Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00910
`Patent 7,434,974 B2
`_______________
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, 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)
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00910
`Patent 7,434,974 B2
`_______________
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, 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)
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`
`I. INTRODUCTION
`
`VIZIO, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`
`an inter partes review of claims 1, 3–5, 7–8, and 10–11 (“the challenged
`
`claims”) of U.S. Patent No. 7,434,974 B2 (Ex. 1001, “the ’974 patent”), and
`
`concurrently filed a Motion for Joinder (Paper 3, “Mot.”). The Motion for
`
`Joinder seeks to join this proceeding with K.J. Pretech Co., Ltd. v.
`
`Innovative Display Technologies LLC, Case IPR2015-01868 (“the ’1868
`
`IPR”). Mot. 1. Patent Owner filed a Preliminary Response. (Paper 7,
`
`“Prelim. Resp.”). For the reasons described below, we institute an inter
`
`partes review of all the challenged claims and grant Petitioner’s Motion for
`
`Joinder.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`A. Grounds Asserted
`
`The Petition in this proceeding asserts the same four grounds as those
`
`on which we instituted review in the ’1868 IPR. On March 17, 2016, we
`
`instituted a trial in the ’1868 IPR on the following grounds:
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Kisou1
`
`Kisou
`
`§ 102(a)
`
`1, 5, 7, 8, 10, and 11
`
`§ 103(a)
`
`5, 10, and 11
`
`Kisou and Yagi2
`
`§ 103(a)
`
`3 and 4
`
`Furuya3 and Niizuma4
`
`§103(a)
`
`1, 3–5, 7, 8, 10, and 11
`
`
`1 Kisou, JP H7-64078A, March 10, 1995 (Ex. 1006).
`
`2 Yagi, U.S. Patent 4,017,155, issued April 12, 1977 (Ex. 1008).
`
`3 Furuya, JP 6-214230, August 5, 1994 (Ex. 1009).
`
`4 Niizuma, JP H5-45651, June 18, 1993 (Ex. 1007).
`
`
`
`2
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`K.J. Pretech Co., Ltd. v. Innovative Display Technologies LLC, Case
`
`IPR2015-01868, slip. op. at 25 (PTAB March 17, 2016) (Paper 15) (“’1868
`
`Decision”).
`
`B. Real Parties-In-Interest
`
`Petitioner contends that VIZIO, Inc. is the real party-in-interest. Pet.
`
`1. Patent Owner does not challenge this assertion.
`
`
`
`C. Related Matters
`
`Petitioner identifies several lawsuit involving the ’974 patent brought
`
`by Patent Owner and several other inter partes review proceedings involving
`
`the ’974 patent and related patents. Pet. 1–3.
`
`
`
`D. Decision
`
`In view of the identity of the challenge in the instant Petition and in
`
`the petition in the ’1868 IPR, we institute an inter partes review in this
`
`proceeding on the same grounds as those on which we instituted inter partes
`
`review in the ’1868 IPR.
`
`We have considered the arguments advanced by Patent Owner in the
`
`Preliminary Response. Prelim. Resp. 3–23. We are not persuaded by those
`
`arguments for at least the reasons stated in our ’1868 IPR Institution
`
`Decision. We are also not persuaded by Patent Owner’s additional argument
`
`that the Petition is untimely. Prelim. Resp. 1. The Petition was timely filed
`
`under 37 C.F.R. § 42.122. See infra.
`
`We do not institute inter partes review on any other grounds.
`
`
`
`
`
`3
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`
`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), which governs
`
`joinder of inter partes review proceedings:
`
`(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). 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/patentsapplication-
`
`process/appealing-patentdecisions/trials/patent-reviewprocessing-system-
`
`prps-0.
`
`Noting that Petitioner was served with a lawsuit asserting the ’974
`
`patent on January 2, 2014, Patent Owner argues that we should deny the
`
`Petition due to Petitioner’s delay in filing. Prelim. Resp. 1. The instant
`
`Petition, however, has been accorded a filing date of April 18, 20165 (Paper
`
`4), which is within one month of the March 17, 2016 institution date in the
`
`’1868 IPR. The Petition, therefore, satisfies the joinder requirement of being
`
`
`5 Petitioner states that April 17, 2016 was a Sunday, giving Petitioner until
`the next business day, April 18, 2016, to file under the provisions of 37
`C.F.R. § 1.7(a). Mot. 3.
`
`
`
`4
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`filed within one month of our instituting a trial in the ’1868 IPR. 37 C.F.R.
`
`§ 42.122. As such, we decline to exercise our discretion and deny this
`
`petition under 35 U.S.C. § 325(a).
`
`
`
`In its Motion for Joinder, Petitioner contends that joinder is
`
`appropriate because (1) the grounds asserted in the instant Petition are the
`
`same as in the ’1868 IPR; (2) Petitioner’s arguments regarding the asserted
`
`references are identical to the arguments raised in the ’1868 IPR; and (3)
`
`Petitioner has submitted, in support of its petition, the same declaration of
`
`the technical expert as submitted in support of the ’1868 IPR. Mot. 4.
`
`Petitioner contends it would be prejudiced if joinder is denied, for example,
`
`if the petitioner in the ’1868 IPR, K.J. Pretech Co., Ltd. (“K.J. Pretech”),
`
`were to cease participating. Id. On the other hand, Petitioner contends that
`
`the parties to the ’1868 IPR would not be prejudiced if joinder were granted.
`
`Id. at 5. Petitioner states: “Given that [Petitioner] is relying on the same art,
`
`arguments, and evidence as [the petitioner in the ’1868 IPR], its joinder in an
`
`understudy role will not impact Patent Owner, put it to any additional
`
`expense, or create any delay.” Id.
`
`Further, Petitioner represents that joinder will not negatively impact
`
`the trial schedule in the ’1868 IPR (Id. at 3), and that “the Board can
`
`efficiently resolve all grounds in both the K.J. Pretech IPR Petition and
`
`VIZIO Petition in a single proceeding” (id. at 4). According to Petitioner,
`
`the Board can accomplish this because Petitioner “explicitly agrees to take
`
`an ‘understudy’ role, and coordinate any involvement through counsel for
`
`K.J. Pretech.” Id. at 6. Petitioner concludes that the instant proceeding does
`
`not raise any issues that have not already been raised in the ’1868 IPR. Id. at
`
`6.
`
`
`
`5
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`
`While opposing granting of the Petition, Patent Owner has not oppose
`
`joinder. Prelim. Resp. 1.
`
`
`
`Joinder is discretionary based on the particular circumstances of each
`
`proceeding. In the instant proceeding, we agree with Petitioner that joinder
`
`with the ’1868 IPR would promote the efficient resolution of these
`
`proceedings. Moreover, Petitioner agrees to pursue the same challenge as
`
`presented in the ’1868 IPR, thus, the substantive issues in the ’1868 IPR
`
`would not be unduly complicated by joining with this proceeding because
`
`joinder merely introduces the same ground on which we instituted trial in the
`
`’1868 IPR, where all of the prior art is of record. Finally, Patent Owner will
`
`be able to address the challenges in a single proceeding.
`
`
`
`We acknowledge that Patent Owner has filed its Response to the
`
`Petition in the ’1868 IPR. IPR2015-01868, Paper 20. As the grounds on
`
`which we are instituting trial in the instant proceeding are identical to those
`
`on which we instituted trial in the ’1868 IPR, as is the expert declaration,
`
`joinder of this proceeding with the ’1868 IPR should not affect that paper, or
`
`the Revised Scheduling Order in the ’1868 IPR (IPR2015-01868, Paper 19).
`
`
`
`IV. CONCLUSION
`
`Based on the record before us, we institute an inter partes review in
`
`IPR2016-00910 and grant Petitioner’s motion to join that proceeding to
`
`IPR2015-01868.
`
`
`
`
`
`6
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`
`V. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that inter partes review in IPR2016-00910 is hereby
`
`instituted;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`
`granted, and IPR2016-00910 is joined with IPR2015-01868;
`
`FURTHER ORDERED that the grounds on which IPR2015-01868
`
`was instituted are unchanged and no other grounds are included in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Revised Scheduling Order entered in
`
`IPR2015-01868 (Paper 19) remains unchanged and shall govern the
`
`schedule of the joined proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding, K.J.
`
`Pretech Co., Ltd. and VIZEO, Inc. will file papers, except for motions that
`
`do not involve the other party, as a single, consolidated filing; that the filing
`
`party (either K.J. Pretech Co., Ltd. and VIZEO, Inc.) will identify each such
`
`filing as a Consolidated Filing, and will conduct coordinated (not separate)
`
`discovery;
`
`FURTHER ORDERED that VIZEO, Inc. shall not be permitted to
`
`raise any new grounds not already instituted by the Board in the ’1868 IPR,
`
`or introduce any argument or discovery not already introduced by K.J.
`
`Pretech;
`
`FURTHER ORDERED that VIZEO, Inc. shall be bound by any
`
`agreement between Patent Owner and K.J. Pretech in the ’1868 IPR
`
`concerning discovery or depositions;
`
`
`
`7
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`
`FURTHER ORDERED that VIZEO, Inc. shall not receive any direct,
`
`cross examination, or redirect time beyond that permitted for K.J. Pretech
`
`alone, under either 37 C.F.R. § 42.53 or any agreement between Patent
`
`Owner and K.J. Pretech;
`
`FURTHER ORDERED that IPR2016-00910 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`
`made in IPR2015-01868;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2015-01868; and
`
`FURTHER ORDERED that the case caption in IPR2015-01868 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`
`
`8
`
`
`
`IPR2016-00910
`Patent No. 7,434,974 B2
`
`FOR PETITIONER VIZIO, INC.:
`
`Brian Buroker
`Blair Silver
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`FOR PETITIONER K.J. PRETECH CO., LTD.:
`
`Robert Pluta
`Amanda Streff
`Baldine Paul
`Anita Lam
`Saqib Siddiqui
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`FOR PATENT OWNER:
`
`Justin B. Kimble
`Terry Saad
`Nicholas Kliewer
`BRAGALONE CONROY P.C.
`JKimble-IPR@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`
`
`9
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 4, 2016
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`K.J. PRETECH CO., LTD. AND VIZEO, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-018681
`Patent 7,434,974 B2
`_______________
`
`
`
`
`1 Case IPR2016-00910 has been joined with this proceeding.
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