Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 9
`
` Entered: February 23, 2017
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TIANMA MICRO-ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`JAPAN DISPLAY INC. and
`PANASONIC LIQUID CRYSTAL DISPLAY CO., LTD.,
`Patent Owner.
`
`
`
`____________
`
`Case IPR2016-00990 (Patent 7,718,234 B2)
`Case IPR2016-00991 (Patent 8,758,871 B2)1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`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
`parties may not use this style heading unless authorized.
`
`
`
`

`

`IPR2016-00990 (Patent 7,718,234 B2)
`IPR2016-00991 (Patent 8,758,871 B2)
`
`
`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. A conference call was held with the Board on February 21, 2017.
`Apart from Patent Owner’s Powers of Attorney and Mandatory
`Disclosures (IPR2016-00990, Papers 4–6; IPR2016-00991, Papers 4–6),
`Patent Owner has filed no other papers in these proceedings. 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. Petitioner’s email to
`the Board indicated that Mr. Fuisz recently informed Petitioner that he and
`Ms. Chen now only represent JDI, and no longer represent PLD. During the
`conference call, Mr. Fuisz represented that ethical and other issues preclude
`their continued representation of PLD, but that he did inform PLD of the
`February 21st conference call.3 We informed Mr. Fuisz that he remains
`counsel for both JDI and PLD in these proceedings until a motion to
`withdraw has been authorized, filed, and granted. See 37 C.F.R. § 42.10(e).
`During the conference call, Petitioner sought guidance from the Board
`as to whether Petitioner may file a motion for adverse judgment under 37
`C.F.R. § 42.73(b), for what Petitioner characterized as Patent Owner’s
`
`
`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. 37 C.F.R. § 42.8(a)(3).
`3 Other than Mr. Fuisz, PLD did not have representation on the call.
`
`2
`
`

`

`IPR2016-00990 (Patent 7,718,234 B2)
`IPR2016-00991 (Patent 8,758,871 B2)
`
`abandonment in both cases. 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. Patent Owner
`affirmatively stated that it was not abandoning the contest.
`Patent Owner requested a revised scheduling order, citing Case
`IPR 2013-00498, Paper 15, in which the Board adjusted Due Dates 2–7 of
`the Scheduling Order, finding Due Dates 2 and 3 moot and resetting Due
`Dates 4–7. Patent Owner did not propose a specific schedule during the call.
`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. 37 C.F.R. § 42.73(b). We also decline to revise the
`scheduling order at this time, as we are unpersuaded by any of Patent
`Owner’s arguments that such a revised scheduling order is necessitated by
`the circumstances of these cases.
`It is:
`ORDERED that Petitioner’s request to file a motion for adverse
`judgment, or to have the Board issue a show cause order, is denied without
`prejudice;
`FURTHER ORDERED that Patent Owner’s request for a revised
`scheduling order is denied without prejudice;
`FURTHER ORDERED that Mr. Fuisz and Ms. Chen remain as
`counsel for JDI and PLD, and have all of the duties and responsibilities as
`counsel until a motion to withdraw has been authorized, filed, and granted;
`and
`
`3
`
`

`

`IPR2016-00990 (Patent 7,718,234 B2)
`IPR2016-00991 (Patent 8,758,871 B2)
`
`
`FURTHER ORDERED that if Mr. Fuisz and/or Ms. Chen desires to
`file a motion to withdraw, prior authorization for filing the motion is
`required. 37 C.F.R. § 42.20(b).
`
`
`
`4
`
`

`

`IPR2016-00990 (Patent 7,718,234 B2)
`IPR2016-00991 (Patent 8,758,871 B2)
`
`
`
`FOR PETITIONER:
`James R. Barney
`FINNEGAN, HENDERSON, FARABOW, GARRET & DUNNER, LLP
`901 New York Avenue,
`NW Washington, DC 20001-4413
`tianmaiprs@finnegan.com
`
`Anthony A Hartmann
`FINNEGAN, HENDERSON, FARABOW, GARRET & DUNNER, LLP
`901 New York Avenue,
`NW Washington, DC 20001-4413
`Anthony.hartmann@finnegan.com
`
`Shing-Yi Cheng
`FINNEGAN, HENDERSON, FARABOW, GARRET & DUNNER, LLP
`901 New York Avenue,
`NW Washington, DC 20001-4413
`Shingyi.cheng@finnegan.com
`
`FOR PATENT OWNER:
`John R. Fuisz FUISZ CHEN LLP
`1455 Pennsylvania Avenue NW,
`Suite 400
`Washington, DC 20004
`JFuisz@fuiszchen.com
`
`Jennifer C. Chen
`1455 Pennsylvania Avenue NW,
`Suite 400
`Washington, DC 20004
`JFuisz@fuiszchen.com
`
`
`
`
`
`5
`
`