Paper No. __
`Filed: November 8, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2021-01060
`U.S. Patent No. 10,330,989
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`Filed: November 8, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2021-01060
`U.S. Patent No. 10,330,989
`_____________________________
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`A holistic evaluation of the Fintiv factors favors institution. Petitioner’s
`
`diligence in filing the present and six related IPRs, Sotera-type stipulation, and the
`
`petition’s strong merits outweigh other applicable factors, including the date of the
`
`district court trial, which is still going through a substantial narrowing process.
`
`Trial is currently set in the district court for February 2022, and thus before
`
`the Board’s anticipated statutory deadline for final written decision (factor 2). But
`
`as recognized by Patent Owner, not all 15 asserted patents and 135 claims will go to
`
`trial. Indeed, Patent Owner recently narrowed the number of patents and claims. Ex.
`
`1017, 3; Ex. 1018, 1. And the district court expects further narrowing. Ex. 1019, 8-
`
`20; Ex. 1020, 2 (court ordering the parties to submit a joint notice by November 10
`
`“re: efforts to resolve or narrow outstanding claims and patents in the case.”). Thus,
`
`by the expected institution date, it is entirely possible that the ’989 patent (or claims)
`
`will be withdrawn from the district court, rendering factor 2 moot. At the same time,
`
`should they be withdrawn before trial, Patent Owner could still assert them against
`
`others, making it in the public interest for the Board to address patentability here.
`
`In any case, the trial date is not determinative. Samsung Electronics Co., Ltd.,
`
`v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47 (PTAB Feb. 10, 2021)
`
`(instituting with over ten months between district court trial and final written
`
`decision dates); Roku, Inc., v. Flexiworld Tech., Inc., IPR2021-00715, Paper 18 at
`
`11, 15 (PTAB Oct. 26, 2021) (same by six months); R.J. Reynolds Vapor Company
`
`1
`
`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`v. Philip Morris Products S.A., IPR2021-00585, Paper 10 at 11, 14 (PTAB Sept. 13,
`
`2021) (same by five months); Boston Scientific Corp., and Boston Scientific
`
`Neuromodulation Corp., v. Nevro Corp., IPR2020-01562, Paper 14 at 18-20, 25
`
`(PTAB March 16, 2021) (same by five months); see also id. at 20 (“we consider all
`
`factors holistically.”). Patent Owner’s cited pre-2021 Board decisions (POPR, 7-8)
`
`are distinguishable because they do not involve a Sotera-type stipulation like here.
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`The same is true for its previous sur-reply decisions. IPR2021-01028, Paper 10, 2-
`
`3; IPR2021-01029, Paper 9, 2-3 (citing Samsung Elecs. Col., Ltd. v. Clear Imaging
`
`Research LLC, IPR2020-01551, Paper 12 (PTAB Feb. 17, 2021); Cisco Systems,
`
`Inc. v. Oyster Optics, LLC, IPR2021-00319, Paper 9 (PTAB June 8, 2021)).
`
`Under factor 3, the Board considers Petitioner’s timing in filing the petition.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 11 (PTAB Mar. 20, 2020)
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`(precedential). Here, Petitioner moved with speed and diligence in bringing the
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`present—and six related IPRs—five months after Patent Owner served its
`
`infringement contentions. Preparing an IPR petition requires substantial time and
`
`effort. And this is particularly true in cases like this, where Patent Owner refused to
`
`narrow the number of claims and issues until service of its infringement contentions
`
`(Ex. 1012)—and even then, Patent Owner still asserted 135 claims from 15 patents
`
`against more than 2,400 accused products, imposing a vastly greater burden on
`
`Petitioner to assess the dispute and evaluate for which patents to request IPR.
`
`2
`
`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`Samsung, Paper 17 at 39-40; Roku, Inc., Paper 18 at 12-13. Further, Patent Owner
`
`did not respond to Petitioner’s invalidity contentions before the petitions were filed.
`
`Roku, Inc., Paper 18 at 12. And unlike Patent Owner’s cited Next Caller decisions,
`
`any purported delay here is reasonably explained based on the number of asserted
`
`patents and claims. Also, the Next Caller cases did not involve any stipulation.
`
`The Board also considers, under factor 3, “the amount and type of work
`
`already completed in the parallel litigation by the court and the parties at the time of
`
`the institution decision.” Fintiv, Paper 11 at 9. Here, by institution, the district court’s
`
`investment regarding the patentability of the challenged ’989 patent will be nominal.
`
`The court has issued a claim construction order (Ex. 1021), but it construed no ’989
`
`claim term. Although by the expected institution date there will have been additional
`
`investment by the parties, a substantial portion of work and trial is yet to come after
`
`institution. Moreover, the parties’ investment is neither determinative nor weighed
`
`in isolation. It must be considered in light of the district court’s nominal substantive
`
`investment, petitioner’s diligence, and other applicable factors. See, e.g., Samsung,
`
`Paper 17, 39-40, 47 (instituting after close of fact and expert discovery, service of
`
`expert reports, dispositive motions and responses, and Daubert motions and
`
`responses); R.J. Reynolds, Paper 10 at 12, 14 (instituting after completion of fact and
`
`expert discovery, pre-trial conference, dispositive motion practice, and exchanging
`
`of witness and exhibit lists and deposition designations). Patent Owner’s cited pre-
`
`3
`
`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`2021 Board decisions (POPR, 9) are distinguishable as not involving any stipulation.
`
`Indeed, Petitioner’s broad Sotera-type stipulation (factor 4) strongly favors
`
`institution by mitigating concerns of duplicative efforts between the district court
`
`and the Board, as well as potentially conflicting decisions. Sotera Wireless, Inc. v.
`
`Masimo Corp., IPR2020-01019, Paper 12 at 23-24 (PTAB Dec. 1, 2020); see also
`
`Samsung, Paper 17 at 38, 47 (instituting less than two months before district court
`
`trial, finding that “Petitioner’s stipulation has minimized any overlap with the
`
`parallel district court litigation such that both the duplication of efforts and the
`
`potential for conflicting decisions are minimized. Although the parties have invested
`
`in the litigation, Petitioner filed this proceeding on a timely basis after learning
`
`which of the eighty-four claims were being asserted. Accordingly, we conclude that
`
`the minimization of overlap and the strength of the merits of the first challenge
`
`outweigh the upcoming trial date.”). In its IPR2021-01028, -01029 sur-replies,
`
`Patent Owner states that “Petitioner’s invalidity case [for five of the seven patents]
`
`involves alleged prior art products in combination with the same references asserted
`
`in the respective petitions.” IPR2021-01028, Paper 10, 5; IPR2021-01029, Paper 9,
`
`5. But the ’989 is not one of those patents. Factor 4 weighs strongly against denial.
`
`Finally, factor 6 strongly favors institution because the merits of the present
`
`IPR are strong. While Patent Owner alleges Abe and Kurahashi are excluded under
`
`35 U.S.C. § 103(c)(1), the evidence Patent Owner provides does not establish this.
`
`4
`
`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`Section 103(c)(1) requires common ownership to exist “at the time the claimed
`
`invention was made” (emphasis added). According to Patent Owner, the invention
`
`of the ’989 patent was made October 15, 2001, POPR, 18–19; 19 n. 1, but Ex. 2006
`
`shows only that the ’989 patent was owned by Hitachi, Ltd. as of September 10,
`
`2002, nearly a year later (and there is no evidence of any earlier “obligation of
`
`assignment,” § 103(c)(1)). Common ownership of Abe and Kurahashi has thus not
`
`been shown. MaxLinear, Inc. v. Cresta Tech. Corp., IPR2015-00594, Paper 90 at
`
`26–27 (PTAB Aug. 15, 2016) (finding no common ownership because patent’s
`
`assignment to alleged common owner was shown only as of the patent’s filing date,
`
`not an earlier invention date asserted by the Patent Owner); Panties Plus, Inc. v.
`
`Bragel Int’l, Inc., IPR2017-00044, Paper 6 at 23 (PTAB Apr. 12, 2017) (finding no
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`obligation to assign absent evidence because “[i]nventors, even those employed at
`
`the time of invention, presumptively own the rights to their inventions.”) (citing
`
`Teets v. Chromalloy Gas Turbine Co., 83 F.3d 403, 407 (Fed. Cir. 1996)).
`
`Patent Owner’s alleged deficiencies in Petitioner’s combinations are likewise
`
`flawed. First, Patent Owner argues a POSA would not combine Yuh with Ohta or
`
`Kurahashi because Ohta and Kurahashi describe “in-plane switching (‘IPS’)”
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`electrode configurations while Yuh describes “a fringe-field-switching (‘FFS’)”
`
`electrode configuration. POPR, 14–15, 19–20. This characterization of Yuh is at
`
`odds with Yuh’s own title, which begins “IPS-LCD.” Ex. 1005. What’s more, Patent
`
`5
`
`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`Owner’s alleged “differences” between these electrode configurations, POPR, 20–
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`22, are immaterial to Petitioner’s combinations, which do not propose altering Yuh’s
`
`electrode configuration based on Ohta or Kurahashi at all1. See, e.g., Pet., 26–33 and
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`73 (relying only on Yuh for “pixel electrode” and “counter electrode”), 39–40 and
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`76 (same for “liquid crystal layer . . . driven by an electric field . . .”), 42–43 and 78
`
`(same for “counter electrode is a planar shape”). Second, Patent Owner alleges
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`various issues with forming an “organic insulation layer” on a “bare substrate” in
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`Yuh. POPR, 26, 39. But Petitioner never proposed adding the organic insulation layer
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`“to a bare substrate,” only “between a ‘counter electrode’ and a ‘substrate,’” as in
`
`Ohta or “underneath the counter electrode,” as in Kurahashi. Pet., 36, 74. It was
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`Patent Owner, not Petitioner, that annotated Yuh’s Figure 33 to show such an
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`implementation. POPR, 25. Yuh’s Figure 2, which Petitioner did annotate, is a
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`distinct embodiment from Figure 33. Pet., 39, 76; Ex. 2005, 3:59–65, 5:22–25. The
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`strength of the merits thus also favors institution. Accordingly, Petitioner
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`respectfully requests the Board institute this IPR and cancel all challenged claims.
`
`Dated: November 8, 2021
`
`Respectfully submitted,
`
`
`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Reg. No. 59,369
`
`
`
`1 Petitioner does propose modifying the “slit” in Yuh’s pixel electrode based on
`
`Kurahashi. Pet., 85–86. But Patent Owner raises no issues with this.
`
`6
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`
`
`U.S. Patent 10,330,989
`IPR2021-01060
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Pre-Institution Reply was served on November 8, 2021, via email directed to
`
`counsel of record for Patent Owner at the following:
`
`Eric J. Klein (Reg. No. 51,888)
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`
`
`
`Dated: November 8, 2021
`
`
`
`
`
`
`Abigail Lubow (Reg. No. 75,839)
`alubow@velaw.com
`VINSON & ELKINS L.L.P.
`555 Mission Street, Suite 2000
`San Francisco, CA 94105
`Tel: (415) 979-6963
`Fax: (415) 358-5770
`
`Jeffrey R. Swigart (Reg. No. 77,008)
`jswigart@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201-2975
`Tel: (214) 220-7700
`Fax: (214) 220-7716
`
`Tianma-JDIVETeam@velaw.com
`
`
`
`By: /Valencia Daniel/
`Valencia Daniel
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`7
`
`
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