Case 2:20-cv-0
`
`
`ageID #: 3949
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`JAPAN DISPLAY INC. and PANASONIC
`LIQUID CRYSTAL DISPLAY CO., LTD.,
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`
`CIVIL ACTION NO. 2:20-cv-00283-JRG
`(Lead Case)
`CIVIL ACTION NO. 2:20-cv-00284-JRG
`CIVIL ACTION NO. 2:20-cv-00285-JRG
`(Consolidated)
`JURY TRIAL DEMANDED
`
`
`TIANMA MICROELECTRONICS CO.
`LTD.,
`
`
`Defendant.
`
`
`
`DEFENDANT’S MOTION FOR LEAVE
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`
`
`
`
`
`
`i
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`Page 1
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`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`

`

`Case 2:20-cv-0
`
`
`ageID #: 3950
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT ............................................................................................ 1
`
`FACTUAL BACKGROUND ................................................................................................. 1
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`A.
`
`B.
`
`C.
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`Plaintiffs belatedly produced their own prior art information only after the
`Court’s order ............................................................................................................... 2
`
`Tianma Microelectronics’s supplemental invalidity contentions are either
`based on the prior art products alone or based on the prior art products in
`combination with reference publications .................................................................... 2
`
`Plaintiffs do not oppose supplemental contentions based on the prior art
`products, but oppose the contentions based on a modification of the prior art
`products in light of later-discovered references .......................................................... 3
`
`III.
`
`APPLICABLE LAW .............................................................................................................. 4
`
`IV. GOOD CAUSE SUPPORTS TIANMA MICROELECTRONICS’
`SUPPLEMENTAL CONTENTIONS WITH COMBINATIONS BASED ON
`PLAINTIFFS’ BELATED PRODUCTION OF THEIR OWN PRIOR ART
`PRODUCTS ............................................................................................................................ 4
`
`A.
`
`B.
`
`C.
`
`D.
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`After this Court ordered Plaintiffs to produce their own prior art products,
`Tianma Microelectronics sought to supplement its contentions as quickly as
`practicable ................................................................................................................... 5
`
`The supplemental contentions are important to Tianma Microelectronics’
`counterclaims and defenses because Plaintiffs’ own prior products threaten
`to invalidate seven of their asserted patents ................................................................ 7
`
`Plaintiffs suffer no prejudice because they are familiar with their own
`products and had knowledge of each of the cited references for months ................... 9
`
`Any prejudice could be addressed by reurging the parties’ joint request for a
`continuance ............................................................................................................... 11
`
`V.
`
`CONCLUSION ..................................................................................................................... 11
`
`
`
`
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`ii
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`Page 2
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`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 3 of 16 PageID #: 3951
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`I.
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`PRELIMINARY STATEMENT
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`Defendant Tianma Microelectronics Co. Ltd. (“Tianma Microelectronics”) seeks leave of
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`this Court to amend its invalidity contentions to address the prior use products Plaintiffs were
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`ordered to produce at the June 21 hearing (Dkt. No. 95 at 2), and to address prior art that
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`Plaintiffs have been aware of since at least June 21.1 Plaintiffs do not oppose this motion to the
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`extent the supplemental contentions only address their prior art products. Plaintiffs, however,
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`oppose this motion to the extent the supplemental contentions based on Plaintiffs’ prior art
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`products as modified by certain printed publications raised in Inter Partes Review (IPR)
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`petitions that Tianma Microelectronics filed in June. The “good cause” standard does not allow
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`Plaintiffs to dictate, after delaying production of prior art information solely in their possession,
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`how Tianma Microelectronics may use that information to attack their asserted patents. As
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`explained herein, all four “good cause” factors support granting leave to supplement and this
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`motion should be granted.
`
`II.
`
`FACTUAL BACKGROUND
`
`Plaintiffs sued Tianma Microelectronics in 2020, asserting infringement of 135 claims
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`from 15 patents, in three now-consolidated cases. On March 3, 2021, Tianma Microelectronics
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`served its Preliminary Invalidity Contentions and identified a number of products of Plaintiffs or
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`their predecessors, which are believed to be prior art because they were sold prior to the priority
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`dates of the asserted patent(s). The limited public information, however, did not provide
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`sufficient technical details for Tianma Microelectronics to chart Plaintiffs’ prior art products or
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`raise invalidity arguments based on those products. Defendant also put Plaintiffs on notice that it
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`1 On September 3, 2021, the court denied the remainder of Tianma Microelectronics’s motion
`regarding production of Plaintiffs’ “similar” prior art products. (Dkt. No. 122 at 3.) Thus,
`Tianma Microelectronics understands Plaintiff’s technical production of prior art products to
`now be complete.
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`TIANMA MICROELECTRONICS
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 4 of 16 PageID #: 3952
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`incorporates by reference all IPR proceedings at the USPTO related to any of the asserted
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`
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`patents. See Ex. A2, Preliminary Invalidity Contentions at 4.
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`A.
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`Plaintiffs belatedly produced their own prior art information only after the
`Court’s order
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`A series of failed requests to Plaintiffs to produce their own prior art product information
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`led Tianma Microelectronics to file its Motion to Compel Plaintiffs to Produce Relevant
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`Information in Plaintiffs’ Sole Possession (Dkt. No. 64) (“Motion to Compel”), which this Court
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`heard and granted in part on June 21, 2021. Plaintiffs started producing documents related to a
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`subset of their prior art products on June 25, continuing through July 22. By the time Plaintiffs
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`started making that prior art production, over three months had passed since the March 3
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`preliminary contention date.
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`B.
`
`Tianma Microelectronics’s supplemental invalidity contentions are either
`based on the prior art products alone or based on the prior art products in
`combination with reference publications
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`Since Plaintiffs’ production of its prior art files, Tianma Microelectronics’s counsel and
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`experts have been diligently reviewing JDI’s production and developing supplemental invalidity
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`contention claim charts.3 Skoyles Dec. ¶ 5. On August 20, Tianma Microelectronics informed
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`Plaintiffs it intended to move for leave to supplement its invalidity contentions based on
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`Plaintiffs’ prior art products alone, as well as based on combinations of the prior art products
`
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`2 Exhibits refer to those identified in the attached declaration of Aidan C. Skoyles.
`3 Tianma Microelectronics started reviewing Plaintiffs’ source code the very first day it became
`available after the two-day notice period required by the Protective Order, i.e., July 2. See Dkt.
`No. 89 at 7 (amended to add in-person review provisions). To expedite the process, Tianma
`Microelectronics requested access to the code on a source-code style laptop in Plaintiffs’
`counsel’s Washington, DC office. In view of the logistical challenges involved in in-person code
`review, Tianma Microelectronics subsequently requested Plaintiffs set up a remote code review
`on the same system already in use by Plaintiffs to review Tianma Microelectronics’s GDS files.
`Despite making the request on July 19, Plaintiffs delayed making the code available until August
`13.
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`-2-
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`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 5 of 16 PageID #: 3953
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`with reference publications whenever appropriate. Ex. B. Tianma Microelectronics provided
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`
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`courtesy copies of the claim charts it prepared based on Plaintiffs’ prior art products. Id.; see also
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`Ex. C, Ex. D, Nagano Amended Invalidity Contention; Ex. E, No and Lee Amended Invalidity
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`Contention.
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`C.
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`Plaintiffs do not oppose supplemental contentions based on the prior art
`products, but oppose the contentions based on a modification of the prior art
`products in light of later-discovered references
`
`On August 26, Plaintiffs informed Tianma Microelectronics that they do not oppose the
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`invalidity contentions based on the prior art products. But they do oppose those contentions
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`based on modifications of the prior art products in light of secondary reference publications, if
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`the publications were not already disclosed in the March 3 contentions. Admittedly, these three
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`such secondary references were not included in Defendant’s March 3 contentions; they were
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`included in the IPRs Defendant filed in June and July.
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`But Defendant could not have raised combinations based on the prior art products any
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`sooner because it did not have access to Plaintiffs’ files on those prior art products until recently.
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`Plaintiffs only produced the seven prior art products cited in Defendant’s supplement in July.
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`Skoyles Dec. ¶ 12. Even as of this motion, Defendant is still awaiting design layer information,
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`which is necessary to review Plaintiffs’ GDS source code. And despite multiple requests,
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`Plaintiffs still have not agreed to narrow this case or reduce the asserted claims. Ex. G.
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`Defendant therefore needed to analyze 135 asserted claims from 15 patents against all of
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`Plaintiffs’ prior art products.
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`During the meet-and-confer related to this Motion, Plaintiffs acknowledged they have
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`been aware of each of the three secondary references since Defendant filed the IPR petitions and
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`their IPR experts have been considering them. Plaintiffs also did not identify any additional
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`specific discovery they would need to take if Tianma Microelectronics’ motion for leave was
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 6 of 16 PageID #: 3954
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`granted. Plaintiffs, however, argue that Tianma Microelectronics’ motion for leave is “not
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`proper” because Plaintiffs’ experts that have been considering the Preliminary Invalidity
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`Contentions are different from their experts that have been considering the references disclosed
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`in the IPRs.
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`III. APPLICABLE LAW
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` “[U]pon a showing of good cause,” defendants may amend or supplement their
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`invalidity contentions. P. R. 3-6(a). Under the “good cause” standard, courts consider four
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`factors: “(1) the explanation for the party’s failure to meet the deadline, (2) the importance of
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`what the Court is excluding, (3) the potential prejudice if the Court allows that thing that would
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`be excluded, and (4) the availability of a continuance to cure such prejudice.” SpaceTime3D,
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`Inc. v. Samsung Elecs. Co., No. 2:19-CV-00372-JRG, 2020 U.S. Dist. LEXIS 221622, at *2
`
`(E.D. Tex. Nov. 25, 2020); Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00493-JRG-RSP,
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`2019 U.S. Dist. LEXIS 206856, at *2 (E.D. Tex. Dec. 2, 2019).
`
`IV. GOOD CAUSE SUPPORTS TIANMA MICROELECTRONICS’
`SUPPLEMENTAL CONTENTIONS WITH COMBINATIONS BASED ON
`PLAINTIFFS’ BELATED PRODUCTION OF THEIR OWN PRIOR ART
`PRODUCTS
`
`Here, Plaintiffs belatedly produced the cited prior art products in July, and Tianma
`
`Microelectronics sought to supplement its contentions to address that art as soon as practicable
`
`in August. Whether a supplemental contention is based on the prior art products alone or based
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`on modifications of the prior art products in light of reference publications, and regardless of
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`whether the publications were disclosed in March or in June, the fact remains that such
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`supplementation was only made possible after the Defendant has had a chance to review
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`Plaintiffs’ production on the prior art products. Given the importance of the supplement
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 7 of 16 PageID #: 3955
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`against the validity of Plaintiffs’ own patents, and the absence of need for additional discovery,
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`all four factors weigh in favor of granting leave to supplement.
`
`A.
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`After this Court ordered Plaintiffs to produce their own prior art products,
`Tianma Microelectronics sought to supplement its contentions as quickly as
`practicable
`
`The first factor, “the explanation for the failure to meet the deadline,” supports Tianma
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`Microelectronics’s Motion. Spacetime 3D, 2020 U.S. Dist. LEXIS 221622, at *2. When
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`evaluating a party’s diligence, one key issue is “whether or not [the party seeking to
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`supplement] exercised diligence in discovering the prior art.” Uniloc, 2019 U.S. Dist. LEXIS
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`206856, at *2.
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`For months, Plaintiffs had refused to produce technical information of their own prior art
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`products, including GDS source code, until this Court ordered them to do so on June 21. The
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`source code of the seven Plaintiffs’ prior art products cited in Tianma Microelectronics’
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`supplemental contentions had been in Plaintiffs’ sole possession and was only made available
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`on July 6 and July 12. Prior to that, Tianma Microelectronics could not have conducted any
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`analysis of those or any other of Plaintiffs’ prior art products, let alone determine whether any
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`features of the 135 asserted claims were present, or prepare supplemental contentions.
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`Under the first factor, the party seeking leave to supplement or amend must show at least
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`“some modicum of diligence.” See, e.g., Intellectual Ventures I LLC v. T-Mobile USA, 2:17-cv-
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`577-JRG, Dkt. 109, at *4 (E.D. Tex. July 19, 2018). Here, Defendant has exercised all diligence
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`it could have reasonably exercised. Skoyles Dec. ¶ 5. Plaintiffs made their first GDS source code
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`production on June 30, the second on July 6, and the third on July 12. Id. at ¶ 12. Tianma
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`Microelectronics sought to review the first production on July 2, the earliest day possible given
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`the two-day notice requirement under the Protective Order. See Dkt. No. 89 at 7. And even
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`before then, Tianma Microelectronics had reached out to Plaintiffs with willingness to abide by
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`CO. LTD. v. JDI/PLD
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 8 of 16 PageID #: 3956
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`the Protective Order’s default in-person review provisions, in an effort to expedite the review.
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`Ex. H. Despite the COVID constraints imposed by the District of Columbia, Tianma
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`Microelectronics continued in-person review until August 13, the day when Plaintiffs finally
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`uploaded the files for remote review.
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`Defendant analyzed Plaintiffs’ productions vis-à-vis 135 asserted claims from 15 patents,
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`prepare claim charts, and, in about a month and half, informed Plaintiffs it intended to
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`supplement its contentions. Ex. C-E. On August 26, Plaintiffs notified Tianma Microelectronics
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`of its position opposing to the supplement to the extent it included any publications cited in the
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`IPRs but not in Defendant’s March 3 contentions. Ex. F. Counsel met-and-conferred on August
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`27 and then filed the present motion.
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`Plaintiffs’ refusal to produce the relevant product information until July provides more
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`than “[any] plausible showing of justification” for why that “critical material[]” could not have
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`been discovered before then. Kroy IP Holdings, LLC v. AutoZone, Inc., No. 2:13-cv-888-WCB,
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`2014 U.S. Dist. LEXIS 178013, at *18 (E.D. Tex. Dec. 30, 2014) (granting defendant leave to
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`supplement invalidity contentions based on “a plausible showing of justification for not
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`discovering the critical materials” sooner). After Plaintiffs produced that information, Defendant
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`had exercised diligence, moving as quickly as practicable, in preparing claim charts and
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`notifying Plaintiffs of its intention to move for leave to supplement. Estech Sys. v. Target Corp.,
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`No. 2:20-cv-00123-JRG-RSP, 2021 U.S. Dist. LEXIS 101141, at *12 (E.D. Tex. May 28, 2021)
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`(granting leave to supplement invalidity contentions, finding that defendants diligently created
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`invalidity charts and notified plaintiff of their intention to supplement). The first factor,
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`therefore, strongly favor granting Defendant leave to supplement.
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`CO. LTD. v. JDI/PLD
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 9 of 16 PageID #: 3957
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`B.
`
`
`The supplemental contentions are important to Tianma Microelectronics’
`counterclaims and defenses because Plaintiffs’ own prior products threaten
`to invalidate seven of their asserted patents
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`
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`The second factor, “the importance of the thing that would be excluded,” also favors
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`leave to supplement. Uniloc, 2019 U.S. Dist. LEXIS 206856, at *2; Thomas Swan & Co. v.
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`Finisar Corp., No. 2:13-cv-178-JRG, 2014 U.S. Dist. LEXIS 194431, at *4-5 (E.D. Tex. Apr.
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`29, 2014) (noting that the court “need not analyze the strength of the movant’s contentions at this
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`stage”). Under this factor, “[p]rior art references potentially rendering a patent invalid are
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`important.” Uniloc, 2019 U.S. Dist. LEXIS 206856, at *4-5.
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`Here, Tianma Microelectronics intends to use Plaintiffs’ recently produced prior art
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`products, as modified by references of which Plaintiffs have been long aware, to invalidate seven
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`of the asserted patents. The cited prior art products and references “are important to the
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`Defendant[] since [they] may be dispositive of [Plaintiffs’] claims” from those seven patents, and
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`“[i]f … accepted, then [those seven patents] may be invalid.” Estech, 2021 U.S. Dist. LEXIS
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`101141, at *13-14. As the patent owner, Plaintiffs’ own products likely demonstrate a much
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`closer resemblance to the claimed inventions. Thus, the invalidity grounds based on such
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`products, as modified to include more tangential features from printed publications, have even
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`higher importance compared to those grounds based purely on printed publications.
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`Additionally, this is not a situation where a defendant has bombarded a plaintiff with
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`dozens of initial prior art invalidity contentions, while just a small number of patent claims are
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`asserted. Indeed, the opposite is true. Here, the avalanche of 135 asserted claims from the 15
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`patents against thousands of accused products4 required enormous resources to digest, search for,
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`4 At the infringement contention date on January 6, Plaintiffs served over 1,000 pages of
`infringement claim charts.
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`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 10 of 16 PageID #: 3958
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`and evaluate prior art. After all that investment, Tianma Microelectronics only rely on a small
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`number of references for modifications to the prior art products.
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`Further, for the three secondary references at issue, the fact they are subject co-pending
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`IPR petitions further “suggests they are important to a full and fair resolution of the validity
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`question in this case.” Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 2016 U.S. Dist.
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`LEXIS 191646, at *17 (E.D. Tex. Mar. 21, 2016) (finding the “importance” factor favors
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`supplementation for IPR references not disclosed in invalidity contentions). For example, the No
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`reference discloses the exact same structure recited the claims of the ’142 patent, an upper
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`electrode’s electric field opening part overlapping a window-shaped opening part of a lower
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`electrode. See Ex. E. No also provides the exact same reason for this structure as the patent itself
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`(thereby providing a compelling motivation to combine): this overlap prevents a phenomenon
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`called “disclination,” which causes a visual defect in the display. Id. Lee, on the other hand,
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`discloses most of the remaining structure claimed in the ’142 patent, including a “window-
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`shaped opening part” in the lower electrode that is separate from a contact hole. See id. Because
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`disclosures of these references “potentially render[] [the asserted patent(s)] invalid,” their
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`importance is evident. Uniloc, 2019 U.S. Dist. LEXIS 206856, at *4-5. But notably, even though
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`these references are important in their right, here Defendant request to add contentions that
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`combine Plaintiffs’ prior art product as primary references in view of the references used the
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`IPR. This is not duplicative of Tianma Microelectronics’ IPR positions, because Tianma
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`Microelectronics could not rely on Plaintiffs’ prior art products in an IPR proceeding.
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`Accordingly, the second factor also favors granting leave to supplement.
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 11 of 16 PageID #: 3959
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`Plaintiffs suffer no prejudice because they are familiar with their own
`products and had knowledge of each of the cited references for months
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`
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`C.
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`The third factor, “potential prejudice in allowing the thing that would be excluded,” also
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`favors leave to supplement. Uniloc, 2019 U.S. Dist. LEXIS 206856, at *2. This present motion
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`and Defendant’s supplement arise from Plaintiffs’ belated production of their own prior art
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`products. No unfair prejudice exists. Particularly as to their own prior use products, Plaintiffs
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`“cannot complain about the prejudicial effect of these ‘new’ invalidity contentions when it is the
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`cause of the effect.” Team Worldwide Corp. v. Wal-Mart Stores, Inc., No. 2:17-CV-00235-JRG,
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`2018 U.S. Dist. LEXIS 122748, at *19 (E.D. Tex. July 23, 2018).
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`Plaintiffs do not oppose the supplementation based on the prior art products alone, or
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`based on the combinations of the prior art products with references that were disclosed and
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`produced in Defendant’s Preliminary Invalidity Contentions of March 3. As to the combinations
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`of the prior art products with the three later-discovered IPR references, Defendant had served
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`Plaintiffs with the “IPR petition[s] containing an invalidity chart for each reference” by June 30.
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`Core Wireless, 2016 U.S. Dist. LEXIS 191646, at *16. Plaintiffs “[were] therefore notified in
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`substance of [Defendant’s] invalidity contentions” regarding those references since the IPR
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`filings in June. Id.
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`Defendant also produced each of these references immediately after the IPR filings.
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`Plaintiffs have been on notice of these references for months and their “ability to rebut
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`[Defendant’s] invalidity arguments has [not] been hindered in any meaningful way.” Id. at 17
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`(declining to strike references not disclosed in invalidity contentions where plaintiff had notice of
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`them from defendant’s IPR petitions). Indeed, during the meet-and-confer, Plaintiffs
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`acknowledged that they were aware of these references and that some of their experts have been
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`analyzing them.
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 12 of 16 PageID #: 3960
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`During the meet-and-confer, Plaintiffs argued they have different IPR experts reviewing
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`those references, so their litigation experts would now have to study these three secondary
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`references. Given the breadth of Plaintiffs’ allegations, asserting 15 patents and thousands of
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`accused products, and the comparative modesty of Defendant’s invalidity positions, Plaintiffs
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`can hardly complain “of being prejudiced by the number of prior art references” certain of their
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`experts need to look at. See UltimatePointer, LLC v. Nintendo Co., No. 6:11-CV-496, 2013 U.S.
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`Dist. LEXIS 200122, at *18 (E.D. Tex. May 28, 2013) (holding that “given the breadth of
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`products accused by Plaintiff of infringement, the prejudice to plaintiff [caused by the number of
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`prior art references] is minimal”). And because Plaintiffs and their experts had notice of these
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`references months before any expert report is due, “the danger of [any] unfair prejudice … is
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`minimal.” Paice LLC v. Toyota Motor Corp., No. 2:07-CV-180 (DF), 2008 U.S. Dist. LEXIS
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`125531, at *9 (E.D. Tex. Nov. 14, 2008).
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`Plaintiffs also do not suffer any prejudice on the discovery front and did not identify any
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`specific discovery that would stem from Defendant’s supplement. Plaintiffs are familiar with
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`their own prior use products and have been in possession for months of every cited reference, so
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`little need exists for any additional fact discovery. See Estech, 2021 U.S. Dist. LEXIS 101141, at
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`*15 (finding “any additional fact discovery needed would be minimal” because plaintiff “has
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`been aware of [the] references before fact discovery was closed and before expert reports were
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`exchanged”); Uniloc, 2019 U.S. Dist. LEXIS 206856, at *6 (holding that factor 3 weighs in favor
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`of leave because “[Plaintiff] will not be greatly prejudiced by the supplementation as it has been
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`aware of its existence for months”). No additional discovery is necessary based on the three
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`secondary references since the position are contained within the four corners of the references
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`themselves.
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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 13 of 16 PageID #: 3961
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`The third factor, therefore, also favors granting leave to supplement.
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`D.
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`Any prejudice could be addressed by reurging the parties’ joint request for a
`continuance
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`The fourth factor considers “the availability of a continuance to cure such prejudice.”
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`Uniloc, 2019 U.S. Dist. LEXIS 206856, at *2. The parties have jointly requested, a continuance
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`to allow further time to complete discovery and prepare expert reports. (Dkt. No. 111.) Although
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`the court denied this request, it did so without prejudice, so to the extent JDI alleges that it has
`
`any prejudice, it could be ameliorated by a reurging of this request for a continuance, as
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`contemplated by the court’s order. (Dkt. No. 124.) Any possible prejudice Plaintiffs attempt to
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`claim would “therefore [be] substantially mitigated by the change in the pretrial schedule.” Kroy
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`IP Holdings, 2014 U.S. Dist. LEXIS 178013, at *18. This fourth factor, therefore, also favors
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`granting leave to supplement.
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`V.
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`CONCLUSION
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`Plaintiffs belatedly produced prior art products. Defendant diligently reviewed that
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`production and now seeks leave to supplement its invalidity contentions with invalidity grounds
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`that could not have been raised before. The supplement bears directly on the validity of seven
`
`asserted patents, and Plaintiffs were on notice of each IPR Reference months before fact or
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`expert discovery closes. The circumstances leading up to this motion provide a sufficient
`
`showing of good cause warranting leave to supplement.
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`Tianma Microelectronics therefore respectfully requests that the Court grant this motion
`
`for leave to supplement its invalidity contentions.
`
`
`
`Dated: September 7, 2021
`
`Respectfully submitted,
`
`By: /s/ Aidan C. Skoyles
`James R. Barney (pro hac vice)
`
`-11-
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`Page 13
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`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`

`

`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 14 of 16 PageID #: 3962
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`
`
`
`
`james.barney@finnegan.com
`Qingyu Yin (pro hac vice)
`qingyu.yin@finnegan.com
`Aidan C. Skoyles (pro hac vice)
`aidan.skoyles@finnegan.com
`Karthik Kumar (pro hac vice)
`karthik.kumar@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue N.W.
`Washington, DC 20001
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`Eric H. Findlay
`State Bar No. 00789886
`Brian Craft
`State Bar No. 04972020
`FINDLAY CRAFT, P.C.
`102 N. College Ave., Ste. 900
`Tyler, TX 75702
`(903) 534-1100 Telephone
`(903) 534-1137 Facsimile
`efindlay@findlaycraft.com
`bcraft@findlaycraft.com
`
`Attorneys for Defendant
`Tianma Microelectronics Co. Ltd.
`
`-12-
`
`Page 14
`
`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`

`

`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 15 of 16 PageID #: 3963
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`
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on September 7, 2021, a true and correct copy of the above
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`document was served on all counsel of record who are deemed to have consented to electronic
`
`service via the Court’s CM/ECF system per Local Rule CV-5(a)(3)(A).
`
`
`
`
`
`
`
`
`/s/Catherine Sadler
`CATHERINE SADLER
`
`
`
`
`
`
`
`13
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`Page 15
`
`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`

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`Case 2:20-cv-00283-JRG Document 131 Filed 09/09/21 Page 16 of 16 PageID #: 3964
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`
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`I hereby certify that the foregoing document is authorized to be filed under seal based upon the
`
`Protective Order (D.I. 36) entered in this case.
`
`/s/ Aidan C. Skoyles
`
`CERTIFICATE OF CONFERENCE
`
`This is to certify that counsel have complied with the meet and confer requirement under
`
`
`
`
`
`Local Rule CV-7(h) and that this motion is opposed. Pursuant to Section 9 of the Discovery
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`Order (Dkt. No. 33) the Court has entered, Tianma Microelectronics contacted Plaintiffs on
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`August 20, 2021, informing Plaintiffs that it intended to move for leave to supplement its
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`invalidity contentions based on Plaintiffs’ recent production of their own prior art products.
`
`On August 26, Plaintiffs informed Tianma Microelectronics that they did not oppose the
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`supplemental invalidity contentions regarding Plaintiffs’ prior art products but did oppose the
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`supplemental invalidity contention regarding the IPR References. During a meet-and-confer on
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`August 27, Plaintiffs maintained their opposition.
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`
`
`
`
`
`
`
`/s/ Aidan C. Skoyles
`
`14
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`Page 16
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`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`

`

`Case 2:20-cv-00283-JRG Document 131-1 Filed 09/09/21 Page 1 of 3 PageID #: 3965
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`JAPAN DISPLAY INC. and PANASONIC
`LIQUID CRYSTAL DISPLAY CO., LTD.,
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`TIANMA MICROELECTRONICS CO.
`LTD.,
`
`
`Defendant.
`
`
`
`
`CIVIL ACTION NO. 2:20-cv-00283-JRG
`(Lead Case)
`CIVIL ACTION NO. 2:20-cv-00284-JRG
`CIVIL ACTION NO. 2:20-cv-00285-JRG
`(Consolidated)
`JURY TRIAL DEMANDED
`
`
`
`DECLARATION OF AIDAN C. SKOYLES IN SUPPORT OF DEFENDANT’S
`MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`I, Aidan C. Skoyles, hereby declare under penalty of perjury that, to the best of my
`
`knowledge, the following statements are true and correct:
`
`1. I am an attorney with Finnegan, Henderson, Farabow, Garrett & Dunner LLP and counsel
`
`to Defendant Tianma Microelectronics Co. Ltd. (“Tianma Microelectronics”) in the
`
`above-captioned litigations. I submit this declaration in support of Defendant’s Motion for Leave
`
`to Supplement Invalidity Contentions.
`
`2. I have personal knowledge of the facts provided in this declaration and can and will
`
`testify competently to them if called upon to do so.
`
`3. Attached hereto as Exhibit A is a true and correct copy of the cover document for
`
`Tianma Microelectronics’s Invalidity Contentions, served March 3, 2021.
`
`4. On June 30, 2021, Tianma Microelectronics served the IPR petitions IPR2021-01028
`
`(filed June 8, 2021) and IPR2021-01058 (filed June 21, 2021) and cited references in the IPR
`
`Page 17
`
`JDI/PLD - EX. 2003
`TIANMA MICROELECTRONICS
`CO. LTD. v. JDI/PLD
`IPR2021-01060
`
`

`

`Case 2:20-cv-00283-JRG Document 131-1 Filed 09/09/21 Page 2 of 3 PageID #: 3966
`
`
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`proceedings, and also disclosed and produced a copy of the IPR References to Plaintiffs, along
`
`with related petition documents.
`
`5. Since Plaintiffs’ production of its prior art files, Tianma Microelectronics’s counsel and
`
`experts have spent many hours reviewing JDI’s production and developing supplemental
`
`invali