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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INNOLUX CORPORATION
`Petitioner
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`v.
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`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
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`CASE IPR2013-00028
`PATENT 6,404,480
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Patent Owner and
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`Petitioner jointly request termination of Inter Partes Review Case No. IPR2013-
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`00028 with respect to Petitioner, Innolux Corporation. No other petitioners remain
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`in the proceeding.
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`Patent Owner and Petitioner respectfully submit that termination is
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`appropriate because they have reached an agreement resolving the dispute
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`involving the patent at issue in the above-captioned Inter Partes Review and
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`because it is before full briefing on the issues raised in Inter Partes Review Case
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`No. IPR2013-00028, nor has there been any ruling by the Board on the trial.
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`Further, Petitioner represents that it will no longer participate even if the Board
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`does not terminate this review. That means Petitioner will file no further papers. It
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`also will not be conducting any further cross examination of Patent Owner’s
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`witnesses and will not be participating in any oral argument.
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`As required under 35 U.S.C. §317(b) and 37 C.F.R. § 42.74(b), filed
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`herewith is a true copy of the written confidential Settlement Agreement and
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`Mutual Release resolving the dispute in the above captioned Inter Partes Review
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`and the related litigation (the “Settlement Agreement”). See Settl. All parties to the
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`action in the United States District Court for the Central District of California,
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`which alleged infringement against Chimei Innolux Corporation, Chi Mei
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`Optoelectronics USA, Inc., Acer America Corporation, ViewSonic Corporation,
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`2
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`VIZIO, Inc., and Westinghouse Digital, LLC (the “California litigation”) have
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`agreed to the dismissal of the California litigation, and the Rule 41 Stipulation of
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`Dismissal has been filed in the United States District Court for the Central District
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`of California. See DISM. The California litigation is currently stayed pending the
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`completion of Inter Partes Review Case No. IPR2013-00028 and inter partes
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`review proceedings involving five other patents asserted in the California
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`litigation. Also filed is a true copy of the written confidential Patent License
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`Agreement Re: Liquid Crystal Display Devices (the “License Agreement”). See
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`LIC. The Settlement Agreement and the License Agreement resolve entirely the
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`dispute between Patent Owner and Petitioner relating to the patent at issue in the
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`above-captioned Inter Partes Review and the other five patents asserted in the
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`California litigation and the inter partes reviews involving all six patents asserted
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`in that litigation. There is no other litigation in any court or forum involving the
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`Patent Owner and the parties who are defendants in the California litigation or the
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`patent at issue in the above-captioned Inter Partes Review.
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`Patent Owner and Petitioner are concurrently filing a Joint Request that the
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`Settlement Agreement attached hereto as Settl and the License Agreement attached
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`hereto as LIC shall be treated as business confidential information, shall be kept
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`separate from the file of the involved patents, and shall be made available only to
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`Federal Government agencies on written request, or to any person on a showing of
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`good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §42.74(c).
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`The parties jointly request termination of IPR2013-00028. Patent Owner
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`believes no fee is due with this filing. If necessary, however, the Commissioner is
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`hereby authorized in this, concurrent, and future filings, to charge payment or
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`credit any overpayment to Deposit Account 15-0030, (Customer ID No. 22850).
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`Dated: December 4, 2013
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`Respectfully submitted,
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`/Scott A. McKeown/
`Scott A. McKeown
`Oblon, Spivak, McClelland, Maier &
`Neustadt, L.L.P.
`1940 Duke Street
`Alexandria, VA 22314
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`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
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`Stanley Gibson
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
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`Attorneys for Petitioner
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`______________________________
`Eric J. Robinson
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`4
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`Sean C. Flood
`ROBINSON INTELLECTUAL
`PROPERTY LAW OFFICE, P.C.
`3975 Fair Ridge Drive,
`Suite 20 North
`Fairfax, Virginia 22033
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`Stanley A. Schlitter
`Douglas R. Peterson
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street
`Chicago, IL 60603
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`Attorneys for Patent Owner
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`5
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`CERTIFICATE OF SERVICE
`I hereby certify that JOINT MOTION TO TERMINATE INTER PARTES
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`REVIEW along with Settl, LIC, and DISM in connection with Inter Partes
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`Review Case IPR2013-00028 was served on the Patent Owner by UPS Express
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`Standard Overnight at the following addresses on December 4, 2013.
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`Eric J. Robinson
`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
`Fairfax, VA 22030
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`Sean C. Flood
`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
`Fairfax, VA 22030
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`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
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