Eizo Corporationv.Barco N.V.

Patent Trial and Appeal Board

Oct 10, 2014

13338880 (P.T.A.B. Oct. 10, 2014)

Trials@uspto.gov Paper 17
571-272-7822 Entered: 10 October 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EIZO CORPORATION,
Petitioner,

v.

BARCO N.V.,
Patent Owner.

Case IPR2014-00778
Patent RE43,707 E

Before KALYAN K. DESHPANDE, JAMES B. ARPIN, and
DAVID C. McKONE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2014-00778
Patent US RE43,707 E

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I. INTRODUCTION
A. Background
Eizo Corporation (“Petitioner”) filed a corrected Petition requesting
an inter partes review of claims 64–66, 68–76, 80, 85–88, 91, 98–100, and
116–129 of Patent No. US RE43,707 E (Ex. 1015; “the ’707 patent”).
Paper 6 (“Pet.”). Petitioner filed a Motion for Joinder (Paper 11, “Mot.”)
accompanying the Petition, seeking to join this proceeding with Eizo Corp.
v. Barco N.V., Case IPR2014-00358 (PTAB) (“the ʼ358 proceeding”).
Barco N.V. (“Patent Owner”) timely filed a Preliminary Response (Paper 14,
“Prelim. Resp.”) and an Opposition to Petitioner’s Motion for Joinder (Paper
12, “Opp.”). Petitioner further filed a Reply (Paper 16, “Reply”) to Patent
Owner’s Opposition. As explained in our Decision on Petitioner’s Motion
for Joinder (Paper 17), we deny Petitioner’s request to join this proceeding
with the ʼ358 proceeding.
35 U.S.C. § 315 provides in pertinent part:
(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).
For the reasons that follow, we determine that neither the Initial
Petition nor the Corrected Petition was filed within the statutory period of
35 U.S.C. § 315(b) and, therefore, we deny institution of an inter partes
review.
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Patent US RE43,707 E

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B. Related Proceedings
Petitioner indicates that the ’707 patent is the subject of a federal
district court case: Barco, N.V. v. Eizo Nanao Corp., 11-cv-00258 (N.D.
Ga). Pet. 1.
As stated above, the ʼ707 patent is the subject of inter partes review in
the ’358 proceeding. Additionally, the ’707 patent is the subject of Inter
Partes Reexamination No. 95/002,047 and was the subject of Ex Parte
Reexamination No. 90/020,037 (“the ’037 Reexam.”).
1
Pet. 1.
II. ANALYSIS
In the present proceeding, Petitioner filed a Petition for inter partes
review of the ʼ707 patent and submitted a Motion for Joinder on July 21,
2014, seeking to join this Petition with the ʼ358 proceeding. Patent Owner
contends that the Petition is time-barred from inter partes review because its
May 20, 2014, filing date is more than one year after the date Petitioner was
served with the amended complaint in the related district court action,
January 17, 2013. Prelim. Resp. 2; see Ex. 2005. Petitioner asserts that the
“one-year time bar does not apply to a request for joinder” and the “motion
for joinder permits a petition for inter partes review . . . to be filed more than
one year after service of a complaint.” Reply 2. That is, Petitioner
acknowledges that this Petition was filed more than one year after the
amended complaint was served. Accordingly, in light of our decision

1
Reexamination Certificate No. US RE43,707 C1 (“the ’707 C1 certificate”)
issued on March 31, 2014.
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denying joinder of this proceeding with the ʼ358 proceeding, this Petition is
time-barred.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not filed a
Petition in this proceeding within the one-year statutory period of
35 U.S.C. § 315(b). Accordingly, we deny institution of inter partes review
in this proceeding.
IV. ORDER
For the reasons given, it is
ORDERED that, pursuant to 35 U.S.C. § 315(b), Petitioner’s Corrected
Petition is denied as to all challenged grounds, and no trial is instituted.
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Patent US RE43,707 E

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For PETITIONER:
Marc Weinstein
marcweinstein@quinnemmanuel.com

For PATENT OWNER:

Kerry Hartman
khartman@hartmanpatents.com

Jeffrey Morgan
Jeff.morgan@BTlaw.com