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.
`
`
`Case IPR2020-00885
`U.S. Patent No. 9,648,805
`
`PETITIONER’S MOTION TO UPDATE MANDATORY NOTICE
`TO ADD REAL PARTIES-IN-INTEREST
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`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.
`
`
`Case IPR2020-00885
`U.S. Patent No. 9,648,805
`
`PETITIONER’S MOTION TO UPDATE MANDATORY NOTICE
`TO ADD REAL PARTIES-IN-INTEREST
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to the Board’s order of August 27, 2020 (Paper 12), and in
`
`accordance with 37 C.F.R. § 42.20(a) (2020), One World Technologies, Inc., d/b/a
`
`Techtronic Industries Power Equipment (“Petitioner”) respectfully moves to
`
`update its mandatory notice to identify additional real parties-in-interest (“RPIs”)
`
`without changing the filing date of the above-captioned petition.1 Specifically,
`
`Petitioner hereby moves to update its mandatory notice to identify Techtronic
`
`Industries Co. Ltd., Techtronic Industries North America, Inc., and Homelite
`
`Consumer Products, Inc., as real parties-in-interest without admitting that they are,
`
`in fact, real parties-in-interest.
`
`I.
`
`The Board Should Allow Petitioner to Update the Real Parties-In-
`Interest Listing While Maintaining the Original Filing Date.
`The Federal Circuit has held that the real party-in-interest requirement of 35
`
`U.S.C. § 312(a) is correctable. “[I]f a petition fails to identify all real parties in
`
`1 As permitted by the order, substantively identical motions and related papers are
`
`being filed in each of IPR2020-00883 (Patent 9,060,463 B2); IPR2020-00884 (Pa-
`
`tent 9,596,806 B2); IPR2020-00885 (Patent 9,648,805 B2); IPR2020-00886 (Pa-
`
`tent 9,826,686 B2); IPR2020-00887 (Patent 9,986,686 B2); IPR2020-00888 (Pa-
`
`tent 10,070,588 B2); PGR2020-00059 (Patent 10,477,772 B2); PGR2020-00060
`
`(Patent 10,485,176 B2); and PGR2020-00061 (Patent 10,524,420 B2).
`
`1
`
`
`
`interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a
`
`real party in interest.” WiFi One v. Broadcom Corp., 878 F.3d 1364, 1374, n.9
`
`(Fed. Cir. 2018) (en banc).2 The requirement to identify all RPIs serves “to assist
`
`members of the Board in identifying potential conflicts, and to assure proper
`
`application of the statutory estoppel provisions.” Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). A lapse in compliance with
`
`the requirements of § 312(a) “does not deprive the Board of jurisdiction over the
`
`proceeding, or preclude the Board from permitting such lapse to be rectified.”
`
`Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op.
`
`5 (PTAB Mar. 4, 2016) (Paper 38) (precedential). Indeed, the Board has found
`
`that allowing petitioners “to update the mandatory notices while maintaining the
`
`original filing date promotes the core functions of RPI disclosures and secures a
`
`‘just, speedy, and inexpensive resolution’ of this proceeding.” Adello Biologics
`
`LLC v. Amgen Inc., PGR2019-00001, Paper 11 at 5 (PTAB Feb. 14, 2019)
`
`(designated precedential Apr. 16, 2019) (citing 37 C.F.R. § 42.1).
`
`2 Wi-Fi One was decided in the context of inter partes review, and in Adello Bio-
`
`logics LLC v. Amgen Inc., PGR2019-00001, Paper 11 at 3 n.1 (PTAB Feb. 14,
`
`2019) (designated precedential Apr. 16, 2019), the Board saw “no reason” to treat
`
`differently the correction of RPIs in a post-grant review.
`
`2
`
`
`
`A.
`
`35 U.S.C. 312(a) and 37 C.F.R. 42 Allow Updates to the RPI
`Listing While Maintaining a Petition’s Original Filing Date.
`Section 312 is not a jurisdictional statute. Lumentum, at 4-5 (relying on
`
`Elekta, Inc. v, Varian Med. Sys., Inc., IPR 2015-01404, Paper 19 (PTAB Dec. 31,
`
`2015)). “Section [37 C.F.R. §] 42.106 does not foreclose the Board’s discretion to
`
`maintain a petition’s original filing date when a party amends its RPI disclosures
`
`because, under § 42.5(b), ‘[t]he Board may waive or suspend’ § 42.106’s filing
`
`date provisions.” Elekta at 8. The Elekta Board maintained the petition’s original
`
`filing date and allowed petitioner to amend its mandatory notice and add RPIs
`
`based on § 42.5(b). Id., 8-10. See § 42.5(a); Lumentum at 7 (37 C.F.R. 42.5(c)(3)
`
`“provid[es] the Board discretion to permit late-filing of the updated mandatory
`
`notice.”). The Board therefore has authority to provide the relief sought.
`
`B.
`
`No Evidence of Bad Faith, Gamesmanship, or Intentional
`Concealment by Petitioner.
`In Adello, the Board considered whether any intentional concealment,
`
`gamesmanship, or other bad faith by the petitioner was behind its delay in
`
`identifying an additional RPI. Adello, at 4-5; see also Proppant, at 6. None of
`
`those factors is present here. Petitioner acknowledges that parties and individuals
`
`involved in proceedings before the Office have a “duty of candor and good faith,”
`
`37. C.F.R. § 42.11(a). With that understanding, Petitioner represents that there was
`
`no intentional concealment, gamesmanship, or bad faith in its decision to identify
`
`3
`
`
`
`only “One World Technologies, Inc., d/b/a Techtronic Industries Power
`
`Equipment” as the Petitioner.
`
`Patent Owner bases its argument on purported control over the Petitioner.
`
`Specifically, Patent Owner’s Preliminary Response (POPR) asserts that Techtronic
`
`Industries Co. Ltd. is a real party in interest because that entity allegedly controlled
`
`the filing of this Petition. See, e.g., IPR2020-00885, Paper 11 at 43-44. The
`
`declaration from Mr. Clancy (Ex. 2004) asserts that it was his impression during
`
`settlement negotiations that Lee Sowell “on behalf of ‘TTI’” controlled whether
`
`any and all of Petitioner, Techtronic Industries Co. Ltd., and Homelite Consumer
`
`Products, Inc. would file an IPR petition. The POPR concludes, without any
`
`support, that “‘TTI’ stands for Techtronic Industries Co. Ltd.” POPR at 45, n. 8.
`
`This is wrong. Rather, Mr. Sowell’s use of “TTI” was shorthand for the Petitioner;
`
`i.e., One World Technologies, Inc., d/b/a Techtronic Industries Power Equipment.
`
`See Ex. 1036 (Declaration of Lee Sowell), ¶2. Thus, Patent Owner has no basis to
`
`assert that Techtronic Industries Co. Ltd. controlled the filing of this Petition.
`
`Instead, Techtronic Industries Co. Ltd. and Techtronic Industries North
`
`America, Inc., are Petitioner’s grandparent and parent investment holding
`
`companies, respectively. See Patent Owner’s Exhibit 2005, p.63 (Techtronic
`
`Industries Co. Ltd. “acts as an investment holding company”); p.112 (Techtronic
`
`Industries North America, Inc. “Principal activities[:] Investment holding”). See
`
`4
`
`
`
`also Exhibit 2006, p.1. Those holding companies exercise no control over the
`
`daily operations of Petitioner, and Petitioner had no obligation to consult with them
`
`or obtain their permission to file the present Petition. Ex. 1036 (Sowell Decl.), ¶4.
`
`Under similar circumstances, the Board has found that parent entities are not real
`
`parties in interest. Mobile Tech, Inc. v. Sennco Solutions, Inc., IPR2017-02199,
`
`Paper 9 at 8-10 (PTAB, Apr. 10, 2018); Puzhen Life USA, LLC v. Esip Series 2,
`
`LLC, IPR2017-02197, Paper 13 at 3-6 (PTAB, Apr. 11, 2018).
`
`The third entity to be added as RPI, Homelite Consumer Products, Inc., is a
`
`sister company of Petitioner and wholly owned by Techtronic Industries North
`
`America, Inc. Patent Owner waited until April 2020 to add Homelite as a
`
`defendant in the district court litigation (just a few weeks before the Petition was
`
`filed), and the accusations in that litigation relate to Homelite serving as the
`
`importer of record for Petitioner’s accused lawnmowers. Homelite Consumer
`
`Products, Inc., exercises no control over the daily operations of Petitioner, and
`
`Petitioner had no obligation to consult with Homelite or obtain its permission to
`
`file the present Petition. Id., ¶4. Homelite is therefore not a real party in interest.
`
`Accordingly, Petitioner had, and continues to have, a good faith belief that
`
`none of the three entities to be added as RPIs is, in fact, an RPI. If any of these
`
`three entities are RPIs, the failure to name them was at most the result of human
`
`error rather than an attempt to circumvent the application of estoppel. Naming
`
`5
`
`
`
`them as RPIs will clarify that each will be bound by any estoppel effect flowing
`
`from this proceeding and eliminate any doubt about this issue.3
`
`No Prejudice to Patent Owner.
`C.
`As in Adello, adding the three entities as RPIs benefits rather than prejudices
`
`Patent Owner by ensuring that those entities are subject to “the relevant statutory
`
`restrictions.” See Adello, at 6. Furthermore, Patent Owner was aware of each
`
`entity before the Petition was filed—Patent Owner named two of them in its April
`
`1, 2020, Second Amended Complaint (Ex. 1038) and the third was identified
`
`earlier on September 18, 2019, in a corporate disclosure statement filed in the
`
`district court. Ex. 2006, at 1 (¶2). Thus, there was no concealment of relevant
`
`entities, and Patent Owner will not have been deprived of discovery from the RPIs
`
`in this proceeding should it have a need for such discovery. Adding the RPIs also
`
`benefits Patent Owner by preventing any “second bite at the apple” through
`
`successive petitions.
`
`3 Petitioner’s mandatory notice, filed concurrently with this motion, uses language
`
`deemed acceptable in Proppant Express Investments, LLC v. Oren Technologies,
`
`LLC, IPR2017-01917, Paper 86 at 14-16 (precedential) (Petitioner adding two par-
`
`ties as RPIs “without admitting that they are in fact real parties-in-interest”).
`
`6
`
`
`
`Finally, any delay in identifying the three entities has no negative effect on
`
`Patent Owner’s ability to challenge the petition. Patent Owner has submitted a
`
`substantive POPR in the IPR petitions and will have another opportunity to file a
`
`substantive response should the Board institute the proceeding. Patent Owner’s
`
`POPRs in the PGRs are not yet due. Had the three entities been named as RPIs
`
`originally, Patent Owner would have been in the same position as it is now.
`
`II.
`
`The Updated Set of Real Parties-In-Interest Would Not Result in a
`Time Bar under 35 U.S.C. § 315(b).
`Finally, on the date the Petition was filed, neither Petitioner nor any of the
`
`entities to be added as RPIs was subject to the § 315(b) time bar. The petition was
`
`filed May 1, 2020, less than ten months after Patent Owner filed its original
`
`Complaint against Petitioner and Techtronic Industries Co. Ltd. in the district court
`
`on the six IPR patents. Ex. 1037 at 1. Homelite Consumer Products, Inc., was
`
`named as a defendant April 1, 2020, by which time the three PGR patents had been
`
`added. Ex. 1038 at 1. The third entity, Techtronic Industries North America, Inc.,
`
`is not a party to the district court litigation and has not been served with any
`
`complaint regarding the patent at issue in this proceeding. Accordingly, if the
`
`three new entities are added as RPIs without changing the present petition’s filing
`
`date, no time bar under 35 U.S.C. 315(b) would result.
`
`7
`
`
`
`Dated:
`
`September 3, 2020
`
`Respectfully submitted,
`
` /s/ Edward H. Sikorski
`Edward H. Sikorski
`Reg. No. 39,478
`Attorney for Petitioner
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(b) on the Patent Owner by electronic copy of this PETITIONER’S
`
`MOTION TO UPDATE MANDATORY NOTICE TO ADD REAL PARTIES-IN-
`
`INTEREST. Service is made electronically upon agreement of the parties.
`
`Benjamin J. Schladweiler, Esq.
`Greenberg Traurig, LLP
`The Nemours Building
`1007 North Orange Street, Suite 1200
`Wilmington, DE 19801
`Michael A. Nicodema
`Greenberg Traurig, LLP
`500 Campus Drive Ste. 400
`Florham Park, NJ 07932
`James J. Lukas, Jr.
`Matthew S. Levinstein
`Callie J. Sand
`Benjamin P. Gilford
`Greenberg Traurig, LLP
`77 West Wacker Drive, Ste. 3100
`Chicago, IL 60601
`
`SchladweilerB@gtlaw.com
`
`NicodemaM@gtlaw.com
`
`LukasJ@gtlaw.com
`LevinsteinM@gtlaw.com
`SandC@gtlaw.com
`GilfordB@gtlaw.com
`
`Dated:
`
`September 3, 2020
`
` /s/ Edward H. Sikorski
`Edward H. Sikorski
`Reg. No. 39,478
`Attorney for Petitioner
`
`WEST\291692535.1
`
`
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