`571-272-7822
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` Paper 17
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` Entered: 10 October 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EIZO CORPORATION,
`Petitioner,
`
`v.
`
`BARCO N.V.,
`Patent Owner.
`
`
`Case IPR2014-00778
`Patent RE43,707 E
`
`
`
`Before KALYAN K. DESHPANDE, JAMES B. ARPIN, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2014-00778
`Patent US RE43,707 E
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Eizo Corporation (“Petitioner”) filed a corrected Petition requesting
`
`an inter partes review of claims 64–66, 68–76, 80, 85–88, 91, 98–100, and
`
`116–129 of Patent No. US RE43,707 E (Ex. 1015; “the ’707 patent”).
`
`Paper 6 (“Pet.”). Petitioner filed a Motion for Joinder (Paper 11, “Mot.”)
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`accompanying the Petition, seeking to join this proceeding with Eizo Corp.
`
`v. Barco N.V., Case IPR2014-00358 (PTAB) (“the ʼ358 proceeding”).
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`Barco N.V. (“Patent Owner”) timely filed a Preliminary Response (Paper 14,
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`“Prelim. Resp.”) and an Opposition to Petitioner’s Motion for Joinder (Paper
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`12, “Opp.”). Petitioner further filed a Reply (Paper 16, “Reply”) to Patent
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`Owner’s Opposition. As explained in our Decision on Petitioner’s Motion
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`for Joinder (Paper 17), we deny Petitioner’s request to join this proceeding
`
`with the ʼ358 proceeding.
`
`35 U.S.C. § 315 provides in pertinent part:
`
`(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).
`
`
`
`For the reasons that follow, we determine that neither the Initial
`
`Petition nor the Corrected Petition was filed within the statutory period of
`
`35 U.S.C. § 315(b) and, therefore, we deny institution of an inter partes
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`review.
`
`2
`
`
`
`IPR2014-00778
`Patent US RE43,707 E
`
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`B. Related Proceedings
`
`
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`Petitioner indicates that the ’707 patent is the subject of a federal
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`district court case: Barco, N.V. v. Eizo Nanao Corp., 11-cv-00258 (N.D.
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`Ga). Pet. 1.
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`As stated above, the ʼ707 patent is the subject of inter partes review in
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`the ’358 proceeding. Additionally, the ’707 patent is the subject of Inter
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`Partes Reexamination No. 95/002,047 and was the subject of Ex Parte
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`Reexamination No. 90/020,037 (“the ’037 Reexam.”).1 Pet. 1.
`
`II. ANALYSIS
`
`In the present proceeding, Petitioner filed a Petition for inter partes
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`review of the ʼ707 patent and submitted a Motion for Joinder on July 21,
`
`2014, seeking to join this Petition with the ʼ358 proceeding. Patent Owner
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`contends that the Petition is time-barred from inter partes review because its
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`May 20, 2014, filing date is more than one year after the date Petitioner was
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`served with the amended complaint in the related district court action,
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`January 17, 2013. Prelim. Resp. 2; see Ex. 2005. Petitioner asserts that the
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`“one-year time bar does not apply to a request for joinder” and the “motion
`
`for joinder permits a petition for inter partes review . . . to be filed more than
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`one year after service of a complaint.” Reply 2. That is, Petitioner
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`acknowledges that this Petition was filed more than one year after the
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`amended complaint was served. Accordingly, in light of our decision
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`
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`1 Reexamination Certificate No. US RE43,707 C1 (“the ’707 C1 certificate”)
`issued on March 31, 2014.
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`3
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`
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`IPR2014-00778
`Patent US RE43,707 E
`
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`denying joinder of this proceeding with the ʼ358 proceeding, this Petition is
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`time-barred.
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`III. CONCLUSION
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`For the foregoing reasons, we determine that Petitioner has not filed a
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`Petition in this proceeding within the one-year statutory period of
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`35 U.S.C. § 315(b). Accordingly, we deny institution of inter partes review
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`in this proceeding.
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that, pursuant to 35 U.S.C. § 315(b), Petitioner’s Corrected
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`Petition is denied as to all challenged grounds, and no trial is instituted.
`
`4
`
`
`
`IPR2014-00778
`Patent US RE43,707 E
`
`
`For PETITIONER:
`
`Marc Weinstein
`marcweinstein@quinnemmanuel.com
`
`For PATENT OWNER:
`
`Kerry Hartman
`khartman@hartmanpatents.com
`
`Jeffrey Morgan
`Jeff.morgan@BTlaw.com
`
`
`5
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`
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