Innolux Corporationv.Semiconductor Energy Laboratory Co., Ltd.

Patent Trial and Appeal Board

Dec 11, 2013

12165783 (P.T.A.B. Dec. 11, 2013)

Trials@uspto.gov Paper 46
571-272-7822 Date: December 11, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INNOLUX CORPORATION
Petitioner

v.
SEMICONDUCTOR ENERGY
LABORATORY CO., LTD.
Patent Owner
____________

Case IPR2013-00038
(Patent 7,956,978)
____________

Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73

On December 4, 2013, the parties filed a joint motion to terminate this
proceeding, along with a true copy of their written settlement and licensing
agreements, made in connection with the termination of the instant proceeding, in
IPR2013-00038
Patent 7,956,978

2

accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Papers 40, 43, and
44. The parties also filed a joint request to have their settlement and licensing
agreements treated as confidential business information under 35 U.S.C. § 317(b)
and 37 C.F.R. § 42.74(c). Paper 41.
The joint motion to terminate indicates that Petitioner will no longer
participate in the proceeding even if the Board does not terminate the proceeding.
Paper 40 at 2. The motion also indicates that all parties to the related litigation
have agreed to the dismissal of the litigation and a Rule 41 Stipulation of Dismissal
has been filed with the United States District Court for the Central District of
California. Id. at 2-3; Paper 42. Lastly, the motion indicates that there is no other
litigation in any forum or court involving the Patent Owner and the parties who are
defendants in the California litigation or the patent at issue in this proceeding.
The Board instituted trial on March 21, 2013. Paper 9. At this juncture of
the proceeding, the Board does not have before it full briefing on the trial issues
and the Board has not entered a final decision.
Based on the facts of this case, it is appropriate to enter judgment1 without
rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
It is
ORDERED that the joint motion to terminate IPR2013-00038 is granted;
FURTHER ORDERED that the proceeding is terminated; and

1 A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2.

IPR2013-00038
Patent 7,956,978

3

FURTHER ORDERED that the parties’ joint request that the settlement
and licensing agreements be treated as business confidential information kept
separate from the patent file, and made available only to Federal Government
agencies on written request, or to any person on a showing of good cause,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.

For PETITIONER:

Scott McKeown
Cpdocketmckeown@oblon.com

Gregory S. Cordrey
gcordrey@jmbm.com

For PATENT OWNER:

Eric Robinson
erobinson@riplo.com

Sean Flood
sflood@riplo.com

StanleySchlitter
sschlitt@steptoe.com

Douglas Peterson
dpeterson@steptoe.com