Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: July 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00493
`Patent No. 7,537,370
`____________
`
`
`
`Before LORA M. GREEN, THOMAS L. GIANNETTI,
`and MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`571-272-7822
`
`Paper 10
`Entered: July 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00493
`Patent No. 7,537,370
`____________
`
`
`
`Before LORA M. GREEN, THOMAS L. GIANNETTI,
`and MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`I.
`
`INTRODUCTION
`LG Electronics, Inc. (“Petitioner”) filed a Petition pursuant to 35
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1, 4, 8, 13,
`15, 27, 29, and 47 of U.S. Patent No. 7,537,370 (“the ’370 patent”). Paper 2
`(“Pet.”). Concurrently, Petitioner filed a Motion for Joinder. Paper 3
`(“Joinder Motion”). The Joinder Motion seeks to join this proceeding with
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case
`IPR2014-01096 (“the ʼ1096 IPR”), which concerns the ’370 patent at issue
`here. Joinder Motion 1.
`Innovative Display Technologies LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”) as well as an opposition to
`the Joinder Motion (Paper 7, “Opposition”). We instituted trial in the ’1096
`IPR on January 13, 2015. ’1096 IPR, Paper 11 (“the ’1096 Institution
`Decision”). For the reasons described below, we institute an inter partes
`review of claims 15 and 27 and grant Petitioner’s Motion for Joinder.
`
`INSTITUION OF INTER PARTES REVIEW
`A. References
`Petitioner relies on the same references as those in the ʼ1096 IPR1:
`Pristash
`US 5,005,108
`Apr. 2, 1991
`Ex. 1006
`Ohe
`EP 0 500 960 A1 Feb. 9, 1992
`Ex. 1007
`Kobayashi
`US 5,408,388
`Apr. 18, 1995
`Ex. 1008
`
`Petitioner also relies on the same Declaration of Michael J. Escuti, Ph.D., as
`in the ʼ1096 IPR. (“Escuti Decl.”). Ex. 1004.
`
`II.
`
`
`1 As in the ʼ1096 IPR, Petitioner here also states that it is relying on
`Admitted Prior Art from the ʼ370 patent specification. Pet. 7–8.
`
`
`
`2
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`
`B. Grounds Asserted
`The Petition in this proceeding asserts the same grounds as those on
`
`which we instituted review in the ʼ1096 IPR. Those are:
`References
`Basis
`Claims Challenged
`§ 103(a)2
`15 and 27
`§ 103(a)
`15 and 27
`
`Pristash
`Kobayashi and Pristash
`
`
`C. Real Parties-in-Interest
`Patent Owner contends that the Petition should be denied because
`Petitioner has failed to name two real parties-in-interest. Prelim. Resp. 31.
`They are LG Display Co., Ltd., and LG Display America, Inc. Id.
`Patent Owner made a similar assertion in the ʼ1096 IPR with respect
`to Petitioner.3 For the reasons stated in the ʼ1096 IPR Institution Decision
`(Paper 11), we conclude that Patent Owner’s preliminary response fails to
`provide convincing evidence that LG Display Co., Ltd. and LG Display
`America, Inc., are real parties-in-interest here.
`
`
`E. Decision
`In view of the identity of the challenges to the ʼ370 patent in this
`Petition and in the petition in the ʼ1096 IPR, we institute an inter partes
`
`
`2 In the ’1096 IPR, we stated that we were instituting review based on two
`grounds of alleged unpatentability, including anticipation of claims 15 and
`27 by Pristash. ’1096 IPR, Paper 11, 17. This statement was an error. As
`was clear from our analysis, our institution was instead based on alleged
`obviousness of claims 15 and 27 over Pristash. See id. at 8–10.
`3 In the ʼ1096 IPR, Patent Owner contended that the Petitioner here, LG
`Electronics, Inc., should have been named as a real party-in-interest, along
`with LG Electronics U.S.A., Inc. ʼ1096 IPR, Paper 9, 18.
`
`
`
`3
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`review in this proceeding on the same grounds as those on which we
`instituted inter partes review in the ʼ1096 IPR.
`We do not institute inter partes review on any other grounds.
`
`
`III. MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`review, subject to the provisions of 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`
`As the moving party, Petitioner bears the burden of proving that it is entitled
`to the requested relief. 37 C.F.R. § 42.20(c).
`To be considered timely, a motion for joinder must be filed no later
`than one month after the institution date of the inter partes review for which
`joinder is requested. 37 C.F.R. § 42.122(b). The Petition in this proceeding
`has been accorded a filing date of December 29, 2014 (Paper 6). This date is
`before the date of institution in the ʼ1096 IPR, which was instituted on
`January 13, 2015. The Petition, therefore, is timely.
`A motion for joinder should: (1) set forth the reasons joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Frequently Asked Question H5,
`http://www.uspto.gov/patents-application-process/appealing-patent-
`
`
`
`4
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`decisions/trials/patent-review-processing-system-prps-0#heading-13 (last
`visited June 30, 2015).
`Petitioner contends joinder will not impact the Board’s ability to
`complete its review in the statutorily prescribed time frame. Joinder Motion
`5. Petitioner contends that the grounds asserted in this Petition are the same
`grounds of unpatentability asserted in the ʼ1096 IPR. Id. Petitioner’s
`arguments regarding the asserted references are identical to the arguments
`raised in the ʼ1096 IPR, and Petitioner has submitted, in support of its
`petition, the same declaration of the technical expert submitted in the ’1096
`IPR (excluding some minor changes made to reflect Petitioner’s engagement
`of the same expert). Id.
`Petitioner further contends that joinder will promote efficiency by
`avoiding duplicative filings and reviews of the same issues in multiple
`proceedings. Joinder Motion 6.
`Petitioner further asserts joinder will not prejudice the parties to the
`ʼ1096 IPR because the scope and timing of that proceeding should remain
`the same. Joinder Motion 1. According to Petitioner, the Board can
`minimize any scheduling impact by requiring consolidated filings and
`coordination among petitioners. Id. at 1–2.
`Patent Owner opposes joinder, contending that Petitioner argues only
`that the grounds asserted in the instant Petition and the ones asserted in the
`ʼ1096 IPR are identical, and has not provided any “independent” reasons
`why joinder is appropriate. Opposition 5–6.
`As discussed above, joinder is a matter within the Board’s discretion
`based on the particular circumstances of each proceeding. In this
`proceeding, we are persuaded that Petitioner has demonstrated that joinder
`
`
`
`5
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`with the ʼ1096 IPR would avoid duplication and promote the efficient
`resolution of both proceedings. Petitioner has brought the same challenges
`presented by the ʼ1096 IPR; thus, the substantive issues would not be unduly
`complicated by joining the proceedings. Joinder merely introduces the same
`grounds presented originally in the ʼ1096 IPR, where all the same prior art is
`involved. Patent Owner will therefore be able to address the challenges in a
`single proceeding.
`Patent Owner asserts that there might be a problem in coordinating
`briefing and discovery that would lead to inefficiencies. Opposition 8. We
`are not persuaded by this argument that joinder should be denied. If the
`parties are unable to coordinate these matters, the Board will provide
`guidance upon the appropriate request.
`Finally, Patent Owner argues that it will seek additional discovery to
`determine if LG Display Co., Ltd., petitioner in the ʼ1096 IPR, is controlling
`or funding this proceeding. Id. at 8. Patent Owner contends this “potential
`for the additional discovery . . . weighs against joinder.” Id. at 9. We do
`not find this argument persuasive because it is speculative, as no such
`discovery has been requested or authorized by the Board. On the facts
`presented, the possibility that Patent Owner may seek additional discovery is
`not sufficient to persuade us that joinder should not be granted.
`
`IV. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`IPR2015-00493 and grant Petitioner’s motion to join that proceeding to
`IPR2014-01096.
`
`
`
`
`
`6
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`V. ORDER
`In view of the foregoing, it is
`ORDERED that inter partes review in IPR2015-00493 is hereby
`instituted;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and IPR2015-00493 is joined with IPR2014-01096;
`FURTHER ORDERED that the grounds on which IPR2014-01096
`was instituted are unchanged, and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2014-01096 (Paper 12) is not modified by this Order and shall govern
`the schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding,
`Petitioner and LG Display Co., Ltd. will file papers, except for motions that
`do not involve the other party, as a single, consolidated filing; that the filing
`party (either Petitioner LG Electronics, Inc., or LG Display Co., Ltd.) will
`identify each such filing as a Consolidated Filing; and will conduct
`coordinated (not separate) discovery;
`FURTHER ORDERED that IPR2015-00493 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2014-01096;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2014-01096; and
`FURTHER ORDERED that the case caption in IPR2014-01096 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`7
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`PETITIONER:
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`PATENT OWNER:
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`8
`
`
`
`Case IPR2015-00493
`Patent 7,537,370
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG DISPLAY CO., LTD, AND
` LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-010961
`Patent 7,537,370
`_______________
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00493 has been joined with this proceeding.
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