Case 2:17-cv-06050-JVS-JCG Document 54 Filed 03/09/18 Page 1 of 4 Page ID #:445
`
`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
`STATEMENT OF NON-
`OPPOSITION AND JOINDER
`TO DEFENDANTS’ MOTION TO
`STAY PENDING INTER PARTES
`REVIEW
`[RELATED C.D. CAL. CASE NO.
`8:17-CV-00981-JVS-JCG,
`DKT. NO. 57]
`Date: March 26, 2018
`Time: 1:30 p.m.
`Courtroom: 10C
`Judge: Honorable James V. Selna
`
`Lite-On’s Joinder to Seoul’s Motion to Stay
`5544501
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`Case 2:17-cv-06050-JVS-JCG Document 54 Filed 03/09/18 Page 2 of 4 Page ID #:446
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`Defendant Lite-On, Inc. (“Lite-On”) hereby provides this statement of non-
`opposition to and joins Defendants Seoul Semiconductor Co., Ltd.’s and Seoul
`Semiconductor, Inc.’s (collectively, “Seoul’s”) Motion to Stay Pending Inter Partes
`Review, filed in a related case in this District, Document Security Systems, Inc. v.
`Seoul Semiconductor Co., Ltd., et al., Case No. 8:17-cv-00981-JVS-JCG, on
`February 26, 2018 (Dkt. No. 57).
`Seoul filed the motion to stay the action against it in view of its recently-filed
`petitions for inter partes review (“IPR”) of all three patents that are also asserted
`against Lite-On in this action: U.S. Patent Nos. 6,949,771; 7,256,486; and 7,524,087.
`See IPR2018-00265, IPR2018-00333, and IPR2018-00522, respectively. Thus,
`although Lite-On has not filed any petitions for review of the three patents-in-suit with
`the U.S. Patent and Trademark Office (“PTO”), nor is Lite-On a party (or a privy to a
`party) to any such proceeding, a stay of this proceeding is nevertheless warranted for
`at least the same reasons set forth in Seoul’s motion to stay.1 Lite-On therefore does
`not oppose a stay of these related proceedings and joins Seoul’s motion to stay for the
`reasons summarized below.
`First, Plaintiff’s action against Lite-On should be stayed because Seoul’s IPRs
`are likely to eliminate or simplify issues for trial in this proceeding should the PTO
`find any or all of the three patents-in-suit invalid. Even in the unlikely event that all
`claims survive, Plaintiff may also make statements in either its Patent Owner’s
`Preliminary Response prior to institution, or in its Patent Owner’s Response if any of
`the three IPRs are instituted, that impact the scope of the asserted patent claims.
`Second, like Plaintiff’s case against Seoul, Plaintiff’s case against Lite-On is at
`a very early stage: discovery just began, no depositions have occurred, no claim
`construction or summary judgment briefs have been filed, and trial is not scheduled to
`
`1 By this Statement of Non-Opposition to Seoul’s Motion to Stay, Lite-On does not
`intend to waive, and hereby expressly preserves, all invalidity arguments raised in its
`invalidity contentions served in this action.
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`Lite-On’s Joinder to Seoul’s Motion to Stay
`5544501
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`Case 2:17-cv-06050-JVS-JCG Document 54 Filed 03/09/18 Page 3 of 4 Page ID #:447
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`begin for more than 15 months. Granting a stay now would relieve the Court of the
`burden of considering and deciding the construction of terms in claims that are likely
`to be modified or cancelled should the IPRs be granted. A stay would also allow the
`parties to avoid the expense of fact and expert discovery and other case development
`directed at potentially irrelevant claims.
`Third, Plaintiff does not practice the claimed inventions and does not compete
`with Lite-On in the marketplace, and therefore will suffer no undue prejudice from a
`stay. Thus, Lite-On’s requested stay is appropriate at this time and will reduce the
`burden on the Court and the parties by allowing the PTO to make its determination as
`to the validity of all three patents-in-suit.
`Accordingly, to the extent the Court grants the relief requested by Seoul in its
`motion to stay, Lite-On requests that this action be stayed as well.
`
`Dated: March 9, 2018
`
`Respectfully submitted,
`VINSON & ELKINS L.L.P.
`
`By: /s/ Christopher Kao
`Christopher Kao
`Attorneys for Defendant
`Lite-On, Inc.
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`Case 2:17-cv-06050-JVS-JCG Document 54 Filed 03/09/18 Page 4 of 4 Page ID #:448
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on March 9, 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 9, 2018
`
`By: /s/ Christopher Kao
`Christopher Kao
`
`Lite-On’s Joinder to Seoul’s Motion to Stay
`5544501
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