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`Paper No.
`Filed: January 26, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
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`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
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`JAPAN DISPLAY INC. and PANASONIC LIQUID CRYSTAL
`DISPLAY CO., LTD.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2021-01061
`U.S. Patent No. 10,423,034
`_____________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
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`U.S. Patent 10,423,034
`IPR2021-01061
`Petitioner Tianma Microelectronics Co. Ltd., and Patent Owner Japan Display
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`Inc. and Panasonic Liquid Crystal Display Co., Ltd. have entered into a settlement
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`agreement that resolves all underlying disputes between the parties, including the
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`related district court litigation and inter partes review proceeding IPR2021-01061,
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`against U.S. Patent No. 10,423,034 (the “’034 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. 1032. 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 12, 2022. See
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`Paper 15. Patent Owner’s response to the petition is not due until April 5, 2022. See
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`Paper 16. Termination is appropriate at this stage in view of the settlement agreement.
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`See Patent Office Trial Practice Guide, 77 Fed. Reg. 48,768 (Aug. 14, 2012) (“The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”). The
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`–2–
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`
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`U.S. Patent 10,423,034
`IPR2021-01061
`agreement ends all patent disputes between the parties, including the related district
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`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 ’034 patent and no
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`other district court cases involving the ’034 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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`
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`U.S. Patent 10,423,034
`IPR2021-01061
`
`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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`
`
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`Dated: January 26, 2022
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`
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`
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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
`
`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
`
`
`By: /Valencia Daniel/
`Valencia Daniel
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
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`
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`–4–
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