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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`
`_______________
`
`Case IPR2018-01225
`Patent 7,256,486 B2
`____________
`
`PATENT OWNER’S OPPOSITION TO EVERLIGHT’S
`MOTION FOR JOINDER
`
`
`
`
`
`Patent Owner's Exhibit 2108
`Page 1 of 10
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`
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`PATENT OWNER’S LIST OF EXHIBITS
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`
`
`Exhibit Number
`
`Exhibit Description
`
`2001-2099
`
`Reserved
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`2100
`
`2101
`
`2102
`
`2103
`
`2104
`2105
`
`Complaint for Patent Infringement in Document Security
`Systems, Inc. v. Everlight Electronics Co., Ltd., and Everlight
`Americas, Inc., Case 2:17-cv-00310 (E.D. Tex.)
`Notice of Service in Document Security Systems, Inc. v.
`Everlight Electronics Co., Ltd., and Everlight Americas, Inc.,
`Case 2:17-cv-00310 (E.D. Tex.)
`Complaint for Patent Infringement in Document Security
`Systems, Inc. v. Everlight Electronics Co., Ltd., and Everlight
`Americas, Inc., Case 2:17-cv-04273 (C.D. Cal.)
`Notice of Dismissal in Document Security Systems, Inc. v.
`Everlight Electronics Co., Ltd., and Everlight Americas, Inc.,
`Case 2:17-cv-00310 (E.D. Tex.)
`Reserved
`Email Message sent from Seoul Semiconductor’s counsel to
`Trials@uspto.gov, seeking permission to oppose Everlight
`Electronics Co., Ltd.’s Motion to Join IPR2018-00333
`
`
`
`Patent Owner's Exhibit 2108
`Page 2 of 10
`
`
`
`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
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`Pursuant to 37 C.F.R. § 42.23, Patent Owner Document Security Systems,
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`Inc. (“DSS” or “Patent Owner”) opposes Everlight’s Motion to Join Everlight’s
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`IPR (IPR2018-01225) with Seoul Semiconductor’s IPR (IPR2018-00333).
`
`Everlight was first served with a complaint alleging infringement of the ’486
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`patent on April 26, 2017, more than one year before Everlight filed its petition for
`
`IPR on June 8, 2018. While the time limit under 35 U.S.C. § 315(b) does “not
`
`apply to a request for joinder under subsection (c),” Everlight does not establish
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`that the panel should exercise its discretion to permit joinder as Everlight’s
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`participation can only lengthen and complicate this proceeding.
`
`Further, Everlight’s motion highlights the USPTO’s failure to update its
`
`rules to address the issues raised by the Supreme Court’s decision in SAS Institute
`
`Inc. v. Iancu, 584 U.S. ___, 138 S. Ct. 1348 (2018). The USPTO has not issued
`
`rules governing how joinder should be handled by the Board post-SAS. And an ad
`
`hoc approach to the issues raised by joinder would be in contravention of 35
`
`U.S.C. § 316(b), which requires the Director to issue regulations under 35 U.S.C. §
`
`316(a) after considering the effect of those regulations on various factors.
`
`I. EVERLIGHT’S PETITION FOR IPR IS TIME-BARRED
`Everlight’s Statement of Material Facts contends that “Everlight was served”
`
`with a June 8, 2017 complaint in the Central District of California “on June 20,
`
`2017.” Motion, p. 3. Everlight omits that, on April 26, 2017, real-party-in-interest
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`- 1 -
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`Patent Owner's Exhibit 2108
`Page 3 of 10
`
`
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`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
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`Everlight Americas, Inc. (Pet., 2) was served with an April 13, 2017 complaint
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`charging infringement of ’486 patent in the Eastern District of Texas. Ex. 2100,
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`¶¶33-39; Ex. 2101, 2. Because Everlight was served with “a complaint” alleging
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`infringement of the patent-at-issue more than one year prior to the filing of its
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`petition for IPR, Everlight’s petition is time-barred. See 35 U.S.C. § 315(b).
`
`Everlight will likely reply that the April 26 service should not apply because
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`DSS dismissed the Eastern District of Texas complaint without prejudice on June
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`8, 2017. Ex. 2103, 2. Under the plain language of the 35 U.S.C. 315(b), that
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`subsequent action is irrelevant. But even if a dismissal with prejudice could
`
`operate to reset the time-bar in some circumstances, the activity here should be
`
`viewed as a transfer of the case against Everlight from Texas to California rather
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`than a dismissal of Patent Owner’s infringement action. The Supreme Court issued
`
`its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S.
`
`___, 137 S. Ct. 1514 (2017) on May 22, 2017, after DSS filed its Texas complaint.
`
`TC Heartland restricted the venue in which a particular patent infringement
`
`complaint could be brought. In view of that intervening decision, DSS moved its
`
`infringement action against Everlight to the Central District of California, by
`
`concurrently refiling the counts in the Texas complaint in California and
`
`dismissing the Texas complaint, both on June 8, 2017. Cf, Ex. 2100, ¶¶33-39 with
`
`Ex. 2102, ¶¶33-39; Ex. 2103, 2. Accordingly, as there was no gap in the charge of
`
`- 2 -
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`Patent Owner's Exhibit 2108
`Page 4 of 10
`
`
`
`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
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`infringement, and by the statute’s plain language, the time-bar of 35 U.S.C. §
`
`315(b) should run from the first service of “a complaint alleging infringement” of
`
`the ’486 patent on April 26, 2017.
`
`II.
`
`JOINDER IS NOT APPROPRIATE
`
`As Everlight’s Petition is time-barred, Everlight can only participate in an
`
`IPR against the ’486 patent through joinder. But no other party feels Everlight’s
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`participation will assist any party or the Board.
`
`Instead, Everlight’s presence will complicate the proceeding. Everlight
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`states that “if joined, Everlight will not file additional briefs outside of the
`
`consolidated filings, will not request any additional deposition time, and will not
`
`request any additional oral hearing time.” Motion at 6-7.1 Further, the Seoul
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`Semiconductor petitioners have sought permission to oppose Everlight’s motion
`
`(see Ex. 2105), thereby casting doubt that those parties could coordinate a
`
`“consolidated” filing. And even if there is available space in a “consolidated”
`
`filing for any of Everlight’s unique positions, it would be unfairly prejudicial to
`
`Patent Owner, and inconsistent with an “understudy” role, for Everlight to include
`
`those positions into a “consolidated” filing. Similarly, simply because time may
`
`1 These proposed concessions are frustrated in particular by Everlight’s decision to
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`submit a declaration from its own technical declarant, rather than sharing Seoul
`
`Semiconductor’s declarant.
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`- 3 -
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`Patent Owner's Exhibit 2108
`Page 5 of 10
`
`
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`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`exist in the day for Everlight to ask questions at a deposition or present argument at
`
`a hearing, does not mean that any questions or argument would not be unfairly
`
`prejudicial to Patent Owner. Further, Everlight’s joinder could give rise to a
`
`request from Seoul Semiconductor for relief from a final written decision in this
`
`case due to friction caused by the joinder. Thus, while Everlight suggests that it
`
`would be taking an understudy role in IPR2018-00333, its proposed concessions
`
`fall short of that characterization and instead only serve to complicate the joined
`
`proceedings to the detriment of Patent Owner.
`
`Moreover, there are good policy reasons for denying copy-cat joinder
`
`petitions from a time-barred party. A party who has elected to forego filing its
`
`own petition within the permissible time period has made a choice to resolve any
`
`validity challenge in district court. In the absence of a firm explanation for a delay
`
`and concrete benefits to be gained by joinder, the late-comer should not be
`
`permitted to tag along if it later changes its mind. Indeed, Everlight’s contention
`
`that “joinder eliminates the need for the Patent Owner to participate in parallel
`
`inter partes review proceedings instituted upon identical grounds of
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`unpatentability,” (Motion at 8-9), is entirely meaningless, as Everlight’s IPR
`
`should be denied as time-barred. Further, any prejudice that would inure to
`
`Everlight from a denial of its joinder request is caused by Everlight’s own
`
`- 4 -
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`Patent Owner's Exhibit 2108
`Page 6 of 10
`
`
`
`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`unexplained failure to file its petition for inter partes review within the statutory
`
`time permitted under 35 U.S.C. § 315(b).
`
`III. BEFORE PERMITTING JOINDER, THE PTAB MUST ISSUE POST-
`SAS RULES, INCLUDING RULES GOVERNING HOW JOINED
`CASES ARE TO PROCEED
`
`Everlight’s motion also highlights the concerns Patent Owner has expressed
`
`regarding the failure of the USPTO and Board to update its rules to address the
`
`issues raised by the Supreme Court’s SAS decision. See Patent Owner’s Request
`
`for Panel Rehearing, IPR2018-00265, Paper 13 at 10-11.
`
`The USPTO has not provided any rules governing how an IPR should be
`
`conducted post-SAS where there is a request for joinder that is opposed by the
`
`underlying petition’s petitioner. As noted in SAS Institute, “the petitioner’s
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`petition, not the Director’s discretion, is supposed to guide the life of the
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`litigation.” SAS Institute Inc., 138 S. Ct. at ____. As joinder could upset choices
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`made by a petitioner, including Seoul Semiconductor, the Director is obligated to
`
`issue regulations providing guidance governing how an IPR should be conducted
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`where a request for joinder is received (see 35 U.S.C. § 316(a)(4)), including
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`factors governing whether joinder should be permitted and how a joinder
`
`proceeding should be conducted. An ad hoc approach to these questions, without
`
`the necessary regulations, violates 35 U.S.C. § 316(b).
`
`
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`- 5 -
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`Patent Owner's Exhibit 2108
`Page 7 of 10
`
`
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`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
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`IV.
`
`CONCLUSION
`
`For the reasons presented above, Everlight’s motion for joinder should be
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`denied.
`
`
`
`Dated: July 25, 2018
`
`
`
`
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`James T. Wilson (Reg. No. 41,439)
`Aldo Noto (Reg. No. 35,628)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: whelge@dbjg.com
`Email: jwilson@dbjg.com
`Email: anoto@dbjg.com
`
`Counsel for Patent Owner
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`- 6 -
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`Patent Owner's Exhibit 2108
`Page 8 of 10
`
`
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`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`
`CERTIFICATE OF WORD COUNT
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`The undersigned certifies that the foregoing PATENT OWNER’S
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`OPPOSITION TO EVERLIGHT’S MOTION FOR JOINDER complies with the
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`page-volume limitation in 37 C.F.R. § 42.24(a)-(b).
`
`
`
`
`
`
`
`By: /s/ Wayne M. Helge
`
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
`
`
`
`
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`- 7 -
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`Patent Owner's Exhibit 2108
`Page 9 of 10
`
`
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`IPR2018-01225 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`OPPOSITION TO EVERLIGHT’S MOTION FOR JOINDER and Exhibits were
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`served to Petitioners in both IPR2018-00333 and IPR2018-01225 by serving the
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`correspondence email addresses of record as follows:
`
`Michael Eisenberg (Reg. No. 50,643)
`michael.eisenberg@hklaw.com
`31 West 52nd Street
`New York, NY 10019
`Telephone: (212) 513-3529
`Facsimile: (212) 385-9010
`
`Charles H. Sanders (Reg. No. 47,053)
`charles.sanders@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston, MA 02116
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`
`
`
`Dated: July 25, 2018
`
`
`
`John F. Rabena (Reg. No. 38,584)
`jrabena@sughrue.com
`William H. Mandir (Reg. No. 32,156)
`wmandir@sughrue.com
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., N.W.
`Suite 800
`Washington, DC 20037
`
`
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
`
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`- 8 -
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`Patent Owner's Exhibit 2108
`Page 10 of 10
`
`
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