`Filed: May 26, 2015
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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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`TOYOTA MOTOR CORPORATION,
`Petitioner,
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`________________
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`IPR2015-00857
`Patent 7,384,177
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`________________
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`JOINT REQUEST THAT SETTLEMENT AGREEMENT BE TREATED
`AS BUSINESS CONFIDENTIAL INFORMATION AND KEPT
`SEPARATE UNDER 37 C.F.R § 42.74(c)
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`
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`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
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`INTRODUCTION
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`IPR2015-00857
`Patent No. 7,384,177
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`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
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`review proceeding IPR2015-00857, against U.S. Patent No. 7,384,177, 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.
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`§ 42.74(c).
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`STATUS OF RELATED PROCEEDINGS
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`A. District Court Proceeding
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`The following is the only related proceeding between the parties:
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`–1–
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`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
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`IPR2015-00857
`Patent No. 7,3 84,177
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`District Court Case
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`U.S. Patent Nos.
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`Status
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`6,755,547
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`Innovative Display
`Technologies LLC v.
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`Toyota Motor Coip. Inc.,
`Case No. 2: l4—cv—200—
`JRG (ED TX.)
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`6,508,563
`6,386,956
`7=434=974
`8,2 15,81 6
`7 384 177
`7-:300:194
`7,404,660
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`Unopposed motion to dismiss
`without prejudice filed May 19,
`2015 and Dismissal Order
`entered May 20,
`2015-
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`There are no other district court proceedings related to U.S_ Patent No.
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`7,384,177 between the parties.
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`B. United States Patent Office Proceedings
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`The following related inter partes review proceedings filed by Petitioner
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`Toyota are currently before the United States Patent and Trademark Office:
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`As noted above, the parties are concurrently filing joint requests to terminate
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`each of the above inter partes reviews.
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`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. 7,384,177
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`IPR2015-00857
`Patent No. 7,384,177
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`between the parties.
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`THE SETTLEMENT AGREEMENT
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`The parties have entered into a Confidential Settlement Agreement (the
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`“Agreement”) settling their dispute involving eight (8) U.S. Patents, including U.S.
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`Patent No. 7,384,177. 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 1028).
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`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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`IPR2015-00857
`Joint Request That Settlement Agreement Be Treated As
`Patent No. 7,384,177
`Business Confidential Information And Kept Separate
`In a motion filed concurrently herewith, Petitioner and Patent Owner jointly
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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 1027). 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 1027) 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
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`agencies on written request, or to other persons only on a showing of good cause.
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`CONCLUSION
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`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.
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`–4–
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`IPR2015-00857
`Joint Request That Settlement Agreement Be Treated As
`Patent No. 7,384,177
`Business Confidential Information And Kept Separate
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`Respectfully submitted,
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`/P. Andrew Riley/
`
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`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
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`Attorneys for Petitioner
`Toyota Motor Corporation
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`/Justin B. Kimble/
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`Justin B. Kimble, Reg. No. 58,591
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 - West
`Dallas, TX 75201
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`Attorneys for Patent Owner
` Innovative Display Technologies LLC
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`–5–
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`Date: 05/26/2015
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`Date: 05/26/2015
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`Joint Request That Settlement Agreement Be Treated As
`Business Confidential Information And Kept Separate
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`CERTIFICATE OF SERVICE
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`IPR2015-00835
`Patent No. 7,384,177
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`The undersigned certifies a copy of the foregoing JOINT REQUEST TO
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`FILE AS BUSINESS CONFIDENTIAL INFORMATION was served on May
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`26, 2015 via electronic mail directed to the counsel of record for the Patent Owner
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`Justin Kimble, Lead Counsel
`jkimble@bcpc-law.com
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`Jeffrey Bragalone
`jbragalone@bcpc-law.com
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`Terry Saad
`tsaad@bcpc-law.com
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`Nicholas Kliewer
`nkliewer@bcpc-law.com
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`T. William Kennedy
`bkennedy@bcpc-law.com
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`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Clerk
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`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER LLP
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`–6–
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`at the following:
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`Dated: May 26, 2015