`Trials@uspto.gov
`571-272-7822 Entered: November 19, 2018
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`
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`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CREE, INC.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01220
`Patent 7,256,486 B2
`____________
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 315(b)
`
`
`
`
`
`IPR2018-01220
`Patent 7,256,486 B2
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute inter
`partes review of U.S. Patent No. 7,256,486 B2 (Ex. 1001, “the ’486
`patent”). See 35 U.S.C. § 314(a); 37 C.F.R § 42.4(a) (delegating authority
`to institute trial to the Board). Cree, Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) seeking inter partes review of claims 1–4 of the ’486
`patent. Patent Owner, Document Security Systems, Inc., filed a Preliminary
`Response to the Petition (Paper 8, “Prelim. Resp.”).
`Upon consideration of the Petition and the Preliminary Response, we
`find that the Petition is barred by 35 U.S.C. § 315(b). Accordingly, we deny
`institution of an inter partes review.
`
`II. RELATED MATTERS
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 83; Paper 4 (Patent Owner’s Mandatory
`Notices). The parties identify the following district court cases: Document
`Security Systems, Inc. v. Seoul Semiconductor Co. Ltd., No. 2:17-cv-00308
`(E.D. Tex.) (dismissed without prejudice); Document Security Systems, Inc.
`v. Seoul Semiconductor Co. Ltd., No. 8:17-cv-00981 (C.D. Cal.); Document
`Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-04263 (C.D. Cal.);
`Document Security Systems, Inc. v. Cree, Inc., No. 2:17-cv-00309 (E.D.
`Tex.) (dismissed without prejudice); Document Security Systems, Inc. v.
`Everlight Electronics Co., Ltd. et al., No. 2:17-cv-00310 (E.D. Tex.)
`(dismissed without prejudice); Document Security Systems, Inc. v. Everlight
`Electronics Co., Ltd. et al., No. 2:17-cv-04273 (C.D. Cal.); Document
`Security Systems, Inc. v. OSRAM GmbH, No. 2:17-cv-05184 (C.D. Cal.);
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`IPR2018-01220
`Patent 7,256,486 B2
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`Document Security Systems, Inc. v. Lite-On, Inc., No. 2:17-cv-06050 (C.D.
`Cal.); and Document Security Systems, Inc. v. Nichia Corporation et al.,
`No. 2:17-cv-08849 (C.D. Cal.). Pet. 83; Paper 4, 2–3 (identifying the district
`court cases as involving the ’486 patent). The parties also indicate that inter
`partes review of the ’486 patent has been requested in IPR2018-00333,
`IPR2018-01166, IPR2018-01205, and IPR2018-01225. Pet. 83; Paper 4, 3–
`4.
`
`III. ANALYSIS
`In its Preliminary Response, Patent Owner contends that the Petition
`is untimely and no inter partes review can be instituted. PO Resp. 1–4
`(citing 35 U.S.C. § 315(b); Click-to-Call Tech., LP v. Ingenio, Inc., 899 F.3d
`1321, 1330 (Fed. Cir. 2018) (en banc)). Patent Owner presents evidence that
`Petitioner was served with a complaint alleging infringement of the ’486
`patent more than one year prior to the filing of the Petition. Prelim. Resp. 1–
`2 (citing Ex. 2109 ¶¶ 20–26; Ex. 2110, 2). Petitioner did not request an
`opportunity to respond.
` Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringement of the patent.”
`The U.S. Court of Appeals for the Federal Circuit held, in an en banc
`decision issued after the Petition was filed, that Ҥ 315(b) . . .
`unambiguously precludes . . . instituting an IPR if the petition seeking
`institution is filed more than one year after the petitioner, real party in
`interest, or privy of the petitioner ‘is served with a complaint’ alleging patent
`infringement.” Click-to-Call, 899 F.3d at 1330. The court further held that
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`IPR2018-01220
`Patent 7,256,486 B2
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`“§ 315(b)’s time bar is implicated once a party receives notice through
`official delivery of a complaint in a civil action, irrespective of subsequent
`events,” including dismissal, with or without prejudice. Id.
`Petitioner, who is the real party-in-interest (Pet. 82), was served with
`a complaint alleging infringement of the ’486 patent in Document Security
`Systems, Inc. v. Cree, Inc., No. 2:17-cv-00309 (E.D. Tex.). See Ex. 2109,
`1 (identifying Petitioner as defendant), 3 (identifying ’486 patent), 6–9
`(alleging infringement of the ’486 patent), 17 (requesting judgment that
`Petitioner has infringed one or more claims of the ’486 patent). According
`to the proof of service, this complaint was served on Petitioner on April 14,
`2017. See Ex. 2110, 3.
`The Petition was filed on June 7, 2018. See Paper 6 (Notice of Filing
`Date Accorded to Petition). This filing date is more than one year after the
`date of service of the complaint alleging infringement of the ’486 patent. In
`addition, the Petition was not accompanied by a motion for joinder.
`35 U.S.C. § 315(b) (indicating the time bar “shall not apply to a request for
`joinder”).
`Accordingly, the Petition is untimely, and we are barred from
`instituting an inter partes review. 35 U.S.C. § 315(b); Click-to-Call, 899
`F.3d. at 1330.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED, pursuant to 35 U.S.C. § 315(b), that the Petition is
`
`denied, and no inter partes review is instituted as to any claim of the ’486
`patent.
`
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`IPR2018-01220
`Patent 7,256,486 B2
`
`FOR PETITIONER:
`Blaney Harper
`Douglas Pearson
`Yury Kalish
`Joseph M. Sauer
`David B. Cochran
`Matthew W. Johnson
`JONES DAY
`bharper@jonesday.com
`dhpearson@jonesday.com
`ykalish@jonesday.com
`jmsauer@jonesday.com
`dcochran@jonesday.com
`mwjohnsone@jonesday.com
`
`FOR PATENT OWNER:
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
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