`
`
`Paper No.
`Filed: January 26, 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.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2021-01061
`U.S. Patent No. 10,423,034
`_____________________________
`
`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION
`PURSUANT TO 35 U.S.C. § 317(b)
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`Petitioner Tianma Microelectronics Co. Ltd., and Patent Owner Japan
`
`Display Inc. and Panasonic Liquid Crystal Display Co., Ltd. have entered into a
`
`settlement agreement that resolves all underlying disputes between the parties,
`
`including the related district court litigation and inter partes review proceeding
`
`IPR2021-01061, against U.S. Patent No. 10,423,034, currently before the Board.
`
`In an email dated January 25, 2022, the Board authorized the parties to file a
`
`joint motion to terminate and a joint request to treat the settlement agreement
`
`(including the license agreement) as business confidential information. In
`
`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the
`
`settlement agreement (including the license agreement) between the parties is being
`
`submitted concurrently herewith in this proceeding as Ex. 1032.
`
`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
`
`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
`
`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).
`
`–2–
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`Accordingly, pursuant to 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b),
`
`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. 1032
`
`as business confidential information, that the agreement be kept separate from the
`
`file of the involved patent, and that the agreement be made available only to Federal
`
`Government agencies on written request, or to other persons only on a showing of
`
`good cause.
`
`Dated: January 26, 2022
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Reg. No. 59,369
` Counsel for Petitioner
`
`
`By: /Eric J. Klein/
`Eric J. Klein, Reg. No. 51,888
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`–3–
`
`
`
`U.S. Patent 10,423,034
`IPR2021-01061
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Joint Request
`
`to Treat Settlement Agreement as Business Confidential Information Pursuant
`
`to 35 U.S.C. § 317(b) was served on January 26, 2022, via email directed to counsel
`
`of record for Patent Owner at the following:
`
`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
`
`
`
`
`Dated: January 26, 2022
`
`
`
`
`
`
`
`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
`
`
`
`–4–
`
`
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