UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`LG DISPLAY CO., LTD.,
`Petitioner
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`v.
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`SOLAS OLED, LTD.,
`Patent Owner
`____________
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`Case IPR2020-01055
`U.S. Patent No. 7,907,137
`____________
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`PATENT OWNER PRELIMINARY RESPONSE
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
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`LG DISPLAY CO., LTD.,
`Petitioner
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`____________
`
`Case IPR2020-01055
`U.S. Patent No. 7,907,137
`____________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
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`Table of Contents
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`I. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ............................................. 1
`A. Factor 1 weighs against institution, as no court has granted a stay and no
`evidence exists that a stay may be granted. ........................................................... 2
`
`B. Factor 2 weighs strongly against institution, as the WDTex trial is scheduled
`to begin nine months before the FWD deadline. ................................................... 3
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`C. Factor 3 weighs strongly against institution, as the WDTex court and parties
`will have completed fact discovery and expert reports on the ’137 patent. .......... 4
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`D. Factor 4 weighs strongly against institution, as there is substantial overlap
`between this IPR and district court proceedings ................................................... 9
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`E. Factor 5 weighs against institution, as Petitioner is a Defendant in the
`WDTex case and closely related to the other Defendants. .................................. 13
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`F. Factor 6 weighs against institution, as the Petition suffers from several
`weaknesses that apply to all grounds and claims. ............................................... 14
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`1. Miyazawa fails to disclose “detecting a threshold voltage” (Claims 1, 9,
`36, 37, 39) or “a threshold voltage detection circuit which detects a threshold
`voltage” (Claims 10, 11, 15) ............................................................................ 15
`2. The combination of Miyazawa with Childs is flawed. ............................. 16
`G. Summary of Factors and Conclusion ........................................................... 18
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`II. PETITIONER SHOULD NOT BE ALLOWED A REPLY ............................ 19
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`
`
`i
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`PATENT OWNER’S EXHIBIT LIST
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`2002
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`
`Exhibit No. Description
`2001
`Scheduling Order, Solas OLED Ltd. v. LG Display Co., Ltd., LG
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`Electronics, Inc., and Sony Corporation, Case No. 6:19-cv-236-
`ADA (“Solas v. LG”), Dkt. 59 (W.D. Tex., Dec. 21, 2019)
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`Solas’s preliminary infringement contentions cover pleading in
`Solas v. LG served on November 26, 2019
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`Defendants’ preliminary invalidity contentions cover pleading
`and exhibit charts C1 and C3 in Solas v. LG served on January 24,
`2020
`
`Order Setting Jury Selection and Trial, Solas v. LG, Dkt. 86
`(W.D. Tex. Aug. 20, 2020)
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`Defendants’ final invalidity contentions cover pleading and
`exhibit charts C1 and C3 in Solas v. LG served on July 31, 2020
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`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`
`Joint Claim Construction Statement, Solas v. LG, Dkt. 76 (W.D.
`Tex. May 1, 2020)
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`Defendant LG Display’s initial disclosures in Solas v. LG served
`on May 29, 2020
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`i
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`One of the primary objectives of the AIA was “to provide an effective and
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`efficient alternative to district court litigation.” But this IPR cannot be an alternative
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`(much less an effective and efficient one) to a WDTex trial between Petitioner and
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`Patent Owner scheduled to start nine months before the FWD deadline. The parties
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`have invested heavily in that case and at the time of the institution decision, the
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`parties will have completed fact discovery and expert reports. Further, the WDTex
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`case and scheduled trial involves the same claim construction standard, same
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`challenged claims, same invalidity theories, and same prior art references and
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`combinations as this IPR. Under the PTAB’s precedential orders in NHK Spring and
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`Fintiv, the Board should deny institution under § 314(a).
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`I.
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`ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION
`35 U.S.C. § 314(a) gives the Board discretion to deny institution because of
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`because of the advanced state of parallel proceedings on the same patent. See NHK
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`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
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`2018) (precedential, designated May 7, 2019) (“NHK Spring”). The PTAB recently
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`promulgated six factors for determining whether discretionary denial due to the
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`advanced state of parallel proceedings is appropriate (the “Fintiv factors”):
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`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
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`1
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`
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`3. investment in the parallel proceeding by the court and the parties;
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`4. overlap between issues raised in the petition and in the parallel
`proceeding;
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`5. whether the petitioner and the defendant in the parallel proceeding are
`the same party; and
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`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
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`Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
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`(precedential, designated May 5, 2020) (“Fintiv Order”) at 6; Apple Inc., v. Fintiv,
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`Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (order denying institution)
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`(“Fintiv ID”) at 7–8. Here, all six Fintiv factors weigh against institution.
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`A.
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`Factor 1 weighs against institution, as no court has granted a stay
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`and no evidence exists that a stay may be granted.
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`Factor 1 concerns whether the court granted a stay or evidence exists that one
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`may be granted if a proceeding is instituted. Fintiv Order at 6; Fintiv ID at 12. This
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`factor weighs against institution. There is one case, Solas v. LG in WDTex, that
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`implicates the ’137 patent. That case is proceeding to trial in March 2020, and there
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`is no evidence it will be stayed. See Ex. 2004 (Order Setting Trial)
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`Defendants have never moved for a stay, likely because Judge Albright rarely
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`grants stays pending IPR. See Ex. 2006 (Law360 Article: West Texas Judge Says
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`He Can Move Faster Than PTAB) (Judge Albright: “It’s my job to give people the
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`opportunity to have their cases tried in a federal court . . . and I probably can get a
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`2
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`patent trial resolved more quickly than the PTAB can.”). Further, by the institution
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`decision deadline—December 17, 2020—the parties will have completed fact
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`discovery and expert reports. See Ex. 2001 (Scheduling Order) at 3 (close of fact
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`discovery October 30, 2020; opening expert reports November 6, 2020; and rebuttal
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`expert reports December 4, 2020).
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`It’s highly unlikely that Judge Albright would entertain a stay at that late
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`juncture, especially since there would be no instituted IPRs on at least one patent.
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`One of three asserted patents—the ’068 patent—is not expected to receive an
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`institution decision until January 8, 2021. That would be only two months before
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`trial and when the parties are in the midst of MSJ and Daubert briefing. See Ex. 2001
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`(Scheduling Order) at 3 (motions deadline January 15, 2021).
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`Because there is no evidence that the WDTex case will be stayed, Factor 1
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`weighs against institution.
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`B.
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`Factor 2 weighs strongly against institution, as the WDTex trial is
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`scheduled to begin nine months before the FWD deadline.
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`Factor 2 relates to proximity of the court’s trial date to the Board’s projected
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`statutory deadline for a final written decision. Fintiv Order at 9; Fintiv ID at 12. The
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`statutory deadline for this FWD is December 17, 2021. Meanwhile, the parallel
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`WDTex trial on the ’137 patent is set for March 29, 2021.
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`3
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Thus, the district court trial will start nine months before the FWD deadline.
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`Under Factor 2, this weighs strongly against institution. See Fintiv Order at 9 (“If
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`the court’s trial date is earlier than the projected statutory deadline, the Board
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`generally has weighed this fact in favor of exercising authority to deny institution
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`under NHK.”); Fintiv ID at 13 (finding a much shorter two-month gap between trial
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`and FWD to “weigh[] somewhat” in favor of discretionary denial).
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`There’s no reason to believe the March 2021 trial will be postponed. See Fintiv
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`ID at 13 (“We generally take courts’ trial schedules at face value absent some strong
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`evidence to the contrary.”). Thus, Factor 2 weighs strongly against institution.
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`C.
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`Factor 3 weighs strongly against institution, as the WDTex court
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`and parties will have completed fact discovery and expert reports
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`on the ’137 patent.
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`Factor 3 relates to investment in the parallel proceeding by the court and the
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`parties. Fintiv Order at 9; Fintiv ID at 14. Importantly, this factor is analyzed from
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`the time of the institution decision, which here is due December 17, 2021. By that
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`time, the parties will have completed fact discovery and expert reports in the WDTex
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`case, and be nearing the close of expert discovery. See Ex. 2001 (Scheduling Order)
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`at 3 (close of fact discovery October 30, 2020; rebuttal expert reports December 4,
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`2020; and close of expert discovery December 23, 2020). And at least the following
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`efforts have been or will be directed to the ’137 patent (see Ex. 2001):
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`4
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Court and Parties’ Investment in ’137 Patent
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`Date
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`Solas serves infringement contentions on ’137 patent
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`Nov. 26, 2019
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`Defendants serve invalidity contentions on ’137 patent
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`Jan. 24, 2020
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`May 2020
`
`reply claim
`responsive, and
`Parties complete opening,
`construction briefs;
`four expert declarations on claim
`construction; two expert depositions on claim construction;
`technology
`tutorials; and Markman hearing
`slides—all
`substantially addressing ’137 patent (WDTex Case, Dkt. Nos. 67–
`74 (briefing); 67-2, 68-2, 70-1, 71-2 (expert declarations); 73-3,
`74-3 (expert deposition transcripts); 80–81 (hearing slides))
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`Court conducts Markman hearing
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`May 22, 2020
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`Court issues Markman order (WDTex Case, Dkt. 82)
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`June 6, 2020
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`Parties serve final infringement and invalidity contentions on ’137
`patent
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`July 31, 2020
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`Parties complete fact discovery1 on ’137 patent
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`Oct. 30, 2020
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`1 For example, on September 16, 2020, Solas conducted the deposition of Defendant
`LG Display’s sole witness (Hak-Soo Kim) identified as knowledgeable about “prior
`art.” See Ex. 2008 (LG Display’ Initial Disclosures) at 5. Defendants have also
`sought extensive third party discovery and depositions of the original assignee of the
`’137 patent (Casio Computer Co., Ltd.) and the named inventors of the ’137 patent
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`5
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Court and Parties’ Investment in ’137 Patent
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`Parties serve opening infringement and invalidity expert reports
`on ’137 patent
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`Date
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`Nov. 6, 2020
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`Parties serve rebuttal non-infringement and validity expert reports
`on ’137 patent
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`Dec. 4, 2020
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`Deadline for Institution Decision
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`Parties complete expert depositions on ’137 patent
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`Dec. 17, 2020
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`Dec. 23, 2020
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`
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`Indeed, the court and parties have already invested heavily in the ’137 patent
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`through extensive Markman proceedings disputing seven terms from the ’137 patent,
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`as well as exchanging initial infringement and invalidity contentions. See Ex. 2008
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`(Joint Claim Construction Statement) at 1–2. This investment will only accelerate in
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`the next few months though completing discovery and expert reports.
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`
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`This level of investment is far greater than in the Fintiv v. Apple case where
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`at the time of institution, fact discovery was still “in its early stages.” Fintiv ID at
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`14. This isn’t surprising because, as Fintiv recognizes, the level of investment is
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`closely related to proximity to trial. See Fintiv Order at 7, 9. Whereas the institution
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`decision in Fintiv arrived ten months before the scheduled trial, here it would arrive
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`(Tomoyukia Shirasaki and Jun Ogura). See WDTex Case, Dkt Nos. 96–97, 99, 101–
`102, 104 (motions for issuance of letters rogatory).
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`6
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`three months before. See id. at 12–13. Thus, far less work effort will remain to be
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`expended before trial. Thus, whereas Factor 3 in Fintiv “weighed somewhat in favor
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`of discretionary denial,” here it weighs strongly. See id. at 14.
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`
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`Further, the facts surrounding the Petition’s timing also support discretionary
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`denial. In the WDTex case, Solas served infringement contentions listing asserted
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`claims on November 26, 2019. See Ex. 2002. The Court entered the scheduling order
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`on December 21, 2019. See Ex. 2001. Defendants served invalidity contentions
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`(including a chart based on the primary Miyazawa reference) on January 24, 2020.
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`See Exs. 2003–03. Yet Petitioner—with full awareness of the case schedule—waited
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`an additional five months before filing this Petition on June 5, 2020.
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`
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`Thus, Petitioner failed to file the Petition “expeditiously.” See Fintiv Order at
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`11. It was not “promptly after becoming aware of the claims being asserted” (seven
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`months earlier in November 2019), nor around the time Defendants’ served
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`invalidity contentions (five months earlier in January 2020).2 And this unjustified
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`delay prejudiced Patent Owner in two important ways.
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`2 See Fintiv Order at 11; Next Caller, Inc. v. TRUSTID, Inc., IPR2019-00961, Paper
`10 at 16 (PTAB Oct. 16, 2019) (weighing the petitioner’s unexplained delay in filing
`the petition in favor of denial of the petition and noting that had the petitioner filed
`the petition around the same time as the service of its initial invalidity contentions,
`the PTAB proceeding may have resolved the issues prior to the district court).
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`7
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`First, Petitioner’s timing imposes “unfair costs” to Patent Owner. Had
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`
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`Petitioner filed the Petition around January 2020 (when it already knew the case
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`schedule and had Patent Owner’s asserted claims and the Miyazawa primary
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`reference), the institution decision could have arrived in July or August—months
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`before the October 30, 2020 close of fact discovery. See Ex. 2001 (Scheduling
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`Order) at 3. Instead, it waited five months and ensured that Patent Owner would
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`continue to invest heavily through fact discovery and expert reports, and incur costs
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`for depositions, interpreters, expert fees, etc.
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`Second, Petitioner filed the Petition after all Markman proceedings (from
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`February–May 2020) and after the Court issued final claim constructions at the May
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`22, 2020 hearing. See Solas v. LG, Dkt. 79. But the Petition doesn’t apply the Court’s
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`constructions bur rather the purportedly “narrower constructions” it was aware of
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`long ago and proposed in February 2020. See Ex. 2001 (Scheduling Order) at 2;
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`Petition at 15–16 (“For the purpose of this IPR, Petitioner conservatively applies the
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`narrower constructions it proposed in the district court litigation, which it contends
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`are the correct constructions.”).
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`This post-Markman timing appears to have been strategically motivated and
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`intended to gain an unfair advantage over Patent Owner. During Markman,
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`Defendants contended that two terms from claims 15 and 39 of the ’137 patent were
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`indefinite. See Ex. 2009 at 2. That was the focus of much of the Markman briefing
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`8
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`and argument. But this IPR undermines Defendants’ indefiniteness assertion
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`because it shows that Petitioner and its expert had no problem understanding the
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`terms and allegedly mapping them to the prior art
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`Had Petitioner filed this Petition before the Markman hearing, Patent Owner
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`would have submitted it as supplemental authority to rebut Defendants’
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`indefiniteness arguments. Instead, Petitioner waited until after the Court decided the
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`indefiniteness issue before filing this IPR. Indeed, Petitioner recognizes the tension
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`between its indefiniteness position in district court and the arguments it makes in
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`this IPR. See Petition at 64, n. 9 (discussing these terms and adding the caveat that
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`“a POSA would under these claims in the way discussed herein” “for the purposes
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`of this IPR only”) (emphasis added).
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`Accordingly, Factor 3 weighs strongly against institution.
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`D.
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`Factor 4 weighs strongly against institution, as there is substantial
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`overlap between this IPR and district court proceedings
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`Factor 4 relates to overlap between issues raised in the petition and in the
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`parallel proceeding. Fintiv Order at 12; Fintiv ID at 13. This factor weighs against
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`institution because there is significant overlap in challenged claims, prior art, and
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`invalidity theories and evidence between this IPR and the WDTex case.
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`9
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`This IPR challenges claims 1, 9–11, 15, 36–37, and 39 of the ’137 patent based
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`on multiple grounds with Miyazawa as the primary reference, and Childs and Kasai
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`as secondary references (Pet. at 3):
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`
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`Defendants’ final invalidity contentions in the WDTex provides significant
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`
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`overlap. The IPR and contentions overlap in all six claims of the ’137 patent asserted
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`in the district court (claims 10–11, 15, 36–37, and 39). The only difference is that
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`the IPR challenges two additional claims (1 and 9) not asserted in the district court.
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`This IPR also relies on the same Miyazawa primary reference for all grounds
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`and the same invalidity theory (obviousness) based on the same references:
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`Miyazawa alone or combined h with Childs and/or Kasai.
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`They challenge almost a subset at issue here (claims 10–11, 15, 36–37, and
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`39) under the same invalidity theory (obviousness) based on the same references and
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`combinations (Miyazawa as the primary reference, alone or combined with Childs
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`and/or Kasai). The following excerpt from the cover pleading for the final
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`contentions identifies Miyazawa, Childs, and Kasai as asserted prior art:
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`10
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Ex. 2005 at (final invalidity contentions) at 76.
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`Indeed, that Defendants’ final contentions rely on the same references cannot
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`be disputed because the contentions purport to “incorporate by reference as if set
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`forth fully herein” the prior art references in this IPR:
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`Ex. 2005 at 78. And further, the following excerpt from Defendants’ invalidity chart
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`based on Miyazawa shows that Defendants in WDTex case purports to reserve
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`11
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`obviousness combinations of Miyazawa with all other references identified by LG
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`in its final invalidity contentions, inclusive of Kasai and Childs:
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`
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`Ex. 2005, at 104. Notably, in the final claim chart for Miyazawa, LG specifically
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`incorporated “citations and descriptions in Miyazawa 902 for this limitation in
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`IPR2020-01055.” Id. Moreover, Defendants include in its final invalidity
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`contentions a chart against the ’137 patent based on U.S. Patent App. Pub. No.
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`2005/0099412 (“Kasai ‘412”). Toshiyuki Kasai is the sole inventor of both Kasai
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`and Kasai ’412, and those two references appear to be substantively similar and
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`relied upon by Defendants’ in a substantially similar way. See Ex. 2005 at 98.
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`
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`Both this IPR and district court proceedings are governed by the same Phillips
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`claim construction standard. Thus, this IPR involves the same claim construction
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`standard, and the same challenged claims, invalidity theories, prior art references,
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`and indeed the same evidence (since Defendants incorporated its IPR arguments into
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`the WDTex case) at issue in the district court case. See NHK Spring at 19–20. Here,
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`just as in NHK Spring, “concerns of inefficiency and the possibility of conflicting
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`decisions [are] particularly strong.” Fintiv Order at 12.
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`12
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Further, that the IPR challenges two additional claims (1 and 9 of the ’137
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`
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`patent) not asserted in the district court is immaterial. The Board should give no
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`weight to these unasserted claims. They involve the same or similar issues as the
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`other claims. And there is zero prejudice to Petitioner if the invalidity challenges
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`against those claims are not addressed. See PayPal, Inc. v. IOENGINE, LLC,
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`IPR2019-00886, Paper 21 at 12, 18–19 (PTAB Oct. 3, 2019) (Institution Decision)
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`(denying institution of petition that challenges overlapping claims challenged in
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`another petition when petitioner has not identified any prejudice associated with not
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`instituting trial on the non-overlapping claims).
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`
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`Accordingly, this Factor weighs strongly against institution.
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`E.
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`Factor 5 weighs against institution, as Petitioner is a Defendant in
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`the WDTex case and closely related to the other Defendants.
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`Factor 5 concerns whether the petitioner and the defendant in the parallel
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`proceeding are the same party. Fintiv Order at 13; Fintiv ID at 15. This factor weighs
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`against institution because Petitioner LG Display Co., Ltd. is a Defendant in the
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`parallel WDTex case. LG Display is also closely connected to the other two
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`Defendants: LG Electronics, Inc., Ltd. and Sony Corporation. LG Display and LG
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`Electronics are related LG entities, and LG Display provides the accused OLED
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`display panels into LG Electronics’ and Sony’ accused products. See Solas v. LG,
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`13
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Dkt. 41 (LG Display Answer) (admitting that LG Display “designs, produces, and
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`sells OLED display panels”; “LG Electronics sells products incorporating LG
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`Display OLED display panels”; and Sony “sells products, including OLED
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`televisions, incorporating LG Display OLED display panels.”)
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`Indeed, all WDTex Defendants are represented by the same counsel and
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`submitted joint claim construction briefing and invalidity contentions.
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`F.
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`Factor 6 weighs against institution, as the Petition suffers from
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`several weaknesses that apply to all grounds and claims.
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`Factor 6 relates to other circumstances that impact the Board’s exercise of
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`discretion, including the merits. Fintiv Order at 14; Fintiv ID at 15. Here, Factor 6
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`weighs against institution for several reasons. First, there is evidence that Petitioner
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`unduly delayed in filing the Petition to gain a strategic advantage in the district Court
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`Markman proceedings, as discussed for Factor 3 above. Second, the ’137 patent is
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`strong but any concerns about generic “patent quality” are unfounded. The ’137
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`patent is not asserted in any other proceeding or against other defendants other than
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`the WDTex discussed above. Third and most importantly, Petitioners’ arguments on
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`the merits suffer from several weaknesses. These arguments also show that
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`Petitioners have not established a reasonable likelihood of success and provide
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`independent bases for denying institution of this IPR.
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`14
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`
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`1. Miyazawa fails to disclose “detecting a threshold voltage”
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`(Claims 1, 9, 36, 37, 39) or “a threshold voltage detection
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`circuit which detects a threshold voltage” (Claims 10, 11,
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`15)
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`Each of the challenged claims recite either “detecting a threshold voltage”
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`(Claims 1, 9, 36, 37, and 39) or “a threshold voltage detection circuit which detects
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`a threshold voltage.” Petitioner admits that Miyazawa “uses a different technique”
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`than what is described in the embodiments of the ’137 Patent (Petition at 16), which
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`is certainly correct. In fact, Petitioner even admits that Miyazawa does not actually
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`measure the threshold voltage of the drive transistor. Petition at 41 (citing Ex. 1003
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`at ¶¶ 137-138, 143-144). Miyazawa instead measures a voltage across the gate and
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`source of the drive transistor by forcing a “calibration current” through the transistor
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`corresponding to a current value that would cause “organic EL element 220 . . . to
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`emit light with a low grayscale.” EX1005 [0063]. Miyazawa refers to this measured
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`voltage as a “precharge voltage.” Id. [0065]. During the time when an image is
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`displayed, this precharge voltage is applied to the data line Xm. Id. [0066]. Because
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`Miyazawa forces a fixed predetermined current through the transistor, the resulting
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`gate voltage measurement is simply the voltage drop corresponding to that amount
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`of current. Petitioner has not shown that Miyazawa’s “precharge voltage” is actually
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`a threshold voltage peculiar to the drive element, as the claims require.
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`15
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`Perhaps recognizing the shortcomings of Miyazawa, Petitioner cites to a
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`different reference (Ex. 1008) that allegedly fills the hole in Miyazawa. But Ex. 1008
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`is no better, and in fact only further emphasizes that what Miyazawa measures is
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`nothing more than an arbitrary voltage based on a chosen current. For example,
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`Petitioner cites to Figure 2 of Ex. 1008, which illustrates the relationship between a
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`transistor’s gate voltage (Vg) and drain current (ID). Petition at 36 (citing Ex. 1008,
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`Fig. 2). But Ex. 1008 itself describes a technique that measures “a value of the gate
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`voltage corresponding to a given arbitrary constant drain current” and acknowledges
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`that this technique “has the disadvantage of being totally dependent on the arbitrarily
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`chosen value of the drain current level.” Ex. 1008 at 2-3 (emphasis added). Petitioner
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`has not shown that this type of measurement, which is based forcing an arbitrary
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`current through the transistor does anything more than measure a correspondingly
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`arbitrary voltage. Indeed, Petitioner admits that the measurement in Miyazawa is
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`different than the actual threshold voltage. Petition at 41 (citing Ex. 1003 at ¶¶ 137-
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`138, 143-144).
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`2.
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`The combination of Miyazawa with Childs is flawed.
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`The Petition also fails in its attempt to use obviousness to fill in the limitation
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`missing from Miyazawa. Petitioner asserts that a POSITA “would have had a
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`reasonable expectation of success modifying Miyazawa to implement Childs’
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`threshold voltage detection technique.” Petition at 44. But when one looks at the
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`IPR2020-01055 (’137 patent)
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`many differences between the references and the extraordinary number of
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`modifications needed to make the circuitry functional (if even possible), it is clear
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`that this combination of references is anything but straightforward and that the
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`results are far from predictable. One need look no further than Dr. Hatalis’
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`declaration where he spends nearly four full pages describing all of the modifications
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`that would need to be made to purportedly make the technique described in Childs
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`work with the circuitry of Miyazawa. See Ex. 1003 at ¶¶ 147-149. The modifications
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`are so extensive in part because Miyazawa and Childs are fundamentally different
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`in the way they measure the voltage across the drive transistor. In Miyazawa, the
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`gate voltage is measured when current is flowing through the drive transistor and
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`when the data line is in a conducting state. Ex. 1005 [0061]-[0066]. Childs is nearly
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`opposite, with the measurement taking place when there is no current through the
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`drive transistor and the data line is in an open (high-impedance) state. Ex. 1006
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`0010:1-29, Fig. 2. Thus, the circuitry in Miyazawa requires the data line to be non-
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`conducting when it measures the gate voltage, but Childs will not work in these
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`conditions.
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`Petitioner asserts that a POSITA would be motivated to combine Miyazawa
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`with Childs (Ex. 1006) in part because Childs would be recognized as a faster
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`technique. Petition at 40. This is incorrect. Petitioner and its expert, Dr. Hatalis, rely
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`heavily on a statement in Hatalis that the “threshold measurement can be carried out
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`once per frame of image data, so that the threshold measurement cycle is part of
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`every addressing phase.” Ex. 1006, 10:10-15. But this statement has nothing to do
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`with how fast the measurement can be made in Childs. It simply indicates an order
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`of operations that is possible. Indeed, because Childs depends on the charge rate of
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`the data line through a capacitor (see, e.g., Ex. 1006, Figure 4), a POSITA could
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`easily assume that Childs discloses a slower measurement than Miyazawa.
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`Accordingly, Petitioner has failed to show that a POSITA would combine the
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`Childs and Miyazawa references as described. This combination is used with respect
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`to each of the challenged claims.
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`G.
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`Summary of Factors and Conclusion
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`Factor 1 Weighs against institution
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`Factor 2 Weighs strongly against institution
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`Factor 3 Weighs strongly against institution
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`Factor 4 Weighs strongly against institution
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`Factor 5 Weighs against institution
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`Factor 6 Weighs against institution
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`
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`In summary, all Fintiv factors weigh against institution and the three most
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`important factors—Factor 2 (proximity of the WDTex trial date to the FWD
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`deadline), Factor 3 (investment in the WDTex case by the court and parties) and
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`Factor 4 (overlapping issues)—weigh particularly strongly. The district court trial is
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`scheduled to begin nine months before the expected FWD in this IPR. That trial is
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`between the same parties, and is expected to involve the same prior art and invalidity
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`theories. Instituting review under these “facts and circumstances would be an
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`inefficient use of the Board’s resources.” NHK Spring at 19–20. Under all of the
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`Fintiv factors, institution should be denied.
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`II.
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`PETITIONER SHOULD NOT BE ALLOWED A REPLY
`Petitioner already addresses discretionary denial at the end of its Petition and
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`should not be allowed to submit an additional Reply. Both Fintiv and NHK Spring
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`were designated precedential well before the Petition was filed, so Petitioner had
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`every opportunity to address those arguments in the Petition (and it did). Good cause
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`does not support a Reply. Petitioner’s rationale of addressing “the facts as they stand
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`at that point in time” is unnecessary, as the Board can review the publicly available
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`dockets of the WDTex case.
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`Respectfully submitted,
`
` /s/ Philip Wang
`Philip Wang (Reg. No. 74,621)
`Neil Rubin (Reg. No. 67,030)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`
`Dated: September 16, 2020
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`pwang@raklaw.com
`nrubin@raklaw.com
`rak_solas@raklaw.com
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`Counsel for Patent Owner
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`IPR2020-01055 (’137 patent)
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`CERTIFICATION REGARDING WORD COUNT
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`Pursuant to 37 C.F.R. §42.24(d), Patent Owner certifies that this paper
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`complies with the word count requirements for POPRs.
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`
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`Date: September 16, 2020
`
`/s/ Philip Wang
`
`Philip Wang (Reg. No. 74,621)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`(310) 826-7474
`
`Counsel for Patent Owner
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`IPR2020-01055 (’137 patent)
`Patent Owner Preliminary Response
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`September 17, 2020, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via email upon the following
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`attorneys of record for the Petitioner:
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`
`Gabriel S. Gross (Reg. No. 52,973)
`gabe.gross@lw.com
`Douglas E. Lumish
`doug.lumish@lw.com
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: 650.328.4600
`Fax: 650.463.2600
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`
`
`
`
`Joseph H. Lee
`joseph.lee@lw.com
`Latham & Watkins LLP
`650 Town Center Drive, 20th Floor
`Costa Mesa, CA 92626-1925
`Telephone: 714.540.1235
`Fax: 714.755.8290
`
`Blake R. Davis
`blake.davis@lw.com
`Latham & Watkins LLP
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