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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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`____________
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`EVERLIGHT ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`
`_______________
`
`Case IPR2018-01260
`Patent 7,919,787 B2
`____________
`
`PATENT OWNER’S OPPOSITION TO EVERLIGHT’S
`MOTION FOR JOINDER
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`
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`
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`PATENT OWNER’S LIST OF EXHIBITS
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`
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`Exhibit Number
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`Exhibit Description
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`2001-2099
`
`Reserved
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`2100
`
`2101
`
`2102
`
`2103
`
`2104-2112
`
`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
`
`
`
`
`
`IPR2018-01260 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 for Joinder of
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`Everlight’s IPR (IPR2018-01260) with Nichia Corporation’s IPR (IPR2018-
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`00965). Everlight’s Petition in this case was not properly accompanied by a
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`request for joinder as required by the Board’s regulations, and therefore Everlight
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`has not satisfied the exception to the time bar provided in 37 C.F.R. § 42.122(b).
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`I. EVERLIGHT’S PETITION FOR IPR IS TIME-BARRED
`A real party-in-interest to the Petition, Everlight Americas, Inc., was first
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`served with a complaint alleging infringement of the ’787 patent on April 26, 2017,
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`more than one year before Everlight filed its petition for IPR on June 15, 2018.
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`Specifically, on April 26, 2017, admitted real party-in-interest Everlight Americas,
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`Inc. (see Pet., 1) was served with a complaint dated April 13, 2017 (“Texas
`
`Complaint”), alleging infringement of ’787 patent in the Eastern District of Texas.
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`See Ex. 2100, ¶¶26-32; Ex. 2101, 2.
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`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-
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`issue more than one year prior to the filing of Everlight’s Petition for IPR,
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`Everlight’s Petition is time-barred. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b)
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`(“A person who is not the owner of a patent may file with the Office a petition to
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`institute an inter partes review of the patent unless … The petition requesting
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`- 1 -
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`
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`IPR2018-01260 Patent Owner’s Opposition to Everlight’s Motion for Joinder
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`the proceeding is filed more than one year after the date on which the petitioner,
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`the petitioner's real party-in-interest, or a privy of the petitioner is served with a
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`complaint alleging infringement of the patent … .”).
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`Although DSS dismissed the Texas Complaint without prejudice on June 8,
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`2017 (see Ex. 2103, 2), the plain language of the 35 U.S.C. 315(b) and governing
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`Federal Circuit law make clear that subsequent dismissal of the complaint is
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`irrelevant to whether Everlight Americas, Inc. was served with the complaint
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`alleging infringement of the ’787 patent, and therefore whether Petitioner was
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`barred from filing a petition for inter partes review of the ’787 patent after April
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`26, 2018. See Click-to-Call Tech., LP v. Ingenio, Inc., 899 F.3d 1321, 1328 (Fed.
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`Cir. 2018).1
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`II. EVERLIGHT’S PETITION WAS NOT ACCOMPANIED BY A
`REQUEST FOR JOINDER AND IS NOT EXEMPT FROM THE
`TIME BAR
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`Everlight cannot salvage its time-barred and improperly-filed petition by
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`later-filing a motion for joinder. The PTO’s regulations expressly prohibit the
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`1 “The principal question on appeal is whether the Board erred in interpreting the
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`phrase ‘served with a complaint alleging infringement of [a] patent’ recited in §
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`315(b) such that the voluntary dismissal without prejudice of the civil action in
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`which the complaint was served ‘does not trigger’ the bar. Final Written Decision,
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`slip op. at 12. We hold that it did.” Click-to-Call, 899 F.3d at 1328.
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`- 2 -
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`
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`IPR2018-01260 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`filing of a time-barred petition, and only provide an exception for filing a time-
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`barred petition where the petition is “accompanied” by a motion for joinder: “[t]he
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`time period set forth in § 42.101(b) shall not apply when the petition is
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`accompanied by a request for joinder.” 37 C.F.R. § 42.122(b) (emphasis added).
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`Everlight’s Petition was not accompanied by a motion for joinder, which was filed
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`on October 2, 2018, nearly three months after Everlight’s Petition was improperly
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`filed. Therefore, Everlight’s Petition was improperly filed.
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`Notably, Everlight offers no explanation in its Motion for how its Petition
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`was allegedly “accompanied by a request for joinder,” when the two filings were
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`separated by nearly three months. Mot., 3. Everlight simply alleges that its
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`“Motion is timely in that it is filed before the Decision on Institution in Nichia’s
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`IPR” and cites to 37 C.F.R. § 42.122(b). Mot., 3. Everlight ignores that 37 C.F.R.
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`§ 42.122(b) requires the petition to be accompanied by a request for joinder in
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`order to qualify for the time-bar exemption.2
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`2 The Board has concluded in other matters that this “rule does not set forth a
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`specific time before which a motion for joinder can be filed.” See, e.g., Everlight
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`Electronics Co., Ltd. v. Document Security Systems, Inc., IPR2018-01225, slip op.
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`at 8 (PTAB Sept. 27, 2018) (Paper 14). But the rule does state that the petition
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`must be accompanied by a request for joinder to be exempt from the time period of
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`§ 42.101(b). Thus, even if a non-time-barred petition could be filed separately
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`- 3 -
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`
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`IPR2018-01260 Patent Owner’s Opposition to Everlight’s Motion for Joinder
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`The Joinder statute also places the onus on the party seeking joinder to
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`“properly file[] a petition… .” 35 U.S.C. § 315(c). The Board’s regulations define
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`an otherwise time-barred petition as properly-filed under this statute only if the
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`time-barred petition is accompanied by a request for joinder. Everlight failed to
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`comply with these requirements; for nearly three months, its Petition was
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`improperly filed, unaccompanied by a request for joinder, and time-barred.
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`Nothing in the IPR statutes or Board regulations permits conversion of an untimely
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`petition into a request for joinder based on later filings that are not filed concurrent
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`with, i.e. accompanying, the petition.
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`An analogous situation occurred in the Click-to-Call case. There, the
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`petitioners argued that the presence of non-barred petitioners saved the petition,
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`noting how different papers might have been filed. But the Federal Circuit
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`emphasized that “what matters here is whether this petition provided a lawful basis
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`upon which to institute this IPR.” Click-To-Call, 899 F.3d at 1339 (emphasis in
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`original). Here, Everlight’s Petition is plainly time-barred, does not qualify for the
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`exemption from the time period of § 42.101(b), and cannot form the basis for
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`institution.
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`
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`from a request for joinder, a time-barred petition must accompany a request or it is
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`improperly filed and cannot be salvaged with a later-filed motion for joinder.
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`- 4 -
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`
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`IPR2018-01260 Patent Owner’s Opposition to Everlight’s Motion for Joinder
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`III.
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`JOINDER IS NOT APPROPRIATE
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`As Everlight’s Petition is time-barred, Everlight can only participate in an
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`IPR against the ’787 patent through joinder. But Everlight’s participation will not
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`assist any party or the Board. Further, Everlight’s joinder could give rise to a
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`request from Nichia Corporation for relief from a final written decision in this case
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`due to friction caused by the joinder.3 Thus, while Everlight suggests that it would
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`be taking an understudy role in IPR2018-00965, its proposed concessions still
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`serve to complicate the joined proceedings.
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`IV.
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`CONCLUSION
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`Because Everlight’s Petition was improperly filed more than a year after real
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`party-in-interest Everlight Americas, Inc. was served with a complaint alleging
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`infringement of the ’787 patent, and because Everlight’s Petition was not
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`accompanied by a request for joinder as required under the Board’s regulations,
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`Everlight’s Petition is time-barred under 35 U.S.C. § 315(b), does not qualify for a
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`time-bar exemption, and cannot be joined with Nichia Corporation’s IPR.
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`
`
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`3 See, e.g., Everlight Electronics Co., Ltd. v. Document Security Systems, Inc.,
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`IPR2018-01225, slip op. at 10 (PTAB Sept. 27, 2018) (Paper 14) (requiring
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`Everlight and the lead petitioner to “collectively” designate attorneys for
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`conducting cross-examination of witnesses and present at oral hearing.).
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`- 5 -
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`
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`IPR2018-01260 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`
`
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`Dated: October 16, 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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`
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`IPR2018-01260 Patent Owner’s Opposition to Everlight’s Motion for Joinder
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that this PATENT OWNER’S
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`OPPOSITION TO EVERLIGTH’S MOTION FOR JOINDER was served to
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`Petitioner by serving the correspondence email addresses of record as follows:
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`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: October 16, 2018
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`
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`
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`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Attorney for Patent Owner
`
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`- 7 -
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