Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 14
`Entered: September 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01225
`Patent 7,256,486 B2
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 14
`Entered: September 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01225
`Patent 7,256,486 B2
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`Everlight Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) to institute an inter partes review of claims 1–3 (the “challenged claims”)
`
`of U.S. Patent 7,256,486 B2 (Ex. 1001, the “’486 patent”). 35 U.S.C. § 311.
`
`Petitioner also filed a Motion for Joinder with Seoul Semiconductor Co. Ltd. v.
`
`Document Security Systems, Inc., Case IPR2018-00333 (“the Seoul IPR”). Paper 7
`
`(“Mot.”). The original petitioners in the Seoul IPR—Seoul Semiconductor Co.,
`
`Ltd. and Seoul Semiconductor, Inc. (“Seoul Petitioner”)— oppose the Motion for
`
`Joinder. Paper 10 (“Seoul Opp.”). Document Security Systems, Inc. (“Patent
`
`Owner”) also opposes the Motion for Joinder. Paper 9, (“Doc. Opp.”). Petitioner
`
`timely filed a Reply to the oppositions. Paper 12, (“Reply”). Patent Owner timely
`
`filed a Preliminary Response (Paper 13, “Prelim. Resp.”). We have authority
`
`under 35 U.S.C. § 314(a), which provides that an inter partes review may not be
`
`instituted “unless . . . there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.”
`
`For the reasons described below, we institute an inter partes review of
`
`claims 1–3 of the ’486 patent and grant Petitioner’s Motion for Joinder.
`
`B. Related Proceedings
`
`The parties indicate that there are a number of related court proceedings:
`
`Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-04263 (C.D. Cal.);
`
`Document Security Systems, Inc. v. Everlight Electronics Co., No. 2:17-cv-04273
`
`(C.D. Cal.); Document Security Systems, Inc. v. Lite-On, Inc., No. 2:17-cv-06050
`
`(C.D. Cal.); Document Security Systems, Inc. v. Nichia Corporation, et al., Case
`
`No. 2:17-cv-08849 (C.D. Cal.); and Document Security Systems, Inc. v. Seoul
`
`Semiconductor Co., No. 8:17-cv-00981 (C.D. Cal.). Paper 6, 2–3.
`
` 2
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`The parties indicate that the following inter partes reviews involve the ’486
`
`patent: IPR2018-00333 (“the Seoul IPR”), IPR2018-01166, IPR2018-01220, and
`
`IPR2018-01205. Id. at 3. The parties indicate that the following inter partes
`
`reviews are related to the present inter partes review: IPR2018-00265, IPR2018-
`
`00522, IPR2018-00965, IPR2018-00966, IPR2018-01165, IPR2018-01167,
`
`IPR2018-01221, IPR2018-01222, IPR2018-01223, IPR2018-01226, IPR2018-
`
`01244, and IPR2018-01260. Id. at 3–4.
`
`In the Seoul IPR, we instituted an inter partes review of claims 1–3 of the
`
`’486 patent as unpatentable under 35 U.S.C. § 103 on the following grounds:
`
`Reference[s] 1
`
`Claims challenged
`
`Rohm
`
`Rohm and Kish
`
`1–3
`
`1–3
`
`Matsushita and Edmond ’589
`
`1–3
`
`Seoul Semiconductor Co. Ltd. v. Document Security Systems, Inc., Case IPR2018-
`
`00333, slip op. at 13 (PTAB June 21, 2018) (Paper 9) (“Seoul Dec.”).
`
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of unpatentability
`
`as the ones on which we instituted review in the Seoul IPR. Compare Pet. 19–51,
`
`with Seoul Dec. 6–13. Indeed, Petitioner contends that the Petition “is
`
`
`1 Japanese Pat. Pub. 2003-17754, Jan. 17, 2003 (Ex. 1008) (“Rohm”); U.S.
`5,376,580, Dec. 27, 1994 (Ex. 1010) (“Kish”); Japanese Pat. Pub. 2001-352102,
`Dec. 21, 2001 (Ex. 1009) (“Matsushita”); U.S. Patent 5,523,589, June 4, 1996 (Ex.
`1011) (“Edmond ’589”).
`
` 3
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`substantively identical to Seoul Semiconductor’s IPR.” Mot. 2; see also, id. at 5–6.
`
`Petitioner acknowledges that the Petition relies on a different expert, however,
`
`Petitioner asserts that “Everlight’s expert reviewed and agreed with the expert
`
`declaration supporting Seoul Semiconductor’s IPR, and Everlight’s expert
`
`declaration is substantially identical to Seoul Semiconductor’s expert declaration.”
`
`Id. at 5.
`
`Patent Owner’s Preliminary Response does not address Petitioner’s prior art,
`
`arguments, or evidence. See generally, Prelim. Resp. However, Patent Owner
`
`contends that the Petition is time barred. Id. at 1–5; see also Doc. Opp. 1–3.
`
`Patent Owner asserts that Petitioner “was first served with a complaint alleging
`
`infringement of the ’486 patent on April 26, 2017, more than one year before
`
`Everlight filed its petition for IPR on June 8, 2018.” Prelim. Resp. 1. Thus, Patent
`
`Owner argues that under 35 U.S.C. § 315 (b) Everlight’s Petition is time barred.
`
`Id.
`
` 35 U.S.C. § 315 (b) states:
`
`(b) Patent Owner’s Action.—
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date on
`which the petitioner, real party in interest, or privy of the petitioner is
`served with a complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to a
`request for joinder under subsection (c).
`
`As discussed in more detail below, a Motion for Joinder was filed in the
`
`present case. Thus, the time bar under 35 U.S.C. § 315 (b) does not apply as the
`
`Petition falls under the explicit exception to the rule: “The time limitation set forth
`
`in the preceding sentence shall not apply to a request for joinder.” Patent Owner
`
`acknowledges as much in its Opposition to the Motion for Joinder. Doc. Opp. 3
`
` 4
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`(“Everlight can only participate in an IPR against the ’486 patent through
`
`joinder.”).
`
`For the same reasons set forth in our institution decision in the Seoul IPR,
`
`we determine that the information presented in the Petition shows a reasonable
`
`likelihood that Petitioner would prevail in showing that (a) claims 1–3 would have
`
`been obvious over Rohm, (b) claims 1–3 would have been obvious over Rohm and
`
`Kish, and (c) claims 1–3 would have been obvious over Matsushita and Edmond
`
`’589. See Seoul Dec. 6–13. Accordingly, we institute an inter partes review on
`
`the same grounds as the ones on which we instituted review in the Seoul IPR.
`
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`The Petition in this proceeding was accorded a filing date of June 8, 2018.
`
`See Paper 8. The Seoul IPR was instituted on June 21, 2018. Petitioner filed a
`
`Motion for Joinder on June 25, 2018. Thus, Petitioner’s Motion for Joinder is
`
`timely because joinder was requested no later than one month after the Seoul IPR.
`
`See 37 C.F.R. § 42.122 (b).
`
`The statutory provision governing joinder in inter partes review proceedings
`
`is 35 U.S.C. § 315(c), which reads:
`
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes review any
`person who properly files a petition under section 311 that the
`Director, after receiving a preliminary response under section 313 or
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
` 5
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`review; and (4) address specifically how briefing and discovery may be simplified.
`
`See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB
`
`Apr. 24, 2013) (Paper 15).
`
`As noted, the Petition in this case asserts the same unpatentability grounds
`
`on which we instituted review in the Seoul IPR. See Mot. 2. Petitioner also relies
`
`on the same prior art analysis and though they rely on a different expert, they assert
`
`that “Everlight’s expert declaration is substantially identical to Seoul
`
`Semiconductor’s expert declaration.” See id. at 5. Indeed, the Petition is nearly
`
`identical to the petition filed by the Seoul Petitioner. See id. at 5. Thus, this inter
`
`partes review does not present any ground or matter not already at issue in the
`
`Seoul IPR.
`
`If joinder is granted, Petitioner anticipates participating in the proceeding in
`
`a limited capacity absent termination of the Seoul Petitioner as a party. Id. at 6–8.
`
`Petitioner agrees to assume “a complete ‘understudy’ role” and “would assume a
`
`primary role only if Seoul Semiconductor ceased to participate in the proceeding.”
`
`Id. at 7, 8. Petitioner further represents that it will not “raise any new grounds not
`
`instituted by the Board in Seoul Semiconductor’s IPR, or introduce any argument
`
`or discovery not already introduced by Seoul Semiconductor.” Id. at 7. Because
`
`Petitioner expects to participate only in a limited capacity, Petitioner submits that
`
`joinder will not impact the trial schedule for the Seoul IPR. Id. at 6–7. Concerning
`
`their expert, Petitioner states that “[a]ssuming Seoul Semiconductor does not
`
`terminate its IPR before its expert is deposed, Everlight agrees to rely entirely on,
`
`and be bound by, the expert declaration(s) and deposition in Seoul
`
`Semiconductor’s IPR.” Id. at 6.
`
`Patent Owner argues that joinder is not appropriate as it “will complicate the
`
`proceeding.” Doc. Opp. 3. Patent Owner argues that Petitioner will include its
`
` 6
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`“unique positions” in the filings and will otherwise act in a manner “inconsistent
`
`with an ‘understudy’ role.” Id. Seoul Petitioner makes similar arguments. See
`
`Seoul Opp. 3–4.
`
`Petitioner responds that it “will be a ‘complete understudy’ and do nothing
`
`unless and until SSC abandons its IPR.” Reply 2. Petitioner further clarifies that:
`
`Everlight will not demand or even request that it has any input to any
`motion, brief, exhibit, deposition, teleconference, Hearing, or any
`other aspect of the joined IPR, unless SSC abandons its IPR. SSC and
`PO will proceed in the exact same manner as if Everlight had never
`joined. Only if SSC terminates, will Everlight get involved at all.
`
`Id. at 3.
`
`In view of Petitioner’s submission that it will “do nothing unless and until
`
`SSC abandons its IPR,” we see no reason to believe that Petitioner’s involvement
`
`will complicate this matter. Id. at 2.
`
`Patent Owner also argues that “there are good policy reasons for denying
`
`copy-cat joinder petitions from a time-barred party.” Doc. Opp. 4. However,
`
`Patent Owner’s policy reasons do not overcome the clear legislative intent apparent
`
`from the statutory language expressly permitting joinder of a time-barred party.
`
`See 35 U.S.C. § 315 (b).
`
`Patent Owner also argues that before joinder can be decided “[t]he USPTO
`
`[must] . . . provide[] . . . rules governing how an IPR should be conducted post-SAS
`
`where there is a request for joinder that is opposed by the underlying petition’s
`
`petitioner.” Doc. Opp. 5. Patent Owner explains that this is because “joinder
`
`could upset choices made by a petitioner.” Id. However, here where the Petitioner
`
`agrees to “do nothing unless and until SSC abandons its IPR,” we find
`
`unpersuasive Patent Owner’s argument that “joinder could upset choices made by a
`
`petitioner.” Reply 2; Doc. Opp. 5.
`
` 7
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`Patent Owner also attempts to get “a second bite of the apple” by including
`
`additional arguments against joinder in its Preliminary Response. See Prelim.
`
`Resp. 5–9. These new arguments are improper and should have been included in
`
`Patent Owner’s Opposition to Motion for Joinder. To allow Patent Owner to
`
`circumvent the Rules would deny Petitioner their right to reply to arguments that
`
`should have been presented in an Opposition to the Motion for Joinder. See 37
`
`C.F.R. § 42.25.
`
`Alternatively, we have considered Patent Owner’s arguments spanning
`
`pages 5–9 of the Response, but are not persuaded by such arguments. Patent
`
`Owner argues that 37 C.F.R. § 42.122(b) only allows for the joinder to be an
`
`exception to the time bar when a petition and motion for joinder are filed at the
`
`same time. Prelim. Resp. 6 (arguing that “accompanied by” in 37 C.F.R.
`
`§ 42.122(b) means filed with). Thus, where the motion for joinder was filed after
`
`the Petition, as is the case here, Patent Owner argues, the motion for joinder is
`
`improper. Id.
`
`37 C.F.R. § 42.122(b) states:
`
`Request for joinder. Joinder may be requested by a patent
`owner or petitioner. Any request for joinder must be filed, as a motion
`under § 42.22, no later than one month after the institution date of any
`inter partes review for which joinder is requested. The time period set
`forth in § 42.101(b) shall not apply when the petition is accompanied
`by a request for joinder.
`
`As can be seen, the rule provides a specific timing requirement of “no later
`
`than one month after the institution date of any inter partes review for which
`
`joinder is requested.” The rule does not set forth a specific time before which a
`
`motion for joinder can be filed. In view of this specific timing requirement, we
`
`determine that had the Office desired to limit the time of filing more specifically
`
` 8
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`they would have done so. At the time of our review of the present Petition we
`
`determine that the Petition was accompanied by a request for joinder.
`
`Thus, we agree with Petitioner that joinder with the Seoul IPR is appropriate
`
`under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.
`
`
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of
`
`claims 1–3 of the ’486 patent is instituted in IPR2018-01205;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-01225 is
`
`granted, and Everlight Electronics Co., Ltd. is joined as a petitioner in IPR2018-
`
`00333;
`
`FURTHER ORDERED that IPR2018-01225 is terminated under 37 C.F.R.
`
`§ 42.72, and all further filings shall be made only in IPR2018-00333;
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for trial in
`
`IPR2018-00333 remain unchanged;
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling Order in
`
`place for IPR2018-00333 (Paper 10), as modified by the Notice of Joint Stipulation
`
`to Modify the Scheduling Order (Paper 14), remains unchanged;
`
`FURTHER ORDERED that in IPR2018-00333, the Seoul Petitioner and
`
`Petitioner will file each paper, except for a motion that does not involve the other
`
`party, as a single, consolidated filing, subject to the page limits set forth in 37
`
`C.F.R. § 42.24, and shall identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing, if Petitioner wishes
`
`to file an additional paper to address points of disagreement with the Seoul
`
` 9
`
`
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`Petitioner, Petitioner must request authorization from the Board to file a motion for
`
`additional pages, and no additional paper may be filed unless the Board grants such
`
`a motion;
`
`FURTHER ORDERED that subject to Petitioner’s “understudy role,” the
`
`Seoul Petitioner and Petitioner shall collectively designate attorneys to conduct the
`
`cross-examination of any witness produced by Patent Owner and the redirect of
`
`any witness produced by the Seoul Petitioner and Petitioner, within the timeframes
`
`set forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that subject to Petitioner’s “understudy role,” the
`
`Seoul Petitioner and Petitioner shall collectively designate attorneys to present at
`
`the oral hearing, if requested and scheduled, in a consolidated argument;
`
`FURTHER ORDERED that the case caption in IPR2018-00333 shall be
`
`changed to reflect joinder of Everlight Electronics Co., Ltd. as a petitioner in
`
`accordance with the below example; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered into the
`
`record of IPR2018-00333.
`
`
`
`
`
`
`
`
`
`10
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`EXAMPLE CAPTION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., CREE, INC., and
`EVERLIGHT ELECTRONICS, LTD.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-003332
`Patent 7,256,486 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2 Cree, Inc., who filed a Petition in IPR2018-01205, and Everlight Electronics Co.,
`Ltd., who filed a Petition in IPR2018-01225, have been joined as petitioners in this
`proceeding.
`
`
`
`11
`
`
`
`
`
`IPR2018-01225
`Patent 7,256,486 B2
`
`
`PETITIONER:
`
`John Rabena
`William Mandir
`SUGHRUE MION, PLLC
`jrabena@sughrue.com
`wmandir@sughrue.com
`
`
`PATENT OWNER:
`
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`
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