`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`NICHIA CORPORATION,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________________
`Case No. IPR2018-01165
`U.S. Patent No. 7,524,087
`____________________
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. § 90.2, Petitioner
`
`Nichia Corporation (“Nichia”) hereby provides notice that it appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Final Written Decision of
`
`the Patent Trial and Appeal Board (the “Board”) entered on December 10, 2019, in
`
`IPR2018-01165 (Paper 28) during inter partes review of U.S. Patent 7,524,087
`
`(“the ’087 patent”). This notice is timely pursuant to 37 C.F.R. § 90.3 because it is
`
`filed within 63 days of the Board’s denial of Nichia’s request for rehearing.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Nichia’s issues on appeal
`
`include, but are not limited to, the following, as well as any underlying
`
`findings, determinations, orders, decisions, rulings, opinions, or other related issues:
`
`(i) Whether the Board’s determination that claims 1 and 6–19 of the ’087
`
`patent are not unpatentable over U.S. Patent No. 6,653,661 (“Okazaki”) in
`
`view of Japanese Patent Application Publication No. 2001-118868
`
`(“Kyowa”) was arbitrary, capricious, an abuse of discretion, or otherwise
`
`not in accordance with law and further was unsupported by substantial
`
`evidence;
`
`(ii) Whether the Board’s determination that claims 1, 6, and 9–19 of the ’087
`
`patent are not unpatentable over Okazaki in view of either Japanese
`
`Design Patent Registration No. 1176348 (“Kamada”) or U.S. Patent No.
`
`4,959,761 (“Critelli”) was arbitrary, capricious, an abuse of discretion, or
`
`1
`
`
`
`
`
`otherwise not in accordance with law and further was unsupported by
`
`substantial evidence;
`
`(iii) Whether the Board’s determination that claims 7 and 8 of the ’087 patent
`
`are not unpatentable over Okazaki in view of either Kamada or Critelli, in
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`further view of U.S. Patent Application Publication No. 2008/0041625
`
`(“Cheong”) was arbitrary, capricious, an abuse of discretion, or otherwise
`
`not in accordance with law and further was unsupported by substantial
`
`evidence;
`
`(iv) Whether the Board’s determination that claims 9–19 of the ’087 patent
`
`were not shown to be unpatentable over U.S. Patent Application
`
`Publication No. 2004/0135156 (“Takenaka”) in view of Kyowa, Kamada,
`
`or Critelli was arbitrary, capricious, an abuse of discretion, or otherwise
`
`not in accordance with law and further was unsupported by substantial
`
`evidence;
`
`(v) Whether the Board’s determination that claims 1, 6, and 9–19 of the ’087
`
`patent were not shown to be unpatentable over Kamada was arbitrary,
`
`capricious, an abuse of discretion, or otherwise not in accordance with
`
`law and further was unsupported by substantial evidence; and
`
`(vi) Whether the Board’s determination that claims 7 and 8 of the ’087 patent
`
`were not shown to be unpatentable over Kamada in view of Kyowa or
`
`2
`
`
`
`
`
`Cheong was arbitrary, capricious, an abuse of discretion, or otherwise not
`
`in accordance with law and further was unsupported by substantial
`
`evidence.
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
`
`filed with the Director of the United States Patent and Trademark Office.
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`Simultaneous with this submission, a copy of this Notice is being filed with the
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`Patent Trial and Appeal Board.
`
`In addition, consistent with Federal Circuit Rules 15(a), 25(b)(1), and 52, a
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`copy of this Notice, along with the required docketing fees, is being filed with the
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`Clerk’s office of the United States Court of Appeals for the Federal Circuit.
`
`Dated: September 11, 2020
`
`Respectfully submitted,
`
`Shearman & Sterling LLP
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`
`Lead Counsel for Petitioner Nichia
`Corporation
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing Petitioner’s Notice of
`
`Appeal was served on September 11, 2020, via electronic mail on counsel of
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`record for Patent Owner as follows:
`
`Wayne M. Helge (Reg. No. 56,905)
`James T. Wilson (Reg. No. 41,439)
`Aldo Noto (Reg. No. 35,628)
`Davidson Berquist Jackson & Gowdey L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`esong@dbjg.com
`
`In accordance with 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), the undersigned
`
`hereby certifies that, in addition to being filed electronically through the Board’s
`
`E2E System, the foregoing Petitioner’s Notice of Appeal was filed and served by
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`Express Mail on September 11, 2020, with the Director of the United States Patent
`
`and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`In accordance with 37 C.F.R. § 90.2(a)(2), the undersigned hereby certifies
`
`that on September 11, 2020, a true and correct copy of the foregoing Petitioner’s
`
`Notice of Appeal was filed electronically with the Clerk’s Office of the United
`
`States Court of Appeals for the Federal Circuit via CM/ECF.
`
`
`
`
`
`/Patrick R. Colsher/
`Patrick R. Colsher (Reg. No. 74,955)
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`Fax: (646) 848-7708
`Email: patrick.colsher@shearman.com
`
`Lead Counsel for Petitioner Nichia
`Corporation
`
`
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