LG Electronics, Inc.v.Innovative Display Technologies LLC

Patent Trial and Appeal Board

Jul 20, 2015

13315412 (P.T.A.B. Jul. 20, 2015)

Trials@uspto.gov Paper No. 10
571-272-7822 Entered: July 20, 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 IPR2015-00496
Patent 8,215,816 B2
____________

Before THOMAS L. GIANNETTI, BEVERLY M. BUNTING, AND
MICHELLE N. WORMEESTER Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
Dismissal of Motion for Joinder
37 C.F.R. § 42.122

Case IPR2015-00496
Patent 8,215,816 B2

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LG Electronics, Inc. (“Petitioner”) filed a petition (“Petition”)
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1–4 (“the challenged claims”) of U.S. Patent No. 8,215,816 B2 (Ex.
1001, “the ’816 patent”). Paper 2 (“Pet.”). With the Petition, Petitioner
filed a motion for joinder (Paper 3 (“Joinder Motion”)), seeking to join with
LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case
IPR2014-01095 (PTAB) (“the 1095 IPR”).
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Joinder Motion 1. Innovative
Display Technologies LLC (“Patent Owner”) filed an opposition to the
Joinder Motion (Paper 7) and a Preliminary Response (Paper 8).
Applying the standard set forth in 35 U.S.C. § 314(a), and for the
reasons that follow, we deny this Petition and dismiss the Joinder Motion.

I. BACKGROUND
A. Related Proceedings
The parties state that Patent Owner has asserted infringement of the
’816 patent in Delaware Display Group LLC v. LG Electronics Inc., No.
1:13-cv-02109 (D. Del., filed Dec. 31, 2013). Pet. 1; Paper 5, 2. Patent
Owner identifies other proceedings in which it has alleged infringement of
the ʼ816 patent. Paper 5, 2–6. In addition to the 1095 IPR, Patent Owner
identifies another petition challenging the patentability of the ’816 patent,
Mercedes-Benz, LLC v. Innovative Display Technologies LLC, IPR2015-
00366 (PTAB) (terminated). Id. at 6. Further, Patent Owner cites additional

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At the time Petitioner filed its motion for joinder with the 1095 IPR, the
Board had not yet decided whether to institute an inter partes review. We
subsequently denied inter partes review of claims 1–4 on all asserted
grounds. See 1095 IPR, Paper 9.
Case IPR2015-00496
Patent 8,215,816 B2

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petitions challenging the patentability of patents related to the ’816 patent.
Id. at 6–7.

B. References
Petitioner relies on the following references (Pet. 8–11), the Admitted
Prior Art (“APA”) discussed in the ’816 patent (id. at 8) and the Declaration
of Dr. Michael J. Escuti (Ex. 1004):
References Patents/Printed
Publications
Date Exhibit
Pristash US 5,005,108 April 2, 1991 1006
Funamoto US 5,619,351 April 8, 1997
1
1007
Gyoko JP H6-273756 Sept. 30, 1994
2
1008
Murase US 5,178,447 Jan. 12, 1993 1011
Tsunoda JP H6-051130 Feb. 25, 1994
3
1012
Imai US 5,253,089 Oct. 12, 1993 1015

C. Grounds Asserted
Petitioner challenges claims 1–4 of the ’816 patent on the following
grounds. Pet. 11.

1
Petitioner relies on Funamoto’s 35 U.S.C. § 371 date of May 10, 1994.
Pet. 9.
2
Gyoko is a Japanese unexamined patent application, and Petitioner relies
on the September 30, 1994 application publication date. Id. at 10.
3
Tsunoda is a Japanese unexamined patent application, and Petitioner relies
on the February 25, 1994 publication date. Id.
Case IPR2015-00496
Patent 8,215,816 B2

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References Basis Claims Challenged
Pristash, Tsunoda, or in
the alternative Imai
§ 103(a) 1–4
Funamoto, Tsunoda, or
in the alternative Imai
§ 103(a) 1–4
Gyoko, Tsunoda, or in
the alternative Imai
§ 103(a) 1–4
Murase, Tsunoda, or in
the alternative Imai
§ 103(a) 1–4

II. ANALYSIS
In the 1095 IPR, applying the standard set forth in 35 U.S.C. § 314(a),
we denied the Petition and declined to institute an inter partes review of
claims 1–4 of the ’816 patent based on any of the asserted grounds. 1095
IPR, Paper 9, 2. Now, in the instant Petition, Petitioner challenges these
same claims, and Petitioner relies on the same arguments we found
unavailing in the 1095 IPR. Pet. 11–50. Indeed, Petitioner acknowledges
that “the invalidity grounds raised in this IPR are identical to the invalidity
grounds raised in the LGD IPR.” Mot. 1.
In view of the identity of the challenges to the ʼ816 patent, and
reliance on essentially the same arguments and evidence presented in both
this Petition and the 1095 IPR, we deny institution of inter partes review in
this proceeding of claims 1–4 for the same reasons we denied institution of
inter partes review in the 1095 IPR. See 1095 IPR, Paper 9.

III. SUMMARY
For the foregoing reasons, we conclude Petitioner has not
demonstrated a reasonable likelihood that at least one challenged claim is
unpatentable based on the asserted grounds. We, therefore, do not institute
Case IPR2015-00496
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an inter partes review on any of the asserted grounds as to any of the
challenged claims. Because the petition in IPR2014-01095 was denied and
inter partes review was not instituted, Petitioner’s Joinder Motion is
dismissed as moot. See 35 U.S.C. § 315(c) (permitting joinder if Director
institutes inter partes review).

IV. ORDER
In consideration of the foregoing, it is hereby:
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.

Case IPR2015-00496
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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