`571-272-7822
`
`Paper 21
`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
`
`