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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`CREE, INC.,
`Petitioner,
`
`v.
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`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`
`_______________
`
`Case IPR2018-01220
`Patent 7,256,486 B2
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`PATENT OWNER’S LIST OF EXHIBITS
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`
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`Exhibit Number
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`Exhibit Description
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`2001-2108
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`Reserved
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`2109
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`2110
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`2111
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`2112
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`Complaint for Patent Infringement in Document Security
`Systems, Inc. v. Cree, Inc., Case 2:17-cv-00309 (E.D. Tex.)
`Notice of Service in Document Security Systems, Inc. v.
`Cree, Inc., Case 2:17-cv-00309 (E.D. Tex.)
`Complaint for Patent Infringement in Document Security
`Systems, Inc. v. Cree, Inc., Case 2:17-cv-04263 (C.D. Cal.)
`Notice of Dismissal in Document Security Systems, Inc. v.
`Cree, Inc., Case 2:17-cv-00309 (E.D. Tex.)
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`
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Document Security Systems,
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`Inc. (“DSS” or “Patent Owner”) files this preliminary response to the Petition,
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`setting forth reasons why the Petition for inter partes review (“IPR”) of U.S. Patent
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`No. 7,256,486 (the “’486 patent”), claims 1-4, as requested by Cree, Inc. (“Cree”
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`or “Petitioner”) must be denied.1
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`I. EVERLIGHT’S PETITION FOR IPR IS TIME-BARRED
`Real party-in-interest to the Petition, Cree, Inc., was first served with a
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`complaint alleging infringement of the ’486 patent on April 14, 2017, more than
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`one year before Cree filed its petition for IPR on June 7, 2018. Therefore, Cree’s
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`Petition is time-barred under 35 U.S.C. § 315(b), and must be denied without
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`institution.
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`On the first page of the Petition, Cree states that “Petitioners are not barred
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`or estopped from requesting an inter partes review on the grounds identified
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`herein.” Pet., 1. This is incorrect, and stems from lack of disclosure of complete
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`facts and Cree’s misapplication of the governing law. Cree’s Petition omits that,
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`on April 14, 2017, Cree, Inc. was served with complaint dated April 13, 2017
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`1 By submitting this Preliminary Response, no waiver of any argument is intended
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`by Patent Owner. Patent Owner will have a right to file “a response to the petition
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`addressing any ground for unpatentability not already denied” should the Board
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`institute inter partes review. 37 C.F.R. § 42.120(a).
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`- 1 -
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`(“Texas Complaint”), alleging infringement of ’486 patent in the Eastern District
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`of Texas. See Ex. 2109, ¶¶20-26; Ex. 2110, 2. Because Cree was served with “a
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`complaint,” namely the Texas Complaint, alleging infringement of the patent-at-
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`issue more than one year prior to the filing of Cree’s Petition for IPR, Cree’s
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`Petition is time-barred. See 35 U.S.C. § 315(b).
`
`Cree appears to believe that the service date of April 14, 2017 should not bar
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`the untimely filing of this Petition because DSS dismissed the Texas Complaint
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`without prejudice on June 8, 2017. Ex. 2112, 2. Under the plain language of the
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`35 U.S.C. 315(b) and governing Federal Circuit law, that subsequent dismissal of
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`the complaint is irrelevant to whether Cree was served with the complaint alleging
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`infringement of the ’486 patent, and therefore whether Petitioner was barred from
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`filing a petition for inter partes review of the ’486 patent after April 14, 2018. See
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`Click-to-Call Tech., LP v. Ingenio, Inc., ___ F.3d ___, slip op. at 10 (Fed. Cir.
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`2018).2
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`2 “The principal question on appeal is whether the Board erred in interpreting the
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`phrase ‘served with a complaint alleging infringement of [a] patent’ recited in §
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`315(b) such that the voluntary dismissal without prejudice of the civil action in
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`which the complaint was served ‘does not trigger’ the bar. Final Written Decision,
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`slip op. at 12. We hold that it did.”
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`- 2 -
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`Even if a dismissal without prejudice could operate to reset the time-bar
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`provision under § 315(b) in some circumstances, here DSS dismissed its case
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`against Cree in Texas and concurrently refiled complaint in the Central District of
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`California3, thereby continuously maintaining its infringement action against Cree.
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`The Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group
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`Brands LLC, 581 U.S. ___, 137 S. Ct. 1514 (2017) on May 22, 2017, after DSS
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`filed its Texas complaint. TC Heartland served to restrict the venue in which a
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`particular patent infringement complaint could be brought. In view of that
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`intervening decision, DSS shifted its infringement action against Cree to the
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`Central District of California, by concurrently refiling the counts from the Texas
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`complaint in the California Complaint and dismissing the Texas complaint, both on
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`June 8, 2017. Cf, Ex. 2109, ¶¶20-26 with Ex. 2111, ¶¶20-26; Ex. 2112, 2.
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`Accordingly, as there was no gap in the charge of infringement, and by the
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`statute’s plain language, the time-bar of 35 U.S.C. § 315(b) runs from the first
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`service of “a complaint alleging infringement” of the ’486 patent by Cree on April
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`14, 2017. See Click-to-Call Technologies, LP v. Ingenio, Inc., ___ F.3d ___ (Fed.
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`Cir. 2018).
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`Finally, Cree cannot salvage its time-barred petition by filing a later-filed
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`motion for joinder. The PTO’s regulations expressly prohibit the filing of a time-
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`3 This document will be referred to as the “California Complaint.”
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`- 3 -
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`barred petition, and only provide an exception where a petition is “accompanied”
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`by a motion for joinder: “[t]he time period set forth in § 42.101(b) shall not apply
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`when the petition is accompanied by a request for joinder.” 37 C.F.R. § 42.122(b)
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`(emphasis added). Cree’s Petition was not accompanied by a motion for joinder.
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`Similarly, nothing in the IPR statutes permits conversion of an untimely petition
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`into a request for joinder based on later filings that are not concurrent with, i.e.
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`accompanying, the petition.
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`Because Cree’s Petition was filed more than a year after it was served with a
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`complaint alleging infringement of the ’486 patent, Cree’s Petition is time-barred
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`under 35 U.S.C. § 315(b) and must be denied.
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`II.
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`CONCLUSION
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`For the reasons presented above, the Petition is time-barred and must be
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`denied.
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`- 4 -
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`Dated: August 31, 2018
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`James T. Wilson (Reg. No. 41,439)
`Aldo Noto (Reg. No. 35,628)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: whelge@dbjg.com
`Email: jwilson@dbjg.com
`Email: anoto@dbjg.com
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`Counsel for Patent Owner
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`- 5 -
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`CERTIFICATE OF WORD COUNT
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`The undersigned certifies that the foregoing PATENT OWNER’S
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`PRELIMINARY RESPONSE complies with the type-volume limitation in 37
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`C.F.R. § 42.24(b)(1). According to the word-processing system’s word count, the
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`brief contains 834 words, excluding the parts of the brief exempted by 37 C.F.R. §
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`42.24(a).
`
`
`
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`
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`By: /s/ Wayne M. Helge
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`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
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`- 6 -
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`
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`IPR2018-01220 Patent Owner’s Preliminary Response
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S
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`PRELIMINARY RESPONSE was served to Petitioner by serving the
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`correspondence email addresses of record as follows:
`
`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)
`dcochran@jonesday.com
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`
`Matthew W. Johnson (Reg. No. 59,108)
`mwjohnsone@jonesday.com
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
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`
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`Dated: August 31, 2018
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`
`
`
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`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
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`- 7 -
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`
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