challenges as those rejected Shimada challenges
`
`from IPR2015-00022, namely the disclosure of “multiple, individual gate drivers
`
`and source drivers” according to Sharp’s newly-presented claim construction
`
`positions:
`
`Ground Claims Challenge
`
`IPR2015-00913 Argument
`
`1
`
`1-3
`
`Anticipated
`
`Petitioners argue that “Figure 10 of the Sharp
`
`by the “Sharp
`
`Reference unequivocally shows the claimed
`
`Reference”
`
`‘gate drivers,’ under the broadest reasonable
`
`construction discussed above” (see Pet. at
`
`25), and “Annotated Figure 10 also shows
`
`more than one source driver, as required by
`
`the broadest reasonable construction of
`
`‘source drivers.’” See Pet. at 26.
`
`12
`
`
`
`
`2
`
`1-3
`
`Obvious over
`
`Petitioners argue that “there are no
`
`and 5
`
`the “Sharp
`
`unexpected results stemming from the use of
`
`Reference”
`
`multiple source and gate driver circuits as in
`
`Figure 10 of the Sharp Reference, compared
`
`to the use of a single source and gate driver
`
`circuit.” See Pet. at 34.
`
`3
`
`1-5
`
`Obvious over
`
`Petitioners argue to modify “the LCD driving
`
`the “Sharp
`
`device of the Sharp Reference to include the
`
`Reference” in
`
`multiple source and gate driver ICs of
`
`view of
`
`Kamizono” in the Petition. See Pet. at 52.
`
`Kamizono
`
`4
`
`1-5
`
`Obvious over
`
`Petitioners argue to modify “the LCD driving
`
`Shimada in
`
`device of Shimada to include the multiple
`
`view of
`
`source and gate driver ICs of Kamizono” in
`
`Kamizono
`
`the Petition. See Pet. at 51.
`
`
`
`As is evident above, the fourth challenge in the current Petition is based
`
`upon Shimada as modified by a second reference in the substantially same manner
`
`advanced (and rejected) in IPR2015-00022. Shimada is the same art Sharp used
`
`13
`
`
`
`
`previously (and unsuccessfully) in Grounds 1-2 of IPR2015-00022, and they are
`
`back again before the Board with substantially the same arguments. In each
`
`challenge, the Sharp Petitioners specifically seek to modify Shimada’s source and
`
`gate drivers with those of another reference. Compare Pet. at 51 (relying on
`
`Kamizono as the second reference) with IPR2015-00022 Pet. at 30, 39 (relying
`
`alternately on Kubota and Admitted Prior Art as the secondary reference). Thus,
`
`Shimada is the same art in both cases, and in both instances the Sharp Petitioners
`
`seek to modify Shimada in substantially the same way with substantially similar
`
`art. Just as in IPR2015-00022, this tactic should result in the same result: dismissal.
`
`This fourth ground should be dismissed under 35 U.S.C. § 325(d).
`
`Looking to the first three challenges in the current Petition, each is founded
`
`upon the Sharp Reference, which was available to the Sharp Petitioners and could
`
`have been used in the First Round Petitions but was not. Moreover, the Sharp
`
`Reference is relied upon by the Sharp Petitioners along with substantially the same
`
`arguments as those advanced for Shimada. Grounds 1-3 of the -00913 Petition
`
`show in fact that the Sharp Petitioners have advanced three alternate theories for
`
`the Sharp Reference in order to incorporate the claimed “source drivers” and “gate
`
`drivers” of the ‘550 patent claims. The first ground contends that the Sharp
`
`Reference discloses these “drivers” features as they would be understood by a
`
`person of ordinary skill in the art according to Sharp’s new claim construction
`
`14
`
`
`
`
`positions (Pet. at 26-27); the second ground advances the theory that it would have
`
`been obvious to modify the Sharp Reference to include these “drivers” features
`
`(Pet. at 36); and the third ground looks to a secondary reference to support such a
`
`modification of the Sharp Reference (Pet. at 40). Thus, Petitioners present the
`
`Sharp Reference for substantially the same reason and in support of the
`
`substantially same arguments as those presented in the fourth ground with Shimada
`
`here, and as those unsuccessfully presented in IPR2015-00022’s grounds 1-2. This
`
`similarity further compels dismissal of the -00913 Petition under 35 U.S.C. §
`
`325(d).
`
`Board policy further supports dismissal of the Second Round Petitions under
`
`35 U.S.C. § 325(d). As discussed above, IPR2015-00913 presents three of its four
`
`challenges based on its own Sharp Reference, assigned to Petitioner Sharp
`
`Corporation. Without declaration evidence or further explanation, the Sharp
`
`Petitioners simply state that they were “not aware of [the Sharp Reference] at the
`
`time that the earlier petition was filed.” Pet. at 8. But the mere fact that the Sharp
`
`Reference is owned by Petitioner Sharp Corporation indicates instead that it was
`
`available and in the hands of the Sharp Petitioners with reasonable searching
`
`diligence.
`
`As the Board has recognized previously, the granting of these successive
`
`petitions “would incentivize petitioners to hold back prior art for successive attacks,
`
`15
`
`
`
`
`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
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`litigation. The mechanism at play here converts the Board from a venue for "just,
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`speedy, and inexpensive resolution of every proceeding" as specified in 37 C.F.R.
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`§ 42.1(b), into an avenue for abuse of the administrative process for a patent
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`owner, and works against rather than for the efficient and economical use of Board
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`and party resources.
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`This particular batch of cases reveals another practical danger. The First
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`Round Petitions included no expert declaration. Only after the Board decided
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`IPR2015-00022 did the Sharp Petitioners, Sony, Samsung, and LG see the areas in
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`which the Board identified the need for expert support beyond mere attorney
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`argument. Thus, these parties were not only able to hold back prior art for
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`successive attacks in the event of an unsuccessful first attempt, but were able to
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`hold back on the use of an expert until they learned the arguments that required
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`further evidentiary support according to the Board.
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`16
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`
`
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`Recognizing these dangers, the Board has spoken to such strategies and
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`denied institution in follow-on petitions where the petitioner “uses our prior
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`Decision on Institution to bolster challenges that were advanced, unsuccessfully,
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`in” the prior petition. See Jiawei Technology (HK) Ltd., et al. v. Richmond,
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`IPR2015-00580, paper 22 at 7 (PTAB 5/2/2015); see also Conopco, Inc. dba
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`Unilever v. The Proctor & Gamble Co., IPR2014-00628, paper 23 at 5 (rejecting
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`an approach that “would allow petitioners to unveil strategically their best prior art
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`and arguments in serial petitions, using our decisions on institution as a roadmap,
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`until a ground is advanced that results in review—a practice that would tax Board
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`resources, and force patent owners to defend multiple attacks.”). Such a practice
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`was deemed by the Board as “abuse of the administrative process.” Id. The Second
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`Round Petitions stand as a perfect example of such abusive filings. While
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`IPR2015-00022 was filed with just 6 supporting exhibits, IPR2015-00887 against
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`the ‘550 patent includes 15 exhibits and IPR2015-00913 includes 9 exhibits. In
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`sheer numbers alone (without regard for page count), the Second Round Petitions
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`are supported by 400% of the evidence compared to the First Round Petitions.
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`Additionally, Petitioners’ drifting views on Shimada in its two petitions
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`against the ‘550 patent are revealing. In IPR2015-00022, Petitioners presented the
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`following annotation to Shimada, with the two data lines extending up to video
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`signal line 112:
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`17
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`
`
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`See IPR2015-00022, paper 1 at 4. Patent Owner Surpass responded that Sharp
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`Petitioners characterized the data bus lines 102a and 102b as the first and second
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`data lines, including the portions of these lines beginning at their connection to
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`
`
`18
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`
`
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`video signal line 112 and extending all the way down to just before their respective
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`connections to capacitors C1. Therefore, by Petitioner’s own words and argument,
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`the first and second data bus lines 102a and 102b are commonly connected to the
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`same video line. Under Petitioner’s own characterizations of this reference,
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`Shimada’s first and second data bus lines 102a and 102b are not “insulated from
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`each other” as required by the challenged claims. See IPR2015-00022, paper 8 at
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`13-14.
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`
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`Now, in IPR2015-00913, the Sharp Petitioners have been educated on the
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`deficiency of their original theory and present an alternate interpretation of
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`Shimada, one that could have been presented in the first petition but was not:
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`19
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`
`
`
`
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`Pet. at 48. As is evident above, the Sharp Petitioners have modified their theory so
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`that the portions of data bus lines 102a and 102b connecting to video signal line
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`112 are now being characterized as “switches” to avoid Patent Owner Surpass’s
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`argument from the IPR2015-00022 preliminary response. Just as in Conopco, Inc.
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`dba Unilever, the Sharp Petitioners have unveiled their theories in serial petitions,
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`using their failures from the prior case as a roadmap.
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`20
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`
`
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`Jiawei Technology is also instructive. There, the second petition included a
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`claim construction that petitioner “could have offered” but did not in the first
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`petition. Jiawei Technology , paper 22 at 5. That strategy, explained the Board,
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`amounted to a “second bite at the apple” and contrary to policy. Id. at 5, 7.
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`Additionally, references in the second petition “were available to Petitioner at the
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`time of filing the earlier Petition.” Id. at 4. Like in Jiawei Technology, here the
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`Sharp Petitioners base three of four challenges on a reference they call the Sharp
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`Reference. See also Samsung Electronics Co., Ltd. et al. v. Affinity Labs of Texas,
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`LLC, IPR2015-00821, paper 10 at 4 (PTAB 5/15/2015) (“Petitioner articulates no
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`persuasive reason why, using reasonable efforts, the [new] reference could not
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`have been identified and relied upon in the earlier, timely-filed petitions.”).
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`Further, although the Sharp petitioners could have presented a claim construction
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`argument for “gate drivers” and “source drivers” in IPR2015-00022, they elected
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`not to do so. Now, having recognized the defects in IPR2015-00022, the Sharp
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`Petitioners are taking their second bite with a claim construction argument and
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`references that could have been presented in IPR2015-00022. See Pet. at 21-22.
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`Denial by the Board of the Petitions in both IPR2015-00887 and IPR2015-
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`00913 is the proper result since a denial “removes an incentive for petitioners to
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`hold back prior art for successive attacks from multifarious attacks on the same
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`patent claims.” Conopco, Inc. d/b/a Unilever v. The Procter & Gamble Co.,
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`21
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`
`
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`IPR2014-00628, paper 23 at 5; see also ZTE Corp. v. ContentGuard Holdings,
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`Inc., IPR2013-00454, paper 12 at 5-6 (PTAB 9/25/2013) (“The Board is concerned
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`about encouraging, unnecessarily, the filing of petitions which are partially
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`inadequate.”). Moreover, the Board’s rules do not permit a petitioner to file a reply
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`after patent owner’s preliminary response and before the Board decides whether to
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`institute an inter partes review. But by this repeated attack on the ‘550 patent, the
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`Sharp Petitioners have, in effect, rewritten the Board’s rules to create a procedural
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`opportunity to not only respond to Patent Owner’s IPR2015-00022 Preliminary
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`Response but also present new evidence and arguments in a second chance filing
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`of 60 pages3 and seek the Board’s reconsideration on Shimada. The Board should
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`not permit this effective high-jacking of 37 C.F.R. § 42.1 et seq.
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`3 This second petition by Sharp Petitioners is not only 60 pages long, but again is
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`rife with single-spaced argument in the claim charts. See Pet. at 30-31, 33, 44-47,
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`and 55-59. This argument effectively provides the Sharp Petitioners with more
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`than 60 pages of argument, and should be disregarded in full. “If there is any need
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`to explain how a reference discloses or teaches a limitation, that explanation must
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`be elsewhere in the petition—not in a claim chart.” VMware, Inc. v. Electronics
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`and Telecommunications Research Institute, IPR2014-00901, paper 7 at 2-3
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`(PTAB 7/14/2014)
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`
`
`22
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`
`
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`Accordingly, this Petition for inter partes review of the ‘550 patent should
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`be denied and no trial instituted pursuant to 35 U.S.C. § 325(d). Under that statute,
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`the Board has broad discretion to deny a petition that raises “substantially the same
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`prior art or arguments previously presented to the Office.” Unilever, Inc. dba
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`Unilever v. The Proctor & Gamble Co., IPR2014-00506, paper 17 at 6 (PTAB
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`7/7/2014). This case and IPR2015-00887 are textbook examples of the situation for
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`which § 325(d) exists.4
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`Background
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`a. About U.S. Patent No. 7,420,550 (the “‘550 patent” or “Shen”)
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`II.
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`
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`The ‘550 patent was filed as U.S. Patent application no. 10/929,473 on
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`August 31, 2004. The title of the ‘550 patent is “LIQUID CRYSTAL DISPLAY
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`DRIVING DEVICE OF MATRIX STRUCTURE TYPE AND ITS DRIVING
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`METHOD.” The ‘550 patent specifically discloses a matrix structure arrangement
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`4 Patent Owner reserves its right to present further argument and evidence related to
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`these prior art references and the content of the Petition and supporting Exhibits if
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`Inter Partes review is instituted, consistent with the Board’s Rules and practice.
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`No waiver is intended by any argument withheld by Patent Owner at this stage of
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`the proceeding.
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`23
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`
`
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`for a liquid crystal display (LCD) panel in which pixels are arranged in rows and
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`columns. An example of this structure is shown below as Fig. 4A and Fig. 4B of
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`the ‘550 patent:
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`
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`As shown in Fig. 4A and Fig. 4B, data lines D1, D1’, D2 … are connected to
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`source drivers, and the data lines are grouped in pairs, such as D1 and D1’. A single
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`pair
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