LG Electronics, Inc.v.Delaware Display Group LLC

Patent Trial and Appeal BoardJul 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 2 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 3 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. Case IPR2015-00492 Patent 7,914,196 4 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 5 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

LG Electronics, Inc. v. Delaware Display Group LLC