Delaware Display Group LLC v. LG Display America

I'll research this case thoroughly before drafting the overview.

Case overview — Delaware Display Group LLC v. LG Display America / [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.), No. 1:13-cv-02109 (D. Del.)

Parties and accused technology. The plaintiffs are Delaware Display Group LLC ("DDG") and Innovative Display Technologies LLC ("IDT"), two Austin, Texas–based patent-assertion entities. IDT is a subsidiary of Acacia Research Group (now Acacia Research Corp.), one of the largest PAEs; DDG is a co-plaintiff/affiliate entity. The asserted patents are not homegrown: they originated with Lumitex (Cleveland), moved to Solid State Opto Limited, were acquired by Rambus (via Rambus International Ltd. → Rambus Inc. → Rambus Delaware LLC), and then passed to Acacia (Acacia Research Group LLC) before landing with IDT — a chain reported in trade coverage and reflected in the PTO assignment record (STPI/iKnow case summary; Techdirt, "Know Your Troll," Aug. 12, 2014). The defendants as docketed are LG Electronics Inc., LG Electronics USA, Inc., LG Display Co., Ltd., and LG Display America, Inc. (the caption in the case metadata here names only LG Display America; the full docket and the court's own opinions list all four LG entities). The accused products are LCD-based consumer electronics — televisions, monitors, notebooks/tablets, and phones — specifically the backlight units (BLUs) and light-redirecting films inside those displays. IDT's infringement charts in the related cases charted roughly 200 accused display panels, which became the subject of a discovery fight over purchase documentation (Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13-2109-RGA (D. Del. Mar. 29, 2016), summarized by Richards, Layton & Finger, Apr. 28, 2016, https://www.rlf.com/judge-andrews-grants-in-part-motion-to-compel-discovery/).

Patents. U.S. 7,404,660 — "Light Emitting Panel Assemblies," filed June 16, 2006, issued July 29, 2008, sole inventor Jeffery R. Parker, with an earliest priority date of June 27, 1995 — is one member of a large common-family "Display Patents" group sharing a written description. Technically, the family claims a light-emitting panel assembly in which a light source edge- or back-lights a panel member, with a pattern of light-extracting deformities (projections or depressions) or optical elements on a panel surface that refract/reflect emitted light to control its output ray-angle distribution, optionally with the panel seated in a tray or housing having a cavity or recess. In this case DDG/IDT asserted the '660 along with U.S. 7,300,194, 7,384,177, 7,434,974, 7,537,370, and 8,215,816 (and, in some of the sibling suits, the "Auto Patents" 6,508,563 and 6,886,956). Key construed limitations included "a tray or housing having a cavity or recess in which the panel member is entirely received" and "both the front and back sides having a pattern of light extracting deformities that are projections or depressions" (claim construction in the parallel E.D. Tex. campaign, Innovative Display Technologies LLC v. Acer Inc., No. 2:13-cv-522 (E.D. Tex. Aug. 26, 2014), quoted in IPR2015-00745, Ex. 2002). Notably, the '660 did not survive to trial in this case: by the time Judge Andrews ruled on the defendants' Daubert motion, only the '370 and '974 patents remained at issue (Delaware Display Group LLC v. Lenovo Holding Co., C.A. Nos. 13-2108/13-2109/13-2112-RGA, mem. op. Jan. 16, 2017, https://www.ded.uscourts.gov/sites/ded/files/opinions/13-2108_2.pdf).

Procedural posture, venue, and why it matters. Filed December 31, 2013 in the District of Delaware, Wilmington Division, and assigned to Judge Richard G. Andrews (the docket is captioned 1:13-cv-02109-RGA); the case was handled in parallel with related IDT actions against Lenovo (13-2108) and VIZIO (13-2112), which shared discovery, claim construction, and pretrial proceedings, with trials staggered (LG reportedly set for December 2016, Lenovo and VIZIO in early 2017, per RPX, Nov. 10, 2016). Delaware was a natural venue because the LG defendants were alleged to be Delaware-incorporated and to sell into the district — and the "Delaware Display Group" plaintiff name itself reflects the venue-focused NPE playbook. The case's significance is threefold: (1) it was part of Acacia's IDT backlight campaign, which at its peak was among the most prolific NPE campaigns in the country (37+ suits) and swept in TV, monitor, phone, automotive, camera, and GPS makers; (2) it generated heavy PTAB linkage — LG Display filed IPR2014-01094 and IPR2015-00487 against the '660 (naming LG Display America as a real party in interest), Mercedes-Benz USA filed IPR2015-00363 against the '660, and additional petitions (e.g., IPR2015-00745; IPR2015-01717 on the '660) followed, alongside IPRs on sibling patents such as IPR2014-01359 ('196) and IPR2014-01096 ('370); and (3) it produced a substantive standing/ownership ruling in which Judge Andrews held that the Rambus→Acacia assignment documents conveyed the right to sue for pre-assignment infringement, rejecting the LG defendants' standing challenge and granting plaintiffs summary judgment on ownership while denying both sides' dispositive invalidity and infringement motions (summary judgment opinion, D.I. 351 in C.A. 13-2108 / corresponding entry in 13-2109, https://cases.justia.com/federal/district-courts/delaware/dedce/1:2013cv02108/[53947/351](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=53947-0351)/0.pdf). A follow-on Acacia/IDT action against the same LG defendants was filed December 30, 2015 (1:15-cv-01221-RGA), which RPX shows as closed April 12, 2017.

Sourcing caveats. I could not verify from the sources retrieved the precise final disposition of 13-2109 itself (settlement, dismissal, or trial outcome) — the docket shows post-resolution exhibit-return activity as late as August 2019, and the January 2017 opinion establishes that the '660 was no longer being asserted by then, but I found no opinion, verdict, or stipulated dismissal order resolving the case, so the "why did the '660 drop out" question (IPR invalidation vs. case narrowing) is not squarely sourced here. The $26 million Rambus-to-Acacia portfolio figure appears in the STPI case note and should be treated as reported rather than confirmed. Counsel identified in the record: Farnan LLP (Joseph J. Farnan Jr., Brian E. Farnan) and Bragalone Conroy PC (Bragalone, Conroy, Kimble, Perkins, Olejko, T. William Kennedy Jr.) for plaintiffs; Ross Aronstam & Moritz and Mayer Brown for the LG defendants; Vinson & Elkins for Lenovo; Gibson Dunn for VIZIO.

I'll research this case across multiple sources. Let me start with several parallel searches.

Good initial data. Let me dig into the summary judgment opinion, Markman, IPR outcomes, and final disposition.

Preliminary note on sources

This one is only partially documented in open sources. My searches returned (a) docket sheets and litigation exhibits reproduced inside PTAB filings, (b) a Delaware summary‑judgment opinion text, (c) firm/RPX case notes, and (d) LG Display's own SEC disclosures. I did not obtain a full PACER docket for 1:13‑cv‑02109, and I could not confirm a Markman opinion, a trial, a verdict, or the final written decision in the principal '660 IPR. I flag every such gap below rather than filling it in.

Also note a caption variance: the metadata names "Delaware Display Group LLC v. LG Display America," but the real case is Delaware Display Group LLC and Innovative Display Technologies LLC v. LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Display Co., Ltd., and LG Display America, Inc., C.A. No. 1:13‑cv‑02109‑RGA (D. Del., filed 2013‑12‑31), assigned to Judge Richard G. Andrews. (Docket sheet reproduced as Ex. 2011 in IPR2015‑01717.)

---

I. Filing and initial pleadings

2013‑12‑31 — Complaint (D.I. 1), entered 2014‑01‑02. Filed by DDG and IDT (both Acacia Research subsidiaries) with a jury demand, asserting eight patents: U.S. 6,755,547; 7,300,194; 7,384,177; 7,404,660; 7,434,974; 7,537,370; 7,914,196; and 8,215,816. All but the '196 (owned by DDG) were owned by IDT; the family (sole inventor Jeffery R. Parker on most; Coghlan/Ezell on some) had been acquired from Rambus and transferred to Acacia in March 2013. Accused products were LCD‑bearing devices (phones, TVs, notebooks, cameras, e‑readers). The '660 patent, "Light Emitting Panel Assemblies," issued 2008‑07‑29.

2014‑01‑02 — Service/summons. Summonses issued; IDT/DDG served LG Electronics U.S.A. on 2014‑01‑02 (per Patent Owner's opposition in IPR2015‑01717, ¶1, Ex. 2007).

Answers and counterclaims: I could not verify the LG defendants' answer/counterclaim entries (Docketalarm's reproduced docket sheet begins at D.I. 1–5). Given the posture, invalidity and non‑infringement counterclaims were almost certainly pleaded, and defendants' later invalidity positions (e.g., D.I. 392 SJ motion) confirm invalidity was in the case — but I will not state specific entry numbers I did not see.

Companion filings the same day (the "late‑2013 D. Del. wave"): 1:13‑cv‑02106 through ‑02112 (HTC, Amazon, Lenovo, LG, Pantech, Sony, VIZIO), plus IDT's parallel EDTX suits (e.g., 2:13‑cv‑0522 to ‑0527, 0783‑0784) noted as related matters on the docket. Later companions: 1:14‑cv‑00849 (Ford) and ‑00850 (GM).

Counsel (from the reproduced docket sheet and PTAB notices): Plaintiffs — Farnan LLP (Joseph J. Farnan, Jr.; Brian E. Farnan; later Michael J. Farnan) as Delaware counsel, with Bragalone Conroy P.C. (Jeffrey R. Bragalone, Justin B. Kimble, T. William Kennedy, Jr., Patrick J. Conroy, Daniel F. Olejko, James R. Perkins) pro hac vice. LG defendants (and the LG IPR petitioners) — Mayer Brown LLP (Robert G. Pluta, Baldine B. Paul, Anita Y. Lam, Alison T. Gelsleichter), with Seitz Ross Aronstam & Moritz / Ross Aronstam & Moritz LLP (Benjamin J. Schladweiler) as Delaware counsel.

---

II. Pre‑trial motions of substance

Motion to dismiss / transfer: I found no docket evidence of a Rule 12 motion or §1404/§1406 transfer motion in 02109. The "Case in other court" entries on the docket sheet (EDTX 2:13‑cv‑0522–0527, 0783‑0784) refer to the related IDT actions, not a transfer of this case into Delaware.

Stay pending IPR — resolved by a negotiated dismissal instead (2015‑10‑21). After the Board instituted LG‑filed IPRs on three patents, Judge Andrews conditioned a full stay on plaintiffs dropping the three IPR‑subject patents. Rather than accept the stay, DDG/IDT dropped them: an order dated 2015‑10‑21 dismissed, without prejudice, "the claims for patent infringement of U.S. Patent Nos. 7,384,177, 7,434,973, and 7,404,660 brought by Plaintiffs." (Order reproduced as Ex. 2008 in IPR2015‑01717.) RPX's account: Judge Andrews "agreed to stay those related cases entirely unless IDT/DDG agreed to drop, without prejudice, its claims … as to the '177, '660, and '973 patents, each of which is subject to an instituted IPR"; IDT/DDG dropped them, the stay motion was then denied, and the cases continued on the remaining patents ('547, '194, '974, '370, '196, '816). (RPX Insight, "Acacia Subs File New Complaints Asserting LCD Patents They Were Forced to Drop in Related Cases," 2015‑12‑29.)

Summary judgment (2016). A single opinion resolved a cluster of motions in the DDG/IDT Delaware actions and addressed the LG defendants specifically (I located the text via Justia at docket entry 351 of companion case 1:13‑cv‑02108; the opinion cites LG‑case briefing D.I. 374, 383, 389‑390, 392, 416, 434 and the SJ hearing transcript at D.I. 461, so treat the entry number for 02109 as unverified):

• Defendants' motion (D.I. 374) — standing/right to sue for pre‑assignment infringement — DENIED. Applying Minco v. Combustion Engineering and Abraxis v. Navinta, the court held the bare "all right, title and interest" language of the IPAA did not convey the right to sue for past infringement, but that the later IPCAA assignments, read with the recorded Patent Assignments as admissible parol evidence, were "reasonably susceptible" to that interpretation; the court therefore construed the IPCAAss to convey the past‑infringement right.
• Plaintiffs' partial SJ on ownership (D.I. 389, 390) — GRANTED (LG conceded transfer of title; only the past‑damages right was disputed, and the court resolved it for plaintiffs).
• Unclean hands — DENIED (tied to a genuine factual dispute on invalidity).
• Waiver, equitable estoppel, laches, acquiescence — GRANTED (LG did not dispute).
• License/exhaustion — resolved by agreement at the SJ hearing.
• Defendants' SJ of invalidity (D.I. 392) — DENIED, genuine disputes of material fact on at least the "tray or housing having a cavity or recess in which the panel member is entirely received" and "front and back sides having a pattern of light extracting deformities that are projections or depressions" limitations.
• Plaintiffs' partial SJ of infringement (D.I. 383) — DENIED on the same claim limitations.

Claim construction (Markman): I found no Markman opinion or hearing for 02109. Because the case was narrowed by the October 2015 dismissal and then resolved while validity/infringement disputed only claim‑limitation facts, it appears construction was subsumed into summary judgment and the IPRs rather than a standalone Markman ruling — but I cannot confirm that from the sources retrieved, so treat "no Markman" as an inference, not a documented fact. The constructions actually litigated in this period were the Board's in the IPRs ("deformities"; "a plurality of light sources configured to generate light having an output distribution defined by a greater width component than height component"; "focused light sources").

---

III. Discovery milestones with strategic significance

2016‑03‑29 — discovery order on accused‑product proof. In Delaware Display Group LLC v. LG Electronics Inc., C.A. No. 13‑2109‑RGA, Judge Andrews granted in part defendants' motion to compel, requiring plaintiffs to supplement two RFPs and to produce "at least one piece of paper documenting the purchase of each of the 200 or so charted [accused products]" — narrowing defendants' demand for all invoices/purchase orders and purchase‑related communications. The court denied defendants' request for documents on plaintiffs' and a third party's privilege log relating to teardowns, which plaintiffs claimed were protected by a consulting agreement with the third party and its counsel. This is strategically notable: it forced the NPE to document standing to sue on ~200 products while shielding its reverse‑engineering/testing workflow. (Richards, Layton & Finger case note, 2016‑04‑28, summarizing D. Del. Mar. 29, 2016 order.)

Other discovery: the docket sheet shows multi‑media exhibit disks (D.I. 447 in 02109; D.I. 341 in 02108) returned to counsel by the Clerk on 2019‑08‑23 — a housekeeping entry whose significance I cannot determine (see §VI).

---

IV. Parallel PTAB proceedings on U.S. 7,404,660 and their effect

The '660 patent was hit by a coordinated multi‑front IPR campaign, and the IPRs are what drove the Delaware case's shape:

Effect on the litigation. (1) The three instituted IPRs on the '177, '973 and '660 patents (IPR2015‑00489, ‑00487, ‑00506) triggered Judge Andrews' stay ultimatum and the 2015‑10‑21 without‑prejudice dismissal of the '660 along with the '177 and '973 from 02109. (2) DDG/IDT then re‑asserted exactly those three patents in fresh complaints on 2015‑12‑30 — DDG and IDT v. LG Electronics, Inc., et al., 1:15‑cv‑01221 (D. Del., Judge Andrews), plus 1:15‑cv‑01220 (Lenovo) and 1:15‑cv‑01222 (VIZIO) — expressly agreeing in the complaints to stays of the new cases pending resolution of the instituted IPRs (RPX, 2015‑12‑29; Dockets Justia/UniCourt entries for 1:15‑cv‑01221). In other words, on the '660 the IPRs converted the assertion into a stayed, back‑burner claim.

Related '973 outcome for context: in the joined IPR2015‑00506 / IPR2015‑01666, the Board's final written decision (decision date 2016‑06‑23; panel Giannetti, Bunting, Wormmeester) invalidated claims 1–5 of the '973 patent, as reflected in the 2016‑03‑01 oral‑hearing record ("claims 1 through 5 … are unpatentable") and the Patexia IPR2015‑01666 summary. That is the single '660‑family validity result I can source with a date; it underscores why the plaintiffs were pushed to drop the IPR‑encumbered patents.

---

V. Settlement / disposition

• LG Display's own SEC disclosure: "For the three‑month period ended March 31, 2017, the parties have reached settlements in principle regarding the above‑mentioned patent litigations through mediation." (LG Display Co., Ltd. Form 20‑F, filed 2017, discussing the December 2013 DDG/IDT "First Case" and follow‑ons.)
• Companion timing: the parallel Pantech case (1:13‑cv‑02110) was closed 2017‑05‑17 (RPX Insight docket profile), consistent with a 2017 global unwinding of the DDG/IDT campaign.
• Trial/verdict: I found no evidence of a trial, jury verdict, JMOL, new‑trial motion, or fee/expert motion in 1:13‑cv‑02109. On the record retrieved, the case did not reach verdict; it resolved by the 2017 mediations. I flag this affirmatively as a gap: absence of a verdict in my sources is not proof that none occurred.
• Present posture: docket entries after 2017 are limited to clerical matters (the 2019‑08‑23 multi‑media disk returns). The case appears closed/settled, but I cannot cite a specific dismissal or judgment entry; the 2019 clerks' entries weakly suggest the file remained administratively open for a period.
• Appeal: no Federal Circuit appeal of this district case was identified. Whether the '660 IPR was appealed (e.g., under SAS‑era procedures) I could not verify.

---

VI. Chonological summary table

---

VII. Bottom line

The '660‑based Delaware action was a 2013 Acacia NPE filing that never produced a judgment on the merits. Its defining dynamic was PTAB leverage: coordinated LG and automotive‑industry IPRs on the '660 (and its siblings) forced DDG/IDT to abandon the '660, '177 and '973 claims without prejudice in October 2015, then to re‑file them in December 2015 in stay‑pending‑IPR vehicles, while the surviving patents proceeded only to a mixed summary‑judgment ruling in 2016 and then to a 2017 mediated settlement in principle reported in LG Display's own SEC filing. For the '660 specifically, the litigation history is inseparable from IPR2015‑00487 (instituted) and the surrounding Mercedes‑Benz/LGE petitions.

Unverified items I would need PACER/PTAB access to confirm: the LG defendants' answer/counterclaim entries; whether any Markman order exists in 02109; the final written decision and outcome in IPR2015‑00487 and the other '660 IPRs; the disposition of the LGE joinder motion (IPR2015‑01717); the exact dismissal/settlement entry closing 02109; and whether any appeal was taken.

Counsel of Record for the Plaintiff(s) — Delaware Display Group LLC v. LG Display America, No. 1:13-cv-02109-RGA (D. Del.)

Threshold note on the caption

The case metadata's caption is abbreviated. The docketed caption is "Delaware Display Group LLC et al v. LG Electronics Inc. et al," C.A. No. 1:13-cv-02109-RGA, filed December 31, 2013, assigned to Judge Richard G. Andrews. The plaintiffs of record are Delaware Display Group LLC ("DDG") and Innovative Display Technologies LLC ("IDT") (both were Acacia Research subsidiaries), and the defendants are LG Electronics, Inc.; LG Electronics U.S.A., Inc.; LG Display Co., Ltd.; and LG Display America, Inc. (represented by Mayer Brown, with Delaware counsel Seitz Ross Aronstam & Moritz). Note also that U.S. 7,404,660 — the patent highlighted in the metadata — was owned by IDT, while DDG owned U.S. 7,914,196; the two entities sued jointly across the December 2013 wave (C.A. Nos. 13-2106 through 13-2112). Source: the annotated copy of the 13-2109 docket sheet filed as Exhibit 2011 in IPR2015-01717 (patent owner's exhibit), and the parallel docket in C.A. No. 13-2108.

Attorneys of record for Plaintiffs

No in-house counsel appeared of record. DDG and IDT were Acacia Research portfolio entities; the litigation was staffed entirely by outside counsel (Farnan LLP as Delaware counsel, Bragalone Conroy as lead trial counsel from Texas). If Acacia in-house attorneys participated, they did not enter an appearance on this docket.

How the representation was structured

• Lead trial counsel: Bragalone Conroy P.C. (Dallas) — the same firm ran the entire IDT/DDG display-patent campaign nationally and served as patent-owner counsel in the LG-filed IPRs.
• Delaware/local counsel: Farnan LLP — required because D. Del. Local Rule 83.5(d) mandates a member of the Delaware bar to file all papers; Joseph J. Farnan, Jr. is entered as LEAD ATTORNEY and Brian E. Farnan as an additional Delaware attorney.
• Pro hac vice admissions were granted to the Bragalone Conroy team early in 2014 (Bragalone, Conroy, Kimble, Kennedy, Olejko, Perkins).

Parallel PTAB proceedings (context for the same plaintiff team)

LG Display/LG Electronics filed multiple IPRs against the asserted patents — including IPR2014-01094 and IPR2015-00745 ('660 patent), IPR2014-01359 ('196 patent), IPR2015-00506 ('973 patent), and IPR2015-01666 / IPR2015-01717 — with DDG/IDT defended by Bragalone Conroy (lead: Justin B. Kimble). LG's IPR team was Mayer Brown (Jamie B. Beaber, Baldine B. Paul, Robert G. Pluta, Amanda K. Streff, Anita Y. Lam, Kfir B. Levy), with Ross Aronstam & Moritz and Seitz Ross as Delaware counsel.

Outcome and status

The litigation did not go to trial. Judge Andrews resolved the dispositive motions in the consolidated display cases in February 2016 (discovery/subpoena and motion-to-amend rulings), March 2016 (partial grant of defendants' motion to compel in 13-2109), and 2016–2017 (summary-judgment and Daubert rulings, with Plaintiffs' ownership motion granted and the invalidity/non-infringement motions denied). The parties then settled: Law360 reported on April 10, 2017 that LG and Lenovo agreed to drop claims and move to dismissal. The docket reflects later ministerial activity (e.g., August 2019 return of multimedia exhibits). No counsel withdrawal for Plaintiffs is reflected in the materials I could verify.

Sourcing and verification caveats

• Attorney-of-record data above come from the annotated docket sheet for C.A. No. 13-2109-RGA filed as Exhibit 2011 in IPR2015-01717, and the docket listings on Justia/Law360 for the companion cases (e.g., C.A. No. 13-2112).
• Court opinions in these companion actions list "Brian E. Farnan, Esq., FARNAN LLP, Wilmington, DE; Patrick J. Conroy, Esq. (argued), James Perkins, Esq., BRAGALONE & CONROY PC, Dallas, Texas" as Attorneys for Plaintiff (see the D. Del. opinion issued January 16, 2017, bearing Civil Action No. 13-2109-RGA, and the February 23, 2016 opinion in the consolidated 13-2108/13-2109 proceedings).
• Firm-name variants ("Bragalone & Conroy PC" vs. "Bragalone Conroy PC"; "Seitz Ross Aronstam & Moritz" vs. "Ross Aronstam & Moritz") reflect renames over the life of the case.
• Not verified / cannot confirm: Michael J. Farnan's appearance specifically on 13-2109 (he is confirmed on 13-2112); Terry A. Saad's district-court appearance; and whether any Acacia in-house attorney worked on the matter without appearing. No filings are known to be sealed as to counsel identity — appearances are public — but I could not obtain a full contemporary PACER docket sheet, so entries after the November 2015 annotated docket (e.g., any late substitutions) are not confirmed.

I'll research the docket and counsel appearances for this case.

Good leads. Let me dig into the specific counsel entries and firm representation history.

Let me find the actual docket sheet entries and later representations.