Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 1 of 12 Page ID #:891
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`HANSON BRIDGETT LLP
`Raffi Zerounian
`rzerounian@hansonbridgett.com
`GARRETT M. MOTT
`gmott@hansonbridgett.com
`555 S. Flower St., Ste. 650
`Los Angeles, CA 90071
`Tel: (213) 395-7620
`Fax: (213) 395-7615
`
`Russell C. Petersen
`russ.petersen@hansonbridgett.com
`HANSON BRIDGETT LLP
`425 Market St., 26th Fl.
`San Francisco, CA 94105
`Tel: (415) 777-3200
`Fax: (415) 541-9366
`
`Li Chen (pro hac vice)
`lchen@chenmalin.com
`CHEN MALIN LLP
`1700 Pacific Ave., Ste. 2400
`Dallas, TX 75201
`Tel: (214) 627-9950
`Fax: (214) 627-9940
`
`Attorneys for Defendants
`EVERLIGHT ELECTRONICS CO., LTD.
`and EVERLIGHT AMERICAS, INC.
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
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`SOUTHERN DIVISION
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`Plaintiff,
`
`vs.
`
`DOCUMENT SECURITY SYSTEMS,
`INC.,
`
`
`
`
`
`EVERLIGHT ELECTRONICS CO.,
`LTD. and EVERLIGHT AMERICAS,
`INC.,
`
`
`
`Defendants.
`
`Case Number: 2:17-cv-04273-JVS-JCG
`
`DEFENDANTS EVERLIGHT
`ELECTRONICS’ AND
`EVERLIGHT AMERICAS’
`ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S
`SECOND AMENDED COMPLAINT
`
`
`DEMAND FOR JURY TRIAL
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`
`
`
`
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`
`
`
`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ DEFENDANTS ANSWER AND
`AFFIRMATIVE DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`
`
`

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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 2 of 12 Page ID #:892
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`Defendants Everlight Electronics Co., Ltd. (“Everlight Electronics”) and
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`Everlight Americas, Inc. (“ELA”) (collectively, “Everlight”), for their collective
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`answer and affirmative defenses to the Second Amended Complaint of Plaintiff
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`Document Security Systems, Inc. (“DSS”), respond as follows:
`
`IN ANSWER TO DSS’S SECOND AMENDED COMPLAINT
`
`PARTIES
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`1.
`
`Everlight lacks knowledge or information sufficient to form a belief as to
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`the truth or falsity of the allegations in Paragraph 1, and on that basis denies them.
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`2.
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`Everlight lacks knowledge or information sufficient to form a belief as to
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`the truth or falsity of the allegations in Paragraph 2, and on that basis denies them.
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`3.
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`4.
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`5.
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`6.
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`Admitted.
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`Admitted.
`
`Admitted.
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`JURISDICTION AND VENUE
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`Everlight admits that ELA is registered to do business in California, has
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`appointed Tao Wang as its agent for service of process in California, and has an office
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`at 4237 East Airport Drive, Ontario, CA 91761. Everlight further admits that ELA
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`engages in commercial activities in the State of California and in this District, that ELA
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`has availed itself of the benefits of doing business in this State, and that Everlight is
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`subject to personal jurisdiction before this Court. Everlight denies that either Everlight
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`Electronics or ELA’s activities constitute an infringement of any validly issue claims
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`of any of the asserted claims, and Everlight denies the remaining allegations in
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`Paragraph 6.
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`7.
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`Admitted.
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`BACKGROUND
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`8.
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`Everlight admits that the first page of U.S. Patent No. 6,949,771 (“the ’771
`
`Patent”) lists the title “Light Source” and identifies an issue date of “September 27,
`
`2005.” Everlight admits that DSS purports Exhibit A to the Complaint to be a true and
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`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 3 of 12 Page ID #:893
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`correct copy of the ’771 Patent. Everlight lacks knowledge or information sufficient to
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`form a belief as to the truth or falsity of the remaining allegations in Paragraph 8, and
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`on that basis denies them.
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`9.
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`Everlight admits that the first page of U.S. Patent No. 7,524,087 (“the ’087
`
`Patent”) lists the title “Optical Device” and identifies an issue date of “April 28, 2009.”
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`Everlight admits that DSS purports Exhibit B to the Complaint to be a true and correct
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`copy of the ’087 Patent. Everlight lacks knowledge or information sufficient to form a
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`belief as to the truth or falsity of the remaining allegations in Paragraph 9, and on that
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`basis denies them.
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`10. Everlight admits that the first page of U.S. Patent No. 7,919,787 (“the ’787
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`Patent”) lists the title “Semiconductor Device with a Light Emitting Semiconductor
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`Die” and identifies an issue date of “April 5, 2011.” Everlight admits that DSS purports
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`Exhibit C to the Complaint to be a true and correct copy of the ’787 Patent. Everlight
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`lacks knowledge or information sufficient to form a belief as to the truth or falsity of
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`the remaining allegations in Paragraph 10, and on that basis denies them.
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`11. Everlight admits that the first page of U.S. Patent No. 7,256,486 (“the ’486
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`Patent”) lists the title “Packing Device for Semiconductor Die, Semiconductor Device
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`Incorporating Same and Method of Making Same” and identifies an issue date of
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`“August 14, 2007.” Everlight admits that DSS purports Exhibit D to the Complaint to
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`be a true and correct copy of the ’486 Patent. Everlight lacks knowledge or information
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`sufficient to form a belief as to the truth or falsity of the remaining allegations in
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`Paragraph 11, and on that basis denies them.
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`12. Everlight admits the ‘771, ‘087, ‘787, and ‘486 Patents are collectively
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`referred to in the Complaint as the “asserted patents” or “patents-in-suit.” Except as
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`addressed below, Everlight lacks knowledge or information sufficient to form a belief
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`as to the truth or falsity of the allegations in Paragraph 12, and on that basis denies
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`them.
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`3
`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 4 of 12 Page ID #:894
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`13. Everlight lacks knowledge or information sufficient to form a belief as to
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`the truth or falsity of the allegations in Paragraph 13, and on that basis denies them.
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`14. Everlight incorporates by reference paragraphs 1 through 13 of this
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`COUNT I
`
`Answer.
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`15. Denied.
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`16. Denied.
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`17. Everlight denies that it imports, sells, or offers to sell a product with model
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`number EAPL32328RGBA0. The remaining allegations in this paragraph are directed
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`to claim construction positions and legal conclusions to which no response is required,
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`and Everlight on at least that basis denies the remaining allegations of Paragraph 17,
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`and specifically denies that it infringes any validly issued claim of any asserted patent.
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`18. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 18 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`19. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 19 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`20. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
`
`least that basis denies the allegations of Paragraph 20 and specifically denies that it
`
`infringes any validly issued claim of any asserted patent.
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`21. Denied.
`
`22. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’771 Patent upon being served with DSS’s Complaint in
`
`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the ‘771 Accused Instrumentalities
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`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 5 of 12 Page ID #:895
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`infringe any validly issued asserted claims, Everlight denies it is inducing others to
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`infringe the asserted patents, and Everlight denies the remaining allegations of
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`Paragraph 22.
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`23. Denied.
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`24. Denied.
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`25. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’771 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the remaining allegations of
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`Paragraph 25.
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`26. Denied.
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`27. Everlight incorporates by reference paragraphs 1 through 26 of this
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`COUNT II
`
`Answer.
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`28. Denied.
`
`29. Denied.
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`30. Everlight denies that it imports, sells, or offers to sell a product with model
`
`number EAPL5050RGBA1. The remaining allegations in this paragraph are directed
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`to claim construction positions and legal conclusions to which no response is required,
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`and Everlight on at least that basis denies the remaining allegations of Paragraph 30,
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`and specifically denies that it infringes any validly issued claim of any asserted patent.
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`31. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 31 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`32. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 32 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`5
`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 6 of 12 Page ID #:896
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`33. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 33 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`34. Denied.
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`35. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’087 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the ‘087 Accused Instrumentalities
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`infringe any validly issued asserted claims, Everlight denies it is inducing others to
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`infringe the asserted patents, and Everlight denies the remaining allegations of
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`Paragraph 35.
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`36. Denied.
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`37. Denied.
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`38. Denied.
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`39. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’087 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the remaining allegations of
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`Paragraph 39.
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`40. Denied.
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`41. Everlight incorporates by reference paragraphs 1 through 40 of this
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`COUNT III
`
`Answer.
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`42. Denied.
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`43. Denied.
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`44. Everlight admits that it sells a “3045 package series” product line but
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`denies that it imports, sells, or offers to sell a product with model number
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`EAHP3045BA0. The remaining allegations in this paragraph are directed to claim
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`construction positions and legal conclusions to which no response is required, and
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`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 7 of 12 Page ID #:897
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`Everlight on at least that basis denies the remaining allegations of Paragraph 44, and
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`specifically denies that it infringes any validly issued claim of any asserted patent.
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`45. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 45 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`46. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 46 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`47. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 47 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`48. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 48 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`49. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 49 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`50. Denied.
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`51. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’787 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the ‘787 Accused Instrumentalities
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`infringe any validly issued asserted claims, Everlight denies it is inducing others to
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`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 8 of 12 Page ID #:898
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`infringe the asserted patents, and Everlight denies the remaining allegations of
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`Paragraph 51.
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`52. Denied.
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`53. Denied.
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`54. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’787 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the remaining allegations of
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`Paragraph 54.
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`55. Denied.
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`56. Everlight incorporates by reference paragraphs 1 through 55 of this
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`COUNT IV
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`Answer.
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`57. Denied.
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`58. Denied.
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`59. Everlight admits that it sells a “3045 package series” product line but
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`denies importing, selling or offering to sell a product with model number
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`EAHP3045BA0. The remaining allegations in this paragraph are directed to claim
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`construction positions and legal conclusions to which no response is required, and
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`Everlight on at least that basis denies the remaining allegations of Paragraph 59, and
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`specifically denies that it infringes any validly issued claim of any asserted patent.
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`60. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 60 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`61. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 61 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 9 of 12 Page ID #:899
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`62. The allegations in this paragraph are directed to claim construction
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`positions and legal conclusions to which no response is required, and Everlight on at
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`least that basis denies the allegations of Paragraph 62 and specifically denies that it
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`infringes any validly issued claim of any asserted patent.
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`63. Denied.
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`64. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’486 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the ‘486 Accused Instrumentalities
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`infringe any validly issued asserted claims, Everlight denies it is inducing others to
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`infringe the asserted patents, and Everlight denies the remaining allegations of
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`Paragraph 64.
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`65. Denied.
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`66. Denied.
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`67. Everlight admits that Everlight Electronics and Everlight Americas
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`learned of the existence of the ’486 Patent upon being served with DSS’s Complaint in
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`Case No. 2:17-cv-310 (E.D. Tex.). Everlight denies the remaining allegations of
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`Paragraph 67.
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`68. Denied.
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`PRAYER FOR RELIEF
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`Everlight denies that DSS is entitled to any relief whatsoever, including but not
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`limited to the relief that DSS prays for in DSS’s Prayer for Relief.
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`JURY TRIAL DEMANDED
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`DSS’s demand for a jury trial does not require a response from Everlight.
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`AFFIRMATIVE DEFENSES
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`Everlight asserts the following Affirmative Defenses, without admitting any of
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`the allegations in the Complaint not otherwise expressly admitted. By alleging these
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`Affirmative Defenses, Everlight does not agree or concede that it bears the burden of
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`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 10 of 12 Page ID #:900
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`proof, persuasion, or production on any of them. Everlight further reserves the right to
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`amend its Affirmative Defenses and/or allege additional Affirmative Defenses.
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`FIRST AFFIRMATIVE DEFENSE—LACK OF STANDING
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`
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`DSS does not own all right, title, and interest in and to all of the patents-in-suit,
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`and it therefore lacks standing to bring the present lawsuit.
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`SECOND AFFIRMATIVE DEFENSE—FAILURE TO JOIN AN
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`INDISPENSABLE PARTY
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`DSS’s Second Amended Complaint improperly failed to join one or more parties
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`required to be joined under Fed. R. Civ. Proc. 19.
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`THIRD AFFIRMATIVE DEFENSE—NON-INFRINGEMENT
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`Everlight has not infringed and is not infringing any claims of the patents-in-
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`suit, whether directly or indirectly (including by either contributory or induced
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`infringement), and whether literally or under the doctrine of equivalents.
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`FOURTH AFFIRMATIVE DEFENSE—INVALIDITY
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`All claims of the patents-in-suit are invalid for failure to comply with one or
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`more of the conditions and requirements for patentability. For example, the patents-in-
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`suit are each invalid at least pursuant to 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`FIFTH AFFIRMATIVE DEFENSE—LIMITATION ON DAMAGES
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`DSS’s claims for damages are limited and/or barred by 35 U.S.C. § 286. DSS
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`may not obtain any recovery based on alleged infringement committed more than six
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`years prior to DSS filing its Original Complaint.
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`SIXTH AFFIRMATIVE DEFENSE—FAILURE TO MARK
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`
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`DSS’s claims for damages are limited and/or barred by 35 U.S.C. § 287. For
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`example, on information and belief, DSS and/or its predecessors-in-interest in the
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`patents-in-suit, and/or any of their licensees, and/or any entities making, offering for
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`sale, or selling patented articles for or under any of the foregoing, failed to comply with
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`the marking requirements set forth in 35 U.S.C. § 287, making Everlight not liable to
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`10
`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 11 of 12 Page ID #:901
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`
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`DSS for any alleged infringement committed before Everlight received actual notice
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`that it was allegedly infringing the patents-in-suit.
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`SEVENTH AFFIRMATIVE DEFENSE—PROSECUTION HISTORY
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`ESTOPPEL
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`DSS’s claims are limited and/or barred by the doctrine of prosecution history
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`estoppel. For example, by reason of proceedings in the United States Patent and
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`Trademark Office during the prosecution of each of the patents-in-suit, including
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`statements, arguments, amendments, assertions, and/or representations made by or on
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`behalf of the applicant(s) for each of the patents-in-suit, DSS is barred by the doctrine
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`of prosecution history estoppel from construing the claims of any of the patents-in-suit
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`to cover any product, method, or service under the doctrine of equivalents.
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`RESERVATION OF ADDITIONAL DEFENSES
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`Everlight reserves the right to seek leave to amend its Answer to plead additional
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`defenses, and/or to supplement existing defenses, as such additional or existing
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`defenses may become apparent in the course of discovery and Everlight’s ongoing
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`investigation.
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`PRAYER FOR RELIEF
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`A.
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`Enter a judgment in favor of Everlight, and against Plaintiff, on all of
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`Plaintiff’s claims;
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`B. Dismiss all of Plaintiff’s claims with prejudice;
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`C. Deny all of Plaintiff’s prayers for relief;
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`D. Award Everlight its costs, expenses, and reasonable attorneys’ fees
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`including, for example, pursuant to 35 U.S.C. § 285; and
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`E. Grant to Everlight such other relief as the Court deems just and proper.
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`///
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`///
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`///
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`///
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`11
`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S SECOND AMENDED COMPLAINT
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`Case 2:17-cv-04273-JVS-JCG Document 61 Filed 12/28/17 Page 12 of 12 Page ID #:902
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`DEMAND FOR JURY TRIAL
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`Pursuant to Fed. R. Civ. P. 38(b) and L.R. 38-1, Everlight hereby demands a jury
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`trial on all issues so triable in this action.
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`Date: December 28, 2017
`
`
`/s/ Raffi Zerounian
`Raffi Zerounian
`rzerounian@hansonbridgett.com
`GARRETT M. MOTT
`gmott@hansonbridgett.com
`HANSON BRIDGETT LLP
`555 S. Flower St., Ste. 650
`Los Angeles, CA 90071
`Tel: (213) 395-7620
`Fax: (213) 395-7615
`
`Russell C. Petersen
`russ.petersen@hansonbridgett.com
`HANSON BRIDGETT LLP
`425 Market St., 26th Fl.
`San Francisco, CA 94105
`Tel: (415) 777-3200
`Fax: (415) 541-9366
`
`Li Chen (pro hac vice)
`lchen@chenmalin.com
`CHEN MALIN LLP
`1700 Pacific Ave., Ste. 2400
`Dallas, TX 75201
`Tel: (214) 627-9950
`Fax: (214) 627-9940
`
`Attorneys for Defendants
`EVERLIGHT ELECTRONICS CO.,
`LTD.
`and EVERLIGHT AMERICAS, INC.
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`Case No. 2:17-cv-04273-JVS-JCG
`DEFENDANTS EVERLIGHT ELECTRONICS’ AND EVERLIGHT AMERICAS’ ANSWER AND AFFIRMATIVE
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