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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.
`Petitioners
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`v.
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`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
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`__________________
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`Cases IPR2018-00333
`U.S. Patent No. 7,256,486 B2
`__________________
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`OPPOSITION TO EVERLIGHT ELECTRONIC CO., LTD’S
`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`I.
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`BACKGROUND
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`On December 21, 2017, Seoul Semiconductor Co., Ltd. (“SSC”) and Seoul
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`Semiconductor, Inc. (“SSI”) (collectively “Petitioner I”) filed a petition for inter
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`partes review of U.S. Patent No. 7,256,486. Seoul Semiconductor, Co., Ltd. v.
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`Document Sec. Sys., Inc., IPR2018-00333 (PTAB) (Paper 1). By Order dated June
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`21, 2018, the Board granted institution. Seoul Semiconductor, IPR2018-00333
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`(PTAB Jun. 21, 2018) (Paper 9).
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`On June 22, 2018, John Rabena of Sughrue Mion PLLC contacted the
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`undersigned counsel via email indicating Everlight’s intent to file a copy of the
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`petition from IPR2018-00333 and a motion for joinder. His email further asked
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`whether Petitioner I would oppose joinder. Upon search of the Patent Trial and
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`Appeal Board records, Petitioner I determined that a nearly identical copy of their
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`petition had been submitted weeks earlier on June 8, 2018. Everlight Electronics
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`Co., Ltd. v. Document Security Systems, Inc., IPR2018-01225 (PTAB) (Paper 1).
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`Without receiving consent, Everlight (“Petitioner II”) submitted its Joinder Motion
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`on June 25, 2018. Everlight, IPR2018-01225 (Paper 7). Patent Owner filed an
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`Opposition to Joinder on July 25, 2018. Everlight, IPR2018-01225 (Paper 9).
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`On August 1, 2018, the Board granted the Petitioner I leave to file an
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`opposition to Petitioner II’s Joinder Motion:
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`1
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`The Petitioner in IPR2018-00333 (Petitioner I) is authorized to file an
`Opposition to the Motion for Joinder in IPR2018-01225. Because
`Petitioner I is not a party in IPR2018-01225, Petitioner I shall file, and
`separately serve, its Opposition in IPR2018-00333. The Petitioner in
`IPR2018-01225 (Petitioner II) is authorized to file, and separately
`serve, a Reply to the Opposition due one month after service of the
`opposition. See 37 C.F.R. § 42.25 (a)(1). Petitioner II shall file any
`Reply in IPR2018-01225. The parties shall follow the page limits for
`Oppositions and Replies set forth per 37 C.F.R. § 42.24. The
`Opposition and Reply should also indicate that we authorized the
`filing per this email.
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`II.
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`STANDARD FOR JOINDER
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`The statutory provision governing joinder of inter partes review proceedings
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`is 35 U.S.C. § 315(c), which provides:
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`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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`Thus, the decision to grant or deny joinder is discretionary. As recognized in Teva
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`Pharmaceuticals USA, Inc. v. ViiV Healthcare Co., IPR2015-00550 slip op. at 4
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`(P.T.A.B. Jun. 25, 2015) (Paper 11), “[t]he Board determines whether to grant
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`2
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`joinder on a case-by-case basis, taking into account the particular facts of each
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`case . . . [and] to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” In addition, the burden to establish entitlement to joinder is upon the
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`requesting party. Id. Among the factors the Board considers is whether the original
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`petitioner has agreed “to consolidate filings.” Id. at 6. The Board has also found that
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`reliance upon a different expert weighs against joinder. ZTE Corp. v. Adaptix, Inc.,
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`IPR2015-01184, slip op. 4-7 (PTAB July 24, 2015) (Paper 10).
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`Following joinder, the Board ordinarily requires coordination between the
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`petitioners during discovery, briefing, and at oral argument. Microsoft Corp. v.
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`Koninklijke Philips N.V., IPR2017-01754, slip op. at 16-17 (PTAB Nov. 29, 2017)
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`(Paper 16).
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`III. ARGUMENT
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`Petitioner I request that the Board deny Petitioner II’s Motion for Joinder. As
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`explained in Teva, IPR2015-00550 slip op. at 4 (Paper 11), the Board is tasked with
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`providing the “just, speedy, and inexpensive resolution of every proceeding.”
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`Petitioner II’s Motion for Joinder is inconsistent with those goals.
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`According to its motion, Petitioner II “agrees to a complete ‘understudy role’”
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`should joinder be granted. Everlight, IPR2018-01244 (Paper 7). The premise of such
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`a role, however, is that the original and joining parties have come to an agreement
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`on the scope and nature of the joining party’s involvement. See Teva, IPR2015-
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`3
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`00550 slip op. at 6 (Paper 11) (considering whether an agreement was reached to
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`“consolidate filings” in determining whether to grant joinder); Samsung Elect. Co.,
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`Ltd. v. Arendi S.A.R.L., IPR2014-01142 slip op. 5 (PTAB Oct. 2, 2014) (Paper 11).
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`No such agreement was reached (or even sought) prior to the initial filing. Indeed,
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`the fact that Petitioner II filed its petition weeks before contacting Petitioner I
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`indicates that Petitioner II’s involvement will complicate rather than simplify the
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`proceeding.
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`More fundamentally, the Petitioner I objects to Petitioner II’s attempt to gain
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`the benefit of their work without any meaningful attempt to reach an agreement or
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`accommodation. Petitioner I marshaled the prior art and evidence, drafted their
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`petition, and filed it. As such, Petitioner I’s objections should be given weight in the
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`Board’s analysis. See SAS Institute v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“Much as
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`in the civil litigation system it mimics, in an inter partes review the petitioner is
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`master of its complaint.”). And the lack of an agreement (or even attempt to reach
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`one) should also be considered. See Teva, IPR2015-00550 slip op. at 6 (Paper 11)
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`(considering whether an agreement was reached to “consolidate filings” in
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`determining whether to grant joinder); Samsung Elect. Co., Ltd. v. Arendi S.A.R.L.,
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`IPR2014-01142 slip op. 5 (PTAB Oct. 2, 2014) (Paper 11).
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`Petitioner I further notes that they are direct competitors with Petitioner II,
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`and therefore, have diverging interests. Indeed, Petitioner II’s unwanted participation
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`could negatively impact Petitioner I’s ability to reach an negotiated settlement of the
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`underlying litigation. Although the Board’s decisions to date have focused on the
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`rights of and burdens on the Patent Owner, Petitioner I respectfully asserts that their
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`interests should also be considered.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner I requests that the Board deny Petitioner
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`II’s Motion for Joinder.
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`Dated: August 3, 2018
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`Respectfully submitted,
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`Holland & Knight LLP
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`/s/ Michael B. Eisenberg
`Michael B. Eisenberg
`Reg. No. 50,643
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