throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper: 14
`Entered: May 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`CREE, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00506
`Patent 7,256,486 B2
`_______________
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`
`I. INTRODUCTION
`A. Introduction
`Cree, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
`an inter partes review of claims 1–6 (the “challenged claims”) of U.S. Patent
`7,256,486 B2 (Ex. 1001, the “’486 patent”). 35 U.S.C. § 311. Concurrently
`with its Petition, Petitioner filed a Motion for Joinder with Nichia
`Corporation v. Document Security Systems, Inc., Case IPR2018-01166 (“the
`Nichia IPR”). Paper 3 (“Mot.”). Petitioner represents that the petitioner in
`the Nichia IPR—Nichia Corporation (“Nichia”)—does not oppose the
`Motion for Joinder. Mot. 2. Document Security Systems, Inc. (“Patent
`Owner”) did not file a preliminary response or an opposition to the Motion
`for Joinder.
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may be instituted where “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” A decision to institute under 35 U.S.C. § 314
`may not institute on fewer than all claims challenged in the petition. SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`For the reasons described below, we institute an inter partes review of
`claims 1–6 of the ’486 patent and grant Petitioner’s Motion for Joinder.
`B. Related Proceedings
`Petitioner states the ’486 patent has been asserted by Patent Owner
`
`against Petitioner in two district court proceedings: Document Security
`Systems, Inc. v. Cree, Inc., No. 2:17-cv-00309 (E.D. Tex.) and Document
`
` 2
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-04263 (C.D. Cal.). Paper 1,
`1. Patent Owner also identifies these proceedings. Paper 5, 2.
`
`Petitioner also states the ’486 patent has been asserted by Patent
`Owner in several other district court proceedings: Document Security
`Systems, Inc. v. Everlight Americas Inc., et al., No. 2:17-cv-00310 (E.D.
`Tex.); Document Security Systems, Inc. v. Everlight Americas Inc., et al.,
`No. 2:17-cv-04273 (C.D. Cal.); Document Security Systems, Inc. v. Nichia
`Corporation et al., No. 2:17-cv-08849 (C.D. Cal.); Document Security
`Systems, Inc. v. Seoul Semiconductor Co., Ltd., et al., No. 2:17-cv-00308
`(E.D. Tex.); Document Security Systems, Inc. v. Seoul Semiconductor Co.,
`Ltd., et al., No. 8:17-cv-00981 (C.D. Cal.); Document Security Systems, Inc.
`v. OSRAM GmbH, et al., No. 2:17-cv-05184 (C.D. Cal.); and Document
`Security Systems, Inc. v. Lite-On Tech. Corp., et al., No. 2:17-cv-06050
`(C.D. Cal.). Paper 1, 1. Patent Owner also identifies these proceedings.
`Paper 5, 2.
`
`Petitioner also states the ’486 patent is subject to the following
`instituted petitions for inter partes review: Seoul Semiconductor Co., Ltd. v.
`Document Security Systems, Inc., No. IPR2018-00333 (“the ’333 Petition”);
`Nichia Corporation et al. v. Document Security Systems, Inc., No. IPR2018-
`01166 (“the ’1166 Petition”); Cree, Inc. v. Document Security Systems, Inc.,
`No. IPR2018-01205 (“the ’1205 Petition”); and Everlight Electronics Co.,
`Ltd. et al. v. Document Security Systems, Inc., No. IPR2018-01225 (“the
`’1225 Petition”). Paper 1, 2. Patent Owner also identifies these
`proceedings. Paper 5, 2. The ’1205 Petition and the ’1225 Petition have
`been joined with the ’333 Petition. Petitioner further states the ’486 patent
`was subject to the following denied petition for inter partes review: Cree,
`
` 3
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`Inc. v. Document Security Systems, Inc., No. IPR2018-01220 (“the ’1220
`Petition”). Paper 1, 2. Patent Owner also identifies this proceeding. Paper
`5, 2. Petitioner further identifies the following inter partes review matters
`challenging U.S. Patent No. 7,919,787, which is a continuation-in-part of the
`’486 patent: IPR2018-00965 filed by Nichia Corporation; and IPR2018-
`01260 filed by Everlight Electronics Co., Ltd. Paper 1, 2. Patent Owner
`also identifies these proceedings. Paper 5, 2.
`Patent Owner additionally identifies the following inter partes review
`proceedings as ones that may also affect or be affected by a decision in this
`proceeding: IPR2018-00265 (U.S. Patent No. 6,949,771) (final decision
`issued April 18, 2019, Paper 34); IPR 2018-00522 (U.S. Patent No.
`7,524,087) (trial instituted, Paper 10); IPR2018-00965 (U.S. Patent No.
`7,919,787) (trial instituted, Paper 15); IPR2018-00966 (U.S. Patent No.
`7,652,297) (trial instituted, Paper 14); IPR2018-01165 (U.S. Patent No.
`7,524,087); IPR2018-01167 (U.S. Patent No. 6,949,771); IPR2018-01205
`(U.S. Patent No. 7,256,486) (instituted, joined with IPR2018-00333, Paper
`11); IPR2018-01220 (U.S. Patent No. 7,256,486) (institution denied, Paper
`9); IPR2018-01221 (U.S. Patent No. 7,524,087) (institution denied, Paper
`9); IPR2018-01222 (U.S. Patent No. 6,949,771) (institution denied, Paper
`11); IPR2018-01223 (U.S. Patent No. 6,949,771) (institution denied, Paper
`11); IPR2018-01225 (U.S. Patent No. 7,256,486) (trial instituted, joined
`with IPR2018-00333, Paper 14); IPR2018-01226 (U.S. Patent No.
`7,524,087) (trial instituted, joined with IPR2018-00522, Paper 15);
`IPR2018-01244 (U.S. Patent No. 6,949,771) (trial instituted, joined with
`IPR2018-00265, Paper 15); IPR2018-01260 (U.S. Patent No. 7,919,787)
`(trial instituted, Paper 12); IPR2019-00397 (U.S. Patent No. 6,949,771)
`
` 4
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`(institution denied, Paper 10); and IPR2019-00398 (U.S. Patent No.
`6,949,771) (institution denied, Paper 10). Paper 5, 3–4.
`C. Nichia IPR
`In the Nichia IPR, we instituted inter partes review of the ’486 patent
`under 35 U.S.C. § 103(a)1 based on the following grounds:
`
`Ground
`
`References
`
`Claim(s)
`challenged
`1–5
`
`1–5
`
`1–5
`
`1–3
`
`1–3
`
`1–3
`
`Nakajima2 and Weeks3
`
`Nakajima and Kish4
`
`Nakajima and Edmond5
`
`Rohm6 and Weeks
`
`Rohm and Kish
`
`Rohm and Edmond
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Rohm, Weeks, and Nakajima
`
`4 and 5
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 102
`and § 103. Because the ’486 patent has an effective filing date prior to the
`effective date of the applicable AIA amendments, we refer herein to the pre-
`AIA versions of § 102 and § 103.
`2 Japanese Patent App. No. 2002-232017, pub. Aug. 16, 2002 (Ex. 1004,
`“Nakajima”).
`3 U.S. Patent No. 6,611,002, filed Feb. 23, 2001, issued Aug. 26, 2003
`(Ex. 1007, “Weeks”).
`4 U.S. Patent No. 5,376,580, Dec. 27, 1994 (Ex. 1008, “Kish”).
`5 U.S. Patent No. 5,523,589, June 4, 1996 (Ex. 1009, “Edmond”).
`6 Japanese Pat. Pub. 2003-17754, Jan. 17, 2003 (Ex. 1005, “Rohm”).
`
` 5
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`
`Ground
`
`References
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Rohm, Kish, and Nakajima
`
`Rohm, Edmond, and Nakajima
`
`Matsushita7 and Weeks
`
`Matsushita and Kish
`
`Matsushita and Edmond
`
`Matsushita, Weeks, and Nakajima
`
`Matsushita, Kish, and Nakajima
`
`Matsushita, Edmond, and Nakajima
`
`Nakajima, Weeks, and Jochym8
`
`Nakajima, Kish, and Jochym
`
`Nakajima, Edmond, and Jochym
`
`Rohm, Weeks, Nakajima, and Jochym
`
`Rohm, Kish, Nakajima, and Jochym
`
`Rohm, Edmond, Nakajima, and Jochym
`
`Matsushita, Weeks, Nakajima, and Jochym
`
`Matsushita, Kish, Nakajima, and Jochym
`Matsushita, Edmond, Nakajima, and Jochym
`
`Claim(s)
`challenged
`4 and 5
`
`4 and 5
`
`1–3
`
`1–3
`
`1–3
`
`4 and 5
`
`4 and 5
`
`4 and 5
`
`6
`
`6
`
`6
`
`6
`
`6
`
`6
`
`6
`
`6
`
`6
`
`
`7 Japanese Pat. Pub. 2001-352102, Dec. 21, 2001 (Ex. 1006, “Matsushita”).
`8 U.S. Patent No. 6,747,217, filed Nov. 21, 2001, issued June 8, 2004
`(Ex. 1010, “Jochym”).
`
` 6
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`Nichia Corporation v. Document Security Sys., Inc., Case IPR2018-01166,
`slip op. at 8–9 (PTAB Nov. 30, 2018) (Paper 9) (“Nichia DI”).
`
`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 Nichia IPR.
`Compare Pet. 4–6, with Nichia DI 7–9, 59. Indeed, Petitioner contends that
`the Petition “is substantively identical to the petition in the Nichia IPR –
`challenging the same claims of the ’486 patent on the same grounds while
`relying on the same prior art, arguments, and evidence.” Mot. 2; see also id.
`at 5–6. This includes relying on the same expert declaration as the Seoul
`IPR. Id. at 2, 5.
`For the same reasons set forth in our institution decision in the Nichia
`IPR, we determine that the information presented in the Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that claims 1–
`6 of the ’486 patent are unpatentable for the reasons stated in the Petition.
`See Nichia DI 21–59. Accordingly, we institute an inter partes review on the
`same grounds as the ones on which we instituted review in the Nichia IPR.
`
`III. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of December 28, 2018. See Paper 6. This is within one month
`of the institution date of the Nichia IPR, i.e., November 30, 2018. Nichia
`DI. Thus, Petitioner’s Motion for Joinder is timely because joinder was
`requested no later than one month after the Nichia IPR. See 37 C.F.R.
`§ 42.122 (b).
`
` 7
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`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 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 Nichia IPR. See Mot. 2.
`Petitioner also relies on the same prior art analysis and expert testimony
`submitted by the Nichia Petitioner. See id. Indeed, the Petition is nearly
`identical to the petition filed by the Nichia Petitioner, differing only in
`procedural statements unique to Petitioner. See id. at 5. Thus, this inter
`partes review does not present any ground or matter not already at issue in
`the Nichia IPR.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of the Nichia Petitioner
`as a party. Id. at 6. Petitioner agrees to assume an “‘understudy’ role” and
`states that it “would assume a primary role only if Nichia ceased to
`
` 8
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`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 the Nichia
`IPR, or introduce any argument or discovery not already introduced by
`Nichia.” 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 Nichia IPR. Id. at 5–7.
`Patent Owner did not file an Opposition to the Motion for Joinder.
`Such an Opposition was due on January 28, 2019. See 37 C.F.R. § 42.25.
`Patent Owner has waived any arguments in opposition to the Motion for
`Joinder by choosing not to file such an opposition.
`Thus, for the foregoing reasons, we agree with Petitioner that joinder
`with the Nichia 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 1–6 of the ’486 patent is instituted in IPR2019-00506 on all
`grounds stated in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01166 is granted, and Cree, Inc., is joined as a petitioner in IPR2018-01166;
`FURTHER ORDERED that IPR2019-00506 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-01166;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-01166 remain unchanged;
`
` 9
`
`
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-01166 (Paper 10), as modified by the Notice of
`Joint Stipulation to Modify the Scheduling Order (Paper 12), remains
`unchanged;
`FURTHER ORDERED that in IPR2018-01166, the Nichia 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
`Nichia 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 Nichia 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 Nichia 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 Nichia Petitioner and Petitioner shall collectively designate attorneys to
`present at the oral hearing, if requested and scheduled, in a consolidated
`argument;
`
`
`10
`
`
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`FURTHER ORDERED that the case caption in IPR2018-01166 shall
`be changed to reflect joinder of Cree, Inc., 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 IPR2018-01166.
`
`
`11
`
`
`
`

`

`EXAMPLE CAPTION
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`NICHIA CORPORATION, and CREE, INC.,
`Petitioners,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-011661
`Patent 7,256,486 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`1 Cree, Inc., who filed a Petition in IPR2019-00506, has been joined as a
`petitioner in this proceeding.
`
`

`

`IPR2019-00506
`Patent 7,256,486 B2
`
`PETITIONER:
`Blaney Harper
`Douglas H. Pearson
`Yury Kalish
`Joseph M. Sauer
`David B. Cochran
`Matthew W. Johnson
`JONES DAY
`bharper@jonesday.com
`dhpearson@jonesday.com
`ykalish@jonesday.com
`jmsauer@jonesday.com
`dcochran@jonesday.com
`mwjohnson@jonesday.com
`
`PATENT OWNER:
`
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`
`
`
`13
`
`
`
`

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