Case 1:16-cv-01036-LO-IDD Document 1 Filed 08/12/16 Page 1 of 14 PageID# 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`20!b AUG I2 P 3-Ul
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`FILED
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`CLERK US DiSTRiCT COURT
`ALEXANDRIA, ViRGlNiA
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`Case No
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`iDfeitoP
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`Elm 3DS Imiovations, LLC,
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`Plaintiff,
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`V.
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`Michelle K. Lee, in her official capacity as
`Undersecretary of Commerce ofIntellectual
`Property and Director of the United States
`Patent and Trademark Office, and
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`United States Patent and Trademark Office,
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`Defendants.
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`COMPLAINT
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`Elm 3DS Innovations, LLC, by its attorneys, for its Complaint in thisaction alleges:
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`NATURE OF THE ACTION
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`1.
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`Plaintiff Elm 3DS Innovations, LLC ("Elm") seeks judicial review under the
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`Administrative Procedure Act, 5 U.S.C. §§701-06, the Declaratory Judgment Act, 28 U.S.C.
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`§§ 2201-02, and Ex Parte Young, 209 U.S. 123 (1908), of final agency action by defendants
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`Michelle K. Lee, Undersecretary of Commerce for Intellectual Property and Director of the
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`United States Patent and Trademark Office ("Director Lee"), and the United States Patent and
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`Trademark Office (the"PTO,"andtogether withDirector Lee,the "Defendants").
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`2.
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`On December 22, 2015, Director Lee issued a rule declaring that the PTO would
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`consider Tuesday, December 22, 2015 through Thursday, December 24, 2015 to be a "Federal
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`holiday within the District of Columbia." Ex. 1. Under that rule, "[a]ny action ... due on these
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`1
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`SAMSUNG ET AL. EXHIBIT 1068
`Samsung et al. v. Elm 3DS Innovations, LLC
`IPR2016-00387
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`Page 1 of 59
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`days" would be "considered as timely" by the agency "ifthe action [wa]s taken ... on the next
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`succeeding business day on which the USPTO [wa]s open," i.e., Monday, December 28, 2015.
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`Id.
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`3.
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`The issuance of that rule was arbitrary, capricious, an abuse of discretion, in
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`excess of authority, and not in accordance with law. Defendants have no legal authority—^under
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`statute or regulation—^to declare or consider days to be "federal holidays in the District of
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`Columbia" when Congress has not so designated them, much less to thereby allow parties to take
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`an action outside the statutorily prescribed time period.
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`4.
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`Elm is aggrieved by Defendants' actions in issuing and implementing the rule. As
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`a result of the rule, the PTO allowed a partyto seek interpartes review of the validity of certain
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`of Elm's patents before the agency, despite the fact that the party failed to file its petition for
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`review within the one-year period required by Congress as part of the America Invents Act. See
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`35 U.S.C.§315(b).
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`5.
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`Elm respectfully requests thatthe Court declare, decree, and adjudge that Director
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`Lee's rule under which the PTO considered December 22-24, 2015 to be a "Federal holiday
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`within the District of Columbia" is unlawful and legally void, set it aside, and enjoin Defendants
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`from continuing to apply, enforce, or rely on it, or from maintaining any action based on it.
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`PARTIES
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`6.
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`Elm is a Delaware corporation, with its principal place of business at 26147
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`Carmelo Street, Carmel, California93923. It is the holder of numerous patents and has filed suit
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`against companies that infringe those patents.
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`7.
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`Director Lee is Undersecretary of Commerce for Intellectual Property and
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`Director of the United States Patent and Trademark Office, having her primary place of business
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`Case 1:16-cv-01036-LO-IDD Document 1 Filed 08/12/16 Page 3 of 14 PageID# 3
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`in Alexandria, Virginia.
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`8.
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`The PTO is a United States government administrative agency within the
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`Department ofCommerce, having its principal place ofbusiness in Alexandria, Virginia.
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`JURISDICTION AND VENUE
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`9.
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`This action arises under the United States PatentAct, 35 U.S.C. §§ 101 et seq.; 5
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`U.S.C. §6103; the Administrative Procedure Act, 5 U.S.C. §§701-06; and the Declaratory
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`Judgment Act, 28 U.S.C. §§ 2201-02.
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`10.
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`This court has original jurisdiction of this action and personal jurisdiction over
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`Defendants under 28 U.S.C. §§1331.
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`11.
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`Venue is proper inthis District under 28 U.S.C. §§ 1391 and 5 U.S.C. §703.
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`BACKGROUND
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`Leeal Framework
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`12.
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`Federal "public holidays" in the United States are established by act of Congress
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`and codified at 5 U.S.C. § 6103.
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`13.
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`By statute, the PTO may rely on federal holidays when calculating statutory due
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`dates. The United States Patent Act provides: "When the day, or the last day, for taking any
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`action or paying any fee in the United States Patent and Trademark Office falls on Saturday,
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`Sunday, orafederal holiday within the District ofColumbia, the action may be taken, orthe fee
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`paid, on the next succeeding secular orbusiness day." 35 U.S.C. §21(b) (emphasis added).
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`14.
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`The PTO implemented 35 U.S.C. § 21(b) by regulation, which states: "When the
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`day, or the last day fixed by statute or by or under this part for taking any action or paying any
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`fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal
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`holiday within the District of Columbia, the action may be taken, or the fee paid, on the next
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`succeeding business day which is not a Saturday, Sunday, or a Federal holiday." 37 C.F.R. § 1.7
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`(emphasis added).
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`15.
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`PTO regulations state that a "Federal holiday within the District of Columbia"
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`means "any day, except Saturdays and Sundays, when the Patent and Trademark Office is
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`officially closed for business for theentire day." 37C.F.R. § 1.9(h).
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`16.
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`PTO rules provide that electronic filing or mailing documents through the U.S.
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`Postal Service constituteseffective filing. 37 C.F.R. §§ 1.10,42.6(b).
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`17.
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`The only statutory authorization for the PTO to extend deadlines beyond
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`weekends and federal holidays is provided in 35 U.S.C. § 21(a). Under thatsection, the Director
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`ofthe PTO may "prescribe that any paper or fee required to befiled inthe Patent and Trademark
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`Office will be considered filed in the Office on the date on which it was deposited with the
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`UnitedStates Postal Service or would have been deposited with the UnitedStates Postal Service
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`but for postal service interruptions or emergencies designated by the Director" (emphasis
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`added).
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`18.
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`The alternative mechanism under 35 U.S.C. § 21(a) is implemented by 37 C.F.R.
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`§ 1.10(i). Under that regulation, a person "attempting to file" relevant correspondence "that was
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`unable to be deposited with the" U.S. Postal Service "due to an interruption or emergency in
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`Priority Mail Express® service which has been so designated by the Director, may petition the
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`Director to consider such correspondence as filed on a particular date in the Office, provided"
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`certain conditions are met, including the provision of a "statement which establishes, to the
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`satisfaction of the Director, that the correspondence would have been deposited with the USPS
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`but for the designated interruption or emergency in Priority Mail Express® service, and that the
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`correspondence or copy of the correspondence is the original correspondence or a true copy of
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`the correspondence originally attempted to be deposited with the USPS on the requested filing
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`date."
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`Director Lee's Rule
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`19.
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`Congress did not declare December 22, 23, or 24, 2015 to be federal holidays
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`under 5 U.S.C. §6103. In fact, federal offices were open, including inthe District ofColumbia,
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`on all three days.
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`20.
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`The PTO was not officially closed for business for the entire day on December
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`22,23, or 24,2015 forpurposes of 37 C.F.R. § 1.9(h).
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`21.
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`On information and belief, there was no interruption or emergency that prevented
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`the deposit ofmail with the U.S. Postal Service onDecember 22,23,or24, 2015.
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`22.
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`Defendants havenot identified a postal interruption or emergency that would have
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`prevented deposit ofmail with the U.S. Postal Service on December 22,23, or24,2015.
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`23.
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`At approximately 7 p.m. on December 22, 2015, the PTO "experienced a major
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`power outage at its headquarters in Alexandria, Virginia," which the PTO claimed "required the
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`subsequent shutdown ofmany USPTO online and information technology systems." Ex. 1.
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`24.
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`Even if the PTO's computer systems were not functioning, parties still were able
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`to file documents with the PTO bytimely depositing them with theU.S. Postal Service.
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`25.
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`Nevertheless, Director Lee issued an informal rule declaring that, "[i]n light of
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`the power failure, the PTO would "consider" Tuesday, December 22, 2015 through Thursday,
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`December 24, 2015 to be a "Federal holiday within the District of Columbia." Ex. 1. The rule
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`further purported to provide that, as a result, "[a]ny action ... due on these days" would be
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`"considered as timely" by the agency "if the action [wa]s taken ... on the next succeeding
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`business day on which the USPTO [wa]s open," /.e., Monday, December 28,2015. Id.
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`26.
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`Neither Director Lee's rule, nor any act under 37 C.F.R. § 1.10(i), designated
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`December22-24, 2015 as involvinga postal service interruption or emergency.
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`27.
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`Director Lee's informal rule constitutes a final agency action. The PTO provided
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`no mechanism for public commentary or appeal of Director Lee's rule. Thus, the decision-
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`making process has been completed.
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`28.
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`Further, the informal rule resulted in the determination of the legal rights for
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`parties with due dates on December 22-24, 2015. Itexpressly provided that "[a]ny action ... due
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`on these days" would be "considered as timely" by the agency "if the action [wa]s taken ... on
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`thenext succeeding business day on which the USPTO [wa]s open," i.e., Monday, December 28,
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`2015. Ex. 1.
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`Director Lee *s Rule Harms Elm
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`29.
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`Elm owns a portfolio of patents generally related to low-stress dielectrics for use
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`in integrated memory circuits. Those patents teach that the disclosed low-stress material is useful
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`to create stacked memory circuits. Such stacked memory circuits have smaller dimensions than
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`unstacked circuits with the same memory capacity. This increased density enables the reduction
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`in size seenin modemportable electronic devices, suchas cellular telephones.
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`30.
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`Elm sued Micron Technology, Inc.; Micron Semiconductor Products, Inc.;
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`Micron Consumer Products Group,
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`Inc.; Samsung Electronics Co., Ltd.; Samsung
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`Semiconductor, Inc.; Samsung Electronics America, Inc.; Samsung Austin Semiconductor LLC;
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`Sk Hynix Inc.; Sk Hynix America Inc.; Hynix Semiconductor Manufacturing America Inc.; and
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`Sk Hynix Memory Solutions Inc. in the U.S. District Court forthe District of Delaware, alleging
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`that they had infringed certain of Elm's patents. The defendants were served withthe complaint
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`on December 24,2014.
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`31.
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`The America Invents Act ("AIA") was signed into law on September 16, 2011.
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`Among other things, the AIA authorizes persons to petition the PTO's Patent Trial and Appeal
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`Board ("PTAB") to initiate "inter partes review" or"IPR" proceedings challenging the validity
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`of patent claims. As part of an IPR proceeding, the PTAB reviews the patentability of one or
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`more patent clEiims on grounds that could be raised under 35 U.S.C. § 102 or § 103, and only on
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`the basis ofprior artconsisting of patents orprinted publications. See 35 U.S.C. §311.
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`32.
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`Congress expressly set a time limit for filing IPR petitions. The AIA provides that
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`an IPR "may not be instituted if the petition requesting the proceeding is filed more than 1 year
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`after the date on which the petitioner ... is served with a complaint alleging infringement of the
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`patent." 35 U.S.C. §315(b).
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`33.
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`Accordingly, the defendants in Elm's patent lawsuit were required to file any IPR
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`petition regarding the patents asserted byElm onor before December 24,2015.
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`34.
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`The patent lawsuit defendants did not comply with the one-year deadline in 35
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`U.S.C. §315(b).
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`35.
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`Instead, those defendants filed petitions seeking to initiate nine IPRs on December
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`28,2015.
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`36.
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`Those IPRpetitions would have been considered untimely, but for Director Lee's
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`rule that declared that the PTO (located in Alexandria, Virginia) would consider December 24,
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`2015 to be a "Federalholidaywithinthe Districtof Columbia."
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`37.
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`Relying onDirector Lee's rule, the PTO's PTAB instituted IPR proceedings in all
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`nine cases. (See, e.g., Ex. 2 at pg. 5)
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`38.
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`As a result. Elm, as the patent ovmer, is involved in IPR case numbers IPR2016-
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`00386, IPR2016-00387, IPR2016-00388, IPR2016-00389, IPR2016-00390, IPR2016-00391,
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`IPR2016-00393, IPR2016-00394, and IPR2016-00395.
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`FIRST CLAIM FOR RELIEF
`(Administrative Procedure Act, 5 U.S.C. §§701-06)
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`39.
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`Elm realleges and incorporates by reference paragraphs 1-38, above, as if set
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`forth in full.
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`40.
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`Section 706 of the Administrative Procedure Act authorizes courts to "hold
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`unlawful and set aside agency action, findings, and conclusions found to be," among other
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`things, "arbitrary, capricious, an abuse ofdiscretion, or otherwise not in accordance with law;" or
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`"in excess ofstatutory jurisdiction, authority, orlimitations, orshort ofstatutory right." 5 U.S.C.
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`§706
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`41.
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`Director Lee's informal rule under which Tuesday, December 22, 2015 through
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`Thursday, December 24, 2015, would be deemed a "Federal holiday within the District of
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`Columbia" for purposes ofPTO filings, and providing that, as a resuh, "[a]ny action ... due on
`
`these days" would be "considered as timely" by the agency "ifthe action [wa]s taken ... on the
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`next succeeding business day on which the USPTO [wa]s open," Ex, 1, was arbitrary, capricious,
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`an abuse of discretion, not otherwise not in accordance with law, and otherwise in excess of
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`statutory jurisdiction, authority, or limitations.
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`42.
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`Director Lee's informal rule was a final agency action. The rule represents the
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`consummation ofthe agency's decisionmaking process on the issue. And the rule resulted inthe
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`determination of thelegal rights for parties with due dates on December 22—24,2015.
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`43.
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`In purporting to issue a rule requiring that a day be considered a federal holiday
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`when Congress had not designated ita federal holiday under 5 U.S.C. §6103, Director Lee acted
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`in excess of her authority.
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`44.
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`Director Lee has no statutory authority to direct that days that are not federal
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`holidays, and that Congress has not designated to be federal holidays, be deemed "PTO
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`holidays" such that, when the last day for taking an action falls on that day, "the action may be
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`taken ... on the next succeeding secular or business day" within the meaning of 35 U.S.C.
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`§ 21(b).
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`45.
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`The Patent Act instead limits Director Lee's authority to extend deadlines to
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`situations involving "postal service interruptions or emergencies." See 35 U.S.C. §21(a).
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`Director Lee's informal rule did not involve, and did not purport to address, a postal service
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`interruption or emergency.
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`46.
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`Nor do PTO regulations authorize Director Lee's informal rule. 37 C.F.R.
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`§l,10(i) authorizes the Director to "consider [certain] correspondence as filed on a particular
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`date in the Office" when the Director has "designated" that there was "an interruption or
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`emergency in Priority Mail Express® service." Director Lee's informal rule did not involve an
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`interruption or emergency in any postal service, and Director Lee did not purport to designate
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`December 22-24, 2015 a postal service interruption or emergency.
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`47.
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`Another PTO regulation, 37 C.F.R. § 1.9(h), defines "Federal holiday within the
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`District of Columbia" to include "any day, except Saturdays and Sundays, when the Patent and
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`Trademark Office is officially closed for business for the entire day.'' (Emphasis added).
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`Director Lee's rule violates that regulation as well—the PTO was not "officially closed for
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`business for the entire day" onDecember 22, 23, or 24, 2015. Infact, it was open for business on
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`all three days.
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`48.
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`Director Lee's attempted expansion of her authority beyond the bounds of 37
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`C.F.R. § 1.9(h) is particularly aggravated given the dubious validity of § 1.9(h) itself: Although
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`federal law defines "federal holiday" as encompassing days designated by Congress, § 1.9(h)
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`Case 1:16-cv-01036-LO-IDD Document 1 Filed 08/12/16 Page 10 of 14 PageID# 10
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`attempts to include as a"federal holiday within the District ofColumbia" any day when the PTO
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`merely is "officially closed." Now, under Director Lee's new rule, the PTO does not even need
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`to be "officially closed."
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`49.
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`Director Lee acted in excess of her authority and her declaration impermissibly
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`purported to extend the date to file any paper orfee due on December 22—24,2015.
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`50.
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`Director Lee does not have legal authority to extend the 1-year statutory period to
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`file an IPR provided in 35 U.S.C. § 315(b).
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`51.
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`Director Lee acted in excess of her authority when her rule directing the PTO to
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`consider December 22-24, 2015, as federal holidays extended the statutory deadline to file an
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`IPR provided by 35 U.S.C. § 315(b).
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`52.
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`Relying on Director Lee's rule that December 24, 2015 would be considered a
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`federal holiday, the PTO's PTAB instituted IPR proceedings to review patents held by Elm in
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`case numbers IPR2016-00386, IPR2016-00387, IPR2016-00388, IPR2016-00389, IPR2016-
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`00390, IPR2016-00391, IPR2016-00393, IPR2016-00394, and IPR2016-00395, despite the fact
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`that the petitions were not timely filed under 35 U.S.C. § 315(b).
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`53.
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`The PTAB's institution of those IPR proceedings threatens imminently to impair
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`Ehn's property rights to the patents covered by the IPR proceedings and reduces the value of
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`Elm's business.
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`54.
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`Elm has been harmed, and is continuing to be harmed, by the institution of the
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`imtimely IPR proceedings under the auspices of Director Lee's rule. The resultant IPRs
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`compromise Elm's ability to license and enforce its patents and reduce the value of Elm's
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`business. Elm's lawsuit to enforce its patents continues to be stayed, at least partially as a result
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`of those actions.
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`55.
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`56.
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`By reason ofthe foregoing, an actual controversy exists between the parties.
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`As Director Lee was acting outside the permitted agency framework inissuing the
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`informal rule, neither the Patent Act nor the PTO's rules provide means to directly challenge
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`Director Lee's declaration within the PTO or through judicial appeal. Elm has no adequate
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`remedy apart from this action.
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`SECOND CLAIM FOR RELIEF
`(Declaratory Judgment Act, 28 U.S.C. §§ 2201-02)
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`57.
`
`Elm realleges and incorporates by reference paragraphs 1-56, above, as if set
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`forth in full.
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`58.
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`The Declaratory Judgment Act, 28 U.S.C. §§2201-02, provides that, "[i]n the
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`case of an actual controversy within its jurisdiction," a federal court "may declare the rights and
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`other legal relations of any interested party seeking such declaration."
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`59.
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`Director Lee's informal rule under which Tuesday, December 22, 2015 through
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`Thursday, December 24, 2015, would be deemed a "Federal holiday within the District of
`
`Columbia" for purposes of PTO filings, and providing that, as a resuh, "[a]ny action ... due on
`
`these days" would be "considered as timely" by the agency "ifthe action [wa]s taken ... on the
`
`next succeeding business day on which the USPTO [wa]s open," Ex. 1, was unauthorized, in
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`excess of her authority, and unlawful.
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`60.
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`Elm has been harmed, and is continuing to be harmed, by the institution of the
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`untimely IPR proceedings under the auspices of Director Lee's rule. The resultant IPRs
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`compromise Ehn's ability to license and enforce its patents and reduce the value of Elm's
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`business. Elm's lawsuit to enforce its patents continues to be stayed, at least partially as a result
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`of those actions.
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`61.
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`By reason of the foregoing, an actual and justiciable case or controversy exists
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`between the parties.
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`62.
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`Elm is entitled to judgment declaring that Director Lee's rule requiring the PTO
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`to consider December 22-24, 2015, to be federal holidays in the District of Columbia is void,
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`invalid, and unenforceable.
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`THIRD CLAIM FOR RELIEF
`(Injunctive Relief)
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`63.
`
`Elm realleges and incorporates by reference paragraphs 1-62, above, as if set
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`forth in full.
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`64.
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`Director Lee's informal rule under which Tuesday, December 22, 2015 through
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`Thursday, December 24, 2015, would be deemed a "Federal holiday within the District of
`
`Columbia" for purposes of PTO filings, and providing that, as a result, "[a]ny action ... due on
`
`these days" would be "considered as timely" by the agency "if the action [wa]s taken ... on the
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`next succeeding business day on which the USPTO [wa]s open," Ex. 1, was unauthorized, in
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`excess of her authority, and unlawful.
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`65.
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`Elm has been harmed, and is continuing to be harmed, by the institution of the
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`untimely IPR proceedings under the auspices of Director Lee's rule. The resultant IPRs
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`compromise Elm's ability to license and enforce its patents and reduce the value of Elm's
`
`business. Elm's lawsuit to enforce its patents continues to be stayed, at least partially as a result
`
`of those actions.
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`66.
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`Elm is entitled to an injunction prohibiting Director Lee and the PTO fi*om
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`continuing to apply, enforce, or rely on, or maintaining any action based on. Director Lee's rule
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`that December 22-24, 2015, be considered a federal holiday in the District of Columbia.
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`PRAYER FOR RELIEF
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`WHEREFORE, Elm prays that the Court:
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`67.
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`Declare, adjudge, and decree that December 22-24, 2015 were not federal
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`holidays in the District of Columbia;
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`68.
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`Declare, adjudge, and decree that Director Lee acted outside and incontravention
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`of her statutory powers by requiring the PTO to consider December 22-24, 2015 to be federal
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`holidays in the District of Columbia;
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`69.
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`Declare, adjudge, and decree that Director Lee acted outside and in contravention
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`of her statutory powers by purporting to waive statutory deadlines falling on December 22-24,
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`2015;
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`70.
`
`Declare, adjudge, and decree that Director Lee acted outside and in contravention
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`ofher powers under PTO regulations by requiring the PTO to consider December 22—24, 2015 to
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`be federal holidays in the District of Columbia; and
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`71.
`
`Enjoin Director Lee and the PTO from continuing to apply, enforce, orrely on, or
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`maintaining any action based on, Director Lee's rule requiring the PTO to consider December
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`22-24,2015 to be federal holidays in the District of Columbia.
`
`72.
`
`Award such other and further relief as the Court may deem just and proper.
`
`-13-
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`Case 1:16-cv-01036-LO-IDD Document 1 Filed 08/12/16 Page 14 of 14 PageID# 14
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`DATED: August
`
`/<3 .2016
`
`Jeffrey A. Lamken
`pro hac admission to be sought
`MOLO LAMKEN LLP
`600 New Hampshire Avenue, N.W.
`Washington, D.C. 20037
`Phone: 202-556-2010
`Fax: 202-536-2010
`
`Samuel L. Walling
`pro hac admission to be sought
`ROBINS KAPLAN LLP
`800 LaSalle Avenue
`Suite 2800
`Minneapolis, MN 55402
`Phone: 612-349-8500
`Fax:612-339-4181
`
`^ack L. Hobaugh Jr., VA bar No. 82221
`CARMICHAEL IP, PLLC
`8000 Towers Crescent Drive
`Suite 1350
`Tysons Comer, VA 22182
`
`Phone: 703-646-9248
`Fax: 703-564-0886
`Email: Jack@CARMICHAELip.com
`
`Attorneys for Plaintiff
`Elm 3DS Innovations, LLC
`
`-14-
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`Page 14 of 59
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`

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`8^10/2016
`
`Case 1:16-cv-01036-LO-IDD Document 1-1 Filed 08/12/16 Page 1 of 1 PageID# 15
`iTppofNofegS Januaiy 19,
`yg patent AND TRAHKMARK OFFICE Print This Notice 1422 OG188
`2016
`' "
`
`Shutdown ofCertain Electronic Systems ofthe United States Patent and Trademark Office from Tuesday,
`December 22,2015 throughThursday, December 24,2015
`
`Shutdown of Certain Electronic Systems of the United States Patent and
`Trademark Office from Tuesday, December 22, 2015 through Thursday,
`December 24, 2015
`
`the United States Patent
`On December 22, 2015, at approximately 7:00 pm,
`and Trademark Office (USPTO) experienced a major power outage at its
`headquarters in Alexandria, Virginia, resulting in damaged equipment that
`required the subsequent shutdown of many USPTO online and information
`technology systems. The USPTO is currently estimating that these systems
`will be impacted through at least the Federal holiday on Friday, December
`25, 2015. In light of this emergency situation,
`the USPTO will consider
`each day from Tuesday, December 22, 2015, through Thursday, December 24,
`2015, to be a "Federal holiday within the District of Columbia" under
`35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196.
`Any action or fee due on these days will be considered as timely for the
`purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064,
`and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is
`taken, or the fee paid, on the next succeeding business day on which the
`USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196). A subsequent notice is
`anticipated to be issued as needed if the USPTO's systems are not fully
`operational by Monday, December 28, 2015.
`
`37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198 provide that certain
`correspondence deposited in the Priority Mail Express® service of the
`United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or
`2.198 will be considered filed on the date of deposit (as shown by the
`"date accepted" on the mailing label) with the USPS. Thus, any paper or fee
`properly deposited in the Priority Mail Express® service of the USPS on
`Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday,
`December 24, 2015,
`in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be
`considered filed on its respective date of deposit in the Priority Mail
`Express® service of the USPS (as shown by a "date accepted" on the
`mailing label).
`
`37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2) provide that patent- and
`trademark-related correspondence transmitted electronically to the USPTO
`will be considered filed in the USPTO on the date the USPTO received the
`electronic transmission. Thus, any patent- or trademark-related
`correspondence transmitted electronically to the USPTO on Tuesday,
`December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24,
`2015, will be considered filed in the USPTO on the date the USPTO received
`the electronic transmission. Patent correspondence successfully received by
`the USPTO through the Electronic Filing System (EFS-Web) and filed in
`compliance with the EFS-Web Legal Framework will receive the date indicated
`on the Acknowledgement Receipt. See the Manual of Patent Examining
`Procedure (MPEP) § 502.05 and the USPTO Web site at
`www.uspto.gov/patents/process/file/efs/guidance/New_legal_framework.jsp.
`Trademark filings properly filed through TEAS, TEASi, and ESTTA will
`receive the date indicated in the e-mail confirmation sent at the time of a
`successful filing.
`
`December 23, 2015
`
`MICHELLE K. LEE
`Under Secretary of Commerce for Intellectual Property and
`Director of the United States Patent and Trademark Office
`
`1/1
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`Page 15 of 59
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`Case 1:16-cv-01036-LO-IDD Document 1-2 Filed 08/12/16 Page 1 of 41 PageID# 16
`
`paper 14
`
`Entered; July 1,2016
`
`Trials@usnto.gov
`
`Tel: 571-272-7822
`
`Ak\hft' ^
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`MICRON TECHNOLOGY, INC., and SK HYNIX, INC.,
`Petitioner,
`
`V.
`
`ELM 3DS INNOVATIONS, LLC,
`Patent Owner.
`
`Case IPR2016-00386
`Patent 8,653,672 B2
`
`Before GLENN J. PERRY, BARBARA A. BENOIT, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. §42.108
`
`Page 16 of 59
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`

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`Case 1:16-cv-01036-LO-IDD Document 1-2 Filed 08/12/16 Page 2 of 41 PageID# 17
`
`IPR2016-00386
`Patent 8,653,672 B2
`
`I.
`INTRODUCTION
`Samsung Electronics Co., Ltd.; Micron Technology, Inc.; and SK
`Hynix Inc. (collectively "Petitioner") filed a Petition for interpartes review
`of claims 17,18,22, 84,95, 129-132, 143-146,151, and 152 of U.S. Patent
`No. 8,653,672 B2 (Ex. 1001, "the '672 patent" or "the challenged patent").
`(Paper 4, "Pet."). Patent Owner, Elm 3DS Innovations, LLC, filed a
`Preliminary Response to the Petition (Paper 10, "Prelim. Resp.").
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`interpartes review may be authorized only if"the information presented in
`the petition ... and any [preliminary] response ... shows that there is a
`reasonable likelihood that the petitionerwould prevail with respectto at least
`1 of the claims challenged in the petition." 35 U.S.C. § 314(a).
`Upon consideration of the information presented in the Petition and
`Preliminary Response, we determine that the information presented shows
`
`there is a reasonable likelihood that Petitioner would prevail in establishing
`the unpatentability of at least one of claims 17, 18, 22, 84, 95, 129-132, 145,
`146, and 152 ("the challenged claims"). Forreasons explained below, we do
`not institute an interpartes review withrespect to claims 143, 144, and 151,
`
`which have been disclaimed by the Patent Owner.
`
`A. Related Proceedings
`As required by 37 C.F.R. § 42.8(b)(2), eachparty identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 1-2; Paper9 (Patent Owner's Mandatory
`Notices). Petitioner indicates that the challenged patent is involved in the
`following United States District Court proceedings: Elm 3DSInnovations,
`
`Page 17 of 59
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`

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`Case 1:16-cv-01036-LO-IDD Document 1-2 Filed 08/12/16 Page 3 of 41 PageID# 18
`
`IPR2016-00386
`Patent 8,653,672 B2
`
`LLC V. SamsungElecs. Co., No. l:14-cv-01430 (D. Del.); Elm 3DS
`Innovations, LLC v. Micron Tech., Inc., No. l:14-cv-01431 (D. Del.); and
`Elm 3DSInnovations, LLCv. SKHynix Inc., No. l:14-cv-01432 (D. Del.).
`Additionally, patents related to the challenged patent are the subjects
`ofpetitions filed inIPR2016-00387 (U.S. Patent No. 8,841,778); IPR2016-
`00388 and IPR2016-00393 (U.S. Patent No. 7,193,239); IPR2016-00389
`(U.S. Patent No. 8,035,233); IPR2016-00390 (U.S. Patent No. 8,629,542);
`IPR2016-00391 (U.S. Patent No. 8,796,862); IPR2016-00394 (U.S. Patent
`No. 8,410,617); IPR2016-00395 (U.S. Patent No. 7,504,732); IPR2016-
`00687 (U.S. Patent No. 8,928,119); IPR2016-00691 (U.S. Patent No.
`7,474,004); IPR2016-00703 (U.S. Patent No. 8,791,581); IPR2016-00706
`(U.S. Patent No. 8,791,581); IPR2016-00786 (U.S. Patent No. 8,933,570);
`IPR2016-00708 (U.S. Patent No. 8,907,499); and IPR2016-00770 (U.S.
`
`Patent No. 8,907,499).
`
`B. Statutory DisclaimerofClaims 143, 144, and 151
`ofthe Challenged Patent
`"The patent ovmer may file a statutory disclaimer under 35 U.S.C.
`253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or
`more claims inthepatent. No interpartes review will be instituted based on
`disclaimed claims." 37 C.F.R. § 42.107(e). After Petitioner filed its
`Petition, PatentOwnerfiled a statutory disclaimer of claims 143, 144, and
`151 of the challenged patent under35 U.S.C. § 253(a). Prelim. Resp. 50;
`
`Ex. 2140. The disclaimer. Exhibit 2140, is in compliance with 37 C.F.R.
`
`§ 1.321(a).
`
`Page 18 of 59
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`

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`Case 1:16-cv-01036-LO-IDD Document 1-2 Filed 08/12/16 Page 4 of 41 PageID# 19
`
`IPR2016-00386
`Patent 8,653,672 B2
`
`Accordingly, we do not institute an inter partes review ofdisclaimed
`
`claims 143, 144, and 151.
`
`C Time Bar under 35 U.S.C. § 315(b)
`Patent Owner argues that Petitioner is time-barred under 35 U.S.C.
`§ 315(b) because two ofthe real-parties-in-interest, Samsung Austin
`Semiconductor, LLC ("SAS") and Samsung Semiconductor, Inc. ("SSI"),
`were served with a complaint alleging infringement of the challenged patent
`on December 24,2014. Prelim. Resp. 5-10; see Pet. 1 (identifying real
`parties-in-interest). Patent Owner contends that the Petition was filed on
`December 28, 2015, which was four days after the statutory one year period
`for SAS and SSI had expired. Id. at 6; see Paper 5 (According filing date of
`
`December 28, 2015 to the Petition).
`
`In the Petition, Petitioner explained that it filed its Petition on
`
`December