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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 No. IPR2018-01225
`U.S. Patent No. 7,256,486
`
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`Table of Contents
`I.
`STATEMENT OF RELIEF REQUESTED .................................................... 2
`II.
`STATEMENT OF MATERIAL FACTS ........................................................ 3
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF ....................... 3
`A.
`LEGAL STANDARDS ......................................................................... 3
`B.
`EVERLIGHT’S MOTION IS TIMELY .............................................. 4
`C.
`JOINDER IS APPROPRIATE ............................................................. 5
`1.
`No New Grounds of Unpatentability in the Petition .................. 6
`2.
`No Impact on the Schedule for the Existing IPR
`Proceeding ................................................................................... 6
`3.
`Briefing and Discovery Will be Simplified ............................... 7
`4.
`No Prejudice to Patent Owner .................................................... 8
`IV. CONCLUSION ................................................................................................ 9
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Everlight Electronics Co., Ltd. (“Everlight” or “Petitioner”) respectfully
`
`requests to join, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), its
`
`recently filed Inter Partes Review of U.S. Patent No. 7,256,486 ("the '486
`
`patent"), IPR2018-01225 (“Everlight’s IPR”), with pending Inter Partes review,
`
`Seoul Semiconductor Co. Ltd. And Seoul Semiconductor, Inc. v. Document
`
`Security Systems, Inc., IPR2018-00333 (“Seoul Semiconductor's IPR”), which
`
`was filed on December 21, 2017. Everlight’s Petition is substantively identical to
`
`the petition in Seoul Semiconductor’s IPR – challenging the same claims of the
`
`'486 patent on the same grounds while relying on the same prior art, arguments,
`
`and evidence. This Motion for Joinder and accompanying Petition are timely,
`
`being filed within one month of the Decision instituting trial in Seoul
`
`Semiconductor’s IPR (Paper No. 9 issued June 21, 2018). On Friday June 22,
`
`2018, counsel for Everlight asked patent owner and petitioner’s counsel in Seoul
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`Semiconductor’s IPR whether they oppose the motion, but has not yet received a
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`response.
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`Joinder is appropriate here because (i) Everlight’s IPR is substantively
`
`identical to Seoul Semiconductor’s IPR and (ii) Everlight agrees to a complete
`
`“understudy role,” simplifying briefing and discovery. Joinder will thus provide
`
`for a just, speedy, and inexpensive determination of related proceedings.
`
`
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`2
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`
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`Accordingly, Everlight respectfully requests that the Board grant this
`
`Motion for Joinder.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`
`The owner of the '486 patent, Document Security Systems, Inc.
`
`(“Document Security Systems” or “Patent Owner”), sued Everlight alleging
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`infringement of the '486 patent in the Central District of California. Everlight
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`was served with Document Service Systems’ Complaint on June 20, 2017.
`
`2.
`
`On December 21, 2017, Seoul Semiconductor Co., Ltd. and Seoul
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`Semiconductor, Inc. (collectively “Seoul Semiconductor”) timely filed a Petition
`
`for Inter Partes Review challenging claims 1-3 of the '486 patent. See Seoul
`
`Semiconductor Co. Ltd. And Seoul Semiconductor, Inc. v. Document Security
`
`Systems, Inc., IPR2018-00333 (Petition, Dec. 21, 2017).
`
`3.
`
`Everlight’s Petition for IPR was filed on June 8, 2018, and
`
`this motion are being filed within one month of the Decision instituting Seoul
`
`Semiconductor’s IPR (Paper No. 9 June 21, 2018).
`
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A.
`Legal Standards
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review (IPR) proceedings. Joinder is governed by 35 U.S.C. § 315(c), which
`
`states:
`
`
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`3
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`
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`(c) 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.
`
`A motion for joinder should “(1) set forth the reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
`review; and (4) address specifically how briefing and discovery may be
`
`simplified.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper
`
`17 (PTAB July 29, 2013).
`
`Everlight’s Motion is Timely
`
`B.
`A Motion for Joinder is timely if the moving party files within one month of
`
`institution of the Inter Partes Review for which joinder is requested. 37 C.F.R.
`
`§ 42.122(b). Because Everlight files this motion within a month of the Decision
`
`instituting Seoul Semiconductor’s IPR, this motion is timely. See, e.g., LG
`
`Electronics, Inc., et al. v. Fundamental Innovations Systems International LLC,
`
`IPR2018-00461, Paper 10 (PTAB May 29, 2018).
`
`4
`
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`
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`
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`Joinder is Appropriate
`
`C.
`Joinder is appropriate because Everlight’s IPR does not raise any new
`
`grounds of unpatentability and does “not present issues that might complicate or
`
`delay” Seoul Semiconductor’s IPR. See Enzymotec Ltd. v. Neptune Techs &
`
`Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB July 9, 2014). Everlight’s
`
`Petition is substantially identical to the petition in Seoul Semiconductor’s IPR,
`
`challenging the same claims of the '486 patent on the same grounds and relying on
`
`a substantially
`
`identical expert declaration. The only difference between
`
`Everlight’s Petition and the petition filed in Seoul Semiconductor’s IPR are the
`
`sections on Real Party-In- Interest, Related Matters, and Counsel, which have
`
`been appropriately updated. While Everlight’s Petition relies on a Declaration
`
`from a different expert witness, Everlight’s expert reviewed and agreed with the
`
`expert declaration supporting Seoul Semiconductor’s IPR, and Everlight’s expert
`
`declaration is substantially identical to Seoul Semiconductor’s expert declaration.
`
`Joinder would therefore have little, if any, impact on Seoul Semiconductor’s IPR
`
`because no new grounds would be added, the schedule would not be affected,
`
`no additional briefing or discovery would be required, and no additional
`
`burdens would be placed on the Patent Owner, as detailed below.
`
`Accordingly, joinder is appropriate because it eliminates the possibility of
`
`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
`
`5
`
`
`
`proceedings.
`
`1. No New Grounds of Unpatentability in the Petition
`Everlight’s Petition does not assert any new grounds of unpatentability.
`
`It challenges the same claims (1-3) of the '486 patent based on the same
`
`arguments, evidence, and grounds of unpatentability as Seoul Semiconductor’s IPR.
`
`2. No Impact on the Schedule for the Existing IPR Proceeding
`Because Everlight’s Petition raises no new grounds of unpatentability,
`
`joinder should have no impact on the schedule of Seoul Semiconductor’s IPR.
`
`Everlight will adhere to all applicable deadlines set in the Scheduling Order for
`
`Seoul Semiconductor’s IPR. Additionally, no additional expert discovery will be
`
`needed. While Everlight’s Petition relies on a Declaration from a different expert
`
`witness, Everlight’s expert reviewed and agreed with the expert declaration
`
`supporting Seoul Semiconductor’s IPR, and Everlight’s expert declaration is
`
`substantially identical to Seoul Semiconductor's expert declaration. Assuming
`
`Seoul Semiconductor does not terminate its IPR before its expert is deposed,
`
`Everlight agrees to rely entirely on, and be bound by, the expert declaration(s) and
`
`deposition in Seoul Semiconductor’s IPR. Accordingly, if Seoul Semiconductor
`
`does not terminate its IPR prematurely, there will be no need for any deposition of
`
`Everlight’s expert.
`
`Additionally, if joined, Everlight will not file additional briefs outside of
`
`the consolidated filings, will not request any additional deposition time, and will
`6
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`not request any additional oral hearing
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`time. In
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`the event
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`that Seoul
`
`Semiconductor’s IPR is terminated with respect to the petitioner, Everlight
`
`intends to “step into the shoes” of the dismissed petitioner and materially
`
`participate in the joined proceedings.
`
`Accordingly, for the reasons stated above, joinder of Everlight to Seoul
`
`Semiconductor’s IPR will not affect the Board’s ability to complete its review
`
`and final decision within the statutory time limits under 35 U.S.C. § 316(a)(11)
`
`and 37 C.F.R. § 42.100(c).
`
`3. Briefing and Discovery Will be Simplified
`Everlight agrees to a complete “understudy” role and will not raise any issues
`
`that are not already before the Board. In particular, Everlight agrees that, if
`
`joined, the following conditions will apply so long as Seoul Semiconductor
`
`remains an active party, as previously approved by the Board in similar
`
`circumstances:
`
`(a) all filings by Everlight in the joined proceeding be consolidated with
`
`the filings of Seoul Semiconductor, unless a filing solely concerns issues that do
`
`not involve Seoul Semiconductor;
`
`(b) Everlight shall not be permitted to raise any new grounds not instituted
`
`by the Board in Seoul Semiconductor’s IPR, or introduce any argument or
`
`discovery not already introduced by Seoul Semiconductor;
`
`7
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`(c) Everlight shall be bound by any agreement between the Patent Owner
`
`and Seoul Semiconductor concerning discovery and/or depositions; and
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`(d) Everlight at deposition
`
`shall not
`
`receive any direct, cross
`
`examination or redirect time so long as Seoul Semiconductor remains an active
`
`participant. See Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17 at
`
`5-6 (PTAB Apr. 10, 2015)(finding
`
`the same proposed
`
`limitations “are
`
`consistent with the ‘understudy’ role that Petitioner agrees to assume, as well as
`
`Petitioner’s assertion that its presence would not require introducing any additional
`
`arguments, briefing, or discovery.”)
`
`(e) Everlight agrees to be bound by the expert deposition and declarations of
`
`Seoul Semiconductor’s expert, unless Seoul Semiconductor ceases to be an active
`
`participant in its IPR prior to its expert’s deposition or reply declaration.
`
`Thus, Everlight would assume a primary role only if Seoul Semiconductor
`
`ceased to participate in the proceeding. Briefing and discovery will be simplified
`
`in that there will be no need for redundant depositions, briefing, or hearings.
`
`4. No Prejudice to Patent Owner
`Joinder of Petitioner to Seoul Semiconductor’s IPR will not create any
`
`additional burden on the Patent Owner. The Patent Owner need not expend any
`
`additional resources above and beyond those required in the current Seoul
`
`Semiconductor IPR. Moreover, joinder eliminates the need for the Patent Owner
`
`
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`8
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`
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`to participate in parallel inter partes review proceedings instituted upon identical
`
`grounds of unpatentability.
`
`IV. CONCLUSION
`For the foregoing reasons, Everlight respectfully requests that its Petition
`
`for Inter Partes Review of the '486 patent in IPR2018-01225 (Everlight’s IPR) be
`
`granted and
`
`that
`
`the proceedings be
`
`joined with IPR2018-00333 (Seoul
`
`Semiconductor’s IPR).
`
`Dated: June 25, 2018
`
`Respectfully submitted,
`
`By /John F. Rabena/
`
`John F. Rabena
`Reg. #38,584
`jrabena@sughrue.com
`2100 Pennsylvania Ave., N.W.
`Suite 800
`Washington, DC 20037
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`
`
`
`9
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a complete copy of this Petitioner’s Motion
`
`for Joinder Under 37 C.F.R. §§ 42.22 and 42.122(b) was served upon the attorneys
`
`of record for IPR2018-00333:
`
`PETITIONER:
`Michael Eisenberg
`HOLLAND & KNIGHT LLP
`Michael.eisenberg@hklaw.com
`Charles H. Sanders
`Jonathan M. Strang
`LATHAM & WATKINS LLP
`charles.sanders@lw.com
`jonathan.strang@lw.com
`
`PATENT OWNER:
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`DAVIDSON, BERQUIST,
`JACKONS & GOWDEY, LLP
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`via email on June 25, 2018:
`
`By /John F. Rabena/
`John F. Rabena
`Reg. #38,584
`jrabena@sughrue.com
`2100 Pennsylvania Ave., N.W. #800
`Washington, DC 20037
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`
`Counsel for EVERLIGHT
`ELECTRONICS CO., LTD.
`
`
`
`
`
`
`
`
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