Litigation
Sony Corporation v. Delaware Display Group LLC
sources conflict (settlement vs. institution denied)IPR2015-00757
- Filed
- 2015-02-17
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Sony Corporation et al. filed an inter partes review petition against Delaware Display Group LLC involving US 7,914,196. Google Patents reports settlement, while GreyB/IPVerse reports institution denied on 2015-08-11; the narrative flags the conflict as unresolved.
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 thoroughly before drafting. Let me start with the IPR itself and the underlying patent.
I have strong primary-source material. Now let me verify the IPR termination, the underlying district court case, and the accused products.
Case Overview — Sony Corp. v. Delaware Display Group LLC, IPR2015-00757 (U.S. Patent 7,914,196)
Parties and what each side does. The petitioner is Sony Corporation, the Japanese consumer-electronics manufacturer, acting for the Sony affiliates sued in Delaware (Sony Corporation of America, Sony Electronics Inc., and Sony Mobile Communications (USA) Inc.) (Joint Motion to Terminate, IPR2015-00757, Paper 9). The patent owner, Delaware Display Group LLC ("DDG"), is a Plano, Texas–based patent-holding entity; in its mandatory notices DDG identified Acacia Research Group LLC and Acacia Research Corporation (NASDAQ: ACTG) as its real parties-in-interest, making this a classic publicly traded NPE/PAE assertion — Acacia describes itself as "the industry leader in patent licensing" and an "intermediary in the patent marketplace" (Patent Owner's Updated Mandatory Notices, Mar. 10, 2015; Acacia press release, Aug. 13, 2015). DDG's sibling entity, Innovative Display Technologies LLC ("IDT"), held the companion patents. The '196 patent is not a university or operating-company asset by origin: it issued Mar. 29, 2011 with Rambus International Ltd. (KY) as assignee, naming Jeffery R. Parker, Timothy A. McCollum, and Robert M. Ezell (the Parker family of light-guide patents traces to Solid State Opto Limited), and DDG acquired it by assignment on Dec. 20, 2013 (IDT took its patents June 26, 2013) (U.S. 7,914,196 face; DDG/IDT complaint, ¶¶ 19–20).
Accused technology, patents, and procedural posture. The accused products are Sony's LCD display products — "laptops, desktops, tablets, monitors, televisions, mobile phones, cameras, and video cameras with an LCD" — with the complaint naming the Xperia TL phone, VAIO SVE11135CXW laptop, and Cyber-shot DSC-W620 camera as exemplars (Compl., DDG v. Sony, No. 1:13-cv-02111, ¶ 25, attached as Ex. 1003 to IPR2014-01359). The patent at issue in the IPR is U.S. 7,914,196, "Light Redirecting Film Systems Having Pattern of Variable Optical Elements" — one line: an edge-lit LCD backlight whose light-extracting "deformities" emit most light at "relatively low angles," combined with an overlying light-redirecting film carrying a pattern of individual optical elements of well-defined shape that vary across the film to bend light toward the film normal (claim 22 recites a 60–70% extraction efficiency; claims 24–25 add LED light sources). In Delaware, DDG and IDT asserted the '196 alongside a package of related IDT "light emitting panel assembly" patents — the '547 and '194 (panel assemblies with light-extracting deformities and output films), '177 and '660 (same family), '974 (panel member in a tray/housing with edge reflectors and mounting features), '370, and '816 (input-edge refractive surface that redirects light "more in the width direction") — all sharing ultimate parent U.S. 5,613,751 (DDG/IDT complaint ¶¶ 10–21; D. Del. Mem. Op., Nov. 6, 2015). The underlying litigation, C.A. No. 1:13-cv-02111 (D. Del., filed Dec. 31, 2013), was one of seven same-day complaints DDG/IDT filed in Delaware — against Amazon, HTC, Lenovo, LG, Pantech, Sony, and Vizio — with additional 2014 suits against Apple, AT&T, Sprint, Verizon, and T-Mobile in E.D. Tex. The case was assigned to Judge Richard G. Andrews (Magistrate Judge Mary Pat Thynge as referral judge per RPX); it ran 610 days and closed Sept. 1, 2015 (RPX Insight). Delaware mattered structurally: the named Sony entities are Delaware corporations, DDG is itself a Delaware LLC (the standard Acacia vehicle), and Judge Andrews was already managing the coordinated claim-construction track across the related cases; the carrier cases went to E.D. Tex. instead.
The IPR track, the status conflict, and why it's notable. Sony filed the petition on Feb. 17/18, 2015 (the Board's records show Feb. 18), challenging all of claims 1–25 on five grounds — anticipation by Kojima and by Kalantar, and obviousness over Ando+Jansson, Koike+Kaneko, and Koike+Hattersley — supported by a declaration of Richard A. Flasck; DDG filed its preliminary response May 27, 2015. No institution decision ever issued: the parties' own joint motion lists "Institution Decision Date: N/A." On Aug. 3, 2015 the parties advised the Board of a settlement in principle and were authorized to file joint motions; on Aug. 11 they filed a joint motion to terminate under 35 U.S.C. § 317(a) with the confidential settlement agreement as Ex. 1031, and the Board entered its termination judgment on Aug. 12, 2015 (Paper 11) (Joint Motion; Docket Alarm entry for Paper 11). This resolves the conflict flagged in the existing summary: the correct characterization is termination by settlement before institution, not "institution denied." The GreyB/IPVerse "Institution Denied" label appears to be a database mis-mapping of the Aug. 12, 2015 termination date. Contemporaneous corroboration comes from two independent sources: Acacia's Aug. 13, 2015 announcement of a settlement and patent license agreement with Sony, and the D. Del. plaintiffs' own status report stating that the Sony IPR "was terminated as a result of a settlement agreement reached between the patent owner and the Sony defendants." Because both parties requested termination pre-institution, no § 315(e) estoppel attached to Sony and no § 42.73(d)(3) estoppel to DDG — an explicit bargain noted in the joint motion. On the "why notable" side: Sony's '196 petition was one of seven IPRs it filed in the same window against the DDG/IDT portfolio (IPR2015-00745, -00749, -00752, -00753, -00755, -00756, -00757), all terminated on Aug. 12, 2015, and one of roughly 46 IPRs filed against that portfolio, of which plaintiffs reported 25 were terminated pre-institution because the petitioners obtained licenses — a textbook illustration of IPR-as-settlement-leverage and of the mass-assertion/licensing NPE model. The patent was also validity-impaired in parallel fora: the PTAB had already refused to institute LG Display's IPR2014-01359 on the '196 (Mar. 2, 2015) because the petition failed to supply a standard for measuring "relatively low angles," and Judge Andrews subsequently held that same phrase indefinite under 35 U.S.C. § 112 ¶ 2 (Nov. 6, 2015, in the related Lenovo/LG/Vizio cases, C.A. 13-2108/2109/2112) — meaning Sony's settlement bought peace and a license on a patent whose asserted claim scope was failing elsewhere.
Sourcing note: the Delaware and PTAB primary documents above are well grounded; party names, case numbers, and dates come from the pleadings and Board papers cited. Secondary database data on the other '196 IPRs (IPR2015-00492, LG Electronics — institution denied; IPR2015-00506, LG Display — final written decision; IPR2015-01666, LG Electronics — final written decision) comes from GreyB/IPVerse aggregations and should be verified against PTAB records before being relied on. I could not confirm the three-judge panel composition for IPR2015-00757 from a primary source, and the joint motion's caption contains a typo ("7,914,916" for the '196); the Acacia press release and joint status report do not disclose the settlement's financial terms.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case across PTAB, PACER, and legal news sources. Note up front: the case number you gave (IPR2015-00757) is a PTAB inter partes review, not a district court case—so I need to map both the IPR and any parallel district court litigation.
I now have the core factual picture. Let me dig into the district court docket, the parallel IPRs, and the termination decision.
Framing note (important)
The case number you provided — IPR2015-00757 — is a PTAB inter partes review, not a district court lawsuit. So there is no complaint, answer, Markman order, verdict, or JMOL in that docket. The underlying infringement action was Delaware Display Group LLC and Innovative Display Technologies LLC v. Sony Corporation, et al., C.A. No. 1:13-cv-02111 (D. Del.), and the IPR was one of a coordinated set of Sony validity challenges against that case. I've therefore tracked both dockets in one chronology. Litigation-stage items that never occurred in either matter (verdict, JMOL, fees motion, appeal) are flagged as never reached rather than omitted.
Your own metadata conflict can be resolved on the record below: the IPR ended by settlement/license, not by a merits denial of institution.
Chronological developments
2013-01-30 – 2013-12-21 | Ownership chain. Rambus sold the patent family to Acacia; IDT was formed 2013-03-13 and took assignment of the patents 2013-07-26; DDG was formed 2013-12-20 and took assignment of the '196 patent on 2013-12-21. (D. Del. opinion, 2016-02-23, C.A. 13-2108, D.I. 107/159 decision, reciting D.I. 108, Exs. 2, 11, 12; D.I. 19 ¶¶ 20–23.)
2013-12-31 | Complaint (D. Del.). DDG and IDT filed seven parallel infringement suits against Amazon, HTC, Lenovo, LG, Pantech, Sony, and Vizio. The Sony complaint (13-cv-02111) asserted 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. Accused products were described as a broad category of Sony LCD products (exemplars: Xperia TL phone, VAIO SVE11135CXW laptop, Cyber-shot DSC-W620 camera). Plaintiffs pleaded direct and induced infringement, requested an accounting, royalty, permanent injunction, and § 285 fees, and demanded a jury. Assigned to Judge Richard G. Andrews (referred Magistrate Mary Pat Thynge). (Complaint analysis, 1:13-cv-02111; RPX Insight; complaints attached as Ex. 1003 to the IPR.)
2014-08-21 | First IPR against the '196 patent — LG Display (IPR2014-01359). LG Display petitioned for review of claims 1–25. This is the first of the parallel PTAB challenges discussed below.
2014-08-26 | First Texas Markman — Innovative Display Technologies v. Acer, 2014 WL 4230037 (E.D. Tex. Aug. 26, 2014) (Magistrate Judge Payne). Construed "transition region," "predetermined," and "pass through a liquid crystal display with low loss." These constructions were later adopted in the D. Del. cases. (Recited in the D. Del. 2015-11-06 opinion.)
2014-12-29 | LG Electronics files IPR2015-00492 on the '196 patent, with a motion for joinder to IPR2014-01359, asserting identical grounds.
2015-02-17/18 | Sony's IPR petition (IPR2015-00757). Sony Corporation petitioned for review of claims 1–25 of U.S. 7,914,196 ("Light Redirecting Film Systems Having Pattern of Variable Optical Elements," issued 2011-03-29). Notice of filing date accorded to petition: 2015-02-27. Grounds: (1) § 102(a) anticipation by Kojima; (2) § 102(b) anticipation of claims 22–25 by Kalantar; (3) § 103(a) Ando + Jannson; (4) § 103(a) Koike + Kaneko; (5) § 103(a) Koike + Hattersley. Key construction proposed: "deformities" per the specification's express definition. (Petition, Docket Alarm; PTAB petition file)
Sony filed a coordinated family of seven IPRs on the same day against the DDG/IDT patents: IPR2015-00745 ('660), -00749 ('194), -00752 ('816), -00753 ('370), -00755 ('974), -00756 ('177), and -00757 ('196). (Joint motion to terminate, IPR2015-00745 et al.)
2015-03-02 | PTAB denies institution in IPR2014-01359 (LG Display), Paper 12. The Board found no reasonable likelihood on any challenge — the anchor ruling that shaped everything that followed. (Institution Decision, IPR2014-01359)
2015-03-10 | DDG mandatory notices in IPR2015-00757. DDG identified Acacia Research Group LLC and Acacia Research Corporation as real parties-in-interest, and listed the eleven co-pending D. Del./E.D. Tex. actions plus ~31 related IPRs against the family. (Docket Alarm)
2015-04-22 | DDG preliminary response in IPR2015-00492, arguing the petition is a copy of the already-denied IPR2014-01359 and must likewise be denied.
*2015-05-04 | Second Texas Markman — Innovative Display Technologies v. Hyundai Motor Co., 2015 WL 2090651 (E.D. Tex. May 4, 2015) (Judge Gilstrap).* Construed seven terms; agreed construction of "deformities" (DDG opposed Sony/LG adding "from the backlight"). This is the closest thing to a Markman ruling touching the '196 patent during the Sony dispute.
2015-05-27 | DDG preliminary response in IPR2015-00757. DDG argued the Sony petition was not reasonably likely to prevail and was redundant to the already-denied IPR2014-01359 and to IPR2015-00492, and opposed the "from the backlight" gloss. (Preliminary Response)
2015-07-13 | PTAB denies institution in IPR2015-00492 (LG Electronics), consistent with the LG Display denial. Post-institution fees of $18,000 were refunded 2015-10-19. (IPVerse case page; Notice of Refund)
2015-08-03 | Settlement in principle. The parties notified the Board and, in D. Del., filed a Joint Motion to Stay All Deadlines and Notice of Settlement in 13-cv-2111.
2015-08-11 | Joint motions to terminate filed. Sony and DDG jointly moved under 35 U.S.C. § 317(a) to terminate IPR2015-00757 (and the six sister Sony IPRs), agreeing each side bears its own fees, and separately requested that the settlement agreement (Ex. 1031) be kept as confidential business information under § 317(b). The motion states expressly: "Institution Decision Date — N/A," no depositions taken, no substantive paper or declaration by the patent owner. It also confirms that because termination was joint, no § 315(e) estoppel attaches to Sony and no adverse-judgment estoppel to DDG. (Joint Motion to Terminate; Joint Confidentiality Request)
2015-08-12 | Board terminates IPR2015-00757 (Termination/Judgment, Paper 11) — before any institution decision. (Docket Alarm entry, "No. 11 Termination Settlement – Judgment (P.T.A.B. Aug. 12, 2015)")
2015-08-13 | Public announcement. Acacia Research Corporation announced that IDT and DDG had entered into a settlement and patent license agreement with Sony Corporation, resolving the Delaware litigation. (Business Wire, 2015-08-13)
2015-09-01 | D. Del. case closed. C.A. 13-cv-02111 closed; Judge Andrews later confirmed the Sony case "was dismissed by agreement" (C.A. No. 13-2111, D.I. 69). (RPX Insight; D. Del. opinion, 2015-11-06, 13-2108, reciting C.A. 13-2111 D.I. 69.)
2015-11-06 | Claim construction in the surviving DDG cases (not Sony). Judge Andrews construed terms in the '974, '370, '816, and '196 patents — including "pattern of light extracting deformities," "optical elements of well defined shape" (rejecting indefiniteness; "well defined" = "distinct," following Nautilus), and other terms — in C.A. 13-2108/2109/2112. The Sony action was already dismissed, so this opinion does not bind Sony. (Justia opinion PDF; Morris James copy)
Final disposition
- District court (13-cv-2111): Settled and dismissed by agreement; case closed 2015-09-01. No trial, verdict, JMOL, new-trial, or fee motion was ever reached. The monetary terms of the Sony license are confidential.
- PTAB (IPR2015-00757): Terminated on joint motion 2015-08-12, before institution. Claims 1–25 of the '196 patent were never cancelled, and no estoppel attaches to Sony.
- Appeal: none; nothing went to the Federal Circuit from either matter.
Resolving your metadata conflict
Google Patents is correct; the GreyB/IPVerse "institution denied on 2015-08-11" is a mislabel. The 2015-08-11 event was the parties' joint motion to terminate, and the 2015-08-12 event was the Board's termination order — not a merits decision denying institution. The parties' own motion states the institution decision date was "N/A," and no institution decision appears on the docket. (IPVerse similarly codes IPR2015-00757 as "Institution Denied" with an "02/18/15 filed / 08/12/15 institution" pair, which is best read as its coding of the termination, not an actual § 314(a) denial.) Note that a genuine institution denial did occur — but on the parallel LG petitions (IPR2014-01359 on 2015-03-02 and IPR2015-00492 on 2015-07-13), which may be the source of the confusion. (IPVerse, IPR2015-00757)
Parallel PTAB proceedings on the '196 patent and related family
| Proceeding | Petitioner | Patent | Key dates | Outcome |
|---|---|---|---|---|
| IPR2014-01359 | LG Display Co., Ltd. | '196 | filed 2014-08-21; denial 2015-03-02 (Paper 12) | Institution denied |
| IPR2015-00492 | LG Electronics, Inc. | '196 | filed 2014-12-29; PO prelim. resp. 2015-04-22; denial 2015-07-13 | Institution denied (joinder to -01359 refused) |
| IPR2015-00757 | Sony Corporation | '196 | filed 2015-02-17/18; PO prelim. resp. 2015-05-27; joint termination motion 2015-08-11; terminated 2015-08-12 | Terminated by settlement (no institution decision) |
| ~31 other IPRs (e.g., -01092, -01094, -01095, -01096, -01097, -01357, -01362; Sony's -00745/-00749/-00752/-00753/-00755/-00756) | LG, Sony, others | '547, '194, '177, '660, '974, '370, '816, '973, etc. | 2014–2016 | Mixed: many instituted and some claims cancelled; the Sony-set were all terminated on settlement 2015-08-12 |
Effect on the litigation: The IPRs were the decisive lever. The related-family IPRs cancelled a substantial number of independent claims in the asserted DDG/IDT patents, and the D. Del. plaintiffs in the sister cases took voluntary dismissal without prejudice of three patents then under instituted IPR on 2015-10-21 (13-2108 D.I. 88, 89), after which Judge Andrews denied the joint motion to stay (D.I. 90). That pressure, together with the adverse LG institution denials, is consistent with the global Acacia–Sony settlement that ended both the district court case and Sony's seven IPRs.
Items I could not verify (do not treat as established)
- Sony's answer and counterclaims in 13-cv-2111 (e.g., a declaratory-judgment counterclaim of invalidity/non-infringement) — I found no sourced docket entry. Treat as unconfirmed.
- Motions to dismiss/transfer in the Sony case — none found.
- A motion to stay pending IPR in the Sony case itself — the record shows a joint motion to stay deadlines incident to settlement (2015-08-03), and the stays pending IPR discussed in Judge Andrews's November 2015 opinion were in the Lenovo/LG/Vizio cases, not Sony's.
- Attorneys. Confirmed: for DDG at the PTAB, Justin B. Kimble and Jeffrey R. Bragalone (Bragalone Conroy PC, Dallas); for Sony at the PTAB, Gregory S. Gewirtz (Lerner David Littenberg Krumholz & Mentlik LLP, Reg. No. 36,522). For plaintiffs in D. Del., Farnan LLP (Joseph J. Farnan, Jr.; Brian E. Farnan; Michael J. Farnan) with Bragalone Conroy. Sony's D. Del. trial counsel is not confirmed in the sources reviewed (a later expert deposition references Gewirtz/Lerner David acting for Sony on this matter, but I cannot verify the full D. Del. defense team).
- Exact settlement/royalty terms — confidential (Ex. 1031, § 317(b) request granted).
Bottom line: IPR2015-00757 was terminated by settlement on 2015-08-12 before the Board ever ruled on institution; the parallel D. Del. case (13-cv-2111) settled and was dismissed by agreement, closing 2015-09-01. The only substantive validity rulings on the '196 patent in this period were the denials of institution in the two LG IPRs, and the only substantive claim-construction rulings came from the E.D. Tex. Markman orders (2014-08-26 and 2015-05-04) and, post-dismissal, Judge Andrews's 2015-11-06 opinion in the sister D. Del. cases.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Lerner, David, Littenberg, Krumholz & Mentlik
- Gregory S. Gewirtz · lead counsel
- Jonathan A. David · back-up counsel
- Robert B. Hander · petitioner-side attorney
I'll research this. Note upfront: this is an IPR proceeding at the PTAB, not a district court infringement case — so the "plaintiff" is technically the petitioner (Sony), and counsel of record appears in PTAB filings rather than a PACER docket. Let me pull what's available.
This is an IPR, so the "plaintiff" is the petitioner (Sony). Let me pin down Sony's counsel of record in the petition and confirm firm/roles.
Let me confirm the petitioner's designated lead/backup counsel in the petition itself and identify the co-counsel from Oblon and any other Lerner David attorneys on the team.
Important framing note
The question asks for "plaintiff's" counsel, but the case metadata describes IPR2015-00757, a PTAB inter partes review — not a district court infringement action. There is no PACER docket sheet and no "plaintiff" in the FRCP sense. In this forum:
- The party in the plaintiff/caption position is Sony Corporation — the Petitioner.
- The opposing party is Delaware Display Group LLC (DDG) — the Patent Owner (real parties-in-interest: Acacia Research Group LLC and Acacia Research Corporation).
The IPR ran parallel to a real infringement suit, Delaware Display Group LLC v. Sony Corp., No. 1:13-cv-02111 (D. Del.), where Sony was the defendant and DDG/IDT were the plaintiffs. I address both readings below so the answer is useful whichever party you meant.
1. Counsel of record for the Petitioner (Sony) — i.e., the "plaintiff" side in IPR2015-00757
Appointed via Sony's Power of Attorney (dated Feb. 16, 2015) and confirmed by the signature blocks on the Petition and on the Aug. 11, 2015 Joint Motion to Terminate:
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| Gregory S. Gewirtz (Reg. No. 36,522) | Lead counsel for Petitioner | Lerner, David, Littenberg, Krumholz & Mentlik, LLP ("Lerner David") — then 600 South Avenue West, Westfield, NJ 07090; firm later relocated to 20 Commerce Drive, Cranford, NJ 07016 | Senior IP litigator and frequent PTAB counsel for Sony; signed the Petition and the Joint Motion to Terminate in this IPR. For Sony he and Russell Faegenburg won a PTAB case invalidating two patents on prior art that another firm had used unsuccessfully before the same panel (per a 2017 New Jersey Law Journal profile in which Gewirtz was quoted). Also represented Sony entities in the Immersion v. Sony JAMS arbitration. |
| Jonathan A. David (Reg. No. 36,494) | Back-up counsel for Petitioner | Lerner David — Westfield, NJ (later Cranford, NJ) | Listed as back-up counsel on the Power of Attorney; on the Petitioner's service e-mail list. |
| Robert B. Hander | Petitioner-side attorney (not expressly labeled lead/back-up) | Lerner David — Westfield, NJ | Appears on the Petitioner's service list in DDG's certificate of service (RHaner.ipr@ldlkm.com), indicating he worked the file. Role as to this IPR is not spelled out in the filings I could verify. |
Co-counsel / additional appointed practitioners: The Feb. 16, 2015 Power of Attorney appointed practitioners at both Lerner David (Customer No. 00530) and Oblon, McClelland, Maier & Neustadt (Customer No. 22850) "to transact all business in the Patent Trial & Appeal Board." Oblon's docket e-mail appeared on the service list (CPDocketMcKeown@oblon.com). I could not verify the individual Oblon attorney(s) of record for this specific IPR from the sources returned, so I am not naming one — please treat the Oblon participation as firm-level only.
No in-house counsel appeared of record in the PTAB filings I located.
2. Counsel for the Patent Owner (DDG) — the opposing side
If by "plaintiff" you were thinking of the patent-enforcement side (DDG/IDT are plaintiffs in the parallel district court case), their IPR counsel of record were:
- Justin B. Kimble (Reg. No. 58,591) — lead counsel, Bragalone Conroy P.C., 2200 Ross Ave., Suite 4500 West, Dallas, TX 75201
- Jeffrey R. Bragalone (pro hac vice) — Bragalone Conroy
- Terry A. Saad (Reg. No. 62,492), Nicholas C. Kliewer (Reg. No. 72,480), T. William Kennedy (pro hac vice) — all Bragalone Conroy (per DDG's Power of Attorney, executed Mar. 6, 2015)
- In the D. Del. case (13-cv-2111), the plaintiffs' team was Farnan LLP (Joseph J. Farnan, Jr., Bar No. 100245; Brian E. Farnan) as Delaware local counsel plus Bragalone Conroy (Bragalone, Patrick J. Conroy, Kimble, Daniel F. Olejko, T. William Kennedy, Jr.) as the plaintiffs' attorneys — per the caption block of the DDG/IDT complaints.
3. Cautions and sourcing
- This is not a PACER/district-court docket. The above is drawn from the PTAB filings themselves (Power of Attorney, Petition, Patent Owner's Preliminary Response, Joint Motion to Terminate) as mirrored on Docket Alarm and PTAB CTS, plus GreyB/IPVerse and Ex Parte case pages. Detailed docket-sheet-level entries for this proceeding are not on PACER because it is an agency proceeding.
- Metadata conflict flagged: the "institution denied" characterization in the case summary does not match the actual docket. The record shows the parties filed a Joint Motion to Terminate under 35 U.S.C. § 317 on Aug. 11, 2015 after settling (settlement agreement filed as Ex. 1031), and the proceeding was terminated on that basis — before any institution decision ("Institution Decision Date — N/A" in the parties' own filing). So the better reading is terminated by settlement, not "institution denied." Google Patents' "settlement" label is the accurate one.
- Descriptions of individual attorneys' experience (e.g., Gewirtz's PTAB win for Sony) come from a 2017 New Jersey Law Journal "Litigation Department of the Year" profile quoting Gewirtz, and from the Immersion v. Sony JAMS arbitration pleadings — not from any opinion in this IPR.
- I did not find sealed filings in this IPR; the settlement agreement itself was filed under a request to be kept confidential (business-confidential treatment), so its terms are not public.
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
I'll research this case. Let me start with the docket and PTAB records.
Let me pull the mandatory notices listing lead/back-up counsel for the patent owner.
Let me confirm the exact lead/back-up counsel designation in this specific IPR and check firm/attorney details.
Counsel of Record — Sony Corp. v. Delaware Display Group LLC, IPR2015-00757 (U.S. Patent 7,914,196)
Threshold correction on posture
Before naming attorneys, one framing note: this is not a district-court infringement action, and the "defendant" label doesn't map cleanly. IPR2015-00757 is a PTAB inter partes review in which Sony Corporation is the Petitioner and Delaware Display Group LLC ("DDG") is the Patent Owner/Respondent. The underlying infringement suit is Delaware Display Group LLC and Innovative Display Technologies LLC v. Sony Corp. et al., No. 1:13-cv-02111 (D. Del., filed Dec. 31, 2013), where DDG/IDT are the plaintiffs and the Sony entities are the defendants. The Patent Owner's own mandatory notices state the '196 patent "has been litigated between the parties" in that Delaware action (IPR2015-00757, Paper 6, § 42.8(b)(2)).
So I give you both sides below, clearly separated.
A. Counsel for the patent owner / respondent — Delaware Display Group LLC
(the party adverse to Sony in this IPR; the entity your metadata lists as "defendant")
All PTAB papers in this IPR were filed on behalf of DDG by Bragalone Conroy P.C. (now also rendered "Bragalone Conroy PC" / formerly "Bragalone & Conroy LLP"), 2200 Ross Avenue, Suite 4500-West, Dallas, TX 75201 (tel. 214-785-6670; fax 214-786-6680).
| Attorney | Role | Reg. No. / bar status | Notes |
|---|---|---|---|
| Justin B. Kimble | Lead counsel of record | USPTO Reg. No. 58,591 | Registered practitioner designated lead counsel in the Power of Attorney and the mandatory notices; signed the Patent Owner Preliminary Response (Paper 7) and the Joint Motion to Terminate (Paper 9). Founding partner of Bragalone Conroy; reports having served as lead counsel in 100+ IPRs for both petitioners and patent owners, focused on display/LCD, semiconductor and storage technologies. (Now at Nelson Bumgardner; not licensed in Illinois.) |
| Jeffrey R. Bragalone | Back-up counsel (admitted pro hac vice) | Texas; not a registered practitioner at the relevant time — appeared via § 42.10(c) motion | Bragalone Conroy founding/name partner, Dallas. 26+ years' litigation experience; argued three Federal Circuit patent appeals — Greenliant Sys. v. Xicor LLC, 692 F.3d 1261 (Fed. Cir. 2012); United Access Techs. v. Earthlink, 432 F. App'x 976 (Fed. Cir. 2011); Bd. of Regents of the Univ. of Texas Sys. v. BenQ America, 533 F.3d 1362 (Fed. Cir. 2008) — and briefed Tegic Commc'ns v. Bd. of Regents, 458 F.3d 1335 (Fed. Cir. 2006). Served as lead counsel for DDG/IDT in the parallel D. Del. actions, which is the basis for his asserted familiarity with the '196 subject matter. |
Additional back-up counsel listed by the same firm for DDG/IDT in the sibling IPRs on this same patent family (IPR2014-01359 and IPR2014-01357 mandatory notices): Terry A. Saad (Reg. No. 62,492), Nicholas C. Kliewer (Reg. No. 72,480), and T. William Kennedy (pro hac vice). ⚠️ Caveat: I could not retrieve the full text of Paper 6 (DDG's Updated Mandatory Notices, filed Mar. 10, 2015) in this specific IPR — search snippets cut off right at the lead/back-up counsel designation. The Paper 5 Power of Attorney (dated Mar. 6, 2015) and the Paper 7 Preliminary Response name only Kimble and Bragalone. Treat Saad/Kliewer/Kennedy as likely-but-unconfirmed for -00757 and confirmed for the companion proceedings.
Real parties-in-interest: DDG, Acacia Research Group LLC, and Acacia Research Corporation (Paper 6, § 42.8(b)(1)) — i.e., DDG is an Acacia licensing subsidiary. There is no separate in-house counsel of record; the Acacia relationship is structural (RPI), not an appearance.
B. Counsel for the district-court defendants — the Sony entities
(If by "defendant" you meant the accused infringers in 1:13-cv-02111)
From the parallel Delaware litigation, the Sony entities were represented by Lerner David Littenberg Krumholz & Mentlik LLP. A 2017 deposition transcript in a later Acacia/Solas matter refers to Sony's counsel there as Gregory ("Greg") Gewirtz and mentions Jonathan David at the same firm. This is the petitioner-side trial team, not the IPR team; I have not confirmed the exact Sony IPR2015-00757 petitioner roster from the docket (GreyB/IPVerse lists only Gregory Gewirtz as "Petitioner Counsel"). Note also that in the related DDG cases against other defendants, Sony's co-defendants used different firms — e.g., Mayer Brown (LG), Gibson Dunn (Vizio), Vinson & Elkins (Lenovo), Potter Anderson / Young Conaway as Delaware local counsel — but those are other defendants, not Sony.
If you specifically need the Sony IPR counsel of record (Paper 2 Petition + Rule 42.8 notices), that requires pulling the Petition's signature block and Paper 3 from PTAB/PACER; the public snippet I retrieved shows only the Petition cover, not the counsel table.
C. Local Delaware counsel (context)
In the co-pending D. Del. actions, Farnan LLP (Joseph J. Farnan, Jr.; Brian E. Farnan; Michael J. Farnan), Wilmington, DE, served as local counsel for plaintiffs DDG/IDT (see Delaware Display Group LLC v. Lenovo, No. 13-2108-RGA, Mem. Op., Feb. 23, 2016, caption). Bragalone Conroy handled the substantive work. ⚠️ Farnan LLP is not listed as counsel in the PTAB IPR itself.
D. Case-status note (resolves the conflict in your summary)
The record confirms settlement, not institution denial:
- The parties advised the Board on Aug. 3, 2015 they had settled in principle; the Board authorized a joint termination motion (Paper 9, Joint Motion to Terminate under 35 U.S.C. § 317(a), filed Aug. 11, 2015).
- Paper 9 expressly states the Institution Decision Date is "N/A" — no institution decision ever issued, and no estoppel attached to either party.
- It also confirms no depositions, no substantive patent-owner paper, no declarations, and identifies the settled litigation as DDG/IDT v. Sony, 13-cv-2111 (D. Del.), with a notice of settlement filed Aug. 3, 2015.
- Acacia publicly announced the settlement/license on Aug. 13, 2015 (Business Wire).
The "Institution Denied / 08-11-2015" entries on GreyB/IPVerse appear to be a database mislabel of the Aug. 11, 2015 termination filing (and the ex parte.ai page's "Institution 08/12/15" is inconsistent with the Board's own "N/A"). Paper 9, filed Aug. 11, 2015, and signed "/s/ Justin B. Kimble," is the best evidence.
Bottom line
The attorneys representing the party adverse to Sony in IPR2015-00757 (Patent Owner Delaware Display Group LLC) were Justin B. Kimble (lead, Bragalone Conroy, Dallas) and Jeffrey R. Bragalone (back-up, pro hac vice, same firm) — both repeat counsel for the Acacia NPE family that owned the '196 patent. No in-house attorney appeared. If instead you need the Sony-side IPR counsel of record, that must be confirmed from the Petition's counsel table, which I could not fully retrieve.