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`Paper No.
`Filed: January 26, 2022
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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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`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
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`v.
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`JAPAN DISPLAY INC.,
`Patent Owner.
`_____________________________
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`Case No. IPR2021-01058
`U.S. Patent No. 7,636,142
`_____________________________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`U.S. Patent 7,636,142
`IPR2021-01058
`Petitioner Tianma Microelectronics Co. Ltd., and Patent Owner Japan Display
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`Inc. have entered into a settlement agreement that resolves all underlying disputes
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`between the parties, including the related district court litigation and inter partes
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`review proceeding IPR2021-01058, against U.S. Patent No. 7,636,142 (the “’142
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`patent”), currently before the Board.
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`In an email dated January 25, 2022, the Board authorized the parties to file a
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`joint motion to terminate and a joint request to treat the settlement agreement
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`(including the license agreement) as business confidential information. In accordance
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`with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the settlement
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`agreement (including the license agreement) between the parties is being submitted
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`concurrently herewith in this proceeding as Ex. 1024. There are no other agreements,
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`oral or written, between the parties made in connection with, or in contemplation of,
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`the termination of the proceeding.
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`Petitioner and Patent Owner jointly request that the Board terminate this
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`proceeding in its entirety. The Board granted institution on January 5, 2022. See
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`Paper 16. Patent Owner’s response to the petition is not due until March 30, 2022.
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`See Paper 17. Termination is appropriate at this stage in view of the settlement
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`agreement. See Patent Office Trial Practice Guide, 77 Fed. Reg. 48,768 (Aug. 14,
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`2012) (“The Board expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`–2–
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`U.S. Patent 7,636,142
`IPR2021-01058
`proceeding.”). The agreement ends all patent disputes between the parties, including
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`the related district court proceeding and this IPR proceeding.
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`No other petitioners remain in this inter partes review, and no final written
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`decision on the merits has been entered. Except for the instant proceeding, there are
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`no other proceedings currently before the Board challenging the ’142 patent and no
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`other district court cases involving the ’142 patent. For at least these reasons,
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`termination of the inter partes review is proper under 35 U.S.C. § 317(a) and 37
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`C.F.R. §§ 42.72, 42.74(a).
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`Dated: January 26, 2022
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`Respectfully submitted,
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`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Reg. No. 59,369
` Counsel for Petitioner
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`By: /Eric J. Klein/
`Eric J. Klein, Reg. No. 51,888
`Counsel for Patent Owner
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`–3–
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`U.S. Patent 7,636,142
`IPR2021-01058
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Joint Motion to
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`Terminate Proceeding was served on January 26, 2022, via email directed to
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`counsel of record for Patent Owner at the following:
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`Eric J. Klein (Reg. No. 51,888)
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Tel: (214) 220-7700
`Fax: (214) 220-7716
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`Dated: January 26, 2022
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`Abigail Lubow (Reg. No. 75,839)
`alubow@velaw.com
`VINSON & ELKINS L.L.P.
`555 Mission Street, Suite 2000
`San Francisco, CA 94105
`Tel: (415) 979-6963
`Fax: (415) 358-5770
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`Jeffrey R. Swigart (Reg. No. 77,008)
`jswigart@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201-2975
`Tel: (214) 220-7700
`Fax: (214) 220-7716
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`By: /Valencia Daniel/
`Valencia Daniel
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
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`–4–
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