LG Electronics, Inc. v. Mondis Tech, Ltd.

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Trials@uspto.gov 	Paper 8
571-272-7822 	Entered: September 17, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
LG ELECTRONICS, INC.,
Petitioner,
v.
MONDIS TECHNOLOGY LTD.,
Patent Owner.
Case IPR2015-00937
Patent 6,513,088 B2
Before MICHAEL R. ZECHER, PATRICK R. SCANLON, and
JASON J. CHUNG, Administrative Patent Judges.
ZECHER, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108

IPR2015-00937
Patent 6,513,088 B2
I. 	BACKGROUND
A. Introduction
Petitioner, LG Electronics, Inc. (“LG”), filed a Petition requesting an
inter partes review of claims 3 and 4 of U.S. Patent No. 6,513,088 B2
(Ex. 1001, “the ’088 patent”). Paper 2 (“Pet.”). Patent Owner, Mondis
Technology Ltd. (“Mondis”), timely filed a Preliminary Response. Paper 6
(“Prelim. Resp.”).1 We have jurisdiction under 35 U.S.C. § 314, which
provides that an inter partes review may not be instituted “unless . . . the
information presented in the petition . . . shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.”
For the reasons set forth below, we determine that the Petition is
barred under 35 U.S.C. § 315(b). We, therefore, deny the Petition.
B. Related Matters
The ’088 patent has been asserted in the following proceedings: (1)
Mondis Tech. Ltd. v. LG Elec., Inc., No. 2:14-cv-00702 (E.D. Tex.); (2)
Mondis Tech. Ltd. v. LG Elec., Inc., No. 2:07-cv-565 (E.D. Tex.); (3)
Mondis Tech. Ltd. v. Top Victory Elec. (Taiwan) Co. Ltd., No. 2:08-cv-478
(E.D. Tex.); (4) Mondis Tech. Ltd. v. Chimei Innolux Corp., No. 2:11-cv-378
(E.D. Tex.); (5) Mondis Tech. Ltd. v. Hon Hai Precision Indus. Co. Ltd.,
No. 2:12-cv-309 (E.D. Tex.); (6) Hitachi v. Amtran Tech. Co., Ltd., No.
1 A comparison of the Preliminary Response that is Paper 6 and the
Preliminary Response that is Paper 7 reveals that these papers are identical.
Compare Paper 6, with Paper 7. We, therefore, presume that Mondis
mistakenly filed two identical Preliminary Responses. For purposes of this
decision, we refer to the Preliminary Response that is Paper 6.
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3:05-cv-2301 (N.D. Cal.); (7) Hitachi, Ltd. v. Tatung Co., No. 3:05-cv-2302
(N.D. Cal.); (8) Hitachi, Ltd. v. Proview Int’l Holdings, Inc., No. 3:05-cv
2302 (N.D. Cal.). Pet. 1–2; Paper 4, 2.
LG filed a request for ex parte reexamination of the ’088 patent titled
Reexamination Control No. 95/013,391. Pet. 2, 13–14 (citing Ex. 1018);
Paper 4, 2. The ’088 patent also was the subject of a previous inter partes
reexamination titled Reexamination Control No. 95/000,459. Pet. 2; Paper
4, 3. In addition to this Petition, LG filed other petitions challenging the
patentability of a certain subset of claims in the following patents owned by
Mondis: (1) U.S. Patent No. 6,549,970 B2 (Case IPR2015-00938); (2) U.S.
Patent No. 6,639,588 B2 (Case IPR2015-00939); (3) U.S. Patent No.
7,089,342 B2 (Case IPR2015-00940); and (4) U.S. Patent No. 7,475,180 B2
(Case IPR2015-00942). Paper 4, 3.
II. 	ANALYSIS
LG contends that it is not barred or estopped from requesting an inter
partes review of the ’088 patent for the following three reasons: (1) the
Petition is filed within one year of service of a complaint alleging
infringement of the ’088 patent and, therefore, satisfies the requirements of
§ 315(b); (2) following dismissal of a first infringement lawsuit between the
parties, the parties were left in the same legal position with respect to the
“Unreleased Products” as though the first complaint had never been served;
and (3) equitable and public policy considerations favor a “broad”
interpretation of § 315(b). Pet. 3–7. We begin our analysis by providing a
brief summary of the relevant complaints alleging infringement of the ’088
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patent filed in district court, followed by a brief overview of § 315(b), and
then we address each of LG’s arguments in turn.
It is undisputed that LG was served with a complaint alleging
infringement of the ’088 patent on two occasions. The first complaint was
served on January 11, 2008 (Ex. 1032, “the 2008 Complaint”), and the
second complaint was served on October 16, 2014 (Ex. 1003, “the 2014
Complaint”). The 2008 Complaint was served more than one year prior to
the date on which LG filed this Petition requesting an inter partes review of
the ’088 patent (March 27, 2015). The 2014 Complaint was served less than
one year prior to the date on which LG filed this Petition requesting an inter
partes review of the ’088 patent.
Section 315(b) of Title 35 of the United States Code provides, in
relevant part:
An inter partes review may not be instituted if the petition
requesting the proceeding is filed more than 1 year after the
date on which the petitioner, real party in interest, or privy of
the petitioner is served with a complaint alleging infringement
of the patent.
In this case, because the Petition was filed more than one year after
the service of the 2008 Complaint, it falls outside the one-year time bar for
pursuing an inter partes review set forth in § 315(b).
LG contends that § 315(b) explicitly states that an inter partes review
may not be instituted if the petition is filed more than one year after the date
a petitioner is served with “a complaint” alleging infringement of the patent,
and that the 2014 Complaint implicates this statute because it was served
less than one year prior to the filing date of this Petition. Pet. 4–5 (citing
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Ex. 1003). LG also asserts that § 315(b) is ambiguous because it does not
require explicitly that the complaint be the “first” complaint, and that, in
view of LG’s perceived ambiguities, “a complaint,” as specified in this
statute, should be interpreted as the 2014 Complaint and should not be
interpreted as the 2008 Complaint Id. at 5.
We decline LG’s invitation to amend § 315(b) by inserting either
“latest” or “second” into the statute. Rather, we interpret “a complaint,” in
accordance with the plain language of § 315(b), to include “a complaint” as
explicitly stated. This statute prohibits institution of an inter partes review if
the petition is filed more than one year after the date a petitioner is served
with “a” complaint. The current record shows that, in this case, LG was
served with “a” complaint alleging infringement of the ’088 patent on
January 11, 2008 (the 2008 Complaint), and LG filed this Petition requesting
an inter partes review of the ’088 patent on March 27, 2015. Compare
Ex. 1032, with Paper 3 (according the Petition a filing date of March 27,
2015). Put simply, the date a complaint was served (January 11, 2008)
predates the date LG filed this Petition (March 27, 2015) by more than one
year. Consequently, the express language of § 315(b) bars us from
instituting an inter partes review of the ’088 patent.
Next, LG argues that, following the dismissal of the 2008 Complaint,
the parties were left in the same legal position with respect to “Unreleased
Products” as though the 2008 Complaint had never been served. Pet. 5–6
(citing Oracle Corp. v. Click-to-Call Techs., LP, Case IPR2013-00312, slip
op. 4 (PTAB Dec. 18, 2013) (Paper 40)). According to LG, this means that
Mondis was permitted to sue LG for infringement of the ’088 patent as to all
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the “Unreleased Products,” as defined in the parties’ settlement agreement of
the 2008 Complaint. Id. at 6. LG asserts that, indeed, this is what
transpired, as evidenced by the 2014 Complaint. Id.
We note that, in the dismissal of the 2008 Complaint, the district court
ordered that all of the claims pertaining to computer monitors asserted
against LG in that action were dismissed with prejudice, whereas the
remaining “Unreleased Products” were dismissed without prejudice.
Ex. 1033. The circumstances of this case are distinguishable from Oracle in
at least one respect. In Oracle, the entire complaint was dismissed without
prejudice rather than the hybrid situation we have here where the 2008
Complaint was dismissed both with prejudice and without prejudice.
Compare Case IPR2013-00312, Ex. 1019, with IPR2015-00937, Ex. 1033.
Instead, we view the circumstances of this case as similar to those
presented in Microsoft Corp. v. Virnetx Inc., Case IPR2014-00401. In
Microsoft, a complaint alleging infringement of the patent was dismissed
both with prejudice and without prejudice. The Board held that the
complaint triggered the one-year time bar set forth in § 315(b) because it did
not leave the parties as though the action had never been brought. Microsoft,
slip op. at 6–7 (PTAB July 23, 2014) (Paper 10).
Likewise in this case, the parties are not left as though the action
resulting from the 2008 Complaint had never been brought for a least two
reasons. First, the parties are now prohibited from pursuing their prior
claims and counterclaims with respect to computer monitors, i.e., the claims
dismissed with prejudice for the products accused of infringement in the
2008 Complaint. Second, the parties are now obligated to uphold the terms
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of their settlement agreement, and to submit to the jurisdiction of the United
States District Court for the Eastern District of Texas to enforce it. See
Ex. 1033 ¶ 3 (“This Court retains jurisdiction to enforce the parties’
Settlement Agreement.”). For at least these reasons, we are not persuaded
that the parties are in the same legal position as if the action resulting from
the 2008 Complaint had never been brought.
Lastly, LG contends that, as a matter of equity, if the prior dismissal
of the 2008 Complaint permits Mondis to continue to accuse LG of
infringing the patents originally asserted in the 2008 Complaint, LG should
retain its recourse under the America Invents Act with respect to challenging
these patents. Pet. 6. In other words, LG argues that, because Mondis is
allowed to continue to assert the ’088 patent against LG, fairness dictates
that LG be permitted to file this Petition now that Mondis has re-asserted the
’088 patent in the 2014 Complaint. Id. LG further contends that, as a matter
of public policy, if a dismissal both with prejudice and without prejudice is
interpreted as one that was dismissed with prejudice for purposes of
§ 315(b), such an interpretation would have the practical effect of deterring
settlement. Id. at 7.
As we explained previously, § 315(b) requires a petitioner to file a
petition within one year of service of a complaint alleging infringement of a
patent. The purpose of § 315(b) is “to ensure that inter partes review is not
used as a tool for harassment by repeated litigation and administrative
attacks.” See Loral Space & Comms., Inc., v. ViaSat, Inc., Case IPR2014
00236, 239, 240, slip op. at 8 (PTAB Apr. 21, 2014) (Paper 7) (alteration
and quotations from the legislative history omitted). In this case, LG chose
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to negotiate a settlement agreement with Mondis that specifically excluded
“Unreleased Products.” In addition, LG has the option of filing an ex parte
reexamination, which, as we explained above in the related matters section,
they already did twice. See supra Section I(B). Accordingly, we are not
persuaded that equitable and public policy considerations favor a “broad”
interpretation of § 315(b).
III. 	CONCLUSION
In summary, the Petition is barred because it falls outside the one-year
time bar for pursuing an inter partes review set forth in § 315(b).
IV. 	ORDER
In consideration of the foregoing, it is ORDERED that the Petition is
DENIED and no trial is instituted.
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Patent 6,513,088 B2
For PETITIONER:
Robert G. Pluta
Michael J. Word
John X. Zhu
Mayer Brown LLP
rpluta@mayerbrown.com
mword@mayerbrown.com
jzhu@mayerbrown.com
For PATENT OWNER:
Robert W. Ashbrook, Jr.
Scott A. Warren
Dechert LLP
robert.ashbrook@dechert.com
scott.warren@dechert.com
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