Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper 9
`Entered: November 30, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`NICHIA CORPORATION,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`_______________
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE
`35 U.S.C. § 314(a)
`
`
`
`
`
`
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`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: November 30, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`NICHIA CORPORATION,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01166
`Patent 7,256,486 B2
`_______________
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
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`IPR2018-01166
`Patent 7,256,486 B2
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`INTRODUCTION
`I.
`Nichia Corporation (“Petitioner”)1 filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–6 (the “challenged claims”) of
`U.S. Patent 7,256,486 B2 (Ex. 1001, the “’486 patent”). Document Security
`Systems, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A
`decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348, 1359–60 (2018).
`After considering the evidence and arguments presented in the
`Petition and Preliminary Response, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing
`unpatentability of claims 1–6 of the ’486 patent, and we institute on all
`challenged claims and on all grounds.
`A. Related Proceedings
`Petitioner states the ’486 patent has been asserted by Patent Owner
`
`against Nichia Corporation and Nichia America Corporation in Document
`Security Systems, Inc. v. Nichia America Corporation, et al., No. 2:17-cv-
`
`
`1 Petitioner, Nichia Corporation, identifies Nichia America Corporation as a
`real party-in-interest. Pet. 1.
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`08849, pending in the Central District of California. Pet. 1; see also Paper 5,
`2.
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`Petitioner also states the ’486 patent has been asserted by Patent
`Owner in several other court proceedings: Document Security Systems, Inc.
`v. Everlight Americas Inc., et al., No. 2:17-cv-00310 (E.D. Tex.); Document
`Security Systems, Inc. v. Everlight Americas Inc., et al., No. 2:17-cv-04273
`(C.D. Cal.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-
`00309 (E.D. Tex.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-
`cv-04263 (C.D. Cal.); Document Security Systems, Inc. v. Seoul
`Semiconductor Co., Ltd., et al., No. 2:17-cv-00308 (E.D. Tex.); Document
`Security Systems, Inc. v. Seoul Semiconductor Co., Ltd., et al., No. 8:17-cv-
`00981 (C.D. Cal.); Document Security Systems, Inc. v. OSRAM GmbH, et
`al., No. 2:17-cv-05184 (C.D. Cal.); and Document Security Systems, Inc. v.
`Lite-On Tech. Corp., et al., No. 2:17-cv-06050 (C.D. Cal.). Id. at 1–2; Paper
`5, 2–3.
`Petitioner also states the ’486 patent is subject to the following
`pending petition for inter partes review: Seoul Semiconductor Co., Ltd. v.
`Document Security Systems, Inc., No. IPR2018-00333 (“the ’333 Petition”).
`Pet. 2; Paper 5, 3. On June 21, 2018, the Board instituted review in that
`proceeding. IPR2018-00333, Paper 9.
`Patent Owner additionally identifies the following inter partes review
`proceedings as ones that may also affect or be affected by a decision in this
`proceeding: IPR2018-00265 (U.S. Patent No. 6,949,771) (trial instituted,
`Paper 23); IPR 2018-00522 (U.S. Patent No. 7,524,087) (trial instituted,
`Paper 10); IPR2018-00965 (U.S. Patent No. 7,919,787) (trial instituted,
`Paper 15); IPR2018-00966 (U.S. Patent No. 7,652,297) (trial instituted,
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`Paper 14); IPR2018-01165 (U.S. Patent No. 7,524,087); IPR2018-01167
`(U.S. Patent No. 6,949,771); IPR2018-01205 (U.S. Patent No. 7,256,486)
`(instituted, joined with IPR2018-00333, Paper 11); IPR2018-01220 (U.S.
`Patent No. 7,256,486) (institution denied, Paper 9); IPR2018-01221 (U.S.
`Patent No. 7,524,087) (institution denied, Paper 9); IPR2018-01222 (U.S.
`Patent No. 6,949,771) (institution denied, Paper 11); IPR2018-01223 (U.S.
`Patent No. 6,949,771) (institution denied, Paper 11); IPR2018-01225 (U.S.
`Patent No. 7,256,486) (trial instituted, joined with IPR2018-00333, Paper
`14); IPR2018-01226 (U.S. Patent No. 7,524,087) (trial instituted, joined
`with IPR2018-00522, Paper 15); IPR2018-01244 (U.S. Patent No.
`6,949,771) (trial instituted, joined with IPR2018-00265, Paper 15);
`IPR2018-01260 (U.S. Patent No. 7,919,787) (trial instituted, Paper 12).
`Paper 5, 3–4.
`
`B. The ’486 Patent
`The ’486 patent generally relates to a semiconductor packaging
`device. Ex. 1001, Abstract. The semiconductor packaging device can
`include a light emitting diode (LED). Id. at 5:20–22. A semiconductor
`device is illustrated in Figures 2A and 2B, reproduced below. Id. at 3:5–8.
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`Figure 2A shows a perspective view of semiconductor device 200,
`including semiconductor die/LED 250. Ex. 1001, 3:5–8, 6:5–7. Figure 2B
`is a side view of semiconductor device 200. Id. at 3:5–8. Substrate 110,
`having major surfaces 112, 114, is shown having mounting pad 130 and
`bonding pad 132 on top major surface 112, and connecting pads 140, 142 on
`bottom major surface 114. Id. at 3:43–57, 4:64–66. Interconnecting
`elements 120, 122 pass through substrate 110 and connect mounting pad 130
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`with connecting pad 140, and bonding pad 132 with connecting pad 142. Id.
`at 3:58–67. A wire 254 connects the LED 250 with the bonding pad 132.
`Id. at 5:15–17. Encapsulant 252 is shown covering top major surface 112 of
`the substrate, including LED 250, wire 254, mounting pad 130 and bonding
`pad 132. Id. at 5:12–15, Figures 2A–2B.
`The Specification also describes LED 250 as including “anode and
`cathode electrodes (not shown) covering at least parts of its opposed major
`surfaces.” Id. at 5:8–10. The bottom electrode is further described as
`“metallization on the bottom major surface of semiconductor die 250.” Id.
`at 5:20–22.
`
`C. Illustrative Claim
`Of the contested claims, claim 1 is independent, claim 2 depends from
`claim 1, claim 3 depends from claim 2, claim 4 depends from claim 1, and
`claims 5 and 6 depend from claim 4. Claim 1, reproduced below, is
`illustrative of the claimed subject matter:
`1. A semiconductor device, comprising:
`a substantially planar substrate having opposed
`major surfaces;
`an electrically conductive mounting pad located on
`one of the major surfaces of the substrate;
`a light emitting diode (LED) having a metallized
`bottom major surface that is mounted on the
`electrically conductive mounting pad, the
`metallized bottom major surface comprising
`one of an anode and a cathode of the LED;
`a first electrically conductive connecting pad
`located on the other of the major surfaces of
`the substrate; and
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`a first electrically conductive interconnecting
`element extending through the substrate and
`electrically interconnecting the mounting pad
`and
`the
`first
`electrically
`conductive
`connecting pad.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable under
`35 U.S.C. § 103(a)2 based on the following grounds (Pet. 4–6):
`Claim(s)
`challenged
`1–5
`
`Ground
`
`References
`
`1
`
`Nakajima3 and Weeks4
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`2
`
`3
`4
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`5
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`Nakajima and Kish5
`
`Nakajima and Edmond6
`Rohm7 and Weeks
`
`Rohm and Kish
`
`1–5
`
`1–5
`1–3
`
`1–3
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 102
`and § 103. Because the ’486 patent has an effective filing date prior to the
`effective date of the applicable AIA amendments, we refer herein to the pre-
`AIA versions of § 102 and § 103.
`3 Japanese Patent App. No. 2002-232017, pub. Aug. 16, 2002 (Ex. 1004,
`“Nakajima”).
`4 U.S. Patent No. 6,611,002, filed Feb. 23, 2001, issued Aug. 26, 2003
`(Ex. 1007, “Weeks”).
`5 U.S. Patent No. 5,376,580, Dec. 27, 1994 (Ex. 1008, “Kish”).
`6 U.S. Patent No. 5,523,589, June 4, 1996 (Ex. 1009, “Edmond”).
`7 Japanese Pat. Pub. 2003-17754, Jan. 17, 2003 (Ex. 1005, “Rohm”).
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`Ground
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`References
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`6
`7
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`8
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`9
`10
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`11
`12
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`13
`14
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`15
`16
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`17
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`18
`19
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`20
`21
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`22
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`Rohm and Edmond
`Rohm, Weeks, and Nakajima
`
`Rohm, Kish, and Nakajima
`
`Rohm, Edmond, and Nakajima
`Matsushita8 and Weeks
`
`Matsushita and Kish
`Matsushita and Edmond
`
`Matsushita, Weeks, and Nakajima
`Matsushita, Kish, and Nakajima
`
`Matsushita, Edmond, and Nakajima
`Nakajima, Weeks, and Jochym9
`
`Nakajima, Kish, and Jochym
`
`Nakajima, Edmond, and Jochym
`Rohm, Weeks, Nakajima, and Jochym
`
`Rohm, Kish, Nakajima, and Jochym
`Rohm, Edmond, Nakajima, and Jochym
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`Matsushita, Weeks, Nakajima, and Jochym
`
`Claim(s)
`challenged
`1–3
`4 and 5
`
`4 and 5
`
`4 and 5
`1–3
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`1–3
`1–3
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`4 and 5
`4 and 5
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`4 and 5
`6
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`6
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`6
`6
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`6
`6
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`6
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`8 Japanese Pat. Pub. 2001-352102, Dec. 21, 2001 (Ex. 1006, “Matsushita”).
`9 U.S. Patent No. 6,747,217, filed Nov. 21, 2001, issued June 8, 2004
`(Ex. 1010, “Jochym”).
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`Ground
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`23
`24
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`References
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`Matsushita, Kish, Nakajima, and Jochym
`Matsushita, Edmond, Nakajima, and Jochym
`
`Claim(s)
`challenged
`6
`6
`
`As further support, Petitioner offers the Declaration of James R.
`Shealy, Ph.D. Ex. 1003 (“Shealy Declaration”).
`
`II. DISCUSSION
`A. Claim Construction
`In this inter partes review, we construe the claim terms according to
`their broadest reasonable interpretation in light of the ’486 patent
`specification. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016).10 Consistent with the broadest
`reasonable construction, claim terms are presumed to have their ordinary and
`customary meaning as understood by a person of ordinary skill in the art in
`the context of the entire patent disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`10 This Petition was filed before the effective date of the amendment to
`37 C.F.R. § 42.100 that changed the claim construction standard applied in
`inter partes reviews. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 FR 51340 (Nov. 13, 2018) (to be codified at 37 C.F.R. pt. 42).
`Thus, we use the “broadest reasonable interpretation” claim construction
`standard for this proceeding.
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`1. “major surface”
`Petitioner proposes that we construe the term “major surface,” as
`recited variously in claims 1–6, as “a face that is greater in size than the
`other faces of the element being described.” Pet. 12.
`Patent Owner disagrees with Petitioner’s proposal for several reasons.
`Prelim. Resp. 9–11. First, Patent Owner takes issue with Petitioner’s use of
`the term “face,” asserting “there is no justification . . . for this unsupported
`substitution of ‘surface’ for ‘face’” and “[t]he purpose of claim construction
`is not simply to identify potential synonyms of claim terms and swap them
`out without reason . . . .” Id. at 9–10. Patent Owner also asserts Petitioner’s
`proposed construction is incorrect and inconsistent with usage in the ’486
`patent because “[u]nder petitioner’s construction, there can be only one
`‘major surface’ of the element being described,” whereas the ’486 patent
`claims refer to a plurality of major surfaces. Id. at 11. Patent Owner states
`that “the ’486 patent consistently uses the term ‘surface’ to refer to an outer,
`substantially planar portion of a substrate or a semiconductor die.” Id. at 10.
`Patent Owner also asserts, as an “additional defect, Petitioner applies its
`proposed construction in a manner that fails to lend any weight to the claim
`term, ‘major.’” Id. at 11. Patent Owner asserts that “[c]onsistent with the
`’486 patent disclosure, there can be more than one ‘major surface,’ on an
`element, provided those surfaces have substantially similar surface areas,
`and that their surface areas are greater than the surface areas of other
`surfaces.” Id. at 10. In an apparent proposed construction, 11 Patent Owner
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`11 Although Patent Owner does not characterize it as such, the statement is
`apparently intended as a proposed construction based on Patent Owner’s use
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`further states that “a ‘major surface’ is an ‘outer, substantially planar portion
`of the element being described which has the largest surface area of any
`surface of the element.’” Id.
`We first address Patent Owner’s challenges to Petitioner’s proposed
`construction. We disagree with Patent Owner’s criticism regarding
`Petitioner’s use of the term “face” in its proposed construction as an
`“unsupported substitution” of one term for another. From the context, it
`appears Petitioner is using the term “face” similarly to Patent Owner’s use of
`the phrase “outer . . . portion.” Compare Pet. 11, with Prelim. Resp. 10.
`Petitioner’s use of the synonym “face” is no more an unjustified substitution
`of terms than is Patent Owner’s proposed synonymous phrase. Also
`contrary to Patent Owner’s criticism, we disagree that Petitioner’s proposed
`construction allows only a single “major surface.” See Prelim. Resp. 11.
`Petitioner expressly acknowledges that a device may have more than one
`major surface—for example, Petitioner notes that the ’486 patent describes
`an LED as having both a top and a bottom “major surface.” See Pet. 11–12.
`The parties’ proposed constructions overlap to the extent that a “major
`surface” includes a surface that “is greater in size than the other [surfaces]
`being described.” See Pet. 12; Prelim. Resp. 10. Patent Owner’s proposal is
`narrower than that proposed by Petitioner, however, as Patent Owner asserts
`that a “major surface” must be “the largest surface area of any surface of the
`element.” Prelim. Resp. 10 (emphasis added). Other than relying on the
`modifier “major,” Patent Owner does not, however, provide any support for
`its proposed construction. Indeed, such construction is contradicted by
`
`of quotation marks, without any citation to source material.
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`Patent Owner’s own statements in its Preliminary Response, in which Patent
`Owner also states that an element may have more than one “major surface”
`as long as “those surfaces have substantially similar surface areas, and . . .
`their surface areas are greater than the surface areas of other surfaces.” Id.
`On this record, we do not agree a “major surface” must be the largest surface
`area of any surface of an element.
`Aside from the foregoing, it appears the parties’ proposed
`constructions differ primarily with regard to whether a “major surface” must
`be “substantially planar,” as Patent Owner asserts. See Prelim. Resp. 10. As
`support for that construction, Patent Owner refers only to the language of
`claim 1 itself, which recites “a substantially planar substrate having opposed
`major surfaces.” Id.
`We disagree with Patent Owner’s attempt to extend the modifier
`“substantially planar,” which modifies only “substrate” in claim 1, to also
`modify the separate term “major surface[].” The term “major surface” is
`used in claim 1 in conjunction with not only the substrate but also in
`conjunction with the light emitting diode (LED); only the substrate,
`however, is described in the claim as being substantially planar. It may well
`be that a substrate that is substantially planar will also have substantially
`planar major surfaces, although Patent Owner does not expressly state this.
`Patent Owner also does not point to any disclosure in the ’486 patent
`Specification that requires every “major surface” to be substantially planar,
`nor does Patent Owner point to any other evidence to support this narrowing
`construction.
`As this stage, we determine the broadest reasonable construction of
`the term “major surface,” consistent with the ’486 patent, includes “an outer
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`portion that is greater than the surface area of other surfaces,” which need
`not be substantially planar, and we adopt that construction for purposes of
`this Decision.
`
`2. “metallized . . . major surface”
`Petitioner proposes that we construe the term “metallized . . . major
`surface,” as recited in claims 1–6, as meaning “a major surface having metal
`on at least a portion thereof.” Pet. 12.
`Patent Owner disagrees with Petitioner’s proposed construction,
`asserting that it “fails to account for the claim language requiring that the
`surface must be a ‘major’ surface, i.e., the greatest surface in area, and this
`major surface must be metallized.” Prelim. Resp. 13. Patent Owner
`proposes that the “correct construction of ‘metallized . . . major surface’ is ‘a
`major surface (as defined above) substantially covered with metal.’” Id.
`Aside from differing with regard to the proper construction of a
`“major surface” (as addressed above), the parties’ proposed constructions of
`“metallized . . . major surface” differ in terms of what proportion of the
`“major surface” must be “metallized.” Petitioner proposes the metal must be
`“on at least a portion” of the major surface (Pet. 12), whereas Patent Owner
`proposes the major surface must be “substantially covered with metal”
`(Prelim. Resp. 13).
`Petitioner supports its proposed construction first by reference to the
`’486 patent Specification, which refers to “metallization” on a top and on a
`bottom major surface of a semiconductor die as constituting the anode and
`cathode electrodes, respectively, of an LED. See Pet. 13–14 (citing Ex.
`1001, 1:19–23, 5:10–12, 5:18–22, 8:26–31, 8:34–37). As Petitioner further
`notes, the Specification also states that the LED “has anode and cathode
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`electrodes . . . covering at least parts of its opposed major surfaces.” Id. at
`13 (citing Ex. 1001, 5:7–10, 8:23–26). Thus, the Specification describes
`“metallization” as anode and cathode electrodes that cover at least parts of
`opposed major surfaces, without specifying whether those parts are a
`“substantial portion” of the surface. We agree this disclosure supports
`Petitioner’s proposed construction of “metallized . . . major surface” as
`requiring metal must be “on at least a portion” of the major surface.
`Petitioner also cites to dictionary definitions in support of its proposed
`construction. See Pet. 14 (citing Ex. 1013 (Modern Dictionary of
`Electronics: “metallization”), Ex. 1014 (Merriam Webster’s Collegiate
`Dictionary: “metallize”)). These definitions describe metallization,
`essentially, as depositing a film or coat of metal onto a substrate, but do not
`address the parties’ dispute regarding what proportion of the substrate
`surface must be covered in the metal film or coat.
`Patent Owner does not cite to any portion of the Specification or to
`any other evidence as supporting its proposed construction. Rather, Patent
`Owner confines its analysis to the claim language itself, asserting that the
`claim requires that the surface be a “major” surface, and that “this major
`surface must be metallized.” Prelim. Resp. 13. Although Patent Owner’s
`contention is not entirely clear, Patent Owner appears to be extending the
`term “major” to modify not only “surface,” but also to impart a
`quantification to the metallization, resulting in a “major surface . . .
`substantially covered with metal.” See id. Patent Owner does not, however,
`provide any support for this analysis, nor do we agree it is compelled by the
`claim language itself. In that regard, we also disagree with Patent Owner’s
`contention that Petitioner’s proposal fails to account for the surface being a
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`“major” surface; as noted above, Petitioner’s proposal and accompanying
`discussion explicitly recognize this. See Pet. 12–14.
`As this stage, we determine the broadest reasonable construction of
`the term “metallized . . . major surface,” consistent with the ’486 patent,
`includes “a major surface having metal on at least a portion thereof,” which
`need not necessarily be a “substantial portion” of the major surface, and we
`adopt that construction for purposes of this Decision.
`For purposes of this Decision, we need not provide an express
`construction for any other terms in the ’486 patent. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that
`“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs. in the context of an inter partes review).
`B. Discretionary Factors
`Patent Owner asserts we should exercise our discretion under
`35 U.S.C. § 314(a) to deny this Petition based on the factors discussed in
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential). 12 Prelim. Resp. 15–
`19. In General Plastic, the Board identified a list of seven nonexclusive
`factors that bear on the issue of whether the Board should invoke its
`discretion to deny institution of an inter partes review, based on a follow-on
`petition on the same patent, under 35 U.S.C. § 314(a) and 37 C.F.R.
`§ 42.108(a):
`
`12 General Plastic was designated precedential on October 18, 2017.
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`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
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`2. whether at the time of filing the first petition the petitioner
`knew of the prior art asserted in the second petition or
`should have known of it;
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`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s
`decision on whether to institute review in the first petition;
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`4. the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
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`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent;
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`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which
`the Director notices institution of review.
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`General Plastic, slip op. at 9–10 (the “General Plastic factors”).
`
`Patent Owner asserts that the Board’s discretion is “not limited to
`situations where the same party files multiple petitions,” and that the
`General Plastic factors are helpful as a framework where “a different
`petitioner filed a petition challenging a patent that had been challenged
`already by previous petitions.” Prelim. Resp. 17 (quoting NetApp Inc. v.
`Realtime Data LLC, Case No. IPR2017-01196, Paper 10, 9 (PTAB Oct. 13,
`2017)). Focusing on the fact that petitions, by other petitioners, seeking
`
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`16
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`IPR2018-01166
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`institution of inter partes reviews of the ’486 patent were previously filed in
`IPR2018-00333 (“the 330 proceeding”); IPR2018-01205 (“the 1205
`proceeding”) and IPR2018-01220 (“the 1220 proceeding”); and IPR2018-
`01225 (“the 1225 proceeding”), by Seoul Semiconductor, Cree Inc., and
`Everlight Electronics, respectively, Patent Owner contends that
`consideration of the General Plastic factors weighs in favor of exercising
`our discretion to deny this Petition. Prelim. Resp. 15–19.
`With regard to the first of the General Plastic factors, Patent Owner
`acknowledges that Petitioner here is different than the petitioners in the 333,
`1205, 1220, and 1225 proceedings, and asserts “Factor 1 is neutral.” Prelim.
`Resp. 17. We disagree; the fact that different petitioners are involved in the
`other pending petitions causes us to consider the first factor as weighing
`against a discretionary denial of this Petition, rather than as merely neutral.
`Patent Owner argues Factors 2 and 3 weigh against institution here,
`insisting the timing of the previous petitions compared to the current Petition
`gave Petitioner “ample time to evaluate” Patent Owner’s arguments on the
`overlapping prior art, and Petitioner has not “even attempt[ed] to address
`how and when it became aware” of the overlapping prior art used in the
`previous petitions. Prelim. Resp. 18. However, Petitioner was not a
`petitioner in the prior proceedings challenging the ’486 patent, and Patent
`Owner has not presented any persuasive evidence that Petitioner was aware
`of the asserted references for an inordinate amount of time before filing its
`Petition. We cannot assume when Petitioner became aware of the asserted
`references. We disagree that Petitioner’s silence as to whether it was aware
`of the overlapping prior art when a different party (Seoul) filed the earliest
`petition causes this factor to weigh in favor of denial under the facts and
`
`17
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`circumstances present here. We conclude that Factor 2 neither weighs for or
`against exercising our discretion.
`We agree that Factor 3 (Petitioner’s likely access to Patent Owner’s
`Preliminary Response in earlier petitions) weighs in favor of discretionary
`denial of the Petition. Because Patent Owner has not identified any portion
`of this Petition that may have been tailored to address issues in any of the
`previous petitions, however, that reduces the weight we give this factor. We
`further note Petitioner filed the present Petition in May 2018, before the
`Decision to Institute issued in the 333 Proceeding (June 2018), and so it
`cannot be said that Petitioner tailored its Petition to address deficiencies
`identified by the Board. We conclude Factor 3 weighs minimally in favor of
`exercising our discretion. Patent Owner asserts that Factor 4 is neutral
`(Prelim. Resp. 18), and we agree.
`With regard to Factor 5, Patent Owner argues that “Petitioner provides
`no explanation whatsoever for its delay in filing this Petition after Seoul
`Semiconductor filed IPR2018-00333.” Prelim. Resp. 18. Petitioner was not
`sued by Patent Owner in district court, however, until December 2017, 13 just
`shortly before Seoul filed the petition in the 333 Proceeding. 14 Patent
`Owner provides no evidence of when Petitioner became aware of the
`petition filed by Seoul in the 333 Proceeding, but even assuming Petitioner
`became aware of that petition when it was filed, we disagree that Petitioner’s
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`13 Document Security Sys., Inc. v. Nichia America Corp., et al., No. 2:17-cv-
`08849 (C.D. Cal.) (complaint filed December 7, 2017).
`14 Seoul Semiconductor Co. v. Document Security Sys., Inc., No. IPR2018-
`00333, Paper 2 (Petition filed December 21, 2017).
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`18
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`Patent 7,256,486 B2
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`filing the present Petition roughly five months later demonstrates an undue
`delay, particularly given that the present Petition is not merely a substantial
`copy of the petition in the 333 Proceeding. Rather, although the grounds
`between these petitions overlap, the Petition in this proceeding presents a
`different primary ground of challenge and addresses twice as many claims.
`And, again, we note Petitioner filed the present Petition before the Decision
`to Institute issued in the 333 Proceeding. On the other hand, although it was
`clearly aware of the other petition before it filed the present Petition, and the
`two petitions overlap at least to an extent, Petitioner provides no explanation
`for the time elapsed between when it became aware of the earlier petition
`and the filing of the present Petition. On balance, we conclude Factor 5
`neither weighs significantly for or against exercising our discretion to deny
`institution.
`We are also not persuaded that consideration of Factors 6 and 7
`weighs in favor of discretionary denial of this Petition. The filing of this
`Petition, by a different petitioner than the earlier petitions, challenging
`overlapping as well as several additional claims, based on substantially
`different (albeit overlapping) grounds and prior art, cannot be said to be
`wasteful of the Board’s resources under the facts and circumstances present
`here. Furthermore, because both the 1205 Proceeding and the 1225
`Proceeding have been joined with the 333 Proceeding, 15 and the 1220
`Proceeding has been dismissed as untimely, 16 the multiplication of
`
`15 Seoul Semiconductor Co. v. Document Security Sys., Inc., Case IPR2018-
`00333 (PTAB Sept. 27, 2018), Paper 18 (joinder of 1205 Proceeding), Paper
`19 (joinder of 1225 proceeding).
`16 Cree, Inc. v. Document Security Sys., Inc., Case IPR2018-01220 (PTAB
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`19
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`proceedings is minimal and will not significantly impact the Board’s ability
`to reach a final determination regarding unpatentability in each pending
`proceeding within the statutorily mandated one year. In that regard,
`although these proceedings will not follow the same timeline, and the
`issuance of Final Written Decisions will be staggered, there is no
`requirement that petitions involving similar and overlapping subject matter
`must be decided by the Board simultaneously.
`Moreover, in general, we acknowledge that the instant Petition
`represents a second round of challenges to the ’486 patent in light of the
`consolidated 330, 1205, and 1225 Proceedings. Although we understand the
`purposes of § 314(a) vis-à-vis repeated challenges, we also recognize the
`importance of the availability of inter partes review to parties accused of
`infringement, particularly where, as here, the second Petition does not pose
`an unduly extensive overlap. Patent Owner’s complaint about the multiple
`inter partes review petitions filed against the ’486 patent is not persuasive
`when the number and timing of the petitions appear to be a direct result of
`Patent Owner’s own litigation activity filing seriatim lawsuits against
`multiple defendants.
`For these reasons, we decline to invoke our discretion under 35 U.S.C.
`§ 314(a) to deny institution. We turn now to an analysis of Petitioner’s
`challenges in this proceeding.
`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
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`Nov. 19, 2018) (Paper 9).
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`20
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`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;17 and (4) when in evidence, objective
`evidence of nonobviousness.18 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`D. Grounds 1–3: Obviousness of Claims 1–5 Over Nakajima
`in view of Weeks, Kish, or Edmond
`1. Overview of Nakajima (Ex. 1004)
`Nakajima was published on August 16, 2002; accordingly, it is prior
`art under 35 U.S.C. § 102(a). Pet. 15. Patent Owner does not dispute the
`prior-art status of Nakajima.
`
`
`17 Relying on the testimony of Dr. James R. Shealy
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