Takeaway: Institution of a ground of unpatentability relying upon a prior art published patent application may be denied where, instead of providing a copy of the published application, a copy of the non-prior art patent that issued from the published application is provided with the petition.

In its Decision, the Board found that Petitioner had shown that there is a reasonable likelihood that it would prevail with respect to the challenged claims 1-5 of the ‘973 patent, and instituted trial. The ‘973 patent is directed to light emitting panel assemblies. Petitioner challenged claims 1-5 on five grounds.

As an initial matter, the Board addressed Patent Owner’s argument that Petitioner failed to name two real parties-in-interest, LG Electronics Inc. and LG Electronics U.S.A., Inc. The Board noted that “an important factor in determining real party-in-interest is control or the ability to control the proceeding.” The Board rejected Patent Owner’s argument because, here, “LG Electronics Inc. is not even a majority owner of Petitioner” and “the fact that the attorneys representing Petitioner here also represent LG Electronics Inc. in a district court lawsuit involving the ‘973 patent . . . without more, is insufficient evidence to demonstrate control of this proceeding by LG Electronics.” Similarly, Patent Owner’s argument failed as to LG Electronics U.S.A., Inc., which is 100% owned by LG Electronics, Inc. The Petition was thus not denied on this basis.

The Board next addressed the effective filing date of the ‘973 patent. Petitioner convincingly argued that the grandparent application did not provide written description support for certain limitations of claims of the ‘973 patent that were added by amendment during prosecution. The claims were thus not entitled to the filing date of the grandparent application. The Board, however, did not afford an effective date as of the date of the amendment adding the new matter, as “the issue it raises is not a filing date issue, but instead the question of whether the originally-filed disclosure for the ‘973 patent supports the amended claims.” Because that question is “ultimately a written description issue,” which the Board does not address in an inter partes review, for purposes of “this proceeding only,” the Board found that the effective filing date is the date of the application for the ‘973 patent.

The Board next addressed the grounds in the Petition. Regarding the first ground, it was denied because Petitioner did not provide a copy of the published application, which was asserted as § 102(b) prior art. See 37 C.F.R. § 104(b)(5). Instead, Petitioner provided the patent that later issued from the asserted published application, which did not have prior art status because under § 102(e) the inventive entity of that patent and the challenged ‘973 patent are the same.

The Board granted review under the second ground––of anticipation by Shinohara. In countering Patent Owner’s argument that Petitioner’s contention depends “on picking, choosing, and combining various embodiments within Shinohara’s disclosure,” the Board distinguished the present case from Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). Here, the elements that were combined were present in both implicated embodiments, while in Net MoneyIN the combined features were not present in both implicated embodiments.

The Board addressed the next two grounds of obviousness and denied institution. For an obviousness challenge, “it is not sufficient for Petitioner to demonstrate that each of the components is known.” Rather, Petitioner “must also provide ‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Petitioner here, for example, failed to “explain sufficiently why one of ordinary skill in the art would combine elements of Shinohara with elements of Yoshikawa, or why one of ordinary skill in the art would modify the teachings of Yoshikawa to arrive at the claimed invention.”

In the end, inter partes review was instituted as to claims 1-5 of the ‘973 patent based on anticipation of claims 1-5 by Shinohara.

LG Display Co., Ltd. v. Delaware Display Group LLC, IPR2015-00506
Paper 8: Decision on Institution of Inter Partes Review
Dated: July 6, 2015
Patents: 7,434,973 B2
Before: Thomas L. Giannetti, Beverly M. Bunting, and Michelle N. Wormmeester
Written by: Wormmeester
Related proceedings: Delaware Display Group LLC v. Lenovo Group Ltd., Case No. 1:13-cv-02108 (D. Del., filed Dec. 31, 2013) and 22 pending requests for inter partes review involving patents related to the ‘973 patent.