Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 1 of 11 Page ID #:953
`
`
`LATHAM & WATKINS LLP
` Bradley A. Hyde (Bar No. 301145)
`bradley.hyde@lw.com
`650 Town Center Drive - 20th Floor
`Costa Mesa, California 92626-1925
`Telephone: (714) 540-1235
`Facsimile: (714) 755-8290
`
`LATHAM & WATKINS LLP
` Charles H. Sanders (pro hac vice)
`charles.sanders@lw.com
` Anant K. Saraswat (pro hac vice)
`anant.saraswat@lw.com
`200 Clarendon Street
`Boston, Massachusetts 02116
`Telephone: (617) 948-6000
`Facsimile: (617) 948-6001
`
`LATHAM & WATKINS LLP
` Lesley M. Hamming (pro hac vice)
`lesley.hamming@lw.com
`LATHAM & WATKINS LLP
`330 N. Wabash Avenue, Suite 2800
`Chicago, Illinois 60611
`Telephone: (312) 876-7700
`Facsimile: (312) 993-9767
`
`Attorneys for Defendants SEOUL
`SEMICONDUCTOR CO., LTD and
`SEOUL SEMICONDUCTOR, INC.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`Document Security Systems, Inc.,
`Case No. 8:17-cv-00981-JVS-JCG
`
`
`SEOUL SEMICONDUCTOR CO.,
`Plaintiff,
`LTD. AND SEOUL
`
`SEMICONDUCTOR, INC.’S
`v.
`ANSWER TO SECOND
`
`AMENDED COMPLAINT FOR
`SEOUL SEMICONDUCTOR CO.,
`PATENT INFRINGEMENT
`LTD, a Korean corporation, and
`
`SEOUL SEMICONDUCTOR, INC., a
`DEMAND FOR JURY TRIAL
`California corporation,
`
`
`Defendants.
`Assigned to: Honorable James V.
`
`Selna
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
` Answer to Second Amended Complaint
`for Patent Infringement
`
`
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 2 of 11 Page ID #:954
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`Defendants Seoul Semiconductor Company Ltd. (“SSC”) and Seoul
`Semiconductor, Inc. (“SSI”) (collectively, “Seoul” or “Defendants”), by and
`through their undersigned attorneys, answer the Second Amended Complaint For
`Patent Infringement (“the Second Amended Complaint”) filed by Plaintiff
`Document Security Systems, Inc. (“DSS”) as follows:
`PARTIES
`Defendants are without knowledge or information sufficient to form a
`1.
`belief as to the truth or falsity of the allegations in Paragraph 1 of the Second
`Amended Complaint, and therefore deny the same.
`Defendants are without knowledge or information sufficient to form a
`2.
`belief as to the truth or falsity of the allegations in Paragraph 2 of the Second
`Amended Complaint, and therefore deny the same.
`Defendants admit that SSC is a corporation organized and existing
`3.
`under the laws of the Republic of Korea with its principal place of business in
`Danwon-gu, Ansan-si, Gyeonggii-do, Korea. Defendants admit that SSC
`manufactures light-emitting diode (“LED”) products in Korea and that its
`subsidiary SSI has sales offices in the United States. Paragraph 3 contains
`conclusions of law as to which no answer is required, including the statement
`“Defendant Seoul Korea can be served with process in Korea pursuant to the
`Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents,
`Article 1, November 15, 1965 T.I.A.S. No. 6638, 20 U.S.T. 361 (U.S. Treaty
`1969).” Defendants deny any remaining allegations and/or legal conclusions set
`forth in Paragraph 3.
`Defendants admit that SSI is a California corporation with a place of
`4.
`business at 1895 Beaver Ridge Circle, Suite G, Norcross, Georgia 30071.
`Defendants admit that SSI sells and/or offers for sale LED products in the United
`States manufactured by Seoul Korea. Paragraph 4 contains conclusions of law to
`which no answer is required, including the statement “Defendant Seoul America
`2 Answer to Second Amended Complaint
`for Patent Infringement
`
`
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 3 of 11 Page ID #:955
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`can be served through its registered agent, Jiyoon Jun, 5856 Corporate Avenue,
`Suite 240, Cypress, California 90630.” Defendants deny any remaining allegations
`and/or legal conclusions set forth in Paragraph 4.
`JURISDICTION AND VENUE
`
`Admitted.
`5.
`Paragraph 6 contains conclusions of law to which no answer is
`6.
`required. For the purposes of this present case only, Defendants will not contest
`that this Court has personal jurisdiction over Defendants. Defendants deny that
`they directly and/or through subsidiaries or intermediaries, have committed or
`continue to commit any acts of infringement in this District. Defendants deny the
`remaining allegations in Paragraph 6.
`Paragraph 7 contains conclusions of law to which no answer is
`7.
`required. For the purposes of this present case only, Defendants will not contest
`that venue is proper in this judicial district. Defendants admit that Seoul
`Semiconductor, Inc. has a place of business at 1895 Beaver Ridge Circle, Suite G,
`Norcross, Georgia 30071. Defendants deny the remaining allegations in Paragraph
`7.
`
`BACKGROUND
`Defendants admit that the face page of U.S. Patent No. 6,949,771
`8.
`(“the ’771 Patent”) identifies an issue date of September 27, 2005. Defendants
`further admit that the face page of the ’771 Patent lists the title as “Light Source.”
`Defendants admit that Exhibit A to the Second Amended Complaint purports to be
`a copy of the ’771 Patent. Defendants are without knowledge or information
`sufficient to form a belief regarding the remaining allegations of Paragraph 8 of the
`Second Amended Complaint, and on that basis, deny these allegations.
`Defendants admit that the face page of U.S. Patent No. 7,524,087
`9.
`(“the ’087 Patent”) identifies an issue date of April 28, 2009. Defendants further
`admit that the face page of the ’087 Patent lists the title as “Optical Device.”
`3 Answer to Second Amended Complaint
`for Patent Infringement
`
`
`
`
`
`
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 4 of 11 Page ID #:956
`
`
`Defendants admit that Exhibit B to the Second Amended Complaint purports to be
`a copy of the ’087 Patent. Defendants are without knowledge or information
`sufficient to form a belief regarding the remaining allegations of Paragraph 9 of the
`Second Amended Complaint, and on that basis, deny these allegations.
`10. Defendants admit that the face page of U.S. Patent No. 7,256,486
`(“the ’486 Patent”) identifies an issue date of August 14, 2007. Defendants further
`admit that the face page of the ’486 Patent lists the title as “Packing Device for
`Semiconductor Die, Semiconductor Device Incorporating Same and Method of
`Making Same.” Defendants admit that Exhibit C to the Second Amended
`Complaint purports to be a copy of the ’486 Patent. Defendants are without
`knowledge or information sufficient to form a belief regarding the remaining
`allegations of Paragraph 10 of the Second Amended Complaint, and on that basis,
`deny these allegations.
`11. Defendants are without knowledge or information sufficient to form a
`belief regarding the allegations of Paragraph 11 of the Second Amended
`Complaint, and on that basis, deny these allegations.
`COUNT I
`INFRINGEMENT OF THE ’771 PATENT
`12. Defendants repeat their denials and admissions regarding Paragraphs
`1-11 above as if fully set forth herein.
`13. Denied.
`14. SSC admits that it sells and offers to sell 802 Series (Automotive)
`LED products. Defendants deny the remaining allegations in Paragraph 14.
`15. Denied.
`16. Defendants admit that the 802 Series (Automotive) includes an LED
`mounted in the package, and that there is a transparent encapsulation. Defendants
`deny the remaining allegations in Paragraph 16.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`4 Answer to Second Amended Complaint
`for Patent Infringement
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 5 of 11 Page ID #:957
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`17. Defendants admit that the 802 Series (Automotive) has a metal lead
`frame. Defendants deny the remaining allegations in Paragraph 17.
`18. Denied.
`19. Denied.
`20. Defendants admit that they have had actual knowledge of the ’771
`Patent no later than service of the Second Amended Complaint. Defendants deny
`the remaining allegations in Paragraph 20.
`21. Denied.
`22. Defendants admit that they have been aware of the ’771 Patent as of a
`date no later than the date they were served with the complaint in the case 2:17-cv-
`308, filed April 13, 2017. The allegations of this paragraph otherwise have been
`dismissed (Dkt. 55), and no response is required. Regardless, Defendants deny the
`remaining allegations in Paragraph 22.
`23. Denied.
`
`COUNT II
`INFRINGEMENT OF THE ’087 PATENT
`24. Defendants repeat their denials and admissions corresponding to
`Paragraphs 1-23 above as if fully set forth herein. Defendants deny the remaining
`allegations in Paragraph 24.
`25. Denied.
`26. SSC admits that it sells and offers to sell 825 Series LED products.
`Defendants admit that 825 Series products are optical devices and have a lead
`frame with multiple leads. Defendants deny the remaining allegations in
`Paragraph 26.
`27. Denied.
`28. Defendants admit that the 825 Series LEDs have at least one LED die
`and an encapsulant around the LED die. Defendants deny the remaining
`allegations in Paragraph 28.
`
`
`
`
`
`
`
`5 Answer to Second Amended Complaint
`for Patent Infringement
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 6 of 11 Page ID #:958
`
`
`29. Denied.
`30. Denied.
`31. Defendants admit that they have had actual knowledge of the ’087
`Patent no later than service of the Second Amended Complaint. Defendants deny
`the remaining allegations in Paragraph 31.
`32. Denied.
`33. Defendants admit that they have been aware of the ’087 Patent as of a
`date no later than the date they were served with the complaint in the case 2:17-cv-
`308, filed April 13, 2017. The allegations of this paragraph otherwise have been
`dismissed (Dkt. 55), and no response is required. Regardless, Defendants deny the
`remaining allegations in Paragraph 33.
`34. Denied.
`
`COUNT III
`INFRINGEMENT OF THE ’486 PATENT
`35. Defendants repeat their denials and admissions corresponding to
`Paragraphs 1-34 above as if fully set forth herein.
`36. Denied.
`37. Denied.
`38. SSC admits that it sells and offer to sell Z5 LED products.
`Defendants admit that Z5 LED products contain at least one semiconductor.
`Defendants deny the remaining allegations in Paragraph 38.
`39. Denied.
`40. Denied.
`41. Denied.
`42. Denied.
`43. Denied.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`6 Answer to Second Amended Complaint
`for Patent Infringement
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 7 of 11 Page ID #:959
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`44. Defendants admit that they have had actual knowledge of the ’486
`Patent no later than service of the Second Amended Complaint. Defendants deny
`the remaining allegations in Paragraph 44.
`45. Denied.
`46. Defendants admit they have been aware of the ’486 Patent as of date
`no later than the date they were served with the amended complaint served in case
`2:17-cv-308, filed on May 9, 2017. The allegations of this paragraph otherwise
`have been dismissed (Dkt. 55), and no response is required. Regardless,
`Defendants deny the remaining allegations in Paragraph 46.
`47. Denied.
`PLAINTIFF’S PRAYER FOR RELIEF
`Defendants deny that Plaintiff is entitled to any relief requested in the
`Second Amended Complaint.
`For their Affirmative Defenses, Defendants assert as follows:
`AFFIRMATIVE DEFENSES
`Further answering Plaintiff’s Second Amended Complaint, Defendants
`assert the following defenses without admitting any of the allegations of the
`Second Amended Complaint not otherwise expressly admitted. Defendants
`expressly reserve the right to amend their Affirmative Defenses or allege additional
`Affirmative Defenses.
`I.
`
`FIRST AFFIRMATIVE DEFENSE
`(LACK OF STANDING)
`DSS does not own all right, title, and interest to the asserted patents and
`therefore lacks standing to assert these patents against Defendants.
`II. SECOND AFFIRMATIVE DEFENSE
`(FAILURE TO STATE A CLAIM)
`The Second Amended Complaint fails to state a claim upon which relief can
`be granted.
`
`
`
`
`
`
`
`7 Answer to Second Amended Complaint
`for Patent Infringement
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 8 of 11 Page ID #:960
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`III. THIRD AFFIRMATIVE DEFENSE
`(NON-INFRINGEMENT)
`Defendants have not infringed, and are not infringing, either directly or
`indirectly, the asserted patents.
`IV. FOURTH AFFIRMATIVE DEFENSE
`(INVALIDITY)
`The claims of the asserted patents are invalid under one or more provisions
`of Title 35 of the United States Code, including at least 35 U.S.C. §§101, 102, 103,
`and/or 112.
`
`V. FIFTH AFFIRMATIVE DEFENSE
`(35 U.S.C. § 287)
`To the extent that DSS, licensees of the asserted patents, and/or any alleged
`predecessors-in-interest in the asserted patents failed to comply with 35 U.S.C.
`§ 287, including by failing to properly mark relevant products or otherwise give
`proper notice, Defendants are not liable to DSS for the acts alleged to have been
`performed before Defendants received actual notice that they were allegedly
`infringing the patents in suit.
`VI. SIXTH AFFIRMATIVE DEFENSE
`(LIMITATION OF DAMAGES)
`DSS’s claims for damages are limited and/or barred by 35 U.S.C. § 286 to
`the extent that any recovery is sought for any alleged infringement committed
`more than six years prior to the filing of the Second Amended Complaint.
`VII. SEVENTH AFFIRMATIVE DEFENSE
`(ADEQUATE REMEDY AT LAW)
`DSS is not entitled to injunctive relief because (1) DSS is not likely to
`prevail on the merits; (2) DSS has not suffered nor will it suffer irreparable harm
`because of Defendants’ conduct; (3) harm to DSS would be outweighed by the
`hard to Defendants if any injunction were entered; (4) DSS has an adequate
`8 Answer to Second Amended Complaint
`for Patent Infringement
`
`
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 9 of 11 Page ID #:961
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`remedy at law even if it were to prevail in this action; and (5) public interest would
`not be served by an injunction.
`VIII. EIGHTH AFFIRMATIVE DEFENSE
`(PROSECUTION HISTORY ESTOPPEL AND DISCLAIMER)
`On information and belief by reason of prior art and the proceedings in the
`United States Patent and Trademark Office during the prosecution of the asserted
`patents, and all applications to which the asserted patents claim priority, that led to
`the issuance of the asserted patents, including without limitation amendments,
`representations, concessions, and admissions made by or on behalf of the
`applicant, and/or because of disclosures or language in the specification of the
`asserted Patent, DSS is estopped from asserting that the claims of the asserted
`patents cover and include the devices, methods or acts of Defendants.
`IX. NINTH AFFIRMATIVE DEFENSE
`(LIMITATION OF COSTS)
`DSS is not entitled to recover any costs under at least 35 U.S.C. § 288
`because one or more claims of the asserted patents are invalid, and no claims have
`been disclaimed.
`
`X . TENTH AFFIRMATIVE DEFENSE
`(FAILURE TO JOIN AN INDISPENSABLE PARTY)
`The Second Amended Complaint improperly failed to join one or more
`parties required to be joined under Fed. R. Civ. P. 19. For example, the Second
`Amended Complaint 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 that disposing of the
`9 Answer to Second Amended Complaint
`for Patent Infringement
`
`
`
`
`
`
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 10 of 11 Page ID #:962
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`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.
`
`XI. ELEVENTH AFFIRMATIVE DEFENSE
`(RESERVATION OF RIGHTS)
`As Defendants’ investigation is ongoing and discovery has not yet been
`taken, Defendants are without sufficient information regarding the existence or
`non-existence of other facts or acts which may constitute a defense to DSS’s
`claims. Defendants therefore reserve any and all rights to amend and/or add to
`Defendants’ answer and/or affirmative defenses, as additional or other bases
`become apparent.
`
`PRAYER FOR RELIEF
`WHEREFORE, Defendants respectfully request that this Court:
`A. Enter judgment in Defendants’ favor on DSS’s claims;
`B. Dismiss DSS’s claims with prejudice;
`C. Deny any and all of DSS’s prayers for relief;
`D. Award Defendants their costs and expenses, including attorneys’ fees,
`incurred in this action;
`E. Declare this action an exceptional case under 35 U.S.C. § 285 and
`enter a judgment awarding Defendants their costs and attorneys’ fees and expert
`witness fees; and
`F. Grant such other and further relief as this Court deems just and
`proper.
`
`DEMAND FOR JURY TRIAL
`Pursuant to Fed. R. Civ. P. 38(b), Defendants Seoul Semiconductor
`Company Ltd. and Seoul Semiconductor, Inc. hereby demand a jury trial on all
`issues so triable in this action.
`
`
`
`
`
`
`
`10 Answer to Second Amended Complaint
`for Patent Infringement
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 56 Filed 02/20/18 Page 11 of 11 Page ID #:963
`
`
`
`Dated: February 20, 2018
`
`
`
`LATHAM & WATKINS LLP
`
`By:/s/ Charles H. Sanders
` Bradley A. Hyde (Bar No. 301145)
` Charles H. Sanders (pro hac vice)
` Anant K. Saraswat (pro hac vice)
` Lesley M. Hamming (pro hac vice)
`Attorneys for Defendants SEOUL
`SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`11 Answer to Second Amended Complaint
`for Patent Infringement
`
`