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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 REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION
`PURSUANT TO 35 U.S.C. § 317(b)
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`
`
`U.S. Patent 7,636,142
`IPR2021-01058
`Petitioner Tianma Microelectronics Co. Ltd., and Patent Owner Japan
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`Display Inc. have entered into a settlement agreement that resolves all underlying
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`disputes between the parties, including the related district court litigation and inter
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`partes review proceeding IPR2021-01058, against U.S. Patent No. 7,636,142,
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`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
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`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the
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`settlement agreement (including the license agreement) between the parties is being
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`submitted concurrently herewith in this proceeding as Ex. 1024.
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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
`understanding shall be
`treated as business confidential
`information, shall be kept separate from the file of the involved
`patents, and shall be made available only to Federal Government
`agencies on written request, or to any person on a showing of
`good cause.
`35 U.S.C. § 317(b).
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`–2–
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`U.S. Patent 7,636,142
`IPR2021-01058
`Accordingly, pursuant to 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b),
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`Petitioner and Patent Owner jointly request that the Office treat the settlement
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`agreement (including the license agreement) filed concurrently herewith as Ex. 1024
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`as business confidential information, that the agreement be kept separate from the
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`file of the involved patent, and that the agreement be made available only to Federal
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`Government agencies on written request, or to other persons only on a showing of
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`good cause.
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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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`
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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 Request
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`to Treat Settlement Agreement as Business Confidential Information Pursuant
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`to 35 U.S.C. § 317(b) was served on January 26, 2022, via email directed to counsel
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`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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`
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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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