For example, the ’234 patent teaches that a “polymeric material obtained by introducing a photoreactive group in the side chain of a polymer represented by polyvinylcinnamate” provides insufficient heat stability of alignment and unsatisfactory reliability.

Based on the evidence in this record, we agree with Petitioner’s reasoning, which is supported by the unrebutted testimony of Dr. West, and adopt it as our own, that one with ordinary skill in the art would have recognized that the use of 1,3-dimethyl-CBDA, as taught by Nishikawa, in place of CBDA in Tomioka’s LCD would have been a matter of simple substitution.

Relying on Dr. West’s testimony, Petitioner asserts that “one of ordinary skill in the art would have found it obvious to modify the Tomioka film to 1–30nm, as it was a design choice and there were no technological limitations preventing the formation of such a film.” Id. (citing Ex. 1003 ¶ 184).

Petitioner relies on Dr. West’s testimony to argue that “one of ordinary skill in the art would have been motivated to modify Tomioka’s Example 8 process with Kim’s in situ method with a reasonable expectation of improving the properties of the alignment-control film.” Id. at 48 (citing Ex. 1003 ¶¶ 202–03).

According to Dr. West, “in practicing the process disclosed in Example 8 of Tomioka, when the films are exposed to linearly-polarized UV light, one of ordinary skill in the art would have been motivated to further apply heat in order to promote or stabilize the alignment-control ability of the films.” Ex. 1003 ¶ 201.

1 Because this Order addresses issues applicable to these two cases, we exercise our discretion to issue one Order to be filed in each case.

The Scheduling Order issued in each of the above-captioned proceedings set June 15, 2017 as the deadline for the parties to file a request for oral hearing.

On that day, Petitioner filed a Statement of Oral Hearing in each case, stating that, pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order, “Petitioner hereby notifies the PTAB that it does not seek oral argument,” instead “electing to rest its argument on the papers that have been submitted.” IPR2016-00990, Paper 15; IPR2016-00991, Paper 15.

Patent Owner did not file a request for oral hearing or any other paper relating to oral hearing in either case.

Upon review of the record, we determine that an oral hearing is not necessary in either of the above-captioned cases.

On April 17, 2017, pursuant to authorization by the Board, John R. Fuisz and Jennifer C. Chen filed a motion to withdraw as counsel for Patent Co-Owner Panasonic Liquid Crystal Display Co., Ltd. (“PLD”) in each of the above-captioned cases.

Paper 12.2 Mr. Fuisz and Ms. Chen represent that counsel for Petitioner Tianma Micro-Electronics Co., Ltd. “does not oppose this Motion.” Id. at 2.

Mr. Fuisz and Ms. Chen represent that PLD “has retained counsel from Wiggin and Dana LLP to represent it for all purposes in this inter partes review proceeding.” Id. PLD filed a Power of Attorney on April 5, 2017, designating Joseph M. Casino as lead counsel and Abraham Kasdan as back-up counsel.

Mr. Casino and Mr. Kasdan, both of Wiggin and Dana LLP, are registered practitioners.

Accordingly, it is ORDERED that John R. Fuisz and Jennifer C. Chen’s Motion to Withdraw is granted; FURTHER ORDERED that John R. Fuisz and Jennifer C. Chen are permitted to withdraw as counsel for PLD in this proceeding; FURTHER ORDERED that Joseph M. Casino is recognized as Lead Counsel, and Abraham Kasdan is recognized as Back-Up Counsel, for PLD, effective as of the date of this Decision; and FURTHER ORDERED that PLD shall file updated mandatory notice information listing its new counsel, pursuant to 37 C.F.R. § 42.8, within five business days of this Decision.

Tianma Micro-electronics Co., Ltd. (“Petitioner”) contacted the Board via e-mail on February 13, 2017, requesting a conference call with the parties and the Board regarding Japan Display Inc.’s (“JDI”) and Panasonic Liquid Crystal Display Co., Ltd.’s (“PLD”) (collectively, “Patent Owner”) failure to file a Patent Owner Response in either of the above-captioned cases.

In its Mandatory Notices, Patent Owner designated John R. Fuisz as lead counsel, and Jennifer C. Chen as back-up counsel, both of Fuisz Chen LLP.2 IPR2016-00990 Paper 6, 4; IPR2016-00991 Paper 6, 4.

2 Subsequent to the filing of the Mandatory Notices, Mr. Fuisz and Ms. Chen joined Vinson & Elkins LLP. Patent Owner did not file anything with the Board identifying this change, despite its duty to update its Mandatory Notices within 21 days of a change in information.

Petitioner also requested that the Board issue a show cause order as to why Patent Owner’s failure to file Patent Owner Responses in these proceeding does not constitute abandonment of the proceedings, citing Case IPR 2016-00342, Paper 11.

At this time, we decline to authorize Petitioner to file a motion for adverse judgment, and we decline to issue a show cause order as requested by Petitioner, in view of Patent Owner’s representation that it has not abandoned the contest.

The parties are reminded that the Testimony Guidelines appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (Appendix D), apply to this proceeding.

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.

A motion to expunge the information will not necessarily prevail over the public interest in maintaining a complete and understandable file history.

The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.

A conference call to satisfy the requirement of 37 C.F.R. § 42.121(a) must be scheduled no less than ten (10) business days prior to DUE DATE 1.