Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: August 27, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ONE WORLD TECHNOLOGIES, INC., D/B/A TECHTRONIC
`INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`v.
`CHERVON (HK) LIMITED,
`Patent Owner.
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, BARRY L. GROSSMAN, JAMES J.
`MAYBERRY, and ALYSSA A. FINAMORE,
`Administrative Patent Judges.1
`MAYBERRY, Administrative Patent Judge.
`
`
`1 This is not an expanded panel. Each of the four listed judges are part of
`one or more three-judge panels assigned to the listed proceedings.
`
`
`
`
`571-272-7822
`
`Paper 12
`Date: August 27, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ONE WORLD TECHNOLOGIES, INC., D/B/A TECHTRONIC
`INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`v.
`CHERVON (HK) LIMITED,
`Patent Owner.
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, BARRY L. GROSSMAN, JAMES J.
`MAYBERRY, and ALYSSA A. FINAMORE,
`Administrative Patent Judges.1
`MAYBERRY, Administrative Patent Judge.
`
`
`1 This is not an expanded panel. Each of the four listed judges are part of
`one or more three-judge panels assigned to the listed proceedings.
`
`
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`ORDER2
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.20(d)
`
`BACKGROUND
`On August 26, 2020, we held a conference call between the parties
`and Judges Horner, Grossman, Mayberry, and Finamore. In the call,
`Petitioner, One World Technologies, Inc., d/b/a Techtronic Industries Power
`Equipment (“One World”) sought authorization to (1) file a Reply to the
`Patent Owner Preliminary Responses in IPR2020-00883, -00884, -00885,
`-00886, -00887, and -00888 and (2) update its mandatory notices in the six
`proceedings to add three real parties-in-interest (“RPIs”). At the end of the
`conference call, Petitioner added that at least the RPI issue also may apply to
`three post-grant review proceedings: PGR2020-00059, PGR2020-00060,
`and PGR2020-00061.
`Patent Owner, Chervon (HK) Ltd. (“Chervon”), objected to the
`requests.
`
`
`2 This Order addresses issues that are the same in all listed cases. We do not
`authorize the parties to use this style heading for any subsequent papers at
`this time.
`
`2
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`SUMMARY OF THE PARTIES’ POSITIONS
`AND PANEL’S ANALYSIS
`Reply
`One World requests to file a Reply to Chervon’s Preliminary
`Response to address discretionary denial under 35 U.S.C. § 314(a) and,
`specifically, Chervon’s analysis of the Fintiv factors. On May 5, 2020, the
`Board made an Order in Apple Inc. v. Fintiv, Inc., precedential. IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). The Order
`provides factors the Board balances in addressing whether the Board should
`exercise its discretion under § 314(a) to not institute a proceeding because of
`a parallel proceeding, as provided in our precedential decision in NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept.
`12, 2018) (“NHK”). See Fintiv at 5–6.
`One World argued that we designated Fintiv precedential after One
`World had filed its Petitions in the six inter partes review proceedings but
`before Chervon’s Preliminary Responses. One World also argued that NHK
`is distinguishable from the facts of these six inter partes review proceedings,
`so One World had no reason to address the issue in the Petitions.
`Chervon argued that One World should have addressed the parallel
`litigation and discretionary denial in its Petitions. Chervon added that the
`Board designated NHK as precedential prior to One World filing its
`
`3
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`Petitions, yet One World did not address the parallel district court litigation
`under NHK.
`We determine, based on our review of the current records of the six
`inter partes review proceedings, that additional briefing on this issue would
`not benefit the Board. Accordingly, we deny One World’s request to file
`Replies to the Preliminary Responses in these six inter partes review
`proceedings. We do not address this request for the three above-identified
`post-grant review proceedings.3
`
`
`Real Parties-in-Interest
`One World seeks authorization to update its mandatory notices to add
`three parties as real parties-in-interest in the six above-identified inter partes
`review proceedings without changing the filing date for the Petitions.
`During the call, One World also indicated that this issue may apply to the
`three above-identified post-grant review proceedings as well.
`One World indicated that Chervon’s contentions in its Preliminary
`Responses concerning One World’s failure to name all real parties-in-
`interest are based on faulty facts, but One World stated it is willing to add
`
`
`3 As of the date of this Order, Chervon has not yet filed preliminary
`responses in the three post-grant review proceedings. Should One World
`wish to file replies to any preliminary responses in the three post-grant
`review proceedings, One World must request authorization anew.
`
`4
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`the parties identified by Chervon as real parties-in-interest. One World
`defended its decision to originally not include the parties in the Petitions,
`arguing that the parties are not real parties-in-interest. One World indicated
`that, if the current filing dates are maintained, then adding the parties would
`not result in a time bar under 35 U.S.C. § 315(b).
`Chervon responded that One World knew of these parties, two of
`which are co-defendants in parallel litigation, and had the obligation to
`identify the parties as real parties-in-interest in the Petitions. Chervon
`contended that, if the parties are added now, the filing dates of the Petitions
`should change, resulting in a time bar for the parties.
`As an initial matter, we interpret One World’s request as seeking
`authorization to file a motion to update the identified real parties-in-interest
`without changing the filing date for the effected Petitions. See 37 C.F.R.
`§ 42.20(a) (2020) (“Relief, other than a petition requesting the institution of a
`trial, must be requested in the form of a motion.”); see also 37 C.F.R.
`§ 42.8(a) (allowing updates to mandatory notices without a motion, but only
`for changes and only if made within the prescribed time frame). For the
`reasons explained below, we grant authorization for the motion. That is,
`prior to us allowing One World to update its mandatory notices to add the
`parties as real parties-in-interest, One World must demonstrate that such an
`update is warranted without a corresponding change in the filing dates of the
`Petitions.
`
`5
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`By statute, “[a] petition . . . may be considered only if . . . the petition
`identifies all real parties in interest.” 35 U.S.C. § 312(a); see also 37 C.F.R.
`§ 42.104 (requiring inter partes review petitions to include mandatory
`notices, including identifying real parties in interest); § 42.204 (providing
`the same for post-grant review petitions). “The core functions of the ‘real
`party-in-interest’ . . . requirement[] [is] to assist members of the Board in
`identifying potential conflicts, and to assure proper application of the
`statutory estoppel provisions.” Consolidated Trial Practice Guide 12,
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov.
`2019). The Board has held that “a lapse in compliance with [the]
`requirements [of § 312(a)] does not deprive the Board of jurisdiction over
`[a] proceeding, or preclude the Board from permitting such lapse to be
`rectified.” Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-
`00739, Paper 38 at 5 (PTAB Mar. 4, 2016) (precedential).
`Indeed, we have said that failing to identify all real parties-in-interest
`is not meant to be a “windfall” for a patent owner. Adello Biologics LLC v.
`Amgen Inc., PGR2019-00001, Paper 11 at 3–4 (PTAB Feb. 14, 2019)
`(precedential). In Adello Biologics, the Board exercised its discretion and
`allowed the petitioner to update the real parties-in-interest while maintaining
`the same filing date to “promote[] the core functions of RPI disclosures and
`secure[] a ‘just, speedy, and inexpensive resolution’ of this proceeding.” Id.
`at 5.
`
`6
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`Significant to the Board’s decision in Adello Biologics was the
`petitioner’s explanation for omitting the party to be added. Id. at 4. Also,
`the Board relied on petitioner’s certification that it did not act in bad faith.
`Id. at 5. Accordingly, before we allow the requested update, we require One
`World to file a motion explaining its reasons for omitting the three parties it
`seeks to add and certifying that the omissions were not in bad faith.
`For expedience, we authorize One World’s motion in each of the six
`above-referenced inter partes review proceedings and the three above-
`identified post-grant review proceedings.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request to file a Reply to the Patent
`Owner Response in each of the six above-identified inter partes review
`proceedings is denied;
`FURTHER ORDERED that Petitioner is authorized to file a motion to
`amend its mandatory notices to add real parties-in-interest without a change
`to the filing date of the Petitions in each of the six above-identified inter
`partes review proceedings and three above-identified post-grant review
`proceedings, the motion not to exceed seven pages and due September 3,
`2020;
`
`7
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition to Petitioner’s motion, the opposition not to exceed seven pages
`and due one week after Petitioner’s motion; and
`FURTHER ORDERED that Petitioner is authorized to file a reply to
`Patent Owner’s opposition, not to exceed three pages and due three days
`after Patent Owner’s opposition.
`
`8
`
`
`
`IPR2020-00883 (Patent 9,060,463 B2)
`IPR2020-00884 (Patent 9,596,806 B2)
`IPR2020-00885 (Patent 9,648,805 B2)
`IPR2020-00886 (Patent 9,826,686 B2)
`IPR2020-00887 (Patent 9,986,686 B2)
`IPR2020-00888 (Patent 10,070,588 B2)
`PGR2020-00059 (Patent 10,477,772 B2)
`PGR2020-00060 (Patent 10,485,176 B2)
`PGR2020-00061 (Patent 10,524,420 B2)
`
`FOR PETITIONER:
`
`Edward H. Sikorski
`James M. Heintz
`Tiffany Miller
`DLA PIPER LLP (US)
`Ed.Sikorski@dlapiper.com
`James.Heintz@dlapiper.com
`Tiffany.Miller@dlapiper.com
`
`
`FOR PATENT OWNER:
`
`James J. Lukas, Jr.
`Keith R. Jarosik
`Callie J. Sand
`Benjamin P. Gilford
`Gary Jarosik
`GREENBERG TRAURIG, LLP
`LukasJ@gtlaw.com
`JarosikK@gtlaw.com
`SandC@gtlaw.com
`GilfordB@gtlaw.com
`JarosikG@gtlaw.com
`
`
`9
`
`
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