LG Electronics, Inc.v.Delaware Display Group LLC

Patent Trial and Appeal Board

Jul 13, 2015

12054680 (P.T.A.B. Jul. 13, 2015)

Trials@uspto.gov Paper No. 10
571-272-7822 Date: July 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LG ELECTRONICS, INC.,
Petitioner,

v.

DELAWARE DISPLAY GROUP LLC,
Patent Owner.
____________

Case IPR2015-00492
Patent No. 7,914,196
____________

Before LORA M. GREEN, THOMAS L. GIANNETTI, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Case IPR2015-00492
Patent 7,914,196

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I. BACKGROUND
LG Electronics, Inc. (“Petitioner”) filed a Petition pursuant to
35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–25 of
U.S. Patent No. 7,914,196 (“the ’196 patent”). Paper 2 (“Pet.”). Delaware
Display Group LLC (“Patent Owner”) filed a Preliminary Response. Paper
8 (“Prelim. Resp.).
Concurrently with the Petition, Petitioner filed a Motion for Joinder.
Paper 3 (“Joinder Motion.”). The Joinder Motion seeks to join this
proceeding with LG Display Co., Ltd. v. Delaware Display Group, LLC,
Case IPR2014-01359 (“the ʼ1359 IPR”). Joinder Motion 1. Patent Owner
filed an opposition to the Joinder Motion. Paper 7 (“Opposition). At the
time Petitioner filed its Petition and Motion for Joinder, the Board had not
yet decided whether to institute an inter partes review in the ʼ1359 IPR.
Petitioner asserts that the ʼ1359 IPR involves the same patent and
same issues as this proceeding. See infra. As stated by Petitioner in the
Motion for Joinder, “the invalidity grounds raised in this IPR are identical to
the invalidity grounds raised in the [ʼ1359] IPR.” Joinder Motion 1.
On March 2, 2015, we entered a Decision in the ʼ1359 IPR denying
the Petition as to all challenges. ʼ1359 IPR, Paper 12 (“Institution
Decision”). We determined that applying the standard set forth in 35 U.S.C.
§ 314(a), the petitioner in that proceeding, LG Display Co, Ltd., had failed
to demonstrate a reasonable likelihood that it would prevail with respect to
at least one challenged claim of the ʼ196 patent. Id. at 16.
Patent Owner asserts that because the petitions in this case and the
ʼ1359 IPR include identical grounds and arguments, the Petition here should
be denied. Prelim. Resp. 2.
Case IPR2015-00492
Patent 7,914,196

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For the reasons that follow, we determine that the Petition in this case
should be denied and the Joinder Motion dismissed.

II. DENIAL OF INTER PARTES REVIEW
A. References
Petitioner relies on the same references as those in the ʼ1359 IPR1:
Ando US 5,808,784 Sept. 5, 1995 Ex. 1006
Kojima US 5,797,668 Aug. 25, 1998 Ex. 1007
Koike US 5,982,540 Mar. 13, 1995 Ex. 1008
Jannson US 5,838,403 Nov. 17, 1998 Ex. 1009
Kaneko US 5,769,522 June 23, 1998 Ex. 1010
Hattersley GB 2 281 802 Mar. 15, 1995 Ex. 1011

Petitioner also relies on the same Declaration of Michael J. Escuti, Ph.D. as
in the ʼ1359 IPR (“Escuti Decl.”). Ex. 1004.
B. Grounds Asserted
Petitioner challenges claims 1–25 of the ʼ196 patent on the same
grounds as those asserted in the ʼ1359 IPR:

References Basis Claims Challenged
Kojima § 102(a) 1–3, 5, 10, 18, 19
Koike § 103(a) 22, 23
Ando and Jannson § 103(a) 1–21
Koike and Kaneko § 103(a) 1–3, 5, 7–13, 19, 21
Koike and Hattersley § 103(a) 24, 25

1 The references are ordered by exhibit number with effective dates asserted
by Petitioner. As in the ʼ1359 IPR, Petitioner here also states that it is
relying on Admitted Prior Art (“APA”) from the ʼ196 patent specification.
Pet. 8.
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C. Decision
In view of the identity of the challenges to the ʼ196 patent in this
Petition and the petition in the ʼ1359 IPR, we deny institution of inter partes
review in this proceeding on the same grounds as those on which we denied
institution of inter partes review in the ʼ1359 IPR. See ʼ1359 IPR Institution
Decision 9–16.

III. DISMISSAL OF MOTION FOR JOINDER
Because the petition in IPR2014-01359 was denied and inter partes
review was not instituted, and because the Petition in this proceeding is
being denied, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C.
§ 315(c) (permitting joinder if Director institutes inter partes review).

IV. ORDER
It is, therefore,
ORDERED that the Petition is denied as to all challenged claims and
no trial is instituted;
FURTHER ORDERED that the Motion for Joinder is dismissed as
moot.

Case IPR2015-00492
Patent 7,914,196

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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