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 CRYSTALDISPLAY CO., LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01060
`Patent No. 10,330,989
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC. AND
`PANASONIC LIQUID CRYSTAL DISPLAY CO., LTD.’S
`PRE-INSTITUTION SUR-REPLY
`
`

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`Patent Owner’s Pre-Institution Sur-Reply
`
`Contrary to Petitioner’s argument, “[a] holistic evaluation of the Fintiv
`factors,” which would weigh all six Fintiv factors, favors discretionary denial.
`Paper 8 at 1 (“Reply”). Petitioner has never argued, nor could it, that factor 5
`(“whether the petitioner and the defendant in the parallel proceeding are the same
`party”) weighs in favor of institution. Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15 at 8 (P.T.A.B. May 13, 2020). In its Reply, Petitioner appears to have
`abandoned its argument that factor 1 (“whether the court granted a stay or evidence
`exists that one may be granted if a proceeding is instituted”) “is, at best, neutral”
`given that its motion to transfer was denied. Id. at 7; Paper 2 at 6 (“Petition”); see
`also Ex. 2002 (Order denying transfer motion). Further, an analysis of Fintiv factors
`2, 3, 4, and 6 demonstrates why Petitioner’s argument should be rejected.
`Fintiv Factor 2 considers the proximity of the court’s trial date to the projected
`statutory deadline for the Board’s final written decision. See Fintiv, Paper 11 at 9.
`Petitioner recognizes that the district court trial date will precede the Board’s
`statutory deadline for a final written decision, Reply at 1, but ignores the eleven full
`months between the district court trial date (February 7, 2022) and the Board’s final
`written decision (January 8, 2023). To evade this reality, Petitioner cites Samsung
`Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 38-39, 47
`(P.T.A.B. Feb. 10, 2021) as a single example in which the Board instituted review
`despite a ten-month gap between the district court trial and the final written decision
`dates in the IPR. But Petitioner’s reliance is misplaced because the two Fintiv factors
`that supported institution in Samsung swing the other way here. First, the Board
`found that the Samsung Petitioners’ Sotera-like stipulation preventing overlap of
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`Patent Owner’s Pre-Institution Sur-Reply
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`arguments between the Board and district court weighed in favor of institution under
`Fintiv Factor 4. Id. at 43. But more recent cases establish that these types of
`stipulations are not always dispositive of institution, and, as Patent Owner explains
`in detail below, Petitioner’s stipulation here does not appreciably simplify the district
`court case. Second, the Board found that the Samsung Petitioners had presented “a
`strong unpatentability challenge to every challenged claim” under Fintiv Factor 6.
`Id. at 46. But here, as Patent Owner explains in its preliminary response (Paper 7 at
`16-49), Petitioner has only presented weak challenges to every challenged claim.
`Third, the Samsung decision made no mention of (1) an extensive prior art products
`invalidity defense like the one put forward by Petitioner in the district court
`proceeding, which will require the district court to analyze the same prior art
`references asserted in the petitions, or (2) an order granting Petitioner permission to
`add prior art references from the Petition in the district court case. See Ex. 2012 at
`9-16 (Defendant’s Preliminary Invalidity Contentions); Ex.2004.
`Additionally, a more recent Samsung decision, Samsung Elecs. Co., Ltd. v.
`Clear Imaging Research LLC, IPR2020-01551, Paper 12 at 13 (P.T.A.B. Feb. 17,
`2021) (“Samsung II”), denied institution when the trial was scheduled to begin more
`than ten months before the due date of the final written decision, and is more closely
`aligned with the facts here. Id. at 13. In Samsung II, the Board noted that the original
`trial date had never changed and was unlikely to ever be delayed. Id. at 11-14. The
`Board agreed with the Patent Owner that this factor weighed heavily in favor of
`denying institution, quoting Fintiv, Paper 11 at 9 (emphasis added) (“If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally has
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`Patent Owner’s Pre-Institution Sur-Reply
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`weighed this fact in favor of exercising authority to deny institution under NHK.”).
`Id. at 13. See also Cisco Systems, Inc. v. Oyster Optics, LLC, IPR2021-00319,
`Paper 9 at 10-12 (P.T.A.B. June 8, 2021) (finding that trial date seven months before
`Board’s written decision due date favored denial of petition). Such is also the case
`here—the judge in the district court has made clear his preference to maintain the
`current trial date. See Ex. 2001 (First Amended Docket Control Order).
`Petitioner speculates that “it is entirely possible” that Factor 2 may be
`rendered moot due to the district court’s order to narrow asserted claims. Reply at 1.
`This inappropriate speculation should be accorded little weight because it attempts
`to take advantage of Petitioner’s extreme delay in filing its Petition and the late stage
`of the parallel district court case. Petitioner is trying to have its cake and eat it, too—
`on the one hand, Petitioner complains about the scope of the district court case and
`demands the court there to force Patent Owner to narrow to a tiny fraction of the
`original case, then on the other, argues that the Board should rely on that narrowing
`demand to broaden Petitioner’s IPR case. This blatant gamesmanship is an attempt
`to waste the Board’s resources and should not be rewarded.
`Fintiv Factor 3 considers the timing of the petition and the investment in the
`proceeding by the court and the parties. Petitioner claims it “moved with speed and
`diligence” by filing the IPRs five months after Patent Owner served its infringement
`contentions. Reply at 2. Petitioner wrongly complains that Patent Owner “refused
`to narrow the number of claims and issues until service of its infringement
`contentions,” id., ignoring that (1) Petitioner had been on notice of its infringement
`since at least August 31, 2020, and (2) Patent Owner served infringement
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`Patent Owner’s Pre-Institution Sur-Reply
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`contentions at the time specified by the district court’s docket control order. In any
`event, the relevant date is the date of filing the complaint, not the serving of
`infringement contentions. 35 U.S.C. §315(b). This Petition was filed on June 21,
`2021, nearly ten months after the complaint was filed. Further, this Petition was
`filed nearly four months after Petitioner served its invalidity contentions in the
`district court case. This cuts against Petitioner’s claim of “speed and diligence.”
`Fintiv factor 3 also considers “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,” including whether “the district court has issued substantive orders related
`to the patent at issue in the petition, this fact favors denial,” and notes that “more
`work completed by the parties and court in the parallel proceeding tends to support
`the argument that the parallel proceeding is more advanced, a stay may be less likely,
`and instituting would lead to duplicative costs.” Fintiv, Paper 11 at 9-10.
`Petitioner’s statement that “[h]ere, by institution the court’s investment regarding
`the patentability of the ’989 patent will be nominal” is a gross understatement. Reply
`at 3. Petitioner recognizes that the district court has already expended resources
`addressing the parties’ claim construction positions and issuing a claim construction
`order.1 Id. But in arguing merely that “a substantial portion of work and trial is yet
`
`1 Petitioner states that the district court’s “construed no ’989 claim term,” Reply at 3,
`but in its expert report, Petitioner advocated for a specific construction of the term
`“common layer” as excluding a “counter line” like that shown in Ohta (a prior art
`reference asserted in the Petition). See Ex.2013 at 5-7 (Flasck Daubert Motion, Dkt.
`196). To the extent Petitioner’s untimely claim construction proposal is allowed,
`Patent Owner has requested additional claim construction briefing that will impact
`Petitioner’s prior-art mappings. See id.
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`Patent Owner’s Pre-Institution Sur-Reply
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`to come after institution,” Petitioner wholly discounts the significant efforts and
`resources the parties have expended and will expend prior to the institution date of
`January 8, 2022, and fails to provide any examples of the “substantial portion of
`work” that will occur later, apart from trial on February 7. The parties have already
`exchanged expert reports addressing infringement and validity of each of the 135
`originally asserted claims. The parties have taken a collective fourteen days of
`expert depositions, and will take two more in next week. Ex.2015, ¶5 (Klein Decl.).
`Seven of those days are focused solely on validity. Id. Further, by January 8, every
`deadline will have passed except the pretrial conference on January 10 and the
`trial itself. See Ex.2001 at 1-3; Ex.1015 at 3. Thus, all the work relevant to claim
`construction, infringement, validity, claim construction, fact discovery, and expert
`discovery will be completed by the institution date. See Samsung Elecs., IPR2020-
`01551, Paper 12 at 16 (finding significant investment when “some of the work
`relevant to patent validity, including claim construction, fact discovery, and expert
`discovery” had been completed).
`Fintiv Factor 4 evaluates the overlap between issues raised in the Petition and
`in the district court proceeding. “[I]f the petition includes the same or substantially
`the same claims, grounds, arguments, and evidence as presented in the parallel
`proceeding, this fact has favored denial.” Id. at 12. Petitioner leans heavily on its
`purported Sotera-like stipulation, but this stipulation will not serve to simplify the
`district court case. See Reply at 1-2, and 4. Petitioner has filed petitions against
`only seven of the fifteen patents in the district court case. For five of those seven
`patents, Petitioner’s invalidity case involves alleged prior art products in
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`Patent Owner’s Pre-Institution Sur-Reply
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`combination with the same references asserted in the respective petitions and thus
`would be unaffected by the stipulation because the substance of those references will
`still be at issue. See Ex.2012 at 9-16 (Defendant’s Preliminary Invalidity
`Contentions); see also Ex.2003 at 7 (Defendant’s Motion for leave to Supplement
`Invalidity Contentions) (“Here, [Petitioner] intends to use Plaintiffs’ recently
`produced prior art products, as modified by references of which Plaintiffs have been
`long aware, to invalidate seven of the asserted patents”).
`Further, Patent Owner withdrew its opposition to Petitioner’s Motion for
`Leave to Supplement Invalidity Contentions so that any prior art raised in
`Petitioner’s IPRs could be in the district court case. See Ex.2012. Thus, the Board
`does not face the issue of whether the grounds overlap: they do completely.
`Fintiv Factor 6 considers other circumstances that may impact the Board’s
`exercise of discretion, including the merits. Petitioner’s argument that two of its
`prior art references should not be excluded under 35 U.S.C. § 103(c)(1) because
`“[c]ommon ownership of Abe and Kurahahshi has thus not been shown” is weak.
`JP2001-317147 names Hitachi Ltd. as the “Applicant” as of the “Date of
`Application,” October 15, 2001. See Ex.2007 at 362-64 (File History); see also
`Ex.2014 (English Translation of excerpt of File History Ex.2007). Regarding
`Petitioner’s rebuttal in support of its improper combinations of references, Patent
`Owner stands on the analysis provided in its preliminary response showing the
`merits of this Petition are weak, which further supports denying institution. See
`Paper 7 at 16-49.
`
`–6–
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`

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`Dated: November 15, 2021
`
`Respectfully submitted,
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`/Eric J. Klein/
`Eric J. Klein (Reg. No. 51,888)
`Lead Counsel for Petitioner
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Customer No. 22892
`TEL: (214) 220-7700
`FAX: (214) 220-7716
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. §42.6(e) and 37
`
`C.F.R. §42.105, service was made on Petitioner as detailed below.
`
`Date of service November 15, 2021
`Manner of service Via electronic mail by agreement of the parties
`
`–7–
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`Patent Owner’s Pre-Institution Sur-Reply
`
`Documents served Patent Owner Japan Display Inc.’s Pre-Institution Sur-Reply
`of United States Patent No. 9,310,654 Pursuant to 35 U.S.C.
`§ 313, 37 C.F.R. § 42.107
`
`Persons served
`
`Lead Counsel
`Joshua L. Goldberg (Reg. No. 59,369)
`joshua.goldberg@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`Back-Up Counsel
`Qingyu Yin (Reg. No. 61,329)
`qingyu.yin@finnegan.com
`
`David C. Reese (Reg. No. 67,942)
`david.reese@finnegan.com
`
`Daniel F. Klodowski (Reg. No. 72,693)
`Daniel.klodowski@finnegan.com
`
`Gracie K. Mills (66,946)
`gracie.mills@finnegan.com
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`/Eric J. Klein/
`Eric J. Klein
`Lead Counsel for Petitioner
`Registration No. 51,888
`
`US 8431716
`
`–8–
`
`