`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Entered: September 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01244
`Patent 6,949,771 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)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`I. INTRODUCTION
`A. Background
`Everlight Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 1–9 (the “challenged claims”)
`of U.S. Patent 6,949,771 B2 (Ex. 1001, the “’771 patent”). 35 U.S.C. § 311.
`Petitioner also filed a Motion for Joinder with Seoul Semiconductor Co. Ltd. v.
`Document Security Systems, Inc., Case IPR2018-00265 (“the Seoul IPR”). Paper 3
`(“Mot.”). The petitioners in the Seoul IPR — Seoul Semiconductor Co., Ltd. and
`Seoul Semiconductor, Inc. (“Seoul Petitioner”) — oppose the Motion for Joinder.
`Paper 10 (“Seoul Opp.”). Document Security Systems, Inc. (“Patent Owner”) also
`opposes the Motion for Joinder. Paper 9, (“Doc. Opp.”). Petitioner timely filed a
`Reply to the oppositions. Paper 11, (“Reply”). Patent Owner timely filed a
`Preliminary Response (Paper 14, “Prelim. Resp.”). 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 the
`challenged claims 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 5, 2–3.
`
` 2
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`The parties indicate that the following inter partes reviews involve the ’771
`patent: IPR2018-00265 (“the Seoul IPR”), IPR2018-01167, IPR2018-01222, and
`IPR2018-01223. Id. at 3–4. The parties indicate that the following inter partes
`reviews are related to the present inter partes review: IPR2018-00522, IPR2018-
`00333, IPR2018-00965, IPR2018-00966, IPR2018-01165, IPR2018-01166,
`IPR2018-01205, IPR2018-01220, IPR2018-01221, IPR2018-01226, IPR2018-
`01225, and IPR2018-01260. Id.
`In the Seoul IPR, we instituted an inter partes review of the challenged
`claims under 35 U.S.C. § 103 on the following grounds:
`Reference[s] 1
`Claims challenged
`1–9
`
`Sharp
`
`Stanley
`
`Sharp and Konishi
`
`Stanley and Konishi
`
`1–8
`
`9
`
`9
`
`Seoul Semiconductor Co. Ltd. v. Document Security Systems, Inc., Case IPR2018-
`00265, slip op. at 2–3 (PTAB June 7, 2018) (Paper 8) (“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. 16–67,
`
`
`1 Japanese Pat. Pub. JP7-235696, Sept. 5, 1995 (Ex. 1004) (“Sharp”); Japanese Pat.
`Pub. 11-284233, Oct. 15, 1999 (Ex. 1005) (“Stanley”); U.S. Patent 5,635,115, June
`3, 1997 (Ex. 1006) (“Konishi”).
`
` 3
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`with Seoul Dec. 6–11. Indeed, Petitioner contends that the Petition “is
`substantively identical to the petition in Seoul Semiconductor’s IPR.” Mot. 2; see
`also, id. at 5. Petitioner acknowledges that the Petition relies on a different expert,
`however, Petitioner asserts that “Everlight’s expert reviewed and agreed with the
`expert declaration supporting SSC’s IPR, and Everlight’s expert declaration is
`substantially the same as SSC’s expert declaration.” Id. at 6.
`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 1–5; see also Doc. Opp. 1–3.
`Patent Owner asserts that Petitioner “was first served with a complaint alleging
`infringement of the ’771 patent on April 26, 2017, more than one year before
`Everlight filed its petition for IPR on June 12, 2018.” Prelim. Resp. 1. Thus,
`Patent Owner argues that under 35 U.S.C. § 315 (b) Everlight’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 in the
`present case. 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.” Patent Owner
`acknowledges as much in its Opposition to the Motion for Joinder. Doc. Opp. 3
`
` 4
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`(“Everlight can only participate in an IPR against the ’771 patent through
`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 1–9 would have
`been obvious over Sharp, (b) claims 1–8 would have been obvious over Stanley,
`(c) claim 9 would have been obvious over Sharp and Konishi, and (d) claim 9
`would have been obvious over Stanley and Konishi. See Seoul Dec. 6–11.
`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 in this proceeding was accorded a filing date of June 12, 2018.
`See Paper 8. Petitioner filed a Motion for Joinder with the Petition. The Seoul IPR
`was instituted on June 7, 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
`
` 5
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`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 though they rely on a different expert, they assert
`that “Everlight’s expert declaration is substantially the same as SSC’s expert
`declaration.” See id. at 6. Indeed, the Petition is nearly identical to the petition
`filed by 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 7–8.
`Petitioner agrees to assume a complete “‘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. at 7. 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. Concerning
`their expert, Petitioner states that “[a]ssuming SSC does not terminate its IPR
`before its expert is deposed, Everlight agrees to rely entirely on, and be bound by,
`the expert declaration(s) and deposition in SSC IPR.” Id. at 6.
`Patent Owner argues that joinder is not appropriate as it “will complicate the
`proceeding.” Doc. Opp. 3. Patent Owner argues that Petitioner will include its
`“unique positions” in the filings and will otherwise act in a manner “inconsistent
`
` 6
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`with an ‘understudy’ role.” Id. at 4. Seoul Petitioner makes similar arguments.
`See Seoul Opp. 3–4.
`Petitioner responds that it “will be a ‘complete understudy’ or a ‘silent
`understudy,’ and do nothing unless and until SSC abandons its IPR.” Reply 2.
`In view of Petitioner’s submission that it will “do nothing unless and until
`SSC abandons its IPR,” we see no reason to believe that Petitioner’s involvement
`will complicate this matter. Id.
`Patent Owner also argues that “there are good policy reasons for denying
`copy-cat joinder petitions from a time-barred party.” Doc. Opp. 4. However,
`Patent Owner’s policy reasons do not overcome the clear legislative intent apparent
`from the statutory language expressly permitting joinder of a time-barred party.
`See 35 U.S.C. § 315 (b).
`Patent Owner also argues that before joinder can be decided “[t]he USPTO
`[must] . . . provide[] . . . rules governing how an IPR should be conducted post-SAS
`where there is a request for joinder that is opposed by another petitioner.” Doc.
`Opp. 5. Patent Owner explains that this is because “joinder could upset choices
`made by a petitioner.” Id. at 6. However, here where the Petitioner agrees to “do
`nothing unless and until SSC abandons its IPR,” we find unpersuasive Patent
`Owner’s argument that “joinder could upset choices made by a petitioner.” Reply
`2; Doc. Opp. 6.
`We agree with Petitioner that joinder with the Seoul IPR is appropriate
`under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.
`
`
` 7
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of
`claims 1–9 of the ’771 patent is instituted in IPR2018-01244;
`FURTHER ORDERED that the Motion for Joinder with IPR2018-00265 is
`granted, and Everlight Electronics Co., Ltd. is joined as a petitioner in IPR2018-
`00265;
`FURTHER ORDERED that IPR2018-01244 is terminated under 37 C.F.R.
`§ 42.72, and all further filings shall be made only in IPR2018-00265;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for trial in
`IPR2018-00265 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling Order in
`place for IPR2018-00265 (Paper 9), as modified by the Notice of Joint Stipulation
`to Modify the Scheduling Order (Paper 18), remains unchanged;
`FURTHER ORDERED that in IPR2018-00265, 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
`
` 8
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`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 IPR2018-00265 shall be
`changed to reflect joinder of Everlight Electronics Co., Ltd. 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 IPR2018-00265.
`
`
`
` 9
`
`
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`
`
`
`EXAMPLE CAPTION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., and
`EVERLIGHT ELECTRONICS, LTD.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-002652
`Patent 6,949,771 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`
`2 Everlight Electronics Co., Ltd., who filed a Petition in IPR2018-01244, has been
`joined as a petitioner in this proceeding.
`
`
`10
`
`
`
`
`
`IPR2018-01244
`Patent 6,949,771 B2
`
`PETITIONER:
`John Rabena
`William Mandir
`SUGHRUE MION, PLLC
`jrabena@sughrue.com
`wmandir@sughrue.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
`
`
`
`
`
`
`
`
`11
`
`
`
`