Case 2:17-cv-06050-JVS-JCG Document 53 Filed 03/06/18 Page 1 of 10 Page ID #:435
`
`Christopher Kao (SBN 237716)
` ckao@velaw.com
`David J. Tsai (SBN 244479)
` dtsai@velaw.com
`Brock S. Weber (SBN 261383)
` bweber@velaw.com
`VINSON & ELKINS L.L.P.
`555 Mission Street, Suite 2000
`San Francisco, CA 94105
`Tel.: 415.979.6900
`Fax: 415.651.8786
`
`Attorneys for Defendant
`Lite-On, Inc.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`DOCUMENT SECURITY SYSTEMS,
`INC., a New York corporation,
`
`Plaintiff,
`
`vs.
`LITE-ON, INC., a California corporation,
`and LITE-ON TECHNOLOGY
`CORPORATION, a Taiwanese
`corporation,
`
`Defendants.
`
`Case No. 2:17-cv-6050-JVS-JCG
`
`DEFENDANT LITE-ON, INC.’S
`ANSWER AND AFFIRMATIVE
`DEFENSES TO PLAINTIFF’S
`FIRST AMENDED COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`Lite-On’s Answer and Affirmative Defenses
`5514122
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`Case 2:17-cv-06050-JVS-JCG Document 53 Filed 03/06/18 Page 2 of 10 Page ID #:436
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`ANSWER AND AFFIRMATIVE DEFENSES OF
`DEFENDANT LITE-ON, INC.
`Defendant Lite-On, Inc. (“Lite-On”), for itself only, and by and through
`undersigned counsel, hereby files its Answer and Affirmative Defenses to the First
`Amended Complaint for Patent Infringement (Dkt. No. 36, “FAC”) of Plaintiff
`Document Security Systems, Inc. (“DSS” or “Plaintiff”) as follows:
`PARTIES
`Lite-On is without knowledge or information sufficient to form a belief
`1.
`as to the truth of the allegations of Paragraph 1 and therefore denies them.
`2.
`Lite-On is without knowledge or information sufficient to form a belief
`as to the truth of the allegations of Paragraph 2 and therefore denies them.
`3.
`Lite-On admits that it is a California corporation located at 720
`S. Hillview Drive, Milpitas, CA 95035.
`4.
`Lite-On admits that Lite-On Technology Corporation (“LTC”) is a
`Taiwan corporation located at 392 Ruey Kwang Road, Neihu, Taipei, Taiwan 114.
`5.
`Lite-On admits that Lite-On is a subsidiary of LTC. Lite-On denies any
`and all remaining allegations in Paragraph 5.
`JURISDICTION AND VENUE
`Lite-On admits the FAC purports to state a cause of action for patent
`6.
`infringement arising under the patent laws of the United States, Title 35 of the United
`States Code. Lite-On denies that it has infringed the patents-in-suit. Lite-On admits
`that this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
`Lite-On denies any and all remaining allegations in Paragraph 6.
`7.
`Paragraph 7 states legal conclusions to which no response is required.
`Lite-On does not contest that personal jurisdiction exists over Lite-On in the Central
`District of California for purposes of this action only. Lite-On denies that it, directly
`and/or through subsidiaries or intermediaries, has committed or continues to commit
`
`Lite-On’s Answer and Affirmative Defenses
`5514122
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`Case 2:17-cv-06050-JVS-JCG Document 53 Filed 03/06/18 Page 3 of 10 Page ID #:437
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`any acts of infringement in this District. Lite-On denies any and all remaining
`allegations in Paragraph 7.
`8.
`Paragraph 8 states legal conclusions to which no response is required.
`Lite-On does not contest that venue is proper in the Central District of California as to
`Lite-On for purposes of this action only under 28 U.S.C. §§ 1391 (b)-(c) and 1400(b).
`Lite-On denies any and all remaining allegations in Paragraph 8.
`BACKGROUND
`Lite-On admits that United States Patent No. 6,949,771 (“the ’771
`9.
`Patent”) is titled “Light Source,” and that what purports to be a copy of the ’771
`Patent is attached to the FAC as Exhibit A. Lite-On further admits that the ’771
`Patent, on its face, states that it was issued on September 27, 2005. Lite-On denies
`that the ’771 Patent was duly and legally issued. Lite-On is without knowledge or
`information sufficient to form a belief as to the truth of the remaining allegations in
`Paragraph 9 and therefore denies them.
`10.
`Lite-On admits that United States Patent No. 7,524,087 (“the ’087
`Patent”) is titled “Optical Device,” and that what purports to be a copy of the ’087
`Patent is attached to the FAC as Exhibit B. Lite-On further admits that the ’087
`Patent, on its face, states that it was issued on April 28, 2009. Lite-On denies that the
`’087 Patent was duly and legally issued. Lite-On is without knowledge or information
`sufficient to form a belief as to the truth of the remaining allegations in Paragraph 10
`and therefore denies them.
`11.
`Lite-On admits that United States Patent No. 7,256,486 (“the ’486
`Patent”) is titled “Packing Device for Semiconductor Die, Semiconductor Device
`Incorporating Same and Method of Making Same,” and that what purports to be a
`copy of the ’486 Patent is attached to the FAC as Exhibit C. Lite-On further admits
`that the ’486 Patent, on its face, states that it was issued on August 14, 2007. Lite-On
`denies that the ’486 Patent was duly and legally issued. Lite-On is without knowledge
`
`Lite-On’s Answer and Affirmative Defenses
`5514122
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`or information sufficient to form a belief as to the truth of the remaining allegations in
`Paragraph 11 and therefore denies them.
`12.
`Lite-On is without knowledge or information sufficient to form a belief
`as to the truth of the allegations contained in Paragraph 12 and therefore denies them.
`COUNT I
`ALLEGED INFRINGEMENT OF THE ’771 PATENT
`Lite-On incorporates by reference its responses to the allegations in
`13.
`Paragraphs 1 through 12 above as if fully set forth herein.
`14.
`Lite-On denies the allegations in Paragraph 14.
`15.
`Lite-On denies the allegations in Paragraph 15.
`16.
`Lite-On denies the allegations in Paragraph 16.
`17.
`Lite-On denies the allegations in Paragraph 17.
`18.
`Lite-On denies the allegations in Paragraph 18.
`19.
`Lite-On denies the allegations in Paragraph 19.
`20.
`Lite-On denies the allegations in Paragraph 20.
`21.
`The allegations of Paragraph 21 have been dismissed (Dkt. No. 49), and a
`response is therefore not required. Plaintiff is obligated to amend its complaint to
`remove these dismissed allegations, and Lite-On reserves all rights and remedies in
`this regard. In any event, Lite-On denies the allegations in Paragraph 21.
`22.
`Lite-On denies the allegations in Paragraph 22.
`COUNT II
`ALLEGED INFRINGEMENT OF THE ’087 PATENT
`Lite-On incorporates by reference its responses to the allegations in
`23.
`Paragraphs 1 through 22 above as if fully set forth herein. Lite-On denies any and all
`remaining allegations in Paragraph 23.
`24.
`Lite-On denies the allegations in Paragraph 24.
`25.
`Lite-On denies the allegations in Paragraph 25.
`26.
`Lite-On denies the allegations in Paragraph 26.
`
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`5514122
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`Case 2:17-cv-06050-JVS-JCG Document 53 Filed 03/06/18 Page 5 of 10 Page ID #:439
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`Lite-On denies the allegations in Paragraph 27.
`27.
`Lite-On denies the allegations in Paragraph 28.
`28.
`Lite-On denies the allegations in Paragraph 29.
`29.
`Lite-On denies the allegations in Paragraph 30.
`30.
`The allegations of Paragraph 31 have been dismissed (Dkt. No. 49), and a
`31.
`response is therefore not required. Plaintiff is obligated to amend its complaint to
`remove these dismissed allegations, and Lite-On reserves all rights and remedies in
`this regard. In any event, Lite-On denies the allegations in Paragraph 31.
`32.
`Lite-On denies the allegations in Paragraph 32.
`COUNT III
`ALLEGED INFRINGEMENT OF THE ’486 PATENT
`Lite-On incorporates by reference its responses to the allegations in
`33.
`Paragraphs 1 through 32 above as if fully set forth herein.
`34.
`Lite-On denies the allegations in Paragraph 34.
`35.
`Lite-On denies the allegations in Paragraph 35.
`36.
`Lite-On denies the allegations in Paragraph 36.
`37.
`Lite-On denies the allegations in Paragraph 37.
`38.
`Lite-On denies the allegations in Paragraph 38.
`39.
`Lite-On denies the allegations in Paragraph 39.
`40.
`Lite-On denies the allegations in Paragraph 40.
`41.
`Lite-On denies the allegations in Paragraph 41.
`42.
`Lite-On denies the allegations in Paragraph 42.
`43.
`The allegations of Paragraph 43 have been dismissed (Dkt. No. 49), and a
`response is therefore not required. Plaintiff is obligated to amend its complaint to
`remove these dismissed allegations, and Lite-On reserves all rights and remedies in
`this regard. In any event, Lite-On denies the allegations in Paragraph 43.
`44.
`Lite-On denies the allegations in Paragraph 44.
`
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`PRAYER FOR RELIEF
`Lite-On denies that Plaintiff is entitled to any relief whatsoever as prayed or
`otherwise. Lite-On denies each and every allegation of the FAC not already admitted
`or denied and further denies that Plaintiff is entitled to any relief whatsoever from
`Lite-On on the basis of any of the purported causes of action contained in the FAC.
`JURY DEMAND
`Plaintiff’s request for trial by jury does not require a response.
`AFFIRMATIVE DEFENSES
`Lite-On asserts the following defenses without waiver, limitation or prejudice,
`and without assuming any burden of proof that it would not otherwise have under the
`law.
`
`FIRST AFFIRMATIVE DEFENSE
`(Lack of Standing)
`Plaintiff does not own all right, title, and interest to the asserted patents and
`therefore lacks standing to assert these patents against Lite-On.
`SECOND AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
`The FAC fails to state a claim upon which relief can be granted.
`THIRD AFFIRMATIVE DEFENSE
`(Non-infringement)
`Lite-On has not infringed and does not infringe, either literally or under the
`doctrine of equivalents, nor actively induced others to infringe, nor contributed to the
`infringement of, any purportedly valid claim of the ’771, ’087, and ’486 Patents.
`FOURTH AFFIRMATIVE DEFENSE
`(Invalidity)
`The asserted claims of the ’771, ’087, and ’486 Patents are invalid for failure to
`comply with one or more requirements of Title 35, United States Code, including
`
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`without limitation the provisions of 35 U.S.C. §§101, 102, 103, 112, and/or 132, and
`the rules, regulations and laws pertaining thereto.
`FIFTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel)
`Upon information and belief, by reason of prior art and the proceedings in the
`U.S. Patent and Trademark Office during prosecution of the applications that led to
`the issuance of the patents-in-suit, including, without limitation, amendments,
`representations, concessions, and admissions made by or on behalf of the applicant,
`Plaintiff is estopped from asserting that the patents-in-suit cover and include any Lite-
`On products or methods alleged to infringe the patents-in-suit.
`SIXTH AFFIRMATIVE DEFENSE
`(Waiver, Laches, Estoppel, and Acquiescence)
`Plaintiff’s claims are barred, in whole or in part, by the equitable doctrines of
`waiver, laches, estoppel, and/or acquiescence, and/or other equitable doctrines.
`SEVENTH AFFIRMATIVE DEFENSE
`(Limitation on Damages)
`Plaintiff’s claims for recovery are barred, in whole or in part, by 35 U.S.C.
`§§ 286, 287, and/or 288.
`EIGHTH AFFIRMATIVE DEFENSE
`(Failure to Join an Indispensable Party)
`The FAC improperly failed to join one or more parties required to be joined
`under Fed. R. Civ. P. 19. For example, the FAC improperly failed to join Brickell
`Key Investments LP (“BKI”), Juridica, and Intellectual Discovery as parties. On
`information and belief, BKI, Juridica, and Intellectual Discovery are subject to service
`of process, and their joinder would not deprive the Court of subject-matter
`jurisdiction. Further, on information and belief, in their absence the Court cannot
`accord complete relief among existing parties, and/or BKI, Juridica, and Intellectual
`Discovery claim an interest relating to the subject of this action and are so situated
`
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`that disposing of the action in their absence may as a practical matter impair or
`impede their ability to protect the interest, and/or may leave an existing party subject
`to a substantial risk of incurring double, multiple, or otherwise inconsistent
`obligations because of the interest.
`OTHER AFFIRMATIVE DEFENSES
`Lite-On’s investigation of the claims and its defenses is continuing. In addition
`to the affirmative defenses set forth herein, Lite-On expressly reserves the right to
`amend its Answer to allege and assert any additional affirmative defenses and
`counterclaims or to supplement its existing defenses under Rule 8 of the Federal Rules
`of Civil Procedure.
`
`PRAYER FOR RELIEF
`WHEREFORE, Lite-On denies that Plaintiff is entitled to any relief, including
`the relief requested in its Prayer for Relief, and Lite-On respectfully requests that the
`Court enter a judgment against Plaintiff and in favor of Lite-On as follows:
`A. That Plaintiff takes nothing and be denied any relief whatsoever;
`B. That the FAC be dismissed on the merits and with prejudice;
`C. That the claims of the ’771, ’087, and ’486 Patents be judged to be not
`infringed by Lite-On;
`D. That the asserted claims of the ’771, ’087, and ’486 Patents be judged to be
`invalid and/or unenforceable;
`E. That Lite-On be awarded its costs incurred in connection with this action;
`F.
`That this case be deemed exceptional pursuant to 35 U.S.C. § 285, such
`that Lite-On be awarded reasonable attorneys’ fees; and
`G. That Lite-On be awarded such other and further relief as the Court may
`deem just and proper.
`
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`JURY DEMAND
`Lite-On demands a trial by jury as to all claims, counterclaims, third-party
`claims and issues properly triable thereby.
`
`Dated: March 6, 2018
`
`Respectfully submitted,
`VINSON & ELKINS L.L.P.
`
`By:
`/s/ Christopher Kao
`Christopher Kao
`
`Attorneys for Defendant
`Lite-On, Inc.
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on March 6, 2018, the foregoing document was
`electronically filed with the Clerk of the Court for the UNITED STATES DISTRICT
`COURT, CENTRAL DISTRICT OF CALIFORNIA, using Court’s Electronic Case
`Filing (ECF) system. The ECF system routinely sends a “Notice of Electronic Filing”
`to all attorneys of record who have consented to accept this notice as service of this
`document by electronic means. Any party not receiving the Court’s electronic
`notification will be sent a copy of the foregoing document.
`
`Dated: March 6, 2018
`
`By: /s/ Christopher Kao
`Christopher Kao
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