UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.
`Petitioners
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
`
`__________________
`
`Cases IPR2018-00333
`U.S. Patent No. 7,256,486 B2
`__________________
`
`OPPOSITION TO EVERLIGHT ELECTRONIC CO., LTD’S
`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.
`Petitioners
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.
`Patent Owner
`
`__________________
`
`Cases IPR2018-00333
`U.S. Patent No. 7,256,486 B2
`__________________
`
`OPPOSITION TO EVERLIGHT ELECTRONIC CO., LTD’S
`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`I.
`
`BACKGROUND
`
`On December 21, 2017, Seoul Semiconductor Co., Ltd. (“SSC”) and Seoul
`
`Semiconductor, Inc. (“SSI”) (collectively “Petitioner I”) filed a petition for inter
`
`partes review of U.S. Patent No. 7,256,486. Seoul Semiconductor, Co., Ltd. v.
`
`Document Sec. Sys., Inc., IPR2018-00333 (PTAB) (Paper 1). By Order dated June
`
`21, 2018, the Board granted institution. Seoul Semiconductor, IPR2018-00333
`
`(PTAB Jun. 21, 2018) (Paper 9).
`
`On June 22, 2018, John Rabena of Sughrue Mion PLLC contacted the
`
`undersigned counsel via email indicating Everlight’s intent to file a copy of the
`
`petition from IPR2018-00333 and a motion for joinder. His email further asked
`
`whether Petitioner I would oppose joinder. Upon search of the Patent Trial and
`
`Appeal Board records, Petitioner I determined that a nearly identical copy of their
`
`petition had been submitted weeks earlier on June 8, 2018. Everlight Electronics
`
`Co., Ltd. v. Document Security Systems, Inc., IPR2018-01225 (PTAB) (Paper 1).
`
`Without receiving consent, Everlight (“Petitioner II”) submitted its Joinder Motion
`
`on June 25, 2018. Everlight, IPR2018-01225 (Paper 7). Patent Owner filed an
`
`Opposition to Joinder on July 25, 2018. Everlight, IPR2018-01225 (Paper 9).
`
`On August 1, 2018, the Board granted the Petitioner I leave to file an
`
`opposition to Petitioner II’s Joinder Motion:
`
`1
`
`
`
`The Petitioner in IPR2018-00333 (Petitioner I) is authorized to file an
`Opposition to the Motion for Joinder in IPR2018-01225. Because
`Petitioner I is not a party in IPR2018-01225, Petitioner I shall file, and
`separately serve, its Opposition in IPR2018-00333. The Petitioner in
`IPR2018-01225 (Petitioner II) is authorized to file, and separately
`serve, a Reply to the Opposition due one month after service of the
`opposition. See 37 C.F.R. § 42.25 (a)(1). Petitioner II shall file any
`Reply in IPR2018-01225. The parties shall follow the page limits for
`Oppositions and Replies set forth per 37 C.F.R. § 42.24. The
`Opposition and Reply should also indicate that we authorized the
`filing per this email.
`
`II.
`
`STANDARD FOR JOINDER
`
`The statutory provision governing joinder of inter partes review proceedings
`
`is 35 U.S.C. § 315(c), which provides:
`
`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.
`
`Thus, the decision to grant or deny joinder is discretionary. As recognized in Teva
`
`Pharmaceuticals USA, Inc. v. ViiV Healthcare Co., IPR2015-00550 slip op. at 4
`
`(P.T.A.B. Jun. 25, 2015) (Paper 11), “[t]he Board determines whether to grant
`
`2
`
`
`
`joinder on a case-by-case basis, taking into account the particular facts of each
`
`case . . . [and] to secure the just, speedy, and inexpensive resolution of every
`
`proceeding.” In addition, the burden to establish entitlement to joinder is upon the
`
`requesting party. Id. Among the factors the Board considers is whether the original
`
`petitioner has agreed “to consolidate filings.” Id. at 6. The Board has also found that
`
`reliance upon a different expert weighs against joinder. ZTE Corp. v. Adaptix, Inc.,
`
`IPR2015-01184, slip op. 4-7 (PTAB July 24, 2015) (Paper 10).
`
`Following joinder, the Board ordinarily requires coordination between the
`
`petitioners during discovery, briefing, and at oral argument. Microsoft Corp. v.
`
`Koninklijke Philips N.V., IPR2017-01754, slip op. at 16-17 (PTAB Nov. 29, 2017)
`
`(Paper 16).
`
`III. ARGUMENT
`
`Petitioner I request that the Board deny Petitioner II’s Motion for Joinder. As
`
`explained in Teva, IPR2015-00550 slip op. at 4 (Paper 11), the Board is tasked with
`
`providing the “just, speedy, and inexpensive resolution of every proceeding.”
`
`Petitioner II’s Motion for Joinder is inconsistent with those goals.
`
`According to its motion, Petitioner II “agrees to a complete ‘understudy role’”
`
`should joinder be granted. Everlight, IPR2018-01244 (Paper 7). The premise of such
`
`a role, however, is that the original and joining parties have come to an agreement
`
`on the scope and nature of the joining party’s involvement. See Teva, IPR2015-
`
`3
`
`
`
`00550 slip op. at 6 (Paper 11) (considering whether an agreement was reached to
`
`“consolidate filings” in determining whether to grant joinder); Samsung Elect. Co.,
`
`Ltd. v. Arendi S.A.R.L., IPR2014-01142 slip op. 5 (PTAB Oct. 2, 2014) (Paper 11).
`
`No such agreement was reached (or even sought) prior to the initial filing. Indeed,
`
`the fact that Petitioner II filed its petition weeks before contacting Petitioner I
`
`indicates that Petitioner II’s involvement will complicate rather than simplify the
`
`proceeding.
`
`More fundamentally, the Petitioner I objects to Petitioner II’s attempt to gain
`
`the benefit of their work without any meaningful attempt to reach an agreement or
`
`accommodation. Petitioner I marshaled the prior art and evidence, drafted their
`
`petition, and filed it. As such, Petitioner I’s objections should be given weight in the
`
`Board’s analysis. See SAS Institute v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“Much as
`
`in the civil litigation system it mimics, in an inter partes review the petitioner is
`
`master of its complaint.”). And the lack of an agreement (or even attempt to reach
`
`one) should also be considered. See Teva, IPR2015-00550 slip op. at 6 (Paper 11)
`
`(considering whether an agreement was reached to “consolidate filings” in
`
`determining whether to grant joinder); Samsung Elect. Co., Ltd. v. Arendi S.A.R.L.,
`
`IPR2014-01142 slip op. 5 (PTAB Oct. 2, 2014) (Paper 11).
`
`Petitioner I further notes that they are direct competitors with Petitioner II,
`
`and therefore, have diverging interests. Indeed, Petitioner II’s unwanted participation
`
`4
`
`
`
`could negatively impact Petitioner I’s ability to reach an negotiated settlement of the
`
`underlying litigation. Although the Board’s decisions to date have focused on the
`
`rights of and burdens on the Patent Owner, Petitioner I respectfully asserts that their
`
`interests should also be considered.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner I requests that the Board deny Petitioner
`
`II’s Motion for Joinder.
`
`Dated: August 3, 2018
`
`Respectfully submitted,
`
`Holland & Knight LLP
`
`/s/ Michael B. Eisenberg
`Michael B. Eisenberg
`Reg. No. 50,643
`
`5
`
`
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
