`
`
`
`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 PRELIMINARY RESPONSE
`
`
`
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`2001-2099
`
`Reserved
`
`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
`
`
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Document Security Systems,
`
`Inc. (“DSS” or “Patent Owner”) files this preliminary response to the Petition,
`
`setting forth reasons why the Petition for inter partes review (“IPR”) of U.S. Patent
`
`No. 7,256,486 (the “’486 patent”), claims 1-3, as requested by Everlight
`
`Electronics, Co., Ltd. (“Everlight” or “Petitioner”) must be denied.1
`
`I. EVERLIGHT’S PETITION FOR IPR IS TIME-BARRED
`Real party-in-interest to the Petition, Everlight Americas, Inc., was first
`
`served with a complaint alleging infringement of the ’486 patent on April 26, 2017,
`
`more than one year before Everlight filed its petition for IPR on June 8, 2018.
`
`Therefore, Everlight’s Petition is time-barred under 35 U.S.C. § 315(b), and must
`
`be denied without institution.2
`
`On the first page of the Petition, Everlight states that “Petitioner and the
`
`Real Parties in Interest are not barred or estopped from requesting an inter partes
`
`1 By submitting this Preliminary Response, no waiver of any argument is intended
`
`by Patent Owner. Patent Owner will have a right to file “a response to the petition
`
`addressing any ground for unpatentability not already denied” should the Board
`
`institute inter partes review. 37 C.F.R. § 42.120(a).
`
`2 Petitioner moved to join IPR2018-00333 (Paper 7), and joinder should be denied
`
`for the reasons set forth in the oppositions filed by Patent Owner and the
`
`petitioners from IPR2018-00333. (Papers 9-10).
`
`- 1 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`review challenging claims 1-3 of the ’486 patent on the grounds identified herein.”
`
`Pet., 1. This is incorrect, and stems from disclosure of incomplete facts and
`
`Everlight’s misapplication of the governing law. Everlight’s Statement of Material
`
`Facts in its Motion for Joinder contends that “Everlight was served” with a June 8,
`
`2017 complaint in the Central District of California3 “on June 20, 2017.” Motion,
`
`p. 3. Everlight’s Motion omits that, on April 26, 2017, admitted real party-in-
`
`interest Everlight Americas, Inc. (see Pet., 2) was served with a complaint dated
`
`April 13, 2017 (“Texas Complaint”), alleging infringement of ’486 patent in the
`
`Eastern District of Texas. See Ex. 2100, ¶¶33-39; Ex. 2101, 2. Because this
`
`named real party-in-interest to the Petition was served with “a complaint,” namely
`
`the Texas Complaint, alleging infringement of the patent-at-issue more than one
`
`year prior to the filing of Everlight’s Petition for IPR, Everlight’s Petition is time-
`
`barred. See 35 U.S.C. § 315(b).
`
`Everlight appears to believe that the service date of April 26, 2017 should
`
`not bar the untimely filing of this Petition because DSS dismissed the Texas
`
`Complaint without prejudice on June 8, 2017. Ex. 2103, 2. Under the plain
`
`language of the 35 U.S.C. 315(b) and governing Federal Circuit law, that
`
`subsequent dismissal of the complaint is irrelevant to whether Everlight Americas,
`
`Inc. was served with the complaint alleging infringement of the ’486 patent, and
`
`3 This document will be referred to as the “California Complaint.”
`
`- 2 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`therefore whether Petitioner was barred from filing a petition for inter partes
`
`review of the ’486 patent after April 26, 2018. See Click-to-Call Tech., LP v.
`
`Ingenio, Inc., ___ F.3d ___, slip op. at 10 (Fed. Cir. 2018).4
`
`That Petitioner Everlight was not served with the Texas Complaint does not
`
`permit Everlight to carry on with this untimely Petition. Everlight identifies both
`
`itself and Everlight Americas, Inc. as real parties-in-interest in the Petition. Pet., 2.
`
`And the evidence clearly shows that on April 26, 2017, more than a year before the
`
`filing of this Petition, real party-in-interest Everlight Americas, Inc. was served
`
`with the Texas Complaint, alleging infringement of ’486 patent. See Ex. 2100,
`
`¶¶33-39; Ex. 2101, 2. As the Federal Circuit acknowledged, the time bar of §
`
`315(b) is trigged by service of a complaint on the petitioner or real party-in-
`
`interest: “the text of § 315(b) clearly and unmistakably considers only the date on
`
`which the petitioner, its privy, or a real party in interest was properly served with a
`
`complaint.” Click-to-Call Tech., slip op. at 17. Indeed, Petitioner Everlight does
`
`not distinguish between itself and real party-in-interest Everlight Americas, Inc.
`
`4 “The principal question on appeal is whether the Board erred in interpreting the
`
`phrase ‘served with a complaint alleging infringement of [a] patent’ recited in §
`
`315(b) such that the voluntary dismissal without prejudice of the civil action in
`
`which the complaint was served ‘does not trigger’ the bar. Final Written Decision,
`
`slip op. at 12. We hold that it did.”
`
`- 3 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`when admitting that “Everlight was served with Document [Security] Systems’
`
`[California] Complaint on June 20, 2017.” Motion, 3.
`
`Even if a dismissal without prejudice could operate to reset the time-bar
`
`provision under § 315(b) in some circumstances, here DSS dismissed its case
`
`against Everlight in Texas and concurrently refiled in California, thereby
`
`continuously maintaining its infringement action against the Everlight entities.
`
`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 served to restrict the venue in which a
`
`particular patent infringement complaint could be brought. In view of that
`
`intervening decision, DSS shifted its infringement action against Everlight to the
`
`Central District of California, by concurrently refiling the counts from the Texas
`
`complaint in the California Complaint 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 infringement, and by the
`
`statute’s plain language, the time-bar of 35 U.S.C. § 315(b) runs from the first
`
`service of “a complaint alleging infringement” of the ’486 patent real party-in-
`
`interest Everlight Americas, Inc. on April 26, 2017. See Click-to-Call
`
`Technologies, LP v. Ingenio, Inc., ___ F.3d ___ (Fed. Cir. 2018).
`
`- 4 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`
`Given that Everlight’s Petition is time-barred, Everlight now seeks to rely on
`
`“joinder” provisions to avoid the time-bar and mandatory noninstitution of its
`
`Petition. For example, in its Reply Brief in Support of its Motion for Joinder,
`
`Everlight argues that even if its Petition is time-barred under 35 U.S.C. 315(b)
`
`based on the Federal Circuit’s Click-to-Call decision, section 315(b) “expressly
`
`excludes joinder situations from the time-bar.” Paper 12, p. 4.
`
`Everlight is wrong to believe that activities following the filing of a petition,
`
`such as a later-filed motion for joinder, can save a time-barred petition. The PTO’s
`
`regulations expressly prohibit the filing of a time-barred petition, and only provide
`
`an exception where a petition is “accompanied” by a motion for joinder. 37 C.F.R.
`
`§ 42.122(b). Everlight’s Petition was not accompanied by a motion for joinder; its
`
`motion for joinder was filed long after the Petition. Similarly, nothing in the IPR
`
`statute permits conversion of an untimely petition into a request for joinder based
`
`on later filings that are not concurrent with, i.e. accompanying, the petition.
`
`Everlight’s Petition is not a Request for Joinder
`
`Everlight incorrectly presumes that it has filed a proper request for joinder
`
`that can provide relief from a time-bar. The express language of the Inter Partes
`
`review statute, and applicable regulations, does not permit Everlight to convert a
`
`time-barred petition into a request for joinder under 35 U.S.C. § 315(c).
`
`- 5 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`
`The PTO’s rules allow a petitioner to file a petition unless the petition “is
`
`filed more than one year after the date on which the petitioner, the petitioner’s real
`
`party-in-interest, or a privy of the petitioner is served with a complaint alleging
`
`infringement of the patent.” 37 C.F.R. § 42.101(b). But Everlight’s real party-in-
`
`interest was served with a complaint alleging infringement of the patent-at-issue
`
`more than one year before the Petition was filed. Under 37 C.F.R. § 42.101(b),
`
`Everlight was not permitted to file its Petition. Nor can Everlight avail itself of the
`
`exception to 37 C.F.R. § 42.101(b) found in 37 C.F.R. § 42.122. 37 C.F.R. §
`
`42.122(b) requires the filing of a motion to request joinder and states that “[t]he
`
`time period set forth in § 42.101(b) shall not apply when the petition is
`
`accompanied by a request for joinder.” 37 C.F.R. § 42.122(b) (emphasis added).
`
`Everlight’s Petition was not accompanied by a motion under 37 C.F.R. § 42.22 and
`
`42.122. Nor is there any mention of joinder in Everlight’s Petition, which was
`
`filed as a stand-alone petition, not a request for joinder. Thus, Everlight’s Petition
`
`was untimely under the PTO regulations.
`
`Moreover, 35 U.S.C. § 315(b) states that an IPR proceeding may not be
`
`instituted if the petition is filed more than 1 year after the date on which the
`
`petitioner, real party in interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent that is the subject of the IPR petition.
`
`See 35 U.S.C. § 315(b). The second sentence of section 315(b) also states that the
`
`- 6 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`1-year time limitation “shall not apply to a request for joinder under subsection
`
`(c).” Id. The language is clear. The second sentence is directed to a request for
`
`joinder. It does not state that a stand-alone petition, unaccompanied by a request
`
`for joinder, can be filed after the 1-year deadline. See Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S. Ct. 2131, 2142 (2016) (“Where a statute is clear, the agency must
`
`follow the statute.”); Click-to-Call Techs., LP v. Ingenio, Inc., 2018 WL 3893119,
`
`*7 (Fed. Cir. Aug. 16, 2018) (holding that where the statue is clear and
`
`unambiguous, the express language of the statute controls). Section 315(b)’s
`
`second sentence means exactly what it says, and no more. It permits a party to file
`
`a request for joinder—constituting a motion for joinder filed concurrently with a
`
`petition—more than 1 year after that party, real party in interest, or privy of the
`
`petitioner has been served with a complaint alleging infringement of the subject
`
`patent. This is consistent with the PTO’s governing regulations in 37 C.F.R. §
`
`42.101(b), which prohibits the filing of a petition “more than one year after the
`
`date on which the petitioner, the petitioner's real party-in-interest, or a privy of the
`
`petitioner is served with a complaint alleging infringement of the patent.”
`
`In addition to not being a proper “request for joinder” under 37 C.F.R. §
`
`42.122(b), Everlight’s Petition is not a proper “request for joinder” under the IPR
`
`statute. It is a petition, and the fact that it is related to an earlier petition implicates
`
`35 U.S.C. § 315(d), not § 315(c). A plain reading of 35 U.S.C. § 315(c) provides
`
`- 7 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`that a petition supporting a request for joinder can only be filed after the Board has
`
`already instituted an IPR. Section 315(c) provides that “[i]f the Director institutes
`
`an inter partes review,” then the Director “may join as a party” to that instituted
`
`IPR proceeding “any person who properly files a petition under section 311” if the
`
`Director determines that that the second petition “warrants the institution of an
`
`inter partes review under section 314.” 35 U.S.C. § 315(c) (emphasis added). The
`
`use of the present tense, “files,” indicates that the filing of the request for joinder
`
`occurs after the Director’s decision instituting an IPR. Section 315(d), which deals
`
`with the existence of multiple proceedings, provides no relief from a time bar
`
`facing a petition. Accordingly, Everlight’s Petition, which was filed before the
`
`Board’s institution decision in IPR2018-00333, cannot be a “request for joinder”
`
`filed under 35 U.S.C. § 315(c), and Everlight cannot avail itself of the time-bar
`
`relief provided by the second sentence of 35 U.S.C. § 315(b).
`
`The governing procedures of the inter partes statute and the Board’s
`
`regulations provide important benefits to the PTO and the parties, which would be
`
`circumvented by permitting untimely, “anticipatory” petitions to be converted
`
`according to later-occurring developments.
`
`One benefit is that the PTO would not be faced with having to decide
`
`untimely petitions unnecessarily, such as in situations where an earlier petition is
`
`denied institution. Everlight’s Petition is pernicious in this regard, as it fails to
`
`- 8 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`state the relevant facts of when Everlight was served with a complaint of
`
`infringement or otherwise discuss why it should be exempt from the applicable
`
`time-bar.
`
`Another benefit is to provide the patent owner time to study the institution
`
`decision and to inform its preliminary response to the later-filed petition. Indeed,
`
`this benefit is incorporated into the joinder statute itself. Before joinder can occur,
`
`section 315(c) also requires the Director to receive a preliminary response to the
`
`later-filed petition, and determine whether the petition filed by the party seeking
`
`joinder “warrants the institution of an inter partes review.” The Federal Circuit
`
`has recognized that “[t]he timely filing of a petition under § 315(b) is a condition
`
`precedent to the Director’s authority to act.” Wi-Fi One, LLC v. Broadcom Corp.,
`
`878 F.3d 1364, 1374 (Fed. Cir. 2018). Under § 315(c), the Director must first
`
`determine that the second petition is grantable before the Director can decide the
`
`joinder request.
`
` Because Everlight’s Petition was filed more than a year after real party-in-
`
`interest Everlight Americas, Inc. was served with a complaint alleging
`
`infringement of the ’486 patent and Petitioner presents no valid reason it should be
`
`excused from the mandatory time-bar, Everlight’s Petition is time-barred under 35
`
`U.S.C. § 315(b) and must be denied.
`
`
`
`- 9 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`II.
`
`CONCLUSION
`
`For the reasons presented above, the Petition is time-barred and must be
`
`denied.
`
`Dated: August 31, 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
`
`- 10 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`
`CERTIFICATE OF WORD COUNT
`
`The undersigned certifies that the foregoing PATENT OWNER’S
`
`PRELIMINARY RESPONSE complies with the type-volume limitation in 37
`
`C.F.R. § 42.24(b)(1). According to the word-processing system’s word count, the
`
`brief contains 2,189 words, excluding the parts of the brief exempted by 37 C.F.R.
`
`§ 42.24(a).
`
`
`
`
`
`
`
`By: /s/ Wayne M. Helge
`
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
`
`
`
`
`
`- 11 -
`
`
`
`IPR2018-01225 Patent Owner’s Preliminary Response
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`PRELIMINARY RESPONSE was served to Petitioner by serving the
`
`correspondence email addresses of record as follows:
`
`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
`
`
`
`Dated: August 31, 2018
`
`
`
`
`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
`
`
`- 12 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
