Litigation
LG Electronics, Inc. v. Delaware Display Group LLC
Final Written Decision; joined with IPR2015-00506IPR2015-01666
- Terminated
- 2016-06-23
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Inter partes review of U.S. Patent No. 7,434,973, challenging the same claims 1-5. Filed Aug. 4-5, 2015; institution and motion for joinder granted Feb. 5, 2016, joining it with IPR2015-00506. Final Written Decision June 22-23, 2016, resolved together with IPR2015-00506.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll research this case across PTAB records, docket sources, and industry coverage.
Good material. Let me dig into the patent owner's entity structure, the parallel district court cases, and the outcome/appeal.
Let me verify the IPR2015-00506 timeline, the Federal Circuit appeal status, and any notable rulings.
Case Overview and Background
Parties and their business models. The nominal parties are LG Electronics, Inc. (Petitioner) and Delaware Display Group LLC (Patent Owner), but both sit inside larger structures that define the dispute. Delaware Display Group ("DDG") is a Delaware entity whose own mandatory notices in the parallel IPRs identify Acacia Research Group LLC and Acacia Research Corporation (NASDAQ: ACTG) as its real parties-in-interest (DDG Related Matters notice, IPR2015-00757). DDG was a newly created Acacia subsidiary — an NPE/PAE in Acacia's "intermediary in the patent marketplace" model — paired with sister subsidiary Innovative Display Technologies LLC ("IDT"), which asserted the companion patents in the same campaign (RPX Insight, Jan. 9, 2014). Stanford's NPE database classifies DDG as an "Acquired patents" asserter. On the other side, the petitioners are operating companies: LG Display Co., Ltd., the Korean panel manufacturer that filed the lead petition (IPR2015-00506), and LG Electronics, Inc., the finished-goods maker that filed IPR2015-01666 and joined; the underlying district court defendants also included LG Electronics U.S.A., LG Electronics Mobilecomm U.S.A., and LG Display America. The two-petitioner structure matters: DDG unsuccessfully argued that LG Display's petition should be denied for failing to name LG Electronics and LG Electronics U.S.A. as real parties-in-interest, and the Board rejected the argument because LG Electronics "is not even a majority owner of Petitioner" and shared counsel alone did not establish control (institution decision, IPR2015-00506, Paper 8, July 6, 2015; summarized in National Law Review).
The technology and patents at issue. The patents in this campaign cover the optical architecture of edge-lit backlights — the thin, uniformly lit light-guide panels behind essentially every LCD screen — and the campaign's accused products were the LCD-bearing consumer devices in which they are embedded: laptops, smartphones, tablets, and TVs (RPX describes defendants' products as those "using displays that are alleged to infringe the patents-in-suit, including laptops, smartphones, and tablets"). U.S. Patent No. 7,434,973, "Light Emitting Panel Assemblies," is the sole patent in this IPR. It issued Oct. 14, 2008, to inventors Jeffery R. Parker, Gregory A. Coghlan, and Robert M. Ezell, assigned to Solid State Opto Limited (British Virgin Islands) — Parker's edge-lit panel portfolio — on an application filed Feb. 9, 2007 (App. No. 11/673,302) that continues a chain back to App. No. 08/495,176, filed June 27, 1995 (now U.S. Pat. No. 5,613,751), and it carries a terminal disclaimer. In plain terms, the '973 claims a light-guide panel with multiple light sources coupled to an input edge, plus a pattern of small "light extracting deformities" (projections or depressions) whose density/size/depth increases with distance from the light source and peaks at the midpoints between adjacent sources so the panel lights uniformly. Claims 1–5 were challenged; beyond the "deformities" limitation, the decisive disputed limitations were (i) that each deformity be "substantially smaller" in length and width than the panel surface, and (ii) the midpoint-peak density requirement. The '973 patent is one of eight asserted family members — six other "Light Emitting Panel Assemblies" patents (6,755,547; 7,300,194; 7,384,177; 7,404,660; 7,434,974; 7,537,370; 8,215,816), owned by IDT, plus DDG's '196 patent on a backlight system — all asserted against Amazon, HTC, Lenovo, LG, Pantech, Sony, and VIZIO beginning Dec. 31, 2013 (RPX, Jan. 9, 2014). Notably, the litigated portfolio had come out of Rambus and was transferred to Acacia in March 2013, making this a case study in the secondary market for large corporate patent portfolios (RPX, Jan. 9, 2014).
Procedural posture, forum, and why it matters. IPR2015-01666 itself is a PTAB proceeding, not a district court case — filed Aug. 4–5, 2015, instituted and joined with LG Display's IPR2015-00506 on Feb. 5, 2016 under § 315(c) (the panel expressly noted LG Electronics agreed to drop its extra ground upon joinder), heard March 1, 2016, and decided June 22–23, 2016 by APJs Giannetti, Bunting, and Wormmeester, with APJ Wormmeester authoring (Final Written Decision, IPR2015-00506, Paper 11; oral hearing transcript). The underlying infringement litigation ran in the District of Delaware before Judge Richard G. Andrews — originally DDG and IDT v. LG Electronics, Inc., et al., C.A. No. 1:13-cv-02109-RGA (filed Dec. 31, 2013, along with seven companion suits before the same judge), with parallel IDT actions in the Eastern District of Texas (including IDT v. Acer, No. 2:13-cv-522, where an agreed construction of "deformities" was entered). Judge Andrews required DDG/IDT to dismiss the '177, '660, and '973 claims without prejudice on Oct. 21, 2015 rather than stay the cases pending the instituted IPRs; the NPEs then re-filed separate Delaware actions against Lenovo, LG, and VIZIO on Dec. 30, 2015 expressly agreeing to stays pending the IPRs (dismissal order; RPX, Dec. 29, 2015; DDG v. LG Electronics, No. 1:15-cv-01221-RGA). Substantively, the Board held claims 1–5 unpatentable as anticipated by the Shinohara reference, having first declined to give the '973 patent its 1995 priority date but also declining to resolve the written-description question supporting that date (a § 112 issue outside IPR reach), using the Feb. 9, 2007 filing date "for this proceeding only." The case is notable on several axes: it was one of the largest coordinated NPE display campaigns of its era, spanning two districts and roughly a dozen-plus defendants, and it produced a string of Acacia-reported settlements/licenses (Sony, Aug. 13, 2015; Dell and HP, March 6, 2015; GM and Valeo, Oct. 13, 2015) — the IPRs functioning as the leverage that drove them. It is also a useful vehicle for three legal themes: joinder of affiliated petitioners under § 315(c); real-party-in-interest/control jurisprudence; and the PTAB's refusal to set a patent's effective filing date by adjudicating written description. Finally, the panel's panel-wide finding of unpatentability on the '973 patent (with parallel IPRs killing sibling claims) illustrates the vulnerability of the 1990s-era Parker/SSO backlight family once Rambus-to-Acacia monetization brought it into litigation.
Sourcing caveats. The party names, docket numbers, judges, dates, counsel (Mayer Brown LLP — Pluta, Lam, Paul, Beaber, Streff — for Petitioner; Bragalone Conroy P.C. — Kimble, Bragalone, Kennedy — for Patent Owner), and the unpatentability outcome are grounded in the PTAB filings and the D. Del. docket excerpts above. Two points I could not verify from the sources retrieved and would flag rather than assert: (1) whether DDG appealed the June 2016 Final Written Decision to the Federal Circuit — I found no docket or opinion evidence of an appeal, so the FWD's affirmance status is unconfirmed; and (2) the specific reason the re-filed Delaware action (1:15-cv-01221) closed on April 12, 2017, which RPX reports but which I could not tie to a dismissal order or settlement document. I also did not independently confirm the trial exhibit number under which Shinohara was designated in IPR2015-00506 (the parallel IPR2015-01666 petition lists "U.S. Patent No. 6,167,182 ('Shinohara')" as Ex. 1010, but the exhibit numbering differs between the two proceedings).
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case. First, an important framing note: the metadata describes this as a PTAB inter partes review (IPR2015-01666), not a district court action — so I'll investigate both the IPR and the parallel district court litigation that it arose from.
Now let me dig into the district court litigation and the parallel IPRs.
Let me look at the earlier Delaware case, the Markman ruling, and any Federal Circuit appeal.
Key Legal Developments — LG Electronics, Inc. v. Delaware Display Group LLC, IPR2015-01666 (and parallel Delaware Display Group v. LG Electronics, D. Del. 1:15-cv-01221)
Important framing note: The case in your metadata (IPR2015-01666) is a PTAB inter partes review, not a district-court action. LG Electronics' IPR was filed as a me-too/joinder petition to an earlier LG Display IPR (IPR2015-00506) and was joined into it. The "patent infringement litigation" proper is the parallel District of Delaware suit. I cover both tracks below. Where I could not confirm a fact from a reliable source, I say so.
1. Background and the patent
- U.S. Patent No. 7,434,973 ("Light Emitting Panel Assemblies"), issued 2008-10-14; inventors Jeffery R. Parker, Gregory A. Coghlan, and Robert M. Ezell (per plaintiffs' complaint, D. Del. 1:13-cv-02108 ¶15). The patent originated in the Rambus portfolio, transferred to Acacia in March 2013; asserted by Delaware Display Group LLC (DDG), an Acacia subsidiary (RPX Insight, 2014-01-09).
- The '973 patent claims 1–5 (claims 1–5 challenged throughout) concern a light-emitting panel with light-extracting deformities whose density/size/depth/height "is greatest at approximate midpoints between adjacent pairs of the light sources."
2. District-court track — filing & initial pleadings
- 2013-12-31 — DDG and Innovative Display Technologies LLC (IDT) filed seven related infringement suits in the D. Del. against Amazon (13-2106), HTC (13-2107), Lenovo (13-2108), LG Electronics (13-2109), Pantech (13-2110), Sony (13-2111), and VIZIO (13-2112) — all before Judge Richard G. Andrews. The '973 patent was asserted among a group of "Light Emitting Panel Assemblies" patents. Source: Judge Andrews' claim-construction opinion, D. Del. 1:13-cv-02108 (D.I. 112), 2015-11-06 (justia PDF).
- Parallel E.D. Tex. campaign against other defendants (Acer; Hyundai) produced early claim constructions discussed below.
- 2015-12-30 — Because the '973, '177, and '660 patents had been dropped from the 2013 cases (see §4), IDT/DDG filed fresh complaints re-asserting those three patents against Lenovo (1:15-cv-01220), LG Electronics et al. (1:15-cv-01221), and VIZIO (1:15-cv-01222). In the 1:15-cv-01221 complaint, defendants were LG Electronics, Inc.; LG Electronics U.S.A., Inc.; LG Electronics Mobilecomm U.S.A., Inc.; LG Display Co., Ltd.; and LG Display America, Inc. (D. Del., Judge Andrews; Docket via Justia/RPX). The complaints expressly consented to stays pending resolution of the instituted IPRs (RPX Insight, 2015-12-29).
- Note on answer/counterclaims: I could not retrieve the answer/counterclaim pleadings for 1:15-cv-01221 from open sources. Given the case was stayed almost immediately and terminated by settlement (see §7), it is unlikely substantive counterclaims matured. I flag this as unverified.
3. Parallel PTAB track — the three LG IPRs
LG (LG Display and LG Electronics, separately) filed three IPRs against the DDG/IDT patents:
| IPR | Patent | Petitioner | Filed | Instituted |
|---|---|---|---|---|
| IPR2015-00487 | 7,404,660 | LG | 2014–15 | 2015 |
| IPR2015-00489 | 7,384,177 | LG | 2014–15 | 2015 |
| IPR2015-00506 | 7,434,973 | LG Display Co., Ltd. | 2014-12-30 | 2015-07-06 |
| IPR2015-01666 | 7,434,973 | LG Electronics, Inc. | 2015-08-04/05 | 2016-02-05 (instituted + joined) |
- IPR2015-00506 challenged claims 1–5 on five grounds (Ground 1: §103 over the '389 patent + Pelka; Ground 2: §102(e) anticipation by Shinohara; Grounds 3–5: various §103 combinations). The Board instituted on only one ground — §102(e) anticipation by Shinohara — on 2015-07-06 (Institution Decision, Paper 8; PTAB Trial Blog PDF).
- IPR2015-01666 (LG Electronics) challenged the same claims 1–5 on the same instituted ground plus one additional ground, and moved for joinder. LG Electronics agreed to abandon the additional ground if joinder was granted.
4. Pre-trial motions of substance (district court)
- 2015-10-21 — Following a hearing on a joint motion to stay pending IPR, Judge Andrews gave plaintiffs the choice to drop the IPR-subject patents or face a full stay. IDT/DDG elected to dismiss without prejudice all claims on the three patents under instituted IPR (the '177, '660, and '973) (D.I. 88, 89). Judge Andrews then denied the motion to stay and the 2013 cases proceeded on the remaining patents. This is the pivotal strategic event: rather than accept a stay, plaintiffs cut the IPR-subject patents and later re-filed on them in December 2015. Source: D.I. 112 (2015-11-06) at 1–2; RPX Insight, 2015-12-29.
- 2016-08-26 (reported 2016-08-29) — LG and Lenovo moved to throw out the remaining infringement claims for lack of evidence (essentially summary judgment/no-evidence on the remaining LCD patents), arguing that after years of litigation plaintiffs had not shown use of the backlight technology in hundreds of accused products (Law360 case docket summary).
5. Claim construction (Markman)
- E.D. Tex. (first Markman): Innovative Display Technologies LLC v. Acer Inc., 2014 WL 4230037 (E.D. Tex. Aug. 26, 2014) (Magistrate Judge Payne) — construed three terms and entered the agreed construction of "deformities" = "any change in the shape or geometry of a surface and/or coating or surface treatment that causes a portion of the light to be emitted." The PTAB later adopted this same construction in the IPR (Institution Decision in 00506; patent owner's Preliminary Response confirms the district court entered the agreed construction).
- E.D. Tex. (second Markman): Innovative Display Technologies LLC v. Hyundai Motor Co., 2015 WL 2090651 (E.D. Tex. May 4, 2015) (Judge Gilstrap) — construed seven of eight terms.
- D. Del. (Judge Andrews): Claim construction opinion of 2015-11-06 in C.A. 13-2108/-2109/-2112 construed eight terms from the '974, '370, '816, and '196 patents (Markman hearing 2015-10-27). The '973 patent was not construed in that opinion because it had been dismissed from the 2013 cases on 2015-10-21. (D.I. 112.) I found no later D. Del. Markman covering the '973 — consistent with 1:15-cv-01221 being stayed/never reaching Markman.
- Definiteness: Defendants attacked the panel-assembly patents as indefinite under Nautilus (expert Dr. Michael J. Escuti); plaintiffs countered with expert Michael G. Giesselmann (D.I. filed 2015-09-08 in the 2013 cases, Ex. 1028). I did not find a ruling on indefiniteness for the '973 patent; flag as unverified.
6. PTAB institution, joinder, hearing, and Final Written Decision
- 2016-02-05 — The Board instituted IPR2015-01666 and granted LG Electronics' Motion for Joinder, joining 01666 into IPR2015-00506 (Decision, Paper 10 in 01666 / Paper 24 in 00506). LG Electronics abandoned its extra ground. Thereafter the Board referred to LG Display + LG Electronics jointly as "Petitioner."
- 2016-03-01 — Oral hearing (Hearing Room A, Alexandria). Counsel: Mayer Brown LLP for Petitioner (Robert G. Pluta, Amanda K. Streff; Baldine B. Paul, Jamie B. Beaber); Bragalone Conroy PC for Patent Owner (Justin B. Kimble). The dispute narrowed to two claim-1 limitations, plus priority. Transcript: Paper 25 in 00506 (2016-03-31).
- 2016-06-22/23 — Final Written Decision under 35 U.S.C. §318(a) (Paper 26 in 00506; Paper 11 in 01666; termination date 2016-06-22, FWD dated 2016-06-23). Panel: APJs Giannetti, Bunting, and Wormmeester (opinion by Wormmeester). Holdings:
- Claims 1–5 of the '973 patent are unpatentable — Petitioner proved §102(e) anticipation by Shinohara by a preponderance of the evidence.
- Priority: the '973 claims were not entitled to the earlier June 27, 1995 / '751 patent priority date; the Board's preliminary finding that the claims get only the Feb. 9, 2007 '973 filing date was not rebutted — critical because it made Shinohara prior art.
This is the effective merits outcome of IPR2015-01666: all challenged claims cancelled.
7. Final disposition of the litigation
- 2017 (Q1) — Per LG Display's Form 20-F (filed 2017): "For the three-month period ended March 31, 2017, the parties have reached settlements in principle regarding the above-mentioned patent litigations through mediation."
- 2017-04-10 — Law360 reported that Lenovo and LG settled the display-backlight suits; the parties agreed to drop claims in one case and move toward dismissal papers in the other.
- 2017-04-12 — D. Del. 1:15-cv-01221 closed; last docket entry 2017-04-13 (RPX Insight / Justia docket). The case never went to trial — no verdict, no JMOL, no fee motion is publicly reported. Flag: I found no record of a Federal Circuit appeal of the IPR2015-00506/01666 Final Written Decision; the FWD appears to have become final and unappealed, though I could not affirmatively confirm the absence of an appeal from an authoritative source.
8. Net effect / strategic summary
- The '973 patent (claims 1–5) was invalidated at the PTAB in a proceeding initiated by LG Display and joined by LG Electronics, which mooted the infringement claims DDG had re-asserted against LG in 1:15-cv-01221 — a key reason the Delaware case was resolved by mediated settlement in April 2017 rather than trial.
- The IPR campaign (the '973, '660, and '177 IPRs) forced plaintiffs to abandon those patents in the 2013 Delaware cases in October 2015, which the plaintiffs then tried to resurrect in the December 2015 refiled suits — unsuccessfully as to the '973.
- The '973 IPR is the clearest instance where the Board used the priority-date fight as the dispositive lever: denying the '751 priority date made Shinohara §102(e) prior art and doomed the claims.
Key sources
- PTAB FWD, IPR2015-00506 (2016-06-23): https://www.docketalarm.com/cases/PTAB/IPR2015-01666/... (Final Written Decision, Paper 11/26)
- Institution Decision, IPR2015-00506 (2015-07-06): https://ptabtrialblog.com/wp-content/uploads/2015/07/IPR2015-00506-Granting-Institution-20150706.pdf
- Oral hearing transcript (2016-03-01): https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1461551](/patent/1461551)/...
- D. Del. 1:13-cv-02108, D.I. 112 (claim construction, 2015-11-06): https://cases.justia.com/federal/district-courts/delaware/dedce/1:2013cv02108/[53947/112](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=53947-0112)/0.pdf
- RPX Insight, "Acacia Subs File New Complaints…" (2015-12-29): https://insight.rpxcorp.com/news/4389
- Law360 case page (settlement, 2017-04-10): https://www.law360.com/cases/52c5841b68f52d465300a781/articles
- RPX Insight docket 1:15-cv-01221 (closed 2017-04-12): https://insight.rpxcorp.com/litigation/dedce-58570-delaware-display-group-v-lg-electronics
- LG Display Form 20-F (2017) (settlements in principle through mediation).
Unverified items to check on PACER/PTAB if precision is needed: the answer/counterclaims in 1:15-cv-01221; the exact PTAB docket sheet entries and dates (Paper 10 vs. Paper 24); and whether any appeal was taken to the Federal Circuit.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Mayer Brown
- Robert G. Pluta · lead counsel
- Amanda K. Streff · trial counsel
- Baldine B. Paul · petitioner counsel
- Anita Y. Lam · petitioner counsel
- Jamie B. Beaber · petitioner counsel
I'll research the counsel of record for the petitioner LG Electronics, Inc. in this IPR proceeding.
Let me get the specific filings and attorney designations for IPR2015-01666 itself.
Let me confirm the lead/back-up designations in the IPR2015-01666 petition and the attorneys' roles.
Counsel of Record — Petitioner / "Plaintiff" Side
Important framing note: IPR2015-01666 is not a district-court infringement action but an inter partes review before the PTAB. The party in the plaintiff's-side posture is the petitioner, LG Electronics, Inc. (captioned "LG Electronics, Inc. et al."), which filed the petition on Aug. 4–5, 2015, and whose motion for joinder was granted on Feb. 5, 2016, joining it with IPR2015-00506 (LG Display Co., Ltd., petitioner). For the joined proceeding, the Board referred to LG Display and LG Electronics jointly as "Petitioner." The patent owner / defendant-side is Delaware Display Group LLC.
All counsel of record for the LG petitioners are from Mayer Brown LLP. The most authoritative public source is the Record of Oral Hearing (IPR2015-00506, Paper 25, Mar. 31, 2016; hearing held Mar. 1, 2016), which lists the petitioner's appearances, plus the petitioner's certificate of service in IPR2015-01666 (served on petitioner's counsel at their mayerbrown.com addresses).
Attorneys appearing on behalf of Petitioner (LG Electronics / LG Display)
| Attorney | Role | Firm & office | Note |
|---|---|---|---|
| Robert G. Pluta | Petitioner counsel — lead (per PTAB case records) | Mayer Brown LLP, 71 S. Wacker Dr., Chicago, IL | Listed as counsel for petitioner in IPR2015-00506/01666; listed by PTAB aggregators as the petitioner counsel of record. Established PTAB patent litigator. |
| Amanda K. Streff | Petitioner counsel; argued at the consolidated oral hearing (Mar. 1, 2016) | Mayer Brown LLP, 71 S. Wacker Dr., Chicago, IL | Made her appearance "on behalf of Petitioners LG Display and LG Electronics" and presented petitioner's argument at the hearing. |
| Baldine B. Paul, Ph.D. | Petitioner counsel | Mayer Brown LLP (listed at 1999 K St. NW, Washington, DC in the hearing record; an earlier deposition appearance listed 71 S. Wacker Dr., Chicago) | Appeared for petitioners at the Werner deposition (Dec. 9, 2015) and in the hearing listing; technical/PhD background relevant to the display-optics subject matter. |
| Anita Y. Lam | Petitioner counsel | Mayer Brown LLP, 1999 K St. NW, Washington, DC | Appeared for petitioner LG Display at the Dec. 9, 2015 deposition; listed in the hearing record and on the IPR2015-01666 service list. |
| Jamie B. Beaber | Petitioner counsel (appeared in hearing listing) | Mayer Brown LLP, 1999 K St. NW, Washington, DC | Listed among petitioner's counsel at the March 1, 2016 oral hearing. |
Corroborating source: DDG's Patent Owner Power of Attorney in IPR2015-01666 (dated Aug. 26, 2015) certifies service on Petitioner at rpluta@mayerbrown.com; astreff@mayerbrown.com; bpaul@mayerbrown.com; alam@mayerbrown.com; and DDGIPR@mayerbrown.com — confirming these four Mayer Brown attorneys as petitioner's counsel plus a case-specific firm address.
Related counsel (LG side, but not confirmed on the IPR2015-01666 record)
- Michael J. Word (Mayer Brown, Chicago) — a senior associate whose firm bio credits him with representing LG Electronics in the parallel D. Del. action (Delaware Display Group LLC & Innovative Display Technologies LLC v. LG Electronics, et al., No. 1:13-cv-2109-RGA) and in related LG Electronics IPRs (IPR2015-00937/00938/00940/00942) involving LCD backlight patents. He fits the same LG/display patent family work but is not confirmed in the IPR2015-01666 filings I could retrieve, so I list him as related rather than of record here.
Caveats / sourcing limits
- I could not retrieve the IPR2015-01666 mandatory notice or power of attorney that formally designates lead vs. back-up counsel for the petitioner. The above role labels are inferred from the oral-hearing record (which lists the appearances without a lead/back-up designation) and from the PTAB case aggregator ipverse (which lists "Petitioner Counsel: Robert Pluta"). Treat "lead counsel" as well supported but not document-confirmed for this specific IPR.
- No counsel information here is sealed; PTAB counsel designations are public. The limitation is that some petition-transmittal documents were not directly accessible.
- Office locations: the Chicago and Washington, DC addresses are taken verbatim from the hearing record and deposition transcript. One source shows a discrepancy for Dr. Paul's office (Chicago vs. DC); both are noted above.
Note on the defendant-side counsel (for completeness)
The patent owner, Delaware Display Group LLC, is represented by Bragalone Conroy P.C., 2200 Ross Ave., Suite 4500 West, Dallas, TX — Justin B. Kimble (lead, Reg. No. 58,591), with Jeffrey R. Bragalone, Terry A. Saad, Nicholas C. Kliewer, and T. William Kennedy (see DDG's Power of Attorney, Aug. 26, 2015, IPR2015-01666). This side is the "defendant," not the party you asked about, but it confirms the alignment of the proceeding.
Bottom line: The plaintiff-side (petitioner) counsel of record is Mayer Brown LLP, principally Robert G. Pluta (Chicago, lead), with Amanda K. Streff (Chicago), Baldine B. Paul (Chicago/DC), Anita Y. Lam (DC), and Jamie B. Beaber (DC).
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Bragalone Conroy
- Justin B. Kimble · lead counsel
- Jeffrey R. Bragalone · back-up counsel
- Terry A. Saad · back-up counsel
- T. William Kennedy · back-up counsel
- Nicholas C. Kliewer · back-up counsel
I'll research the counsel of record for the patent owner (respondent) in this IPR.
Let me verify the specific counsel for the patent owner in this IPR's filings.
Let me pull the mandatory notices designating lead/backup counsel and confirm firm details.
Counsel of Record — Patent Owner/Respondent (Defendant Side)
A threshold framing note: the case number given (IPR2015-01666) is an inter partes review, not a district-court infringement action. There is no "defendant" in the Rule 12 sense; the party on the defense side is Delaware Display Group LLC ("DDG"), the Patent Owner/Respondent (an Acacia Research affiliate; Acacia Research Group LLC and Acacia Research Corporation were identified as real parties-in-interest in the parallel DDG proceedings). The infringement suits naming LG are the underlying district-court matters, e.g., Delaware Display Group LLC v. LG Electronics, Inc., No. 1:13-cv-02109 (D. Del., filed Dec. 31, 2013), and the '973 patent's asserted case Delaware Display Group LLC v. Lenovo Holding Co., No. 1:13-cv-02108 (D. Del.). Counsel below is the DDG-side team of record.
Firm of record
Bragalone Conroy P.C. — 2200 Ross Avenue, Suite 4500-West, Dallas, TX 75201 (tel. 214-785-6670). All DDG PTAB counsel of record in the '973/'974/'196 families came from this firm.
Attorneys (per Power of Attorney and mandatory notices)
| Name | Role | Registration / admission | Notes |
|---|---|---|---|
| Justin B. Kimble | Lead counsel | USPTO Reg. No. 58,591 | The PTAB's public case records list "Respondent Counsel: Justin Kimble" for both IPR2015-01666 and its joined parent IPR2015-00506; he appeared for Patent Owner at the consolidated oral hearing. Career PTAB patent-owner advocate (Bragalone Conroy, Dallas). |
| Jeffrey R. Bragalone | Back-up counsel (name partner) | Texas bar; admitted pro hac vice in IPR2015-00506 by Board order | In his §42.10(c) declaration (Ex. 2005) he stated he had applied for PHV admission in 21 other PTAB proceedings in the prior three years (19 granted) and was lead counsel for DDG in the E.D. Tex. and D. Del. actions asserting the '973 patent (e.g., v. LG Electronics, 1:13-cv-02109; v. Vizio, 1:13-cv-02112). |
| Terry A. Saad | Back-up counsel | USPTO Reg. No. 62,492 | Listed on the DDG power of attorney covering IPR2015-00506 and related DDG IPRs. |
| T. William Kennedy (Thomas W. Kennedy, Jr.) | Back-up counsel | Pro hac vice to be sought | Also a named plaintiff-side attorney for the Acacia/Innovative Display Technologies family in E.D. Tex. (e.g., Innovative Display Technologies v. Sprint). |
| Nicholas C. Kliewer | Back-up counsel | USPTO Reg. No. 72,480 | Listed on the DDG power of attorney for the related DDG IPRs. |
Sourcing and caveats
- Power of attorney / counsel designations: DDG's power of attorney appointing Bragalone Conroy practitioners (Kimble as Lead Counsel; Bragalone, Saad, Kliewer, Kennedy as back-up) is on the docket in the companion proceedings (e.g., IPR2015-00492 and IPR2015-00506, filed Jan. 19, 2015), and identical counsel block appears on DDG's filings across the '973 and '974 IPRs.
- Pro hac vice: The Board granted DDG's motion to admit Jeffrey R. Bragalone pro hac vice in IPR2015-00506 (Order on 37 C.F.R. § 42.10, supported by Ex. 2005). DDG also moved to admit T. William Kennedy pro hac vice in the same proceeding.
- Appearance at hearing: The Record of Oral Hearing for the consolidated proceeding (IPR2015-00506, held Mar. 1, 2016) lists only Justin B. Kimble, Esq., Bragalone Conroy PC appearing for the Patent Owner; the deposition transcripts likewise show Kimble as Patent Owner's counsel.
- Specific to IPR2015-01666: Because IPR2015-01666 was instituted and joined into IPR2015-00506 (institution/joinder decision Feb. 5, 2016; Final Written Decision, Paper 11, June 22–23, 2016), the Patent Owner's submissions were effectively consolidated into the parent docket, and the respondent counsel of record for IPR2015-01666 is captured through the same Bragalone Conroy team (Kimble lead). I did not locate a standalone DDG power of attorney or separate notice of appearance filed in the IPR2015-01666 sub-docket itself; if one exists it would be duplicative of the above. I could not confirm any in-house counsel of record for DDG (Acacia generally used outside counsel and did not appear in-house on the docket).
- Petitioner-side counsel (Mayer Brown LLP — Robert Pluta, Jamie B. Beaber, Baldine B. Paul, Anita Y. Lam, for LG Electronics/LG Display) is mentioned only to distinguish sides, since the request concerns the defense/patent-owner side.
Bottom line: The defense-side (patent owner) counsel of record in this proceeding is the Dallas firm Bragalone Conroy P.C., led by Justin B. Kimble (lead counsel), with Jeffrey R. Bragalone (name partner, PHV), Terry A. Saad, T. William Kennedy (PHV), and Nicholas C. Kliewer as back-up counsel.