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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EVERLIGHT ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
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`Case IPR2018-01225
`U.S. Patent No. 7,256,486 B2
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`PETITIONER’S REPLY BRIEF IN SUPPORT OF ITS
`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Everlight Electronics Co., Ltd. (“Everlight”) respectfully submits this Reply to
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`the Oppositions of Seoul Semiconductor Co. Ltd. et al. in IPR2018-00333 (“SSC”)
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`and Document Security Systems, Inc., (“PO”), to Everlight's Motion to
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`join Everlight’s IPR2018-01225 (“Everlight’s IPR”) with pending IPR IPR2018-
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`00333 filed by SSC (“SSC’s IPR”). The PTAB has authorized the filing of this
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`Reply in an email dated August 1, 2018.
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`I.
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`SSC/PO MISTATE EVERLIGHT’S PROPOSED INVOLVEMENT
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`SSC and PO argue that Everlight wants to be actively involved in SSC's IPR,
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`despite Everlight’s representations by email, and in its Motion, that Everlight will be
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`a “complete understudy” and do nothing unless and until SSC abandons its IPR.
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`Everlight’s Motion explained that “Everlight will not file additional briefs outside of
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`the consolidated filings, will not request any additional deposition time, and will not
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`request any additional oral hearing time.” Motion at 6-7. In addition, Everlight
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`explained that it will waive its expert declaration if SSC participates in its IPR to the
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`point that SSC’s expert is deposed. Motion at (“Assuming SSC does not terminate
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`its IPR before its expert is deposed, Everlight agrees to rely entirely on, and be bound
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`by, the expert declaration(s) and deposition in the SSC IPR.”). Everlight’s proposal
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`is significantly different than the situation in the ZTE case relied upon by SSC. In
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`the ZTE case, the expert for the lead petitioner (Sony) had already been deposed, yet
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`2
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`the copy-petitioner (ZTE) had not waived its expert’s declaration. ZTE Corp. v.
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`Adaptix, Inc., IPR2015-01184, Paper 10 at 5.
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`SSC and PO rely heavily on the word “consolidated” in Everlight’s Motion,
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`which was intended to refer to the fact that SSC’s briefs would also be filed on behalf
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`of Everlight as a complete understudy, not that Everlight would insist on having
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`input. Similarly, SSC cites to prior discussions that address whether an agreement
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`was reached between the two Petitioners as the how “consolidated filings” would be
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`handled. SSC Opp. at 4. SSC then argues that since no prior agreement was reached
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`between SSC and Everlight, joinder would complicate the proceeding and would not
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`allow SSC to be the “master of its Complaint”. Id. To be clear, Everlight will not
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`demand or even request that it has any input to any motion, brief, exhibit, deposition,
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`teleconference, Hearing, or any other aspect of the joined IPR, unless SSC abandons
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`its IPR. SSC and PO will proceed in the exact same manner as if Everlight had never
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`joined. Only if SSC terminates, will Everlight get involved at all.
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`SSC’s position that joinder would be unfair to SSC because they did the work,
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`would do away with copy-petitions altogether, despite the fact that the PTAB and
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`Federal Circuit have long-acknowledged and permitted these streamlined procedures.
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`Along these lines, the underlying litigation in the Central District of California was
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`stayed on July 27, 2018, pending resolution of the IPRs filed by SSC against the
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`asserted patents, including the '486 patent. Everlight agreed to be estopped by the
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`3
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`results of SSC’s IPR in connection with the stay of the litigation.
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`II.
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`EVERLIGHT’S PETITION IS NOT TIME-BARRED
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`PO argues that Everlight’s Petition is time-barred because of the Complaint it
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`filed in Texas in April 2017, but then voluntarily dismissed without prejudice. At the
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`time of filing the instant Motion, Everlight relied on precedent from the Board and
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`Federal Circuit, which had recognized that a voluntary dismissal without prejudice
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`nullifies a Complaint and does not activate the one-year bar. See, e.g., Shaw
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`Industries Group v. Automated Creel Systems, 817 F. 3d 1293, 1301 (Fed. Cir. 2016)
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`(upholding Board's Decision that voluntary dismissal of a suit without prejudice
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`"nullifie[d] the effect of the service of the complaint" such that the IPR petition was
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`not time barred.) Everlight recognizes that the Federal Circuit has just issued a
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`contrary ruling in Click-To-Call Technologies, LP v. Ingenio, Inc., 2015-1242 (Fed.
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`Cir. August 16, 2018).
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`Nevertheless, even if the Board finds that initial filing of the withdrawn
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`Complaint in Texas activates the statutory bar, 35 U.S.C. 315(b) expressly excludes
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`joinder situations from the time-bar. Since joinder is appropriate as explained
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`above, there is no time-bar issue. To this end, Board panels have consistently
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`allowed otherwise time-barred petitioners to join IPRs under § 315(c), where (1) the
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`time-barred petitioner promised to simply “maintain a secondary role in the
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`proceeding,” Pfizer, Inc. v. Biogen, Inc., No. IPR2017-01115, 2017 WL 3081981
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`4
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`(P.T.A.B. July 18, 2017), Paper No. 13; or (2) where the time-barred petitioner
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`wanted to attend depositions and the oral hearing, but not file papers, engage in
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`discovery, or participate in any deposition or oral hearing. Ion Geophysical Corp. v.
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`WesternGeco LLC, No. IPR2015-00565, 2015 WL 1906173, at *4 (P.T.A.B. Apr.
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`23, 2015), Paper No. 14.
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`Everlight has offered to do far less than what the Board has allowed in many
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`time-barred joinder situations. Everlight will not attend depositions or the Hearing,
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`or contact the other parties at all; Everlight has offered to do nothing, unless the lead
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`Petitioner abandons its IPR.
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`5
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`III. CONCLUSION
`For the foregoing reasons and those set forth in Everlight’s Motion, Everlight
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`respectfully requests that the proceedings be joined.
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`Dated: August 24, 2018
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`Respectfully submitted,
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`By /John F. Rabena /
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`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
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a complete copy of this PETITIONER’S
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`REPLY BRIEF IN SUPPORT OF ITS MOTION FOR JOINDER UNDER 37
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`C.F.R. §§ 42.22 AND 42.122(b) was served in both IPR2018-00333 and IPR2018-
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`01225 by serving the correspondence email addresses of record as follows:
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`Patent Owner
`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
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`Petitioner in IPR2018-00333
`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
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`Charles H. Sanders (Reg. No. 47,053)
`charles.sanders@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston, MA 02116
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
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`
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`By /John F. Rabena/
`John F. Rabena Reg. #38,584
`SUGHRUE MION, PLLC
`jrabena@sughrue.com
`2100 Pennsylvania Ave., N.W. Suite 800
`Washington, DC 20037
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
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`Counsel for EVERLIGHT ELECTRONICS CO., LTD.
`10
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