Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`Paper 11
`Entered: September 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`CREE, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01205
`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 11
`Entered: September 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`CREE, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01205
`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)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01205
`Patent 7,256,486 B2
`
`I. INTRODUCTION
`A. Background
`Cree, Inc. (“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. Concurrently with its Petition,
`Petitioner filed a Motion for Joinder with Seoul Semiconductor Co. Ltd. v.
`Document Security Systems, Inc., Case IPR2018-00333 (“the Seoul IPR”). Paper 3
`(“Mot.”). Petitioner represents that the petitioners in the Seoul IPR— Seoul
`Semiconductor Co., Ltd. and Seoul Semiconductor, Inc.—do not oppose the
`Motion for Joinder. Mot. 2. Document Security Systems, Inc. (“Patent Owner”)
`timely filed a Preliminary Response (Paper 10, “Prelim. Resp.”), but did not file 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 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.
`
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`IPR2018-01205
`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
`IPR2018-01225. 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
`1–3
`
`Rohm
`
`Rohm and Kish
`Matsushita and Edmond ’589
`
`1–3
`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. 23–61,
`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”).
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`IPR2018-01205
`Patent 7,256,486 B2
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`substantively identical to the petition in the Seoul Semiconductor 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.
`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 1–6. Patent Owner asserts that
`“Cree, Inc., was first served with a complaint alleging infringement of the ’486
`patent on April 14, 2017, more than one year before Cree filed its petition for IPR
`on June 6, 2018.” Id. at 1. Thus, under 35 U.S.C. § 315 (b) Cree’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 with the
`present Petition. 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.”
`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
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`IPR2018-01205
`Patent 7,256,486 B2
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`’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 and Motion for Joinder in this proceeding were accorded a
`filing date of June 6, 2018. See Paper 7. This is before the institution date of the
`Seoul IPR, i.e., June 21, 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
`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 expert testimony submitted by the Seoul
`Petitioner. See id. Indeed, the Petition is nearly identical to the petition filed by
`
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`IPR2018-01205
`Patent 7,256,486 B2
`
`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.
`Petitioner agrees to assume an “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 the Seoul Semiconductor IPR, or introduce any argument
`or discovery not already introduced by Seoul Semiconductor.” Id. 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.
`Patent Owner did not file an Opposition to the Motion for Joinder. Such an
`Opposition was due on July 6, 2018. See 37 C.F.R. § 42.25. Patent Owner
`improperly attempts to oppose the Motion for Joinder by arguing in the Patent
`Owner Preliminary Response, filed August 31, 2018, that the Motion for Joinder is
`improper and does not qualify as a request for joinder under 35 U.S.C. § 315 (b).
`See Prelim. Resp. 4–5. Patent Owner waived its arguments in opposition to the
`Motion for Joinder by choosing not to file such an opposition. 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 4–5 of the Response, but are not persuaded by such arguments. Patent
`Owner argues that “[a] plain reading of 35 U.S.C. § 315 (c) provides that a petition
`supporting a request for joinder can only be filed after the Board has already
`instituted an IPR.” Id. at 4. Patent Owner argues that this is because 35 U.S.C.
`
` 6
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`IPR2018-01205
`Patent 7,256,486 B2
`
`§ 315 (c) uses “the present tense, ‘files,’” as in, “files a petition” to “indicate[] that
`the filing of the request for joinder [must] occur[] after the Director’s decision
`instituting an IPR.” Id.
`We see no reason to read the statute this narrowly. Section 315 (c) does
`include one temporal limitation—that the decision to join be made “after receiving
`a preliminary response . . . or the expiration of the time for filing such a response”
`in the second petition. The phrase noted by Petitioner addresses the Director’s
`decision to join, not the timing of filing a second petition.
`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 IPR2018-01205 is
`granted, and Cree, Inc. is joined as a petitioner in IPR2018-00333;
`FURTHER ORDERED that IPR2018-01205 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;
`
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`IPR2018-01205
`Patent 7,256,486 B2
`
`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
`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 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 IPR2018-00333.
`
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`IPR2018-01205
`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., and CREE, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-003332
`Patent 7,256,486 B2
`_______________
`
`
`
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`2 Cree, Inc., who filed a Petition in IPR2018-01205, has been joined as a petitioner
`in this proceeding.
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`IPR2018-01205
`Patent 7,256,486 B2
`
`
`
`PETITIONER:
`Blaney Harper
`Douglas H. Pearson
`Yury Kalish
`Matthew W. Johnson
`Joseph M. Sauer
`JONES DAY
`bharper@jonesday.com
`dhpearson@jonesday.com
`ykalish@jonesday.com
`mwjohnsone@jonesday.com
`jmsauer@jonesday.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
`
`
`
`10
`
`
`
`
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