Trials@uspto.gov
`571-272-7822
`
`
`Paper 25
`Entered: May 10, 2019
`
`
`
`
`
`
`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.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-00333 (Patent 7,256,486 B2)
`_______________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., and
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-00522 (Patent 7,524,087 B1)
`_______________
`
`
`
`
`571-272-7822
`
`
`Paper 25
`Entered: May 10, 2019
`
`
`
`
`
`
`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.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-00333 (Patent 7,256,486 B2)
`_______________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., and
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-00522 (Patent 7,524,087 B1)
`_______________
`
`
`
`
`
`IPR2018-00333 (Patent 7,256,486 B2)
`IPR2018-00522 (Patent 7,524,087 B1)
`IPR2018-00965 (Patent 7,919,787 B2)
`
`
`NICHIA CORPORATION and
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-00965 (Patent 7,919,787 B2)1
`_______________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion to Terminate with Respect to
`Everlight Electronics Co., Ltd.
`35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`1 This Order addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order to be entered in
`each proceeding. The Parties are not authorized to use this joint heading and
`filing style in their papers.
`
` 2
`
`
`
`
`
`
`
`IPR2018-00333 (Patent 7,256,486 B2)
`IPR2018-00522 (Patent 7,524,087 B1)
`IPR2018-00965 (Patent 7,919,787 B2)
`
`
`We instituted trial in each of the above-identified proceedings
`(IPR2018-00333, Paper 9 (dated June 21, 2018); IPR2018-00522, Paper 10
`(dated July 27, 2018); and IPR2018-00965, Paper 15 (dated October 29,
`2018)). On April 25, 2019, the parties filed Joint Motions to Terminate in
`each of these proceedings (collectively “Joint Motions to Terminate”)
`requesting that these proceedings be terminated with respect to Everlight
`Electronics Co., Ltd. (“Everlight”) pursuant to 35 U.S.C. § 317(a). Paper
`30.2 The parties represent that the other petitioners in these proceedings
`(Seoul Semiconductor Co., Ltd., Seoul Semiconductor, Inc., and Cree, Inc.
`in IPR2018-00333; Seoul Semiconductor Co., Ltd. and Seoul
`Semiconductor, Inc. in IPR2018-00522; and Nichia Corporation in
`IPR2018-00965) intend to continue with each of these proceedings. Id.
`With the Joint Motions to Terminate, Everlight and Patent Owner also filed
`copies of a written settlement agreement terminating the underlying district
`court litigation between them. Ex. 2205.3 In each of these proceedings, the
`parties filed a Joint Request that the settlement agreement be kept
`confidential. Paper 31.4
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2018-00333.
`Patent Owner filed a similar Joint Motion to Terminate in IPR2018-00522
`(Paper 30) and IPR2018-00965 (Paper 22).
`3 For purposes of expediency, we cite to the copy of the written settlement
`agreement filed in IPR2018-00333. Patent Owner also filed a copy of the
`written settlement agreement in each of IPR2018-00522 (Ex. 2205) and
`IPR2018-00965 (Ex. 2205).
`4 Patent Owner filed similar Joint Requests in IPR2018-00522 (Paper 31)
`and IPR2018-00965 (Paper 23).
`
` 3
`
`
`
`
`
`
`
`IPR2018-00333 (Patent 7,256,486 B2)
`IPR2018-00522 (Patent 7,524,087 B1)
`IPR2018-00965 (Patent 7,919,787 B2)
`
`
`These proceedings have not resulted in a final decision on the merits.
`Accordingly, these proceedings are terminated with respect to Everlight.
`35 U.S.C. § 317(a) (“An inter partes review instituted under this chapter
`shall 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.”).
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate the above-identified
`proceedings with respect to Everlight Electronics Co., Ltd. are granted;
`FURTHER ORDERED that the Joint Requests that the settlement
`agreements (IPR2018-00333, Ex. 2205; IPR2018-00522, Ex. 2205; and
`IPR2018-00965, Ex. 2205) be treated as business confidential information
`and be kept separate from the files of the above-identified proceedings and
`from the files of the involved patents under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c), are granted; and
`FURTHER ORDERED that the above-identified proceedings will
`continue with Seoul Semiconductor Co., Ltd., Seoul Semiconductor, Inc.,
`and Cree, Inc. as the named petitioner in IPR2018-00333, with Seoul
`Semiconductor Co., Ltd. and Seoul Semiconductor, Inc. as the named
`petitioner in IPR2018-00522, and with Nichia Corporation as the named
`petitioner in IPR2018-00965.
`
`
`
` 4
`
`
`
`
`
`
`
`IPR2018-00333 (Patent 7,256,486 B2)
`IPR2018-00522 (Patent 7,524,087 B1)
`IPR2018-00965 (Patent 7,919,787 B2)
`
`Petitioner:
`
`Patrick Colsher
`patrick.colsher@shearman.com
`
`Matt Berkowitz
`matt.berkowitz@shearman.com
`
`Eric Lucas
`eric.lucas@shearman.com
`
`Thomas Makin
`thomas.makin@shearman.com
`
`
`Patent Owner:
`
`Wayne Helge
`whelge@dbjg.com
`
`James Wilson
`jwilson@dbjg.com
`
`Aldo Noto
`anoto@davidsonberquist.com
`
` 5
`
`
`
`
`
`
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