Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: November 14, 2018
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CREE, INC.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01221
`Patent 7,524,087 B1
`____________
`
`
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 315(b)
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 14, 2018
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CREE, INC.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01221
`Patent 7,524,087 B1
`____________
`
`
`
`Before BARBARA A. BENOIT, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 315(b)
`
`
`
`
`
`IPR2018-01221
`Patent 7,524,087 B1
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute inter
`partes review of U.S. Patent No. 7,524,087 B1 (Ex. 1001, “the ’087
`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 1, “Pet.”) seeking inter partes review of claims 1, 6–8, and 15–17 of
`the ’087 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. 72–73; 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.);
`
`2
`
`
`
`IPR2018-01221
`Patent 7,524,087 B1
`
`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. 72–73; Paper 4, 2–3 (identifying the
`district court cases as involving the ’087 patent). The parties also indicate
`that inter partes review of the ’087 patent has been requested in IPR2018-
`00522, IPR2018-01165, and IPR2018-01226. Pet. 73; Paper 4, 3–4.
`
`III. DISCUSSION
`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 ’087
`patent more than one year prior to the filing of the Petition. Prelim. Resp. 1–
`2 (citing Ex. 2109 ¶¶ 35–41; 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
`“§ 315(b)’s time bar is implicated once a party receives notice through
`
`3
`
`
`
`IPR2018-01221
`Patent 7,524,087 B1
`
`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. 72), was served with a
`complaint alleging infringement of the ’087 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 ’087 patent), 12–14
`(alleging infringement of the ’087 patent), 17 (requesting judgment that
`Petitioner has infringed one or more claims of the ’087 patent). According
`to the proof of service, this complaint was served on Petitioner on April 14,
`2017. See Ex. 1210, 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 ’087 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
`For the reasons given, it is
`
`ORDERED that the Petition is denied as to all challenged claims, and
`
`no trial is instituted.
`
`
`
`4
`
`
`
`IPR2018-01221
`Patent 7,524,087 B1
`
`FOR PETITIONER:
`Blaney Harper
`Douglas Pearson
`Yury Kalish
`Joseph Sauer
`David Cochran
`Matthew Johnson
`JONES DAY
`bharper@jonesday.com
`dhpearson@jonesday.com
`ykalish@jonesday.com
`jmsauer@jonesday.com
`dcochran@jonesday.com
`mwjohnson@jonesday.com
`
`FOR PATENT OWNER:
`Wayne Helge
`James Wilson
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`
`5
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`
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