Case Numbers IPR2016-00548 and 2016-00550
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`PETITIONER ATTORNEY DOCKET NOS. L10883/ L10890
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Patent Owner: AU OPTRONICS CORPORATION
`Case No.:
`IPR2016-00548; IPR2016-00550
`Patent No.:
`6,689,629 C1; 7,652,285 B2
`Serial No.:
`10/068,500; 11/053,628
`Request Filed: April 21, 2016
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`Tech Center:
`3600
`Title:
`ARRAY SUBSTRATE FOR DISPLAY, METHOD OF
`MANUFACTURING ARRAY SUBSTRATE FOR DISPLAY AND DISPLAY
`DEVICE USING THE ARRAY SUBSTRATE;
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`THIN FILM TRANSISTOR STRUCTURE AND METHOD OF FABRICATING
`THE SAME
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEWS
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`The Patent Owner, Au Optronics Corp. and Petitioner, Shenzhen China
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`Star Optoelectronics Technology Co., Ltd., together with their respective counsels
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`hereby jointly move to terminate the above-captioned Inter Partes Reviews. This
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`Motion is being filed in both of the above two Inter Partes Reviews.
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`PETITIONER ATTORNEY DOCKET NOS. L10883/ L10890
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Patent Owner: AU OPTRONICS CORPORATION
`Case No.:
`IPR2016-00548; IPR2016-00550
`Patent No.:
`6,689,629 C1; 7,652,285 B2
`Serial No.:
`10/068,500; 11/053,628
`Request Filed: April 21, 2016
`
`Tech Center:
`3600
`Title:
`ARRAY SUBSTRATE FOR DISPLAY, METHOD OF
`MANUFACTURING ARRAY SUBSTRATE FOR DISPLAY AND DISPLAY
`DEVICE USING THE ARRAY SUBSTRATE;
`
`THIN FILM TRANSISTOR STRUCTURE AND METHOD OF FABRICATING
`THE SAME
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEWS
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`The Patent Owner, Au Optronics Corp. and Petitioner, Shenzhen China
`
`Star Optoelectronics Technology Co., Ltd., together with their respective counsels
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`hereby jointly move to terminate the above-captioned Inter Partes Reviews. This
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`Motion is being filed in both of the above two Inter Partes Reviews.
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`Background
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`A.
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`Patent Owner is the owner of United States Patent Nos. 6,689,629 C1
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`(the “‘629 Patent”) and 7,652,285 B2 (the “‘285 Patent”).
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`B.
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`Patent Owner filed an arbitration claim against Petitioner captioned as:
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`AUO v. TCL Multimedia Technology Holdings Limited, TCL Corp., and Shenzhen
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`China Star Optoelectronics Technology Co., Ltd, in the Hong Kong International
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`Arbitration Centre ("HKIAC") on September 22, 2015.
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`C.
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`Petitioner filed the two above-captioned, Inter Partes Reviews,
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`claiming unpatentability of certain claims of the ‘629 and '285 Patents on February
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`2, 2015.
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`D. On March 30, 2016, the Arbitral Tribunal in the above arbitration
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`issued a Partial Final Award stating that the Tribunal has sole jurisdiction over
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`validity and patentability of the above two patents, and ordering Shenzhen China
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`Star Optoelectronics Technology Co., Ltd. to withdraw the above two Inter Partes
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`Reviews. A true and correct copy of the Arbitral Tribunal decision on Au Optronics
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`Corp. v. (1) TCL Multimedia Technology Holdings Limited, (2) TCL Corp., and, (3)
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`Shenzhen China Star Optoelectronics Technology Co., Ltd., Case No.
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`HKIAC/A15155 is submitted separately as Exhibit A, subject to the Parties' motion
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`to keep such Arbitral Tribunal's Order separate.
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`E.
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`To comply with the Partial Final Award, Patent Owner and Petitioner
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`are now joining on this motion to terminate the above Inter Partes Reviews.
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`Discussion
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`Petitioner and Patent Owner jointly request, pursuant to 35 U.S.C. §317(a),
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`termination of the above Inter Partes Reviews of the ‘629 and '285 Patents.
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`Petitioner and Patent Owner have complied with the requirements of 37 CFR
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`§42.20(b), and sought prior authorization for filing this motion during a conference
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`call with the Board on April 14, 2016; such authorization was granted.
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`Termination of these Reviews is appropriate in order for the parties to comply
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`with the Arbitral Tribunal’s Partial Final Award. See, Partial Final Award,
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`Paragraphs 83,85,&87.
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`The petitions for the above-captioned Inter Partes Reviews were filed on
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`February 2, 2016. The Board has not granted institution, substantive briefs have not
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`been filed, and no oral hearing has een conducted.
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`Petitioner and Patent Owner further jointly request that the Tribunal's Partial
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`Final Award be treated as business confidential information pursuant to 35 U.S.C.
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`§317(b) and 37 CFR §42.74(c). A separate motion to this effect is filed concurrently
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`with the instant motion to terminate. In view of that request, the Tribunal's Partial
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`Final Award has been filed for access by the “Parties and Board Only.”
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`Conclusion
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`For the foregoing reasons, Petitioner and Patent Owner jointly request the
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`termination of the above-captioned Inter Partes Reviews of the ‘629 and '285
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`Patents.
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` Respectfully submitted,
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`LTL Attorneys LLP
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`By: ___/s/ Peter Wied ___________
`Vincent K.Yip, Reg. No. 42,245
`vincent.yip@ltlattorneys.com
`Peter Wied, Reg. No. 43,264
`peter.wied@ltlattorneys.com
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`601 South Figueroa St., Suite 3900
`Los Angeles, CA 90017
`(213) 612-8900
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`Counsel for Patent Owner,
` Au Optronics Corp.
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`Sughrue Mion, PLLC
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`By: /s/ John F. Rabena
`John F. Rabena, Reg. No. 38,584
`jrabena@sughrue.com
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`2100 Pennsylvania Avenue N.W.,
`Suite 800
`Washington, D.C. 20037
`(202) 663-7472
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`Counsel for Petitioner,
` ShenZhen China Star Optoelectronics
`Technology Co., Ltd.
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`CERTIFICATE OF SERVICE
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`The undersigned certify that a copy of the foregoing Joint Motion to
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`Terminate Inter Partes Reviews was served by electronic mail on April 21, 2016
`upon the following:
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`Sughrue Mion, PLLC
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`John F. Rabena, Reg. No. 38,584
`jrabena@sughrue.com
`William H. Mandir, Reg. No. 32,156
`wmandir@sughrue.com
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`Counsel for Petitioner,
` ShenZhen China Star Optoelectronics
`Technology Co., Ltd.
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`LTL Attorneys LLP
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`Vincent K.Yip, Reg. No. 42,245
`vincent.yip@ltlattorneys.com
`Peter Wied, Reg. No. 43,264
`peter.wied@ltlattorneys.com
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`Counsel for Patent Owner,
` Au Optronics Corp.
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`Respectfully submitted,
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`LTL Attorneys LLP
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`By: _/s/ Peter Wied
`Vincent K.Yip, Reg. No. 42,245
`vincent.yip@ltlattorneys.com
`Peter Wied, Reg. No. 43,264
`peter.wied@ltlattorneys.com
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`
`
`601 South Figueroa St., Suite 3900
`Los Angeles, CA 90017
`(213) 612-8900
`Counsel for Patent Owner,
` Au Optronics Corp.
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` 5
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`
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`Sughrue Mion, PLLC
`
`By: /s/ John F. Rabena
`John F. Rabena, Reg. No. 38,584
`jrabena@sughrue.com
`
`2100 Pennsylvania Avenue N.W.,
`Suite 800
`Washington, D.C. 20037
`(202) 663-7472
`
`Counsel for Petitioner,
`ShenZhen China Star Optoelectronics
`Technology Co., Ltd.
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