`By:
`James C. Gumina (gumina@mbhb.com)
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`Michael D. Clifford (clifford@mbhb.com)
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`Michael D. Anderson (andersonm@mbhb.com)
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`McDonnell Boehnen Hulbert & Berghoff LLP
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`300 South Wacker Drive
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`Suite 3200
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`Chicago, Illinois 60606
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`Tel.: (312) 913-0001
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`Fax: (312) 913-0002
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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` INTEL CORPORATION
`and
`QUALCOMM INCORPORATED, GLOBALFOUNDRIES INC.,
`GLOBALFOUNDRIES U.S. INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG,
`Petitioner,
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`v.
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`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-002871
`Patent 6,784,552
`______________
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`PATENT OWNER’S NOTICE OF APPEAL TO THE UNITED STATES
`COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`1 Case IPR2016-01311 has been joined with this proceeding.
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`I.
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`Notice of Appeal
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`Case IPR2016-00287
`U.S. Patent No. 6,784,552
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`Notice is hereby given, pursuant to 35 U.S.C. §§ 141(c), 142, 319; 37 C.F.R.
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`§§ 90.2(a), 90.3(a), and Federal Circuit Rule 15(a)(1), that Patent owner DSS
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`Technology Management, Inc., a wholly-owned subsidiary of Document Security
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`Systems, Inc., (“Patent Owner” or “DSS”) appeals to the United States Court of
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`Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s Final
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`Written Decision entered on June 1, 2017 (Paper 25) in the above-captioned inter
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`partes review of U.S. Patent No. 6,784,552 (“the ’552 Patent”). This notice is
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`timely filed within 63 days of the Board’s Final Written Decision. 37 C.F.R.
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`§ 90.3.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that
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`the issues on appeal include the following: (1) whether the Board erred in finding
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`that claims 1, 2, and 4-7 of ‘552 Patent are not patentable under 35 U.S.C. § 102(b)
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`over U.S. Patent No. 4,686,000 (“Heath”), due to the Board’s findings in its Final
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`Written Decision being unsupported by substantial evidence or resting on legal
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`error; (2) whether the Board erred in finding that claim 3 of ‘552 Patent are not
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`patentable under 35 U.S.C. § 103(a) over Heath, European Patent Application
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`Publication No. 0592078 A1 (“Hawley”) and U.S. Patent No. 5,541,427
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`(“Chappell”), due to the Board’s findings in its Final Written Decision being
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`Case IPR2016-00287
`U.S. Patent No. 6,784,552
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`unsupported by substantial evidence or resting on legal error; (3) whether the
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`Board’s decision was arbitrary, capricious, an abuse of discretion, or otherwise not
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`in accordance with law; (4) whether the Board exceeded its power under the U.S.
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`Constitution by finding that claims 1-7 were not patentable, thereby violating the
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`U.S. Constitution by extinguishing private property rights through a non-Article III
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`forum without a jury; and (5) all other issues decided adversely to Patent Owner,
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`including any orders, decisions, rulings and/or opinions, including.
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`Simultaneously with this submission, Patent Owner is filing a true and
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`correct copy of this Notice of Appeal with the Director of the U.S. Patent and
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`Trademark Office and filing one copy of this Notice of Appeal, along with the
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`required docketing fees, with the Clerk of the U.S. Court of Appeals for the
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`Federal Circuit as set forth in the accompanying Certificate of Filing and
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`Certificate of Service.
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`Date: July 28, 2017
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`Respectfully submitted,
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`/James C. Gumina/
`James C. Gumina (Reg. No. 32,898)
`Michael D. Clifford (Reg. No. 60,550)
`Michael D. Anderson (Reg. No. 66,839)
`McDonnell Boehnen Hulbert & Berghoff
`300 South Wacker Drive, Suite 3200
`Chicago, Illinois 60606
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`Case IPR2016-00287
`U.S. Patent No. 6,784,552
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`CERTIFICATE OF SERVICE AND FILING
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`The undersigned hereby certifies that “PATENT OWNER’S NOTICE OF
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`APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE
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`FEDERAL CIRCUIT” was served on opposing counsel by filing this document
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`through the Patent Trial and Appeal Board via PTAB E2E, as well as by delivering
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`copies of the same via Priority Mail Express and electronic mail, on July 28, 2017,
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`upon the following:
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`Grant K. Rowan
`E-mail: grant.rowan@wilmerhale.com
`Wilmer Cutler Pickering Hale and Door LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
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`Yung-Hoon Ha
`E-mail: yung-hoon.ha@wilmerhale.com
`Wilmer Cutler Pickering Hale and Door LLP
`7 World Trade Center
`250 Greenwich Street
`New York, New York 10007
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`The undersigned hereby certifies that “PATENT OWNER’S NOTICE OF
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`APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE
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`FEDERAL CIRCUIT” was also filed with the Director of the United States Patent
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`and Trademark Office via Priority Mail Express at the address below, was
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`electronically filed with the Patent Trial and Appeal Board via PTAB E2E, and
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`was filed with the Clerk of the United States Court of Appeals for the Federal
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`Circuit electronically via CM/ECF on July 28, 2017.
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`Via Priority Mail Express:
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`Case IPR2016-00287
`U.S. Patent No. 6,784,552
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`Director of the United States Patent and Trademark Office
`Office of the General Counsel
`Patent and Trademark Office
`Madison East
`10B20 600 Dulany Street
`Alexandria, VA 22314
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`Respectfully submitted,
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`/James C. Gumina/
`James C. Gumina
`Lead Counsel for Patent Owner
`Registration No. 32,898
`McDonnell Boehnen Hulbert & Berghoff
`300 South Wacker Drive, Suite 3200
`Chicago, Illinois 60606
`(312) 913-0001
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`Date: July 28, 2017
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`5
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