IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`PICTIVA DISPLAYS INTERNATIONAL LTD.,
`Patent Owner.
`
`
`Case No. IPR2024-01223
`Patent No. 6,949,389
`
`
`
`
`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS
`CHALLENGING U.S. PATENT NO. 6,949,389
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`PICTIVA DISPLAYS INTERNATIONAL LTD.,
`Patent Owner.
`
`
`Case No. IPR2024-01223
`Patent No. 6,949,389
`
`
`
`
`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS
`CHALLENGING U.S. PATENT NO. 6,949,389
`
`
`
`
`
`
`
`
`
`
`
`Petitioner Samsung Display Co., Ltd. (“Petitioner”) submits this explanation
`
`for filing two petitions for inter partes review (“IPR”) of U.S. Patent No.
`
`6,949,389 (the “’389 patent”).
`
`As the Office’s Trial Practice Guide recognizes, “there may be
`
`circumstances in which more than one petition may be necessary,” including
`
`“when there is a dispute about priority date requiring arguments under multiple
`
`prior art references.” Consolidated Trial Practice Guide (“TPG”) at 59. This is such
`
`a circumstance.
`
`The ’389 patent was filed on May 2, 2002 and does not claim priority to any
`
`earlier application. However, in parallel litigation involving this patent, Petitioner’s
`
`counsel understands Patent Owner has contended that the asserted claims of
`
`the ’389 patent are entitled to a right of priority that may be as early as February 8,
`
`2001.
`
`In light of the possibility that Patent Owner may raise such an argument in
`
`an IPR challenge, Petitioner believes that two petitions are necessary to challenge
`
`the ’389 patent, as explained below.
`
`I.
`
`EXPLANATION OF THE MATERIAL DIFFERENCES BETWEEN
`THE TWO PETITIONS
`
`The petitions challenge the same claims, but over different prior art
`
`references, as summarized the following table. The first petition, IPR2024-01222,
`
`asserts references that qualify as prior art under 35 U.S.C. § 102(a), (b), and/or (e).
`
`1
`
`
`
`The second petition, IPR2024-01223, asserts references that all qualify as prior art
`
`under at least 35 U.S.C. § 102(b).
`
`
`
`Petition
`
`IPR2024-
`01222
`
`IPR2024-
`01223
`
`
`
`Ground
`I. Obvious over Yamazaki in view of the
`applicant admitted prior art (“AAPA”)
`and/or Ghosh
`II. Obvious over Yamazaki in
`AAPA/Ghosh and Fujimori
`III. Obvious over Weaver
`IV. Obvious over Weaver in view of
`Palanisamy
`V. Obvious over Weaver in view of
`Burrows
`I. Obvious over Kijima in view of Suzuki
`II. Obvious over Kijima in view of Suzuki
`and Sturm
`III. Obvious over Kijima in view of
`Suzuki and Duthaler
`IV. Obvious over Kijima in view of
`Suzuki and Fujimori
`
`Challenged Claims
`34, 35, 37, 40
`
`41-46
`
`34, 40
`35, 36
`
`37
`
`34, 37, 40
`
`35
`
`36
`
`41-46
`
`The Board should, consistent with previous Board decisions, institute both
`
`petitions here. Each petition involves different prior art references, and therefore
`
`presents materially different grounds for challenging the patent, even though both
`
`petitions challenge all claims of the ’389 patent that Patent Owner has asserted
`
`against Petitioner in the district court litigation. See SolarEdge Techs. Ltd. v. SMA
`
`Solar Tech. AG, IPR2019-01224, Paper 10 at 10 (Jan. 23, 2020).
`
`2
`
`
`
`
`
`The first petition, IPR2024-01222, includes grounds based on the asserted
`
`prior art Yamazaki, Weaver, Palanisamy, and Burrows references, which are not
`
`asserted in the second petition. Petitioner expects that Patent Owner may challenge
`
`whether some of those references are prior art. This potential dispute has required
`
`Petitioner to make arguments under multiple priority scenarios. See TPG at 59. The
`
`second petition, IPR2024-01223 includes grounds based on the asserted Kijima,
`
`Suzuki, Sturm, and Duthaler references, which are not asserted in the first petition.
`
`Fujimori is included as a combination reference in both petitions.
`
`Each of these references has particular strengths with respect to the claimed
`
`features and positions that Patent Owner may take during the proceeding, including
`
`as to priority. Accordingly, despite its best efforts to narrow the unpatentability
`
`issues presented to the Board, Petitioner had to separate the challenges into two
`
`petitions in order to ensure the grounds associated with each challenged claim
`
`within each petition contain the necessary specificity as to how the asserted prior
`
`art meets the recited limitations within the word limit applicable to IPR petitions.
`
`II. RANKING OF THE PETITIONS
`
`Given the overlapping claims challenged in the petitions, the Board should
`
`institute both inter partes reviews because the burden to address the grounds raised
`
`in both petitions would not be substantially greater than that for just one petition.
`
`In addition, the Board and the parties can obtain efficiencies by holding a single
`
`3
`
`
`
`
`
`oral hearing and consolidating depositions between the proceedings. In accordance
`
`with the Board’s direction that Petitioner should identify “a ranking of the petitions
`
`in the order in which it wishes the Board to consider the merits,” however,
`
`Petitioner ranks IPR2024-01222 first. TPG at 60.
`
`
`
`Date: August 12, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By /David A. Garr/
`
` David A. Garr
` Registration No.: 74,932
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`
`
`Scott C. Weidenfeller
`Registration No.: 54,531
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`
`4
`
`
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