Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: January 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCL CORPORATION; TCL MULTIMEDIA TECHNOLOGY
`HOLDINGS, LTD.; and TTE TECHNOLOGY, INC.;
`Petitioner,
`v.
`LEXINGTON LUMINANCE LLC,
`Patent Owner.
`
`
`
`Case IPR2017-01780
`Patent 6,936,851 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: January 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCL CORPORATION; TCL MULTIMEDIA TECHNOLOGY
`HOLDINGS, LTD.; and TTE TECHNOLOGY, INC.;
`Petitioner,
`v.
`LEXINGTON LUMINANCE LLC,
`Patent Owner.
`
`
`
`Case IPR2017-01780
`Patent 6,936,851 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`INTRODUCTION
`I.
`TCL Corporation, TCL Multimedia Technology Holdings, Ltd., and
`TTE Technology, Inc. (collectively, “Petitioner”) filed a Petition (Paper 2,
`“Pet.”) to institute an inter partes review of claims 1−3 and 15–18 of U.S.
`Patent No. 6,936,851 B2 (Ex. 1001, “the ’851 patent”) pursuant to 35 U.S.C.
`§§ 311–19. Lexington Luminance LLC (“Patent Owner”) filed a Patent
`Owner Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review
`may be instituted if “the information presented in the petition filed under
`section 311 and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we conclude that the Petition relies
`on the same prior art that was presented previously to the Office and
`exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an
`inter partes review.
`
`Related Proceedings
`A.
`The parties indicate that the ’851 patent is being asserted in the
`following action: Lexington Luminance LLC v. TCL Multimedia Tech.
`Holdings, Ltd., No. 1-16-cv-11458 (D. Mass). Pet. 43; Paper 6, 2.
`Petitioner and Patent Owner also identify various district court
`proceedings that are no longer pending in which the ’851 patent was
`asserted: (1) Lexington Luminance LLC v. Feit Electric Co., Inc., No. 1:12-
`cv-11554 (D. Mass.); (2) Lexington Luminance LLC v. Osram Sylvania, Inc.,
`
`2
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`No. 1:12-cv-11551 (D. Mass.); (3) Lexington Luminance LLC v. Lighting
`Sci. Group Corp., No. 1:12-cv-11552 (D. Mass.); (4) Lexington Luminance
`LLC v. Amazon.com Inc., No. 1:12-cv-12216 (D. Mass.); (5) Lexington
`Luminance LLC v. Google, Inc., No. 1:12-cv-12218 (D. Mass.); (6)
`Lexington Luminance LLC v. Samsung Elecs. Co., Ltd., No. 1-16-cv-11138,
`(D. Mass); and (7) Lexington Luminance LLC v. LG Elecs., Inc., No. 1:12-
`cv-12175, (D. Mass.). Paper 6, 2–3.
`Patent Owner also identifies a decision by the United States Court of
`Appeals for the Federal Circuit—Lexington Luminance LLC v. Amazon.com
`Inc., 601 F. App’x 963 (Fed. Cir. 2015)—and ex parte Reexamination
`Control No. 90/012,964, both of which involved the ’851 patent. Id. at 3.
`The ’851 patent also has been the subject of three petitions for inter
`partes review, all of which have been denied. See LG Innotek Co. v.
`Lexington Luminance LLC, Case IPR2017-00052 (PTAB Mar. 30, 2017)
`(“IPR2017-00052”) (Paper 7) (Decision Denying Institution of Inter Partes
`Review); Samsung Elecs. Co., Ltd. v. Lexington Luminance LLC, Case
`IPR2017-00539 (PTAB June 20, 2017) (“IPR2017-00539”) (Paper 8)
`(Decision Denying Institution of Inter Partes Review); Samsung Elecs. Co.,
`Ltd. v. Lexington Luminance LLC, Case IPR2017-00540 (PTAB June 20,
`2017) (“IPR2017-00540”) (Paper 8) (Decision Denying Institution of Inter
`Partes Review); see also Pet. 2 n.1; Paper 6, 2.
`
`3
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`Asserted Ground of Unpatentability
`B.
`Petitioner asserts the following ground of unpatentability:
`Reference
`Basis1
`Challenged Claims
`§ 103(a) 1–3 and 15–18
`
`Niki2
`
`Pet. 4–5.
`
`II. ANALYSIS
`Prior Challenges to Related Patents
`A.
`As noted above, two other petitioners previously filed petitions
`seeking inter partes review of the claims of the ’851 patent. Two of those
`petitions, IPR2017-00052 and IPR2017-00539 (collectively, “the Niki
`Petitions”), inter alia, challenged claims 1–3 and 15–18 of the ’851 patent as
`being unpatentable as obvious based on Niki. See IPR2017-00052, Paper 2,
`3 (Petition); IPR2017-00539, Paper 2, 3 (Petition). The third petition,
`IPR2017-00540 challenged the claims of the ’851 patent based on different
`prior art. IPR2017-00540, Paper 2, 3 (Petition).
`
`The Parties’ Contentions
`B.
`Petitioner challenges claims 1–3 and 15–18 of the ’851 patent as
`being unpatentable as obvious over Niki. Pet. 4–5. Petitioner argues
`although Niki “has been previously included within IPR petitions filed by
`other petitioners, the present Petition presents Niki in a new and different
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’851
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`2 U.S. Patent No. 6,870,191 B2 (filed July 24, 2002, issued Mar. 22, 2005)
`(Ex. 1008, “Niki”).
`
`4
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`light, and it includes additional arguments not presented in the previous
`proceedings.” Id. at 2–3 (footnote omitted). More specifically, Petitioner
`asserts “the Petition and supporting evidence focus on the limited written
`description provided by the ’851 patent for the whereby clause claim
`element,[3] and corresponding and comprehensive disclosure within Niki.”
`Id. at 3. Petitioner avers “[t]his argument was not presented in the prior IPR
`challenges to the ’851 patent.” Id. at 4.
`Petitioner further argues “it is unjust for [the] prior and independent
`petitions to be used to deprive this petitioner of its opportunity to be heard
`(and thus, defend itself from [Patent Owner’s] aggression) on its novel
`application of the Niki prior art.” Id. at 3.
`Patent Owner argues that the Board should deny institution under
`35 U.S.C. § 325(d) because the same art was previously considered and
`rejected by the Board in the Niki Petitions. Prelim Resp. 5–7. Patent Owner
`further argues “Niki was before the Examiner during a recent reexamination
`proceeding filed by a third party” which provides an “independent basis on
`which the Board should exercise its discretion to deny the Petition.” Id. at
`6–7 (citing Ex. 2002, 176).4,5
`
`
`3 Independent claims 1, 3, and 15 recite “whereby said plurality of inclined
`lower portions are configured to guide extended lattice defects away from
`propagating into the active layer.”
`4 The Preliminary Response contains a typographical error and cites Exhibit
`2003. We have corrected that typographical error above.
`5 The cited page is an Information Disclosure Statement (IDS) citing Niki.
`Ex. 2002, 176. Because, for the reasons discussed infra, we exercise our
`discretion under 35 U.S.C. § 325(d) based on the Board’s prior consideration
`of Niki in the earlier proceedings, we need not address whether, or under
`what circumstances, merely citing a reference in an Information Disclosure
`
`5
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`Application of 35 U.S.C. § 325(d)
`C.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a) (“the Board may authorize the review to
`proceed” (emphasis added)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2140 (2016) (the AIA does not impose a “mandate to institute
`review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir.
`2016) (explaining that under § 314(a), “the PTO is permitted, but never
`compelled, to institute an [inter partes review] proceeding”). Our discretion
`on whether to institute trial is guided by 35 U.S.C. § 325(d), which provides,
`in relevant part:
`MULTIPLE PROCEEDINGS -- . . . In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the
`Office.
`Patent Owner urges us to exercise that discretion and deny the Petition
`because “the very same grounds of [unpatentability] proposed in this
`proceeding (i.e., obviousness of claims 1–[3] and 15–18 over Niki) were
`recently considered and rejected by the Board in two previous IPRs
`challenging the ’851 Patent.” Prelim. Resp. 6 (citing IPR2017-00052, Paper
`7; IPR2017-00539, Paper 8). We first consider whether the Petition presents
`“the same or substantially the same prior art” as that previously presented to
`the Office, and then determine whether it is appropriate to exercise our
`
`Statement is sufficient for the Board to exercise its discretion under section
`325(d). Cf. Fox Factory, Inc. v. SRAM, LLC, Case IPR2016–01876, slip op.
`at 7–8 (PTAB Apr. 3, 2017) (Paper 8) (declining to exercise discretion based
`on § 325(d) where the prior art was merely “cited on an IDS [and] there is
`no evidence that it was considered by the Examiner”).
`
`6
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`discretion to deny institution. See Neil Ziegmann, N.P.Z., Inc. v. Stephens,
`Case IPR2015-01860, slip op. at 14–15 (PTAB Sept. 6, 2017) (Paper 13).
`
`The Same or Substantially the Same Prior Art
`1.
`There is no dispute that the asserted art in the Petition is the same
`prior art that previously was presented in the Niki Petitions. Compare Pet.
`4–5 (asserting unpatentability based on Niki), with IPR2017-00052, Paper 2,
`3 (Petition) (asserting a ground of unpatentability based on Niki); IPR201-
`00539, Paper 2, 3 (Petition) (asserting a ground of unpatentability based on
`Niki). Accordingly, we determine that the same prior art is asserted in the
`Petition as was presented in earlier petitions presented to the Office.
`Although Petitioner avers the arguments in the instant Petition are not
`substantially the same as the arguments raised in the Niki Petitions, “the use
`of the word ‘or’ in ‘prior art or arguments’ indicates that the presence of
`previously presented prior art or arguments is sufficient to invoke Section
`325(d).” Neil Ziegmann, N.P.Z., Case IPR2015-01860, slip op. at 19 (Paper
`13). Accordingly, even if Petitioner’s arguments are not substantially the
`same as those raised in the Niki Petitions, the statutory requirement of
`§ 325(d) is satisfied by presenting the same prior art.
`
`Exercise of Our Discretion to Deny Institution
`2.
`Petitioner argues that applying § 325(d) in this case where Petitioner
`was not a party to the earlier proceedings would be unjust and deprive
`Petitioner of its opportunity to be heard. Pet. 2–3. However, our discretion
`under § 325(d) involves a balance between several competing interests, not
`just Petitioner’s opportunity to be heard. See Neil Ziegman, Case IPR2015-
`01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11) (“While
`petitioners may have sound reasons for raising art or arguments similar to
`
`7
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`those previously considered by the Office, the Board weighs petitioners’
`desires to be heard against the interests of patent owners, who seek to avoid
`harassment and enjoy quiet title to their rights.”) (citing H. Rep. No. 112–98,
`pt. 1, at 48 (2011)). “On the one hand, there are the interests in conserving
`the resources of the Office and granting patent owners repose on issues and
`prior art that have been considered previously.” Fox Factory, Paper 8, slip
`op. at 7. “On the other hand, there are the interests of giving petitioners the
`opportunity to be heard and correcting any errors by the Office in allowing a
`patent—in the case of an inter partes review—over prior art patents and
`printed publications.” Id.
`On its face, § 325(d) does not contain any recitation regarding the
`identity of the party that previously presented the prior art; instead, the
`language of § 325(d) focuses solely on whether or not a petition relies on
`“the same or substantially the same prior art or argument previously . . .
`presented to the Office.” 35 U.S.C. § 325(d). This stands in contrast to the
`estoppel provisions, for example, which only apply when the same petitioner
`brings a second petition for inter partes review. See 35 U.S.C § 315(e)(1)
`(“The petitioner in an inter partes review [is estopped] with respect to . . .
`any ground that the petitioner raised or reasonably could have raised during
`that [earlier] inter partes review.”). Thus, § 325(d) is not limited to instances
`where the petitioner is the party who previously brought the prior art to the
`Office’s attention.
`Although this is Petitioner’s first petition challenging the
`unpatentability of claims of the ’851 patent, based on the facts before us we
`determine it is appropriate to exercise our discretion to deny the Petition
`under 35 U.S.C. § 325(d). The asserted art is identical to that presented in
`
`8
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`the Niki Petitions, this is the third petition challenging the patentability of
`the claims of the ’851 patent as obvious based on Niki, and based on the
`timing of the filing of the Petition, Petitioner had the benefit of our prior
`decisions on institution, as well as Patent Owner’s Preliminary Responses, in
`those prior proceedings. These circumstances favor exercising our
`discretion to deny the Petition.
`
`III. CONCLUSION
`After due consideration of the record before us and for the foregoing
`reasons, we conclude that the circumstances of this case justify exercising
`our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes
`review.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’851 patent and no trial is instituted.
`
`
`9
`
`
`
`IPR2017-01780
`Patent 6,936,851 B2
`PETITIONER:
`
`W. Karl Renner
`Dan Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`dsmith@fr.com
`
`PATENT OWNER:
`Robert Katz
`KATZ PLLC
`rkatz@katzfirm.com
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`10
`
`
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