`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`NICHIA CORPORATION and CREE, INC.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`_______________
`
`
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`
`_______________
`
`
`PATENT OWNER DOCUMENT SECURITY SYSTEMS, INC.’S
`NOTICE OF APPEAL
`
`
`
`
`
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and in accordance with 37 C.F.R.
`
`§§ 90.2-90.3, Patent Owner Document Security Systems, Inc. timely appeals to the
`
`United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision of the Patent Trial and Appeal Board entered on November 19, 2019 in
`
`IPR2018-01166 (Paper 24), and from all underlying findings, determinations,
`
`orders, decisions, rulings and opinions regarding the inter partes review of U.S.
`
`Patent No. 7,256,486 (“the ’486 Patent”), including the DECISION Instituting Inter
`
`Partes Review entered on November 30, 2018 (Paper 9).
`
`For the limited purpose of providing the Director with the information
`
`requested in 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner anticipates that the issues on
`
`appeal may include, but are not limited to, the following, as well as any underlying
`
`findings, determinations, orders, decisions, rulings, opinions, or other related issues:
`
` Whether the Patent Trial and Appeal Board’s decision finding that claims 1-5
`
`of the ’486 patent are unpatentable was “(A) arbitrary, capricious, an abuse of
`
`discretion, or otherwise not in accordance with law; (B) contrary to
`
`constitutional right, power, privilege, or immunity; (C) in excess of statutory
`
`jurisdiction, authority or limitations, or short of statutory right; (D) without
`
`observance of procedure required by law; [or] (E) unsupported by substantial
`
`evidence … .” See 5 U.S.C. § 706(2)(A)-(E); and
`
`1
`
`
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`
`
` Whether the Final Written Decision is erroneous in view of any applicable
`
`statutory or constitutional provision, including whether the panel of
`
`administrative patent judges was properly appointed under the appointments
`
`clause. See Arthrex, Inc., v. Smith & Nephew, Inc., Case No. 2018-2140 (Fed.
`
`Cir. Oct. 31, 2019).
`
`Simultaneous with the electronic submission of this Notice of Appeal to the
`
`Patent Trial and Appeal Board, a copy of this Notice of Appeal is being filed with
`
`the United States Patent and Trademark Office by way of hand delivery to the Office
`
`of General Counsel to:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, Virginia 22314
`
`
`
`In addition, consistent with Federal Circuit Rules 15(a)(1) and 25(b)(1), this
`
`Notice of Appeal, along with the required docketing fees and copies of the decisions
`
`of the agency for which review is sought, are being filed electronically with the
`
`United States Court of Appeals for the Federal Circuit, and one paper copy of the
`
`Notice of Appeal is being provided to the Clerk’s Office:
`
`Clerk of Court
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, NW, Room 401
`Washington, DC 20439
`
`2
`
`
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`
`
`Any required fees to the United States Patent and Trademark Office may be
`
`charged to Deposit Account No. 50-1860.
`
`
`
`Dated: January 21, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
` By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Lead Counsel for Patent Owner
`
`3
`
`
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 21, 2020, a true and correct copy of the
`
`foregoing Patent Owner’s Notice of Appeal was served via email, by consent, to
`
`Petitioners by serving the correspondence email addresses of record as follows:
`
`Patrick R. Colsher (Reg. No. 74,955)
`patrick.colsher@shearman.com
`Eric S. Lucas (Reg. No. 76,434)
`eric.lucas@shearman.com
`Thomas R. Makin
`thomas.makin@shearman.com
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, New York 10022
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`matthew.berkowitz@shearman.com
`Shearman & Sterling LLP
`1460 El Camino Real
`Menlo Park, California 94025
`
`Email: nichia-dss@shearman.com
`
`Blaney Harper (Reg. No. 33,897)
`bharper@jonesday.com
`Douglas H. Pearson (Reg. No. 47,851)
`dhpearson@jonesday.com
`Yury Kalish (Reg. No. 72,538)
`ykalish@jonesday.com
`JONES DAY
`51 Louisiana Ave., N.W.
`Washington, DC 20001
`
`Joseph M. Sauer (Reg. No. 47,919)
`jmsauer@jonesday.com
`David B. Cochran (Reg. No. 39,142)
`
`4
`
`
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`
`
`dcochran@jonesday.com
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`
`Matthew W. Johnson (Reg. No. 59,108)
`mwjohnson@jonesday.com
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
