Paper No. 12
`Trials@uspto.gov
`571-272-7822 Entered: November 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EVERLIGHT ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01260
`Patent 7,919,787 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EVERLIGHT ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01260
`Patent 7,919,787 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`I. INTRODUCTION
`Everlight Electronics Co., Ltd. (“Petitioner”)1 filed a Petition for inter
`partes review of claims 1–14 of U.S. Patent No. 7,919,787 B2 (Ex. 1001,
`“the ’787 patent”). Paper 1 (“Pet.”). Petitioner also filed a Motion for
`Joinder with Nichia Corporation v. Document Security Systems, Inc., Case
`IPR2018-00965 (“the Nichia IPR”). Paper 8 (“Mot.”). The petitioner in the
`Nichia IPR — Nichia Corporation — does not oppose the Motion for
`Joinder. Paper 11, 2. Document Security Systems, Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Patent Owner also
`filed an Opposition to the Motion for Joinder. Paper 9 (“Opposition or
`Opp.”). Petitioner filed a Reply to the Opposition. Paper 10 (“Reply”). We
`have authority under 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`For the reasons described below, we institute an inter partes review of
`the challenged claims and grant Petitioner’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`The parties indicate that the ’787 patent is the subject of several court
`proceedings. Pet. 1; Paper 3, 2. The ’787 patent also is the subject of the
`Nichia IPR. Application 11/838,301, which was filed August 14, 2007 and
`issued as the ’787 patent, claims to be a continuation-in-part of Application
`10/608,605 (“the ’605 application”), filed June 27, 2003, which issued as
`
`
`1 Petitioner, Everlight Electronics Co., Ltd., identifies Everlight Americas,
`Inc. as a real party-in-interest. Pet. 1.
`
`2
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`U.S. Patent No. 7,256,486 B2 (“the ’486 patent”). The ’486 patent is
`involved in IPR2018-00333, IPR2018-01166, IPR2018-01205, IPR2018-
`01220, and IPR2018-01225.
`In the Nichia IPR, we instituted an inter partes review of claims 1–14
`of the ’787 patent on the following grounds:
`
`References
`Lumbard2 and Weeks3
`Lumbard and Wirth4
`Lumbard and Negley5
`Ishidu6 and Weeks
`Ishidu and Wirth
`Ishidu and Negley
`Ogawa7 and Weeks
`Ogawa and Wirth
`Ogawa and Negley
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–14
`1–14
`1–14
`1 and 5–7
`1 and 5–7
`1 and 5–7
`1–14
`1–14
`1–14
`
`Nichia Corporation v. Document Security Systems, Inc., Case IPR2018-
`00965, slip op. at 5, 31 (PTAB October 29, 2018) (Paper 15) (“Nichia
`Dec.”).
`
`
`2 U.S. Patent No. Re. 36,614, issued Mar. 14, 2000 (Ex. 1006, “Lumbard”).
`3 U.S. Patent No. 6,611,002, filed Feb. 23, 2001, issued Aug. 26, 2003
`(Ex. 1007, “Weeks”).
`4 WO 2005/081319, filed Feb. 18, 2005, issued Sept. 1, 2005 (Ex. 1008,
`“Wirth”).
`5 U.S. Patent Application Publication No. 2004/0217360 A1, filed Apr. 6,
`2004, published Nov. 4, 2004 (Ex. 1009, “Negley”).
`6 U.S. Patent Application Publication No. 2006/0198162 A1, filed Mar. 15,
`2004, published Sept. 7, 2006 (Ex. 1010, “Ishidu”).
`7 U.S. Patent Application Publication No. 2006/0113906 A1, filed Nov. 29,
`2005, published June 1, 2006 (Ex. 1011, “Ogawa”).
`3
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Nichia IPR.
`Compare Pet. 16–79, with Nichia Dec. 5, 31. Indeed, Petitioner contends
`that the Petition “is substantively identical to the petition in Nichia’s IPR.”
`Mot. 4; see also, id. at 6. Petitioner acknowledges that the Petition relies on
`a different expert; however, Petitioner asserts that “Everlight’s expert
`reviewed and agreed with the expert declaration supporting Nichia’s IPR,
`and Everlight’s expert declaration is substantially identical to Nichia’s
`expert declaration.” Id.
`Patent Owner’s Preliminary Response does not address Petitioner’s
`prior art, arguments, or evidence. See generally, Prelim. Resp. However,
`Patent Owner contends that the Petition is time barred. Id. at 1–5; see also
`Opp. 1–4. Patent Owner asserts that Petitioner’s real party-in-interest,
`Everlight Americas, Inc., was served with a complaint alleging infringement
`of the ’787 patent on April 26, 2017, more than one year before Everlight
`filed its petition for IPR on June 15, 2018. Prelim. Resp. 1–2. Thus, Patent
`Owner argues that under 35 U.S.C. § 315 (b) Everlight’s Petition is time
`barred. Id.
` 35 U.S.C. § 315 (b) states:
`(b) Patent Owner’s Action.—
`An 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 time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under
`subsection (c).
`
`4
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`As discussed in more detail below, a Motion for Joinder was filed in
`the present case. Thus, the time bar does not apply as the Petition falls under
`the explicit exception in 35 U.S.C. § 315(b): “The time limitation set forth in
`the preceding sentence shall not apply to a request for joinder.” Patent
`Owner acknowledges as much in its Opposition to the Motion for Joinder.
`Opp. 5 (“Everlight can only participate in an IPR against the ’787 patent
`through joinder.”).
`For the same reasons set forth in our institution decision in the Nichia
`IPR, we determine that the information presented in the Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that claims 1–
`14 are unpatentable. See Nichia Dec. 8–31. Accordingly, we institute an
`inter partes review on the same grounds as the ones on which we instituted
`review in the Nichia IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition in this proceeding was accorded a filing date of June 15,
`2018. See Paper 5. The Nichia IPR was instituted on October 29, 2018.
`Petitioner filed a Motion for Joinder on October 2, 2018. Thus, Petitioner’s
`Motion for Joinder is timely because joinder was requested no later than one
`month after the Nichia IPR. See 37 C.F.R. § 42.122 (b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`5
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`The Petition in this case asserts the same unpatentability grounds on
`which we instituted review in the Nichia IPR. See Mot. 4. Petitioner also
`relies on the same prior art analysis and though it relies on a different expert,
`Petitioner asserts that “Everlight’s expert declaration is substantially
`identical to Nichia’s expert declaration.” See id. at 6–7. Indeed, the Petition
`is nearly identical to the petition filed by the Nichia Petitioner. See id.
`Thus, this inter partes review does not present any ground or matter not
`already at issue in the Nichia IPR.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of the Nichia Petitioner
`as a party. Id. at 7–8. Petitioner agrees to assume “a complete and silent
`‘understudy’ role” and “would assume an active role only if Nichia ceases to
`participate in the proceeding.” Id. at 8–9. Petitioner further represents that
`it will “rely on the grounds instituted by the Board in Nichia’s IPR, and the
`arguments and discovery introduced by Nichia.” Id. at 9. Because
`Petitioner expects to participate only in a limited capacity, Petitioner submits
`that joinder will not impact the trial schedule for the Nichia IPR. Id. at 8–9.
`Concerning their expert, Petitioner states that “[a]ssuming Nichia does not
`terminate its IPR before its expert is deposed, Everlight agrees to rely
`
`6
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`entirely on, and be bound by, the expert declaration(s) and deposition in
`Nichia’s IPR.” Id. at 7–8.
`Patent Owner argues that joinder is not appropriate as it “will
`complicate the joined proceedings.” Opp. 5. Patent Owner further argues
`that joinder “could give rise to a request from Nichia Corporation for relief
`from a final written decision in this case due to friction caused by the
`joinder.” Id.
`Petitioner responds that it will do “nothing, unless and until the lead
`Petitioner abandons its IPR.” Reply 5. In view of Petitioner’s submission
`that it will do “nothing, unless and until the lead Petitioner abandons its
`IPR,” we see no reason to believe that Petitioner’s involvement will
`complicate this matter. Id. Moreover, we are not persuaded by Patent
`Owner’s speculative argument that joining Petitioner to the Nichia IPR
`could cause friction. Nichia does not oppose joinder and to the extent there
`are issues that arise during trial due to “friction” between Petitioner and
`Nichia, we are capable of managing any issues that may arise.
`Patent Owner contends that the Petition is time barred, and because
`the Motion for Joinder did not accompany the Petition, Petitioner has not
`satisfied the exception to the time bar provided in 35 U.S.C. § 315(b), which
`also is addressed in 37 C.F.R. § 42.122(b). Opp. 1–4. Thus, where a motion
`for joinder was filed after the Petition, as is the case here, Patent Owner
`argues, the motion for joinder does not excuse Petitioner from the one-year
`time bar. Id.
`37 C.F.R. § 42.122(b) states:
`Request for joinder. Joinder may be requested by a patent
`owner or petitioner. Any request for joinder must be filed, as a
`motion under § 42.22, no later than one month after the
`
`7
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`institution date of any inter partes review for which joinder is
`requested. The time period set forth in § 42.101(b) shall not
`apply when the petition is accompanied by a request for joinder.
`As can be seen, the rule provides a specific timing requirement of “no
`later than one month after the institution date of any inter partes review for
`which joinder is requested.” The rule does not set forth a specific time
`before which a motion for joinder can be filed. In view of this specific
`timing requirement, we determine that had the Office desired to limit the
`time of filing more specifically they would have done so. We have reviewed
`Patent Owner’s arguments, but disagree that the Petition had to be filed on
`the same day as the Motion to Join in order “to qualify for the time-bar
`exemption.” Opp. 3. At the time of our review of the present Petition we
`determine that the Petition was accompanied by a request for joinder.
`Thus, we agree with Petitioner that joinder with the Nichia IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–14 of the ’787 patent is instituted in IPR2018-01260;
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00965 is granted, and Everlight Electronics Co., Ltd. is joined as a petitioner
`in IPR2018-00965;
`FURTHER ORDERED that IPR2018-01260 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2018-
`00965;
`
`8
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in IPR2018-00965 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-00965 (Paper 16) remains unchanged;
`FURTHER ORDERED that in IPR2018-00965, Nichia and Petitioner
`will file each paper, except for a motion that does not involve the other
`party, as a single, consolidated filing, subject to the page limits set forth in
`37 C.F.R. § 42.24, and shall identify each such filing as a consolidated
`filing;
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with
`Nichia, Petitioner must request authorization from the Board to file a motion
`for additional pages, and no additional paper may be filed unless the Board
`grants such a motion;
`FURTHER ORDERED that Nichia and Petitioner shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by
`Nichia and Petitioner, within the timeframes set forth in 37 C.F.R. § 42.53(c)
`or agreed to by the parties;
`FURTHER ORDERED that Nichia and Petitioner shall collectively
`designate attorneys to present at the oral hearing, if requested and scheduled,
`in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2018-00965 shall
`be changed to reflect joinder of Everlight Electronics Co., Ltd. as a
`petitioner in accordance with the attached example; and
`
`9
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00965.
`
`
`PETITIONER:
`
`John F. Rabena
`William H. Mandir
`SUGHRUE MION PLLC
`jrabena@sughrue.com
`wmandir@sughrue.com
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`IPR2018-01260
`Patent 7,919,787 B2
`
`EXAMPLE CAPTION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`NICHIA CORPORATION and
`EVERLIGHT ELECTRONICS, LTD.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-009658
`Patent 7,919,787 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`8 Everlight Electronics Co., Ltd., who filed a petition in IPR2018-01260, has
`been joined as a petitioner in this proceeding.
`11
`
`
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