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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. IPR2018-01260
`U.S. Patent No. 7,919,787
`
`
`
`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 .................................................... 9
`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. 7,919,787 ("the ‘787
`
`patent"), IPR2018-01260 (“Everlight’s IPR”), with pending Inter Partes review,
`
`Nichia Corporation v. Document Security Systems, Inc., IPR2018-00965
`
`(“Nichia’s IPR”), which was filed May 10, 2018, assuming Nichia’s IPR is
`
`instituted. Everlight’s Petition is substantively identical to the petition in Nichia’s
`
`IPR – challenging the same claims of the ‘787 patent on the same grounds while
`
`relying on the same prior art, arguments, and evidence. This Motion was
`
`authorized by the PTAB in an Order (Paper No. 7 in IPR2018-01260) dated
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`September 18, 2018. This Motion is timely in that it is filed before the Decision
`
`on Institution in Nichia’s IPR (The Decision on Institution of Nichia’s IPR is
`
`expected by November 10, 2018). 37 CFR 42.122(b)(“… Any request for joinder
`
`must be filed, as a motion under § 42.22, no later than one month after the
`
`institution date of any inter partes review for which joinder is requested. The time
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`period set forth in § 42.101(b) shall not apply when the petition is accompanied by
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`a request for joinder.”) (emphasis added)
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`On September 7, 2018, counsel for Everlight asked counsel for patent owner
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`for Nichia, whether they will oppose the motion. Both Patent Owner and Nichia
`3
`
`
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`
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`have indicated that they will oppose joinder.
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`Joinder is appropriate here because (i) Everlight’s IPR is substantively
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`identical to Nichia’s IPR and (ii) Everlight agrees to a complete “understudy role,”
`
`simplifying briefing and discovery. Joinder will thus provide for a just, speedy,
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`and inexpensive determination of related proceedings.
`
`Accordingly, Everlight respectfully requests that the Board grant this
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`Motion for Joinder.
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`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`The owner of the ‘787 patent, Document Security Systems, Inc.
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`(“Document Security Systems” or “Patent Owner”), sued Everlight’s subsidiary
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`Everlight Americas, Inc., alleging infringement of the ‘787 patent in the E.D. of
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`Texas on April 13, 2017, but voluntarily dismissed its Complaint without prejudice
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`on June 8, 2017.
`
`2.
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`Patent Owner then sued Everlight Americas Inc. in the Central District
`
`of California. Everlight Americas Inc. was served with the Complaint on June 20,
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`2017.
`
`3.
`
`On May 10, 2018, Nichia Corporation timely filed a Petition for
`
`Inter Partes Review challenging claims 1-14 of the ‘787 patent. See Nichia
`
`Corporation v. Document Security Systems, Inc., IPR2018-00965.
`
`4.
`
`The litigation in the Central District of California was stayed on July
`4
`
`
`
`
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`27, 2018, pending resolution of certain IPRs against the asserted patents, including
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`the ‘787 patent. Everlight agreed to be estopped by the results of Nichia's IPR in
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`connection with the stay of the litigation.
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`5.
`
`Everlight’s Petition for IPR was filed on June 15, 2018, and this
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`motion is being filed prior to the Decision on Institution for Nichia’s IPR (expected
`
`by November 10, 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:
`
`(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
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`review; and (4) address specifically how briefing and discovery may be
`
`5
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`
`
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`
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`simplified.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper
`
`17 (PTAB July 29, 2013).
`
`B.
`Everlight’s Motion is Timely
`A Motion for Joinder is timely if the moving party files no later than one
`
`month after institution of the Inter Partes Review for which joinder is
`
`requested. 37 C.F.R. § 42.122(b). Because Everlight files this motion prior to the
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`Decision on Institution for Nichia’s IPR, this motion is timely. 37 C.F.R. §
`
`42.122(b).
`
`C.
`Joinder is Appropriate
`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” Nichia’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 Nichia’s IPR, challenging the same claims
`
`of the ‘787 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 Nichia’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 Nichia’s IPR, and
`
`Everlight’s expert declaration is substantially identical to Nichia’s expert
`6
`
`
`
`
`
`declaration. Joinder would therefore have little, if any, impact on Nichia’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 ensures a just, speedy, and
`
`inexpensive resolution of these 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 of the ‘787 patent based on the same arguments,
`
`evidence, and grounds of unpatentability as Nichia’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 Nichia’s IPR. Everlight will
`
`adhere to all applicable deadlines set in any Scheduling Order for Nichia’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 Nichia’s IPR, and
`
`Everlight’s expert declaration is substantially identical to Nichia's expert
`
`declaration.
`
`Assuming Nichia does not terminate its IPR before its expert is deposed,
`
`
`
`7
`
`
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`Everlight agrees to rely entirely on, and be bound by, the expert declaration(s) and
`
`deposition in Nichia’s IPR, and Everlight will waive its own expert declaration.
`
`Accordingly, if Nichia 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 any briefs, will not request
`
`any deposition time, and will not request any oral hearing time. In the event that
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`Nichia ceases to participate in its IPR, Everlight intends to “step into the shoes” of
`
`Nichia and materially participate in the joined proceedings.
`
`Accordingly, for the reasons stated above, joinder of Everlight to
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`Nichia’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 and silent “understudy” role and will not raise
`
`any issues. In particular, Everlight agrees that, if joined, the following conditions
`
`will apply so long as Nichia remains an active party. These conditions are less
`
`burdensome on the patent owner and lead petitioner than conditions that have been
`
`previously approved by the Board in similar circumstances:
`
`(a) Everlight will rely on the filings of Nichia, unless a filing solely
`
`concerns issues that do not involve Nichia (e.g., Mandatory Notices);
`
`8
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`
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`(b) Everlight shall rely on the grounds instituted by the Board in Nichia’s
`
`IPR, and the arguments and discovery introduced by Nichia;
`
`(c) Everlight shall be bound by any agreement between the Patent Owner
`
`and Nichia concerning discovery and/or depositions; and
`
`(d) Everlight at deposition will not request any direct, cross examination
`
`or redirect time so long as Nichia 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
`
`Nichia’s expert and Everlight will waive its own expert declaration, unless Nichia
`
`ceases to be an active participant in its IPR prior to its expert’s deposition.
`
`Thus, Everlight would assume an active role only if Nichia ceases 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 Nichia’s IPR will not create any additional
`
`burden on the Patent Owner. The Patent Owner need not expend any additional
`
`
`
`9
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`
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`resources above and beyond those required in the current Nichia IPR.
`
`IV. CONCLUSION
`For the foregoing reasons, Everlight respectfully requests that its Petition
`
`for Inter Partes Review of the ‘787 patent in IPR2018-01260 (Everlight’s IPR) be
`
`granted and that the proceedings be joined with IPR2018-00965 (Nichia’s IPR).
`
`Dated: October 2, 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
`
`
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`10
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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 IPR2018-00965:
`
`PETITIONER:
`Patrick R. Colsher
`Matthew G. Berkowitz
`Eric S. Lucas
`Thomas R. Makin
`nichia-dss@shearman.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 October 2, 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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`
`
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