`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SEOUL SEMICONDUCTOR CO., LTD., SEOUL SEMICONDUCTOR, INC.,
`CREE, INC., AND EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioners,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`
`Case IPR2018-003331
`Patent 7,256,486 B2
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`1 Cree, Inc., who filed a Petition in IPR2018-01205, and Everlight Electronics Co.,
`Ltd., who filed a Petition in IPR2018-01225, have been joined as petitioners in this
`proceeding.
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`Authorization for this motion was given by the Board via email sent to the
`
`parties on April 24, 2019. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74,
`
`Patent Owner Document Security Systems, Inc. (“Patent Owner”) and Petitioner
`
`Everlight Electronics Co., Ltd. (“Petitioner Everlight”) jointly request termination
`
`of the inter partes review of U.S. Patent No. 7,256,486 (“the ’486 Patent”), Case
`
`No. IPR2018-00333, as to the Petitioner Everlight.
`
`I.
`
`Statement of Facts
`The Patent Owner and Petitioner Everlight have settled their disputes, and
`
`have agreed to terminate this inter partes review with respect to the Petitioner
`
`Everlight. A settlement agreement has been made in writing between Patent
`
`Owner and Petitioner Everlight, and a true copy of the Settlement Agreement is
`
`being filed concurrently herewith electronically with access to “Board Only” as
`
`confidential Exhibit 2205. The Settlement Agreement addresses: (i) a civil action
`
`brought by Patent Owner against Everlight in the Central District of California
`
`(Case No. 2:17-cv-04273), and (ii) any pending petitions for Inter Partes Review.
`
`Pursuant to the Settlement Agreement, a Stipulation and Joint Motion to Dismiss
`
`with Prejudice Pursuant to Rule 41(a) was filed by the Patent Owner and Petitioner
`
`Everlight with respect to Case No. Case No. 2:17-cv-04273 on April 23, 2019
`
`(Exhibit 2206), and an Order of Dismissal with Prejudice was issued on the same
`
`day (Exhibit 2207), which dismissed the civil action with prejudice. No other
`
`2
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`litigation or proceeding between the Patent Owner and Petitioner Everlight
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`involving the subject patent is pending or contemplated for the foreseeable future.
`
`Contemporaneously with this Joint Motion to Terminate, the Patent Owner
`
`and Petitioner Everlight are filing a Joint Motions to Terminate in IPR2018-00522
`
`and IPR2018-00965 as to Petitioner Everlight.
`
`The Patent Owner and Petitioner Everlight certify that there are no other
`
`collateral agreements or understandings made
`
`in connection with, or
`
`in
`
`contemplation of, the termination of this inter partes review with respect to the
`
`Petitioner Everlight.
`
`The petitioner Seoul Semiconductor Co. Ltd. and Seoul Semiconductor, Inc.
`
`have not stated their position, but petitioner Cree, Inc. has indicated that it does not
`
`oppose this Motion.
`
`The Patent Owner and Petitioner Everlight desire that the Settlement
`
`Agreement be maintained as business confidential information under 35 U.S.C.
`
`317(b), and a separate joint request to that effect is being filed pursuant to 37
`
`C.F.R. § 42.74(c) concurrently herewith. In that filing, the Patent Owner and
`
`Petitioner Everlight requested that the Settlement Agreement (confidential Exhibit
`
`2205) (i) be treated as business confidential information, (ii) be maintained
`
`separate from the publicly available file of the involved patent, and (iii) be made
`
`available only to Federal Government agencies on written request served on Patent
`
`3
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`Owner and Petitioner Everlight, or to persons showing good cause on written
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`request served on Patent Owner and Petitioner Everlight, pursuant to 35 U.S.C. §
`
`317(b) and 37 C.F.R. § 42.74(c).
`
`A joint motion to terminate generally “must (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
`
`(P.T.A.B. July 28, 2014). Requirement (1) is addressed in Section II below.
`
`As for requirements (2) and (4), the table below identifies all parties in
`
`district court litigations that involve or involved the ’486 Patent, and related
`
`litigations identified in Patent Owner’s mandatory notices, and discusses the
`
`current status of these litigations with respect to each party to the litigation. See
`
`Heartland Tanning, Inc., Paper No. 26, at *2.
`
`
`
`Case Caption
`
`Document Security Systems, Inc.
`v. Seoul Semiconductor Co. Ltd.
`et al., Case No. 2:17-cv-00308
`(E.D. Tex.)
`Document Security Systems, Inc.
`v. Cree, Inc., Case No. 2:17-cv-
`
`Patents
`Asserted
`6,949,771
`7,256,486
`7,524,087
`
`6,949,771
`7,256,486
`
`4
`
`Current Status
`
`Voluntary dismissal on June 7,
`2017
`
`Voluntary dismissal on June 8,
`2017
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`00309 (E.D. Tex.)
`
`Document Security Systems, Inc.
`v. Everlight Electronics Co. Ltd.
`et al., Case No. 2:17-cv-00310
`(E.D. Tex.)
`Document Security Systems, Inc.
`v. Seoul Semiconductor Co. Ltd.
`et al., Case No. 8:17-cv-00981
`(C.D. Cal.)
`Document Security Systems, Inc.
`v. Cree, Inc., Case No. 2:17-cv-
`04263 (C.D. Cal.)
`
`Document Security Systems,
`Inc. v. Everlight Electronics
`Co. Ltd. et al., Case No. 2:17-
`cv-04273 (C.D. Cal.)
`Document Security Systems, Inc.
`v. OSRAM GmbH, et al., Case
`No. 2:17-cv-05184 (C.D. Cal.)
`
`Document Security Systems, Inc.
`v. Lite-On, Inc., et al., Case 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.)
`
`7,279,355
`7,524,087
`7,919,787
`6,949,771
`7,256,486
`7,524,087
`7,919,787
`6,949,771
`7,256,486
`7,524,087
`
`6,949,771
`7,256,486
`7,524,087
`7,919,787
`6,949,771
`7,256,486
`7,524,087
`7,919,787
`6,949,771
`7,256,486
`7,524,087
`7,652,297
`6,949,771
`7,256,486
`7,524,087
`6,949,771
`7,256,486
`7,524,087
`7,652,297
`7,919,787
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`Voluntary dismissal on June 8,
`2017
`
`Joint Stipulation to Stay Case
`filed on July 26, 2018 / Order
`on July 27 2018
`
`Joint Stipulation to Stay Case
`filed on July 26, 2018 / Order
`on July 27 2018
`
`Order of Dismissal with
`Prejudice issued on April 23,
`2019
`
`dismissed with prejudice by
`Court Order on March 14,
`2018
`
`Joint Stipulation to Stay Case
`filed on July 26, 2018 / Order
`on July 27 2018
`Motion to Stay Case Granted
`on July 24, 2018
`
`As for requirements (3) and (4), the status of each inter partes review
`
`proceeding for the ’486 Patent, and related inter partes review proceedings
`
`identified in Patent Owner’s mandatory notices, is provided below:
`
`5
`
`
`
`IPR No.
`IPR2018-00265
`
`Patent at Issue
`6,949,771
`
`Joint Motion to Terminate Proceeding
`
`
`
`Petitioner(s)
`Seoul Semiconductor
`Co., Ltd., Seoul
`Semiconductor, Inc., and
`Everlight Electronics
`Co., Ltd.
`
`IPR2018-00333
`
`7,256,486
`
`IPR2018-00522
`
`7,524,087
`
`IPR2018-00965
`
`7,919,787
`
`Seoul Semiconductor
`Co., Ltd., Seoul
`Semiconductor, Inc., and
`Everlight Electronics
`Co., Ltd.
`
`Seoul Semiconductor
`Co., Ltd., Seoul
`Semiconductor, Inc., and
`Everlight Electronics
`Co., Ltd.
`
`Nichia Corporation and
`Everlight Electronics
`Co., Ltd.
`
`IPR2018-00966
`
`7,652,297
`
`Nichia Corporation
`
`IPR2018-01165
`
`7,524,087
`
`Nichia Corporation
`
`IPR2018-01166
`
`7,256,486
`
`Nichia Corporation
`
`IPR2018-01167
`
`6,949,771
`
`Nichia Corporation
`
`IPR2018-01205
`
`7,256,486
`
`Cree, Inc.
`
`6
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`Current Status
`Final Written
`Decision issued on
`April 18, 2019
`
`IPR instituted –
`Oral Hearing held
`on January 31,
`2019
`
`IPR instituted –
`Oral Hearing held
`on April 4, 2019
`
`IPR instituted –
`Patent Owner’s
`Response filed on
`January 28, 2019
`IPR instituted –
`Patent Owner’s
`Response filed on
`March 18, 2019
`IPR instituted –
`Patent Owner’s
`Response filed on
`March 11, 2019
`IPR instituted –
`Patent Owner’s
`Response filed on
`March 11, 2019
`IPR instituted
`denied on
`November 30, 2018
`Terminated/Joined
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`
`IPR2018-01220
`
`7,256,486
`
`Cree, Inc.
`
`IPR2018-01221
`
`7,524,087
`
`Cree, Inc.
`
`IPR2018-01222
`
`6,949,771
`
`Cree, Inc.
`
`IPR2018-01223
`
`6,949,771
`
`Cree, Inc.
`
`IPR2018-01225
`
`7,256,486
`
`IPR2018-01226
`
`7,524,087
`
`IPR2018-01244
`
`6,949,771
`
`IPR2018-01260
`
`7,919,787
`
`Everlight Electronics
`Co., Ltd.
`
`Everlight Electronics
`Co., Ltd.
`
`Everlight Electronics
`Co., Ltd.
`
`Everlight Electronics
`Co., Ltd.
`
`IPR2019-00397
`
`6,949,771
`
`Nichia Corporation
`
`IPR2019-00398
`
`6,949,771
`
`Nichia Corporation
`
`IPR2019-00506
`
`
`
`7,256,486
`
`Cree, Inc.
`
`
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`with IPR2018-
`00333
`IPR institution
`denied on
`November 19, 2018
`IPR institution
`denied on
`November 14, 2018
`IPR institution
`denied on
`November 14, 2018
`IPR institution
`denied on
`November 16, 2018
`Terminated/Joined
`with IPR2018-
`00333
`Terminated/Joined
`with IPR2018-
`00522
`Terminated/Joined
`with IPR2018-
`00265
`Terminated/Joined
`with IPR2018-
`00965
`IPR institution
`denied on April 19,
`2019
`IPR institution
`denied on April 15,
`2019
`Petition filed on
`December 28, 2018
`
`7
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`II.
`
`Brief Explanation as to Why Termination is Appropriate
`The applicable statute provides that an inter partes review proceeding “shall
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`be terminated with respect to any petitioner upon the joint request of the petitioner
`
`and the patent owner, unless the Office has decided the merits of the proceeding
`
`before the request for termination is filed.” 35 U.S.C. § 317(a).
`
`The Board instituted this inter partes review on June 21, 2018, Patent Owner
`
`filed a Patent Owner Response on September 21, 2018, Everlight Electronics Co.,
`
`Ltd., who filed a Petition in IPR2018-01225, was joined as a petitioner in this
`
`proceeding on September 27, 2018, Petitioners filed a Reply on December 5, 2018,
`
`Patent Owner filed a Sur-Reply on January 3, 2019, and the Board held an oral
`
`argument on January 31, 2019. Because the Board has not decided the merits of
`
`the proceeding, this motion should be granted in accordance with Section 317.
`
`Moreover, as the Office Patent Trial Practice Guide acknowledges, “[t]here
`
`are strong public policy reasons to favor settlement between parties to a[n] [inter
`
`partes review] proceeding. . . . The Board expects that a proceeding will terminate
`
`after the filing of a settlement agreement, unless the Board has already decided the
`
`merits of the proceeding . . . .” 77 Fed. Reg., 48,756, 48,768 (Aug. 14, 2012).
`
`Termination of this inter partes review as to Petitioner Everlight would save the
`
`parties from significant further expenditure of resources, and no public interest
`
`factors weigh against termination of this proceeding as to Everlight. Indeed,
`
`8
`
`
`
`Joint Motion to Terminate Proceeding
`
`
`maintaining this proceeding as to Petitioner Everlight would serve as a disincentive
`
`IPR2018-00333
`Patent 7,256,486 B2
`
`for parties in similar situations to settle if it is perceived that an inter partes review
`
`would continue in spite of a settlement. For these reasons, the Board’s expectation
`
`that such inter partes reviews should be terminated is well justified here.
`
`For the foregoing reasons, this inter partes review should be terminated with
`
`respect to Petitioner Everlight.
`
`III. Further Participation
`Patent Owner will continue to participate in this proceeding regardless of
`
`whether this Joint Motion to Terminate is granted as to Petitioner Everlight.
`
`Pursuant to an Order to be issued by the Board granting this Joint Motion to
`
`Terminate, Petitioner Everlight will cease participating in this proceeding.
`
`Dated: April 25, 2019
`
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Dr., Ste 500
`McLean, VA 22102
`Tel: (571)765-7700
`whelge@dbjg.com
`
`Attorneys for Patent Owner
`
`
`Respectfully submitted,
`
`
`
`/s/ John F. Rabena
`John F. Rabena Reg. #38,584
`
`Sughrue Mion, PLLC
`2100 Pennsylvania Ave., N.W. Suite 800
`Washington, DC 20037
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`jrabena@sughrue.com
`
`Attorney for Petitioner Everlight
`
`9
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies service on the parties pursuant to 37 C.F.R.
`
`§ 42.6(e) and agreement of counsel, by electronic (e-mail) delivery of a true copy
`
`of
`
`the
`
`foregoing
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74.
`
`Exhibit 2206 Stipulation and Joint Motion to Dismiss with Prejudice Pursuant to
`Rule 41(a), Civil Action No. 2:17-cv-04273, C.D. Cal., filed April
`23, 2019
`Exhibit 2207 Order of Dismissal with Prejudice, Civil Action No. 2:17-cv-04273,
`C.D. Cal., issued April 23, 2019
`
`
`
`The Confidential Exhibit 2205 is being provided to the Board only.
`
`By: /s/ Wayne M. Helge
` Wayne M. Helge (Reg. No. 56,905)
` Attorney for Patent Owner
`
`
`
`Dated: April 25, 2019
`
`
`
`
`
`
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