throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 19
`Entered: February 3, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and PANASONIC LIQUID
`CRYSTAL DISPLAY CO., LTD.,1
`Patent Owner.
`____________
`
`IPR2021-01028 (Patent 9,793,299 B2)
`IPR2021-01029 (Patent 9,310,654 B2)
`IPR2021-01057 (Patent 7,385,665 B2)
`IPR2021-01058 (Patent 7,636,142 B2)
` IPR2021-01061 (Patent 10,423,034 B2)2
`____________
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`PER CURIAM.
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 Japan Display Inc. is the only Patent Owner in IPR2021-01029, IPR2021-
`01057, and IPR2021-01058.
`2 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`

`

`IPR2021-01028 (Patent 9,793,299 B2)
`IPR2021-01029 (Patent 9,310,654 B2)
`IPR2021-01057 (Patent 7,385,665 B2)
`IPR2021-01058 (Patent 7,636,142 B2)
`IPR2021-01061 (Patent 10,423,034 B2)
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively “the Parties”) have
`requested that the above-identified inter partes review proceedings be
`terminated pursuant to a settlement. On January 26, 2022, the Parties filed a
`Joint Motion to Terminate Proceeding (“Joint Motion”) in each of the above-
`identified proceedings. Paper 20.3 The Parties also filed a copy of a
`settlement agreement (Ex. 1028, “Settlement Agreement”) and filed a Joint
`Request to Treat Settlement Agreement as Business Confidential
`Information Pursuant to 35 U.S.C. § 317(b) (Paper 21, “Joint Request”) in
`each of the proceedings.
`
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the inter partes review proceedings,
`that the filed copy of the Settlement Agreement is a true copy, and that,
`aside from the filed copy, “[t]here are no other agreements, oral or written,
`
`
`3 For expediency, we cite to the Papers and Exhibits filed in IPR2021-01028,
`unless otherwise indicated. Similar Papers and Exhibits were filed in
`IPR2021-01029, IPR2021-01057, IPR2021-01058, and IPR2021-01061.
`2
`
`
`
`

`

`IPR2021-01028 (Patent 9,793,299 B2)
`IPR2021-01029 (Patent 9,310,654 B2)
`IPR2021-01057 (Patent 7,385,665 B2)
`IPR2021-01058 (Patent 7,636,142 B2)
`IPR2021-01061 (Patent 10,423,034 B2)
`
`between the parties made in connection with, or in contemplation of, the
`termination of the proceeding.” Joint Motion 2.
`We instituted trial in the above-identified proceedings. See, e.g.,
`Paper 14. The trials are still at an early stage. Oral hearings have not yet
`been held, we have not yet decided the merits of the proceedings, and final
`written decisions have not yet been entered. Under these circumstances and
`in view of the Parties’ settlement, we determine that good cause exists to
`terminate the proceedings.
`The Parties request that the Settlement Agreement be treated as
`business confidential information and be kept separate from the file of Patent
`9,793,299, Patent 9,310,654, Patent 7,385,665, Patent 7,636,142, and Patent
`10,423,034. Joint Request 3. After reviewing the Settlement Agreement,
`we determine that good cause exists to treat the Settlement Agreement as
`business confidential information pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motions are granted, and IPR2021-01028,
`IPR2021-01029, IPR2021-01057, IPR2021-01058, and IPR2021-01061 are
`terminated with respect to Petitioner and Patent Owner, pursuant to
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`
`
`3
`
`

`

`IPR2021-01028 (Patent 9,793,299 B2)
`IPR2021-01029 (Patent 9,310,654 B2)
`IPR2021-01057 (Patent 7,385,665 B2)
`IPR2021-01058 (Patent 7,636,142 B2)
`IPR2021-01061 (Patent 10,423,034 B2)
`
`FURTHER ORDERED that the Joint Requests are granted, and the
`
`Settlement Agreement shall be kept separate from the file of Patent
`9,793,299, Patent 9,310,654, Patent 7,385,665, Patent 7,636,142, and Patent
`10,423,034, and made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`4
`
`

`

`IPR2021-01028 (Patent 9,793,299 B2)
`IPR2021-01029 (Patent 9,310,654 B2)
`IPR2021-01057 (Patent 7,385,665 B2)
`IPR2021-01058 (Patent 7,636,142 B2)
`IPR2021-01061 (Patent 10,423,034 B2)
`
`For PETITIONER:
`
`Joshua L. Goldberg
`Qingyu Yin
`David C. Reese
`Daniel F. Klodowski
`Gracie K. Mills
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joshua.goldberg@finnegan.com
`qingyu.yin@finnegan.com
`david.reese@finnegan.com
`daniel.klodowski@finnegan.com
`gracie.mills@finnegan.com
`
`
`For PATENT OWNER:
`
`Eric J. Klein
`Abigail Lubow
`Jeffrey R. Swigart
`VINSON & ELKINS LLP
`eklein@velaw.com
`alubow@velaw.com
`jswigart@velaw.com
`
`
`
`
`5
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket