Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 1 of 9 Page ID #:991
`
`Exhibit A
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 2 of 9 Page ID #:992
`
`RUSS AUGUST & KABAT
`Brian Ledahl (CA SB No. 186579)
`Neil A. Rubin (CA SB No. 250761)
`Jacob Buczko (CA SB No. 269408)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Telephone: 310-826-7474
`Facsimile: 310-826-6991
`bledahl@raklaw.com
`nrubin@raklaw.com
`jbuczko@raklaw.com
`Attorneys for Plaintiff Document Security Systems, Inc.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`
`DOCUMENT SECURITY SYSTEMS,
`INC., a New York corporation,
`Plaintiff,
`
`vs.
`
`SEOUL SEMICONDUCTOR CO.,
`LTD, a Korean corporation, and SEOUL
`SEMICONDUCTOR, INC., a California
`corporation.
`
`Defendants.
`
`Case No. 8:17-cv-00981-JVS-JCG
`
`PLAINTIFF DOCUMENT
`SECURITY SYSTEMS, INC.’S
`DISCLOSURE OF ASSERTED
`CLAIMS AND INFRINGEMENT
`CONTENTIONS
`
`Plaintiff Document Security Systems, Inc. (“DSS”) provides this Disclosure
`of Asserted Claims and Infringement Contentions
`to Defendants Seoul
`Semiconductor, LTD., and Seoul Semiconductor, Inc. (collectively “Seoul” or
`“Defendants”) in the above captioned case. This disclosure is made solely for the
`purposes of this action.
`
`1
`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
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`RUSS, AUGUST & KABAT
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`Exhibit A, Page 4
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 3 of 9 Page ID #:993
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`Discovery in this matter is at a very early stage and is ongoing. No
`documents have yet been produced, no deposition testimony has been taken, and
`no written discovery responses have yet been served. DSS’s investigation
`regarding these and other potential grounds of infringement is ongoing. This
`disclosure is therefore based upon information that DSS has been able to obtain
`publicly, together with DSS’s current good faith beliefs and information regarding
`the Accused Instrumentalities, and is given without prejudice to DSS’s right to
`obtain leave to supplement or amend its disclosure as additional facts are
`ascertained, analyses are made, research is completed, and claims are construed.
`These disclosures are based at
`least
`in part upon DSS’s present
`understanding of the meaning and scope of the claims of U.S. Patent Nos.
`6,949,771 (“the ’771 patent”), 7,524,087 (“the ’087 patent”), and 7,256,486 (“the
`’486 patent”) (the “patents-in-suit”) in absence of claim construction proceedings
`in this action. DSS reserves the right to seek leave to supplement or amend these
`disclosures if its understandings of the claims changes, including when the Court
`construes them in this action.
`I.
`Asserted Claims
`DSS is asserting claims 1, 2, 3, 4, 6 and 7 of the ’771 patent, claims 1, 6, 7,
`8, 15 and 17 of the ’087 patent, and claims 1, 2 and 3 of the ’486 patent as well as
`all claims charted in the attached claim charts. The attached claim charts identify
`the specific claims asserted against each product and list all asserted claims.
`II.
`Accused Instrumentalities
`The Accused Instrumentalities include Defendants’ current, past and future
`light emitting diode (“LED”) products. For example, DSS provides the following
`non-exhaustive list of Defendants’ current and past Accused Instrumentalities: the
`Seoul Semiconductor 801 series (Automotive) (including e.g., ELWT801-S,
`ELWT801-SM, EWT801-S, EWT801-SM, HWT801-S, HWT801-SM, LWT801-
`S, LWT801-SM, HBWT801G-HG, HBWT801-S, EGWT801G-S, ESBT801G-CF,
`2
`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
`RUSS, AUGUST & KABAT
`
`Exhibit A, Page 5
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 4 of 9 Page ID #:994
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`IBT801-S,
`ESBT801-S, MSBT801G-B, MSBT801G-YF, MSBT801G-YF,
`MIBT801-S, MBLT801-S, SBT801-S, EBT801-S, HBT801-S, LUY801-S,
`SUYT801-S, HYT801-S, EGT801-S, UYGT801S-KM, UPGT801-S, FAT801-S,
`LAT801-S, ERT801-S, HRT801-S, HRT801-SB, HRT801-SC, SRT801-S,
`WRT801-S), the Seoul Semiconductor 802 series (Automotive) (including e.g.,
`SAT802-SC, SDT802-SB, SYT802-SC), Seoul Semiconductor 802 series
`(including e.g., SAT802-SC, SDT802-SB, SYT802-SC), the Seoul Semiconductor
`825 Series LED, the Seoul Semiconductor 809 Series LED (including e.g.,
`EAT809-S, EBT809-S, EGT809-S, ELWT809-S, ELWT809-SM, EMIBT809-S,
`ERT809-S, ESKBT809-S, EWT809-S, EWT809-S05, EYT809-S, HYT809-S), the
`Seoul Semiconductor SFT722N-S, the Seoul Semiconductor MJT-4040 Series
`(including e.g., SAW09A0A and SAW09H0A), the Seoul Semiconductor Z Power
`LED – Z7, Z7-F Series, the Seoul Semiconductor Z Power LED, Z5 Series – Z5M,
`Z5P, Z5, Z5M1, Z5M2, Z5 Automotive (including e.g., SZ5-M0-W0-00, SZ5-M0-
`W0-C8, SZ5-M0-WN-C8, SZ5-M0-WM-C9, SZ5-M0-WW-C8, SZ5-M0-WW-C9,
`SZ5-M1-W0-00, SZ5-M1-W0-C8, SZ5-M1-WN-00, SZ5-M1-WN-C8, SZ5-M1-
`WW-C8, SZ5-M2-W0-00, SZ5-M2-W0-C8, SZ5-M2-WM-00, SZ5-M2-WN-C8,
`SZ5-M2-WW-00, SZ5-M2-WW-C8, SZ5-M2-WW-C9, SZ5-L1-W0-00, SZ5-MA-
`W0-00, SZ5-P0-W0-00, SZ5-P0-WN-00, SZA05A0A, SZR05A0A, SZW05A0B),
`and all predecessor and successor models, all products containing the same or
`similar features as those identified in the accompanying charts, and all products
`including or incorporating any of these products as components (such as
`luminaires, lighting fixtures, bulbs, or any other consumer product). The Accused
`Instrumentalities also include any product included in the attached claim charts not
`listed above.
`In addition, upon information and belief, Defendants may accuse use or offer
`presently unknown methods and systems that infringe the patents-in-suit. While
`DSS has endeavored to identify Defendants’ products with the accused features,
`3
`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
`RUSS, AUGUST & KABAT
`
`Exhibit A, Page 6
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 5 of 9 Page ID #:995
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`Defendants have more comprehensive knowledge of its product offerings,
`including past product offerings. DSS reserves the right to supplement this
`identification based on further discovery of additional products with the same or
`similar features.
`III. Accompanying Charts
`Charts identifying specifically where each limitation of each asserted claim
`is found within each Accused Instrumentality are attached to this disclosure. See
`Exhibits A – L. To the extent a chart is not directed to a specific product, DSS's
`infringement theories are disclosed by the charts directed toward the same product
`class. The accompanying charts also list all the Accused Instrumentalities
`including ones not listed above.
`IV.
`Indirect and Induced Infringement
`The attached charts contain an identification of direct infringement and a
`description of the acts of the alleged indirect infringers that contribute to or are
`inducing that direct infringement. In addition, Defendants are actively inducing
`others, such as their customers and end users of Accused Instrumentalities, services
`based thereupon, and related products and/or processes, to directly infringe each
`and every claim limitation of the asserted claims of the patents-in-suit. Defendants’
`customers and/or end users have directly infringed and are directly infringing each
`and every claim limitation of the asserted claims of the patents-in-suit. Defendants
`are also knowingly inducing their customers and/or end users to directly infringe
`the patents-in-suit, with the specific intent to encourage such infringement, and
`knowing that the induced acts constitute patent infringement. Defendants’
`inducement includes, for example, providing technical guides, product data sheets,
`demonstrations, software and hardware specifications, installation guides, and
`other forms of support that induce their customers and/or end users to directly
`infringe the patents-in-suit. The Accused Instrumentalities are designed in such a
`way that when they are used for their intended purpose, the user infringes the
`4
`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
`RUSS, AUGUST & KABAT
`
`Exhibit A, Page 7
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 6 of 9 Page ID #:996
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`
`patents-in-suit. Defendants know and intend that customers that purchase the
`Accused Instrumentalities will use those products for their intended purpose.
`Defendants specifically intend their United States customers to infringe the
`patents-in-suit through use of the Accused Instrumentalities in this country by at
`least advertising and promoting the use of the Accused Instrumentalities on their
`United States website: See, e.g., http://www.seoulsemicon.com/en/applications/.
`Defendants also specifically intend its customers infringe the patents-in-suit
`through use of the Accused Instrumentalities through trade show presentations,
`customer visits, direct customer contacts and application guides. Defendants also
`specifically intend its customers infringe the patents-in-suit through selling the
`Accused Instrumentalities overseas with the specific intent that the customer
`import, offer to sell, and/or sell the Accused Instrumentalities in order to develop
`and serve the United States market for Defendants’ LED products, either alone or
`used in products such as bulbs, displays, consumer products and/or fixtures. Such
`customers include Defendants’ LED distributors, consumer products companies
` See
`and
`retailers
`that
`serve
`the United
`States market.
`http://www.seoulsemicon.com/en/support/where-to-buy/, naming Avnet, Digi-Key,
`Mouser Electronics, and WPG Americas as United States distributors of
`Defendants’ products.
`DSS incorporates by reference the allegations of induced infringement in its
`Complaint, as currently amended, as well as description of specific acts of induced
`infringements contained in the claim charts.
`V. Doctrine of Equivalents
`Each limitation of each asserted claim in the attached charts is alleged to be
`present literally. Where DSS anticipates Defendants’ argument against literal
`infringement, DSS has also included disclosures pursuant to the doctrine of
`equivalents. To the extent Defendants argue that other limitations are not present
`literally, DSS asserts that the limitation is present under the doctrine of
`5
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`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
`
`
`RUSS, AUGUST & KABAT
`
`Exhibit A, Page 8
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 7 of 9 Page ID #:997
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`equivalents.
`VI. Priority to Earlier Patent Applications
`DSS presently contends that all asserted claims of the ’771 Patent are
`entitled to priority at least as early as April 25, 2001, the filing date of patent
`application (MY) PI 2001 1952.
`VII. Willful Infringement
`Defendants have and continue to willfully and egregiously infringe the
`patents-in-suit. For example, Defendants specifically intend their United States
`customers
`to
`infringe
`the patents-in-suit
`through use of
`the Accused
`Instrumentalities in this country by at least advertising and promoting the use of
`the Accused Instrumentalities on their United States website: See, e.g.,
`http://www.seoulsemicon.com/en/applications/.
`Defendants also specifically intend its customers infringe the patents-in-suit
`through use of the Accused Instrumentalities through trade show presentations,
`customer visits, direct customer contacts and application guides. Defendants also
`specifically intend its customers infringe the patents-in-suit through selling the
`Accused Instrumentalities overseas with the specific intent that the customer
`import, offer to sell, and/or sell the Accused Instrumentalities in order to develop
`and serve the United States market for Defendants’ LED products, either alone or
`used in products such as bulbs, displays, consumer products and/or fixtures. Such
`customers include Defendants’ LED distributors, consumer products companies
`See
`and
`retailers
`that
`serve
`the United
`States market.
`
`http://www.seoulsemicon.com/en/support/where-to-buy/, naming Avnet, Digi-Key,
`Mouser Electronics, and WPG Americas as United States distributors of
`Defendants’ products.
`Moreover, Defendants have been aware of the patents-in-suit and of their
`infringement 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 ’771 and ’087 patents) and the
`6
`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
`RUSS, AUGUST & KABAT
`
`Exhibit A, Page 9
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 8 of 9 Page ID #:998
`
`date they were served with the amended complaint in this case, filed May 9, 2017
`(the ’486 patent). Since the earliest of the aforementioned dates, Defendants have
`failed to investigate and remedy their infringement of the patents-in-suit and thus
`willfully and egregiously continue to infringe the patents-in-suit. On information
`and belief, Defendants continued to offer infringing products without having
`modified or altered those products in a manner that would not infringe the patents
`in suit. Defendants, at the very least, have been egregiously and willfully blind to
`infringement of the patents-in-suit. Further evidence of Defendants’ egregious and
`willful infringement are the acts of active inducement described in the Complaint.
`Defendants also actively induce and encourage customers to make, use, sell, offer
`to sell and/or import the Accused Instrumentalities with knowledge that these acts
`constitute infringement of the patents-in-suit, with the purpose of, inter alia,
`developing and serving the United States market for Defendants’ LED products
`and consumer devices that include Defendants’ products.
`DSS incorporates by reference the allegations of willful and egregious
`infringement in its Complaint, as currently amended, as well as description of
`specific acts of willful and egregious infringements contained in the claim charts.
`
`Dated: November 17, 2017
`
`By:
`
` /s/ Brian Ledahl
`
`RUSS AUGUST & KABAT
`Brian Ledahl (CA SB No. 186579)
`Neil A. Rubin (CA SB No. 250761)
`Jacob Buczko (CA SB No. 269408)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Telephone: 310-826-7474
`Facsimile: 310-826-6991
`E-mail: bledahl@raklaw.com
`E-mail: nrubin@raklaw.com
`E-mail: jbuczko@raklaw.com
`
`7
`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
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`RUSS, AUGUST & KABAT
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`Exhibit A, Page 10
`
`

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`Case 8:17-cv-00981-JVS-JCG Document 57-2 Filed 02/26/18 Page 9 of 9 Page ID #:999
`
`
`Attorneys for Plaintiff,
`Document Security Systems, Inc.
`
`
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`RUSS, AUGUST & KABAT
`
`CERTIFICATE OF SERVICE
`I certify that counsel of record for Seoul is being served with a copy of this
`document by Electronic Mail on November 17, 2017.
`
`
`
`
`
`
`
`
`
`
`
` /s/ Brian Ledahl
` Brian Ledahl
`
`
`
`
`
`
`
`
`
`
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`
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`
`8
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`DSS’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS - SEOUL
`
`Exhibit A, Page 11
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`