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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 No. IPR2018-01260
`U.S. Patent No. 7,919,787
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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
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`Reply to Patent Owner’s (“PO”) Opposition to Everlight’s Motion for Joinder,
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`and requests joinder of Everlight’s IPR2018-01260 (“Everlight’s IPR”) with
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`pending IPR2018-00965 filed by Nichia Corp. (“Nichia’s IPR”).1 The PTAB has
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`authorized the filing of this Reply in Paper No. 7 in IPR2018-01260.
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`I.
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`BACKGROUND
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`PO filed a Complaint against Everlight’s subsidiary (a real party-in-
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`interest) in Texas in April 2017, but voluntarily dismissed it without prejudice.
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`At the time of filing the instant Petition, Everlight relied on precedent from the
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`Board and Federal Circuit, which had recognized that a dismissal without
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`prejudice nullifies a Complaint and does not activate the one-year bar. See, e.g.,
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`Shaw Ind. Grp. v. Automated Creel Sys., 817 F. 3d 1293, 1301 (Fed. Cir. 2016)
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`(upholding Board's Decision that dismissal of a suit without prejudice “nullifie[d]
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`the effect of the service of the complaint” such that the IPR petition was not time-
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`barred.) Accordingly, at the time Everlight’s Petition was filed, it was not time-
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`barred based on the then-current PTAB and Federal Circuit case law.
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`Everlight recognizes that the Federal Circuit has recently issued a contrary
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`1 Lead Petitioner Nichia filed a Response withdrawing its opposition to Everlight’s
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`Motion for Joinder. Paper No. 14 in IPR2018-00965.
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`2
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`decision in Click-To-Call Tech., LP v. Ingenio, Inc., 2015-1242 (Fed. Cir. August
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`16, 2018), now holding that a withdrawn complaint does trigger the time-bar.
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`When PO raised the Click-To-Call issue in its Preliminary Response (August 31,
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`2018, Petitioner obtained permission to file the instant Motion for Joinder, since
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`35 U.S.C. 315(b) expressly excludes joinder situations from the time-bar.
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`II.
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`EVERLIGHT’S PETITION IS NOW “ACCOMPANIED BY A
`REQUEST FOR JOINDER,” AND THEREFORE IS NOT TIME-
`BARRED
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`PO’s Opposition is based on an argument that the Board has already told PO
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`is incorrect. In particular, PO contends that the requirement that the petition be
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`“accompanied by a request for joinder,” means that the two must be filed
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`simultaneously. See, e.g., PO Opp. at 1. PO cites no authority for its
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`interpretation of “accompanied by,” and in fact expressly refuses to follow the
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`Board’s recent admonition that this position is incorrect.2 As the Board explained
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`in a recent Decision granting joinder involving the same PO, PO’s argument that
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`“‘accompanied by’ in 37 C.F.R. § 42.122(b) means filed with,” was incorrect.
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`IPR2018-01226 (Paper No. 15) dated September 27, 2018 at 8 (emphasis added).
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`As can be seen, the rule provides a specific timing requirement of “no
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`later than one month after the institution date of any inter partes review
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`for which joinder is requested.” The rule does not set forth a specific
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`2 See, Opposition at 3-4, fn 3.
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`3
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`time before which a motion for joinder can be filed. In view of this
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`specific timing requirement, we determine that had the Office desired
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`to limit the time of filing more specifically they would have done so.
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`At the time of our review of the present Petition we determine that the
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`Petition was accompanied by a request for joinder.
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`Id. at 8-9 (emphasis added). See also, Apple Inc. et al. v. Virnetx, Inc. IPR2013-
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`00348 et al. Order, Paper No. 6 at 4 (“The rule does not specify that the
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`accompaniment must take place simultaneously.”) (emphasis added). PO’s
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`latest twist on this argument, that the Board’s discussion in IPR2018-01226 of the
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`meaning of “accompanied by,” somehow only applied to non-time-barred
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`petitions (Opp. at 3-4, fn.3), belies the very language of the rule itself as well as
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`the Board’s prior decisions. See, e.g., 37 C.F.R. 42.122(b) (“The time period set
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`forth in § 42.101(b) shall not apply when the petition is accompanied by a request
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`for joinder.”) The entire purpose of the “accompanied by” language is to
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`overcome the time bar; it has no meaning in the context of a non-time-barred
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`petition as PO now contends. And the petition in IPR2018-01226 was also time-
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`barred but-for the joinder motion filed almost 2 months later. IPR2018-01226
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`(Paper No. 15) at 5, 8.
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`Accordingly, while Everlight’s petition was not initially “accompanied by a
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`request for joinder,” it is now. And because the petition is now accompanied by a
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`4
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`request for joinder, 37 CFR 42.122(b) mandates that the “time period set forth in
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`§ 42.101(b) shall not apply.”
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`Not only is PO’s interpretation of “accompanied by” an unreasonably
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`narrow one, PO’s position would lead to an absurd result. Namely, PO would
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`have the Board dismiss Everlight’s petition, just so Everlight could refile both the
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`petition and the motion for joinder together on the same day. PO’s position is
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`inconsistent with both the language and intent of the relevant statute and
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`regulations, and would simply make busy-work for no reason.
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`III. CONCLUSION
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`Everlight has offered to do far less than what the Board has allowed in
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`many time-barred joinder situations, i.e., nothing, unless and until the lead
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`Petitioner abandons its IPR. Accordingly, joinder is appropriate. For the
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`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: October 26, 2018
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`Respectfully submitted,
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`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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`5
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`
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`CERTIFICATE OF SERVICE
`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 IPR2018-00965 and IPR2018-
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`01260 by serving the correspondence email addresses of record as follows:
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`Petitioner in IPR2018-00965
`Patrick R. Colsher
`Matthew G. Berkowitz
`Eric S. Lucas
`Thomas R. Makin
`Shearman & Sterling LLP
`599 Lexington Ave
`New York, NY 10022
`Tel: (212) 848-7708
`Fax: (646) 848-7708
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`nichia-dss@shearman.com
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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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`
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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.
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