`
`Paper No.
`Filed: May 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`________________
`
`IPR2015-00831
`Patent 7,434,974
`
`________________
`
`JOINT REQUEST THAT SETTLEMENT AGREEMENT BE TREATED
`AS BUSINESS CONFIDENTIAL INFORMATION AND KEPT
`SEPARATE UNDER 37 C.F.R § 42.74(c)
`
`
`
`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
`
`
`INTRODUCTION
`
`IPR2015-00831
`Patent No. 7,434,974
`
`Petitioner Toyota Motor Corporation (Toyota) and Patent Owner Innovative
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`Display Technologies LLC (IDT) have entered into a settlement agreement that
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`resolves all underlying disputes between the parties, including the inter partes
`
`review proceeding IPR2015-00831, against U.S. Patent No. 7,434,974, currently
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`before the Board (“the proceeding”).
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`In a hearing held May 22, 2015, in light of the settlement agreement, the
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`Board authorized the parties to file a joint motion to terminate in the above-
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`captioned proceeding. Also during the hearing, the Board authorized the parties to
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`file a joint request that the Office treat the agreement business confidential
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`information. Accordingly, the parties jointly request that the agreement be held
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`separately and treated as business confidential information pursuant to 37 C.F.R.
`
`§ 42.74(c).
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`STATUS OF RELATED PROCEEDINGS
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`A. District Court Proceeding
`
`The following is the only related proceeding between the parties:
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`–1–
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`
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`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
`
`IPR2015-0083l
`Patent No. 7,434,974
`
`
`
`
`
`US. Patent Nos.District Court Case Status
`
`6,755,547
`
`Innovative Display
`Technologies LLC v.
`
`Toyota Motor C011). Inc.,
`Case No. 2: l4-cv-200-
`JRG (ED TX.)
`
`6,508,563
`6,886,956
`7,434,974
`8,2 15,8] 6
`7 384 177
`7’300’194
`7,404,660
`
`Unopposed motion to dismiss
`without prejudice filed May 19,
`2015 and Dismissal Order
`entered May 20,
`2015-
`
`There are no other district court proceedings related to US. Patent No.
`
`7,434,974 between the parties.
`
`B. United States Patent Office Proceedings
`
`The following related inter partes review proceedings filed by Petitioner
`
`Toyota are currently before the United States Patent and Trademark Office:
`
`
`
`As noted above, the parties are concurrently filing joint requests to terminate
`
`each of the above inter partes reviews.
`
`
`
`
`
`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
`C. Foreign Proceedings
`There are no foreign proceedings related to U.S. Patent No. 7,434,974
`
`IPR2015-00831
`Patent No. 7,434,974
`
`between the parties.
`
`THE SETTLEMENT AGREEMENT
`
`The parties have entered into a Confidential Settlement Agreement (the
`
`“Agreement”) settling their dispute involving eight (8) U.S. Patents, including U.S.
`
`Patent No. 7,434,974. As part of the Agreement, the related district court
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`litigation, Innovative Display Technologies LLC v. Toyota Motor Corp., Case No.
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`2:14-cv-200-JRG (ED TX.) has been dismissed. (Exhibit 1017).
`
`RELIEF REQUESTED
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`If requested, the rules permit the parties to have any filed settlement
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`agreement treated as business confidential information, and kept separate from the
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`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
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`At the request of a party to the proceeding, the agreement or
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`understanding shall be treated as business confidential
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`information, shall be kept separate from the file of the involved
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`patents, and shall be made available only to Federal
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`Government agencies on written request, or to any person on a
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`showing of good cause.
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`35 U.S.C. § 317(b).
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`
`
`–3–
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`
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`IPR2015-00831
`Joint Request That Settlement Agreement Be Treated As
`Patent No. 7,434,974
`Business Confidential Information And Kept Separate
`In a motion filed concurrently herewith, Petitioner and Patent Owner jointly
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`
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`request termination of the proceeding. The parties also submit, as part of that joint
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`request, a true copy of the Agreement between them (Exhibit 1016). Because the
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`Agreement contains confidential business information, the parties jointly request
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`that the Office treat the Agreement (Exhibit 1016) as business confidential
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`information, that the Agreement be kept separate from the file of the involved
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`patents, and the Agreement be made available only to Federal Government
`
`agencies on written request, or to other persons only on a showing of good cause.
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`
`
`CONCLUSION
`
`For the foregoing reasons, the Petitioner Toyota and the Patent Owner IDT
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`jointly and respectfully request that the Board hold the Agreement as business
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`confidential information pursuant to 37 C.F.R. § 42.74(c) in the proceeding.
`
`
`
`
`
`
`
`–4–
`
`
`
`IPR2015-00831
`Joint Request That Settlement Agreement Be Treated As
`Patent No. 7,434,974
`Business Confidential Information And Kept Separate
`
`Respectfully submitted,
`
`
`
`
`
`
`
`Date: 05/27/2015
`
`
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`
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`Date: 05/27/2015
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`
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`
`
`/P. Andrew Riley/
`
`
`P. Andrew Riley, Reg. No. 66,290
`Thomas W. Winland, Reg. No. 27,605
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Ave, NW
`Washington, DC 20001
`
`Attorneys for Petitioner
`Toyota Motor Corporation
`
`
`/Justin B. Kimble/
`
`
`Justin B. Kimble, Reg. No. 58,591
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 - West
`Dallas, TX 75201
`
`Attorneys for Patent Owner
`Innovative Disply Technologies LLC
`
`–5–
`
`
`
`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
`
`
`CERTIFICATE OF SERVICE
`
`IPR2015-00831
`Patent No. 7,434,974
`
`The undersigned certifies a copy of the foregoing JOINT REQUEST TO
`
`FILE AS BUSINESS CONFIDENTIAL INFORMATION was served on May
`
`27, 2015 via electronic mail directed to the counsel of record for the Patent Owner
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`at the following:
`
`
`
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`Dated: May 27, 2015
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`
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`Justin Kimble, Lead Counsel
`jkimble@bcpc-law.com
`
`Jeffrey Bragalone
`jbragalone@bcpc-law.com
`
`Terry Saad
`tsaad@bcpc-law.com
`
`Nicholas Kliewer
`nkliewer@bcpc-law.com
`
`T. William Kennedy
`bkennedy@bcpc-law.com
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`
`
`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Clerk
`
`
`
`
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER LLP
`
`
`
`–6–
`
`
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