`571-272-7822
`
`
`
`
`
`
`
`Paper 35
`Date: November 18, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2018-01165
`Patent 7,524,087 B1
`____________
`
`
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Granting Request for Adverse Judgment
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`IPR2018-01165
`Patent 7,524,087 B1
`Nichia Corporation (“Petitioner”) challenged the patentability of
`claims 1–19 of U.S. Patent No. 7,524,087 B1 (Ex. 1001, “the ’087 patent” or
`“the challenged patent”), owned by Document Security Systems, Inc.
`(“Patent Owner”). Paper 1 (“Petition”). We instituted review and in due
`course determined the Petitioner had shown by a preponderance of the
`evidence that claims 1 and 6–8 were unpatentable but had not shown that
`claims 2–5 and 9–19 were unpatentable. Paper 28 (“Final Written Decision”
`or “Final Dec.”) 2, 90; see also Paper 11 (“Institution Decision” or “Inst.
`Dec.”), 65. Subsequently, we denied Petitioner’s request for rehearing
`seeking reconsideration of the Final Written Decision. Paper 30, 2.
`Petitioner appealed, and Patent Owner cross-appealed, our Final
`Written Decision to the United States Court of Appeals for the Federal
`Circuit. Papers 31, 32. The court issued its decision affirming our findings
`as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys.,
`Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir.
`Apr. 26, 2022). Specifically, the court reversed our determination that
`Petitioner had not shown independent claim 15 to be unpatentable and
`remanded for further proceedings regarding dependent claims 16–19. Id.
`On June 14, 2022, the court issued the formal mandate. Paper 33.
`On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19
`of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding
`and no issues remain for us to consider on remand. See Sanofi-Aventis U.S.,
`LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019)
`(noting that disclaiming claims effectively eliminates those claims from the
`patent as though the disclaimed claims had never existed (internal quotations
`and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc.,
`IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a
`
`2
`
`
`
`IPR2018-01165
`Patent 7,524,087 B1
`statutory disclaimer removed a disclaimed claim from an inter partes review
`proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be
`instituted based on disclaimed claims.”).
`Moreover, under 37 § C.F.R. 42.73(b), a “party may request judgment
`against itself at any time during a proceeding. Actions construed to be a
`request for adverse judgment include . . . disclaimer of a claim such that the
`party has no remaining claim in the trial.” The only claims before us on
`remand have been disclaimed. Accordingly, we construe Patent Owner’s
`disclaimer to be a request for adverse judgment as to those claims which
`remain before us, which we now grant.
`
`ORDER
`For the foregoing reasons, it is hereby:
`
`ORDERED that adverse judgment is entered under 37 C.F.R.
`
`§ 42.73(b) against Patent Owner as to claims 16–19; and
`
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`3
`
`
`
`IPR2018-01165
`Patent 7,524,087 B1
`FOR PETITIONER:
`
`Patrick R. Colsher
`Matthew G. Berkowitz
`Eric S. Lucas
`Thomas R. Makin (pro hac vice)
`Matthew G. Berkowitz
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`matthew.berkowitz@shearman.com
`eric.lucas@shearman.com
`thomas.makin@shearman.com
`matthew.berkowitz@shearman.com
`
`FOR PATENT OWNER:
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`Donald L. Jackson
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`djackson@dbjg.com
`esong@dbjg.com
`
`
`
`
`4
`
`
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