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`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
`Patent 9,648,805
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO UPDATE MANDATORY NOTICES
`
`
`
`
`
`
`
`Pursuant to the Board’s August 27, 2020 Order (Paper 12), Patent Owner
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`submits its opposition to Petitioner’s motion to update its mandatory notice to
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`identify additional real parties-in-interest (“RPIs”), Techtronic Industries Co. Ltd.
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`(“Techtronic”), Techtronic Industries North America, Inc. (“TTI NA”), and
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`Homelite Consumer Products, Inc. (“Homelite”).
`
`I.
`
`INTRODUCTION
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`
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`Petitioner failed to comply with the unambiguous language of the IPR statute
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`and the PTO rules when it failed to identify all RPIs at the time it filed its Petition.
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`And now that Patent Owner has pointed out the incorrect representations that
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`Petitioner has made to the Board about the true RPIs here, Petitioner continues to
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`claim that such parties are not RPIs, ignoring a mountain of evidence suggesting
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`otherwise. Petitioner asks the Board to forgive what the facts demonstrate is, at
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`worst, a bad-faith concealment of three RPIs, or, at best, gamesmanship to avoid
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`estoppel. Petitioner ignores that it was aware of the importance of the unnamed RPIs
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`to this proceeding when it filed its Petition. Petitioner knew of the close relationship
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`between itself and the unnamed RPIs as they related to the products accused of
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`infringement by Patent Owner in the parallel district court litigation (the
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`“Litigation”). Petitioner also knew that all of the unnamed RPIs stand to directly
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`benefit if the Board invalidates any of the claims. Yet Petitioner ignores all of these
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`facts and fails to provide any reasonable factual explanation for its omission of the
`
`
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`1
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`
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`unnamed RPIs. The Board should deny Petitioner’s motion to update its mandatory
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`notice to identify additional RPIs and retain its original filing date.
`
`II. ARGUMENT
`Petitioner Knew At The Time It Filed Its Petition That It Had
`A.
`Failed To Name Several RPIs.
`
`
`
`The PTAB conducts the RPI analysis “‘with an eye toward determining
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`whether the non-party is a clear beneficiary that has a preexisting, established
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`relationship with the petitioner.’” Ventex Co., Ltd. v. Columbia Sportswear North
`
`Am., Inc., IPR2017-00651, Paper 148, at 6 (Jan. 24, 2019) (quoting Applications in
`
`Internet Time, 897 F.3d at 1351) (emphasis added)). When a party receives a “direct
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`benefit of a finding of unpatentability,” as opposed to a “merely generalized benefit,”
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`that party is likely an RPI. See id. at 10.
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`
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`At the time it filed the Petition, Petitioner knew that the unnamed RPIs (i)
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`were critically involved in the development of the products accused of infringement
`
`in the Litigation, had committed allegedly infringing acts, and stood to directly
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`benefit from a Board holding of invalidity and (ii) have blurred corporate lines with
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`Petitioner. Under these circumstances, the only conclusion to reach is that Petitioner
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`knew that it failed to name several RPIs when it filed its Petition.
`
`
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`First, Petitioner was aware of the critical importance that Techtronic,
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`Homelite, and TTI NA play in this proceeding when it filed its Petition. Petitioner
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`knew that each of the unnamed RPIs played an integral role in the design,
`
`
`
`2
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`
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`development, importation, distribution and/or customer service for the accused
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`products in the Litigation. For example, Petitioner knew that Homelite imports and
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`distributes, i.e., allegedly infringing acts, “[a]ll of the Accused Products” according
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`to Petitioner (and Techtronic) in the Litigation. (EX2008, Litigation, Techtronic and
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`Petitioner’s Objs. and Resps. to Patent Owner’s Second Set of Interrogatories, at 6.)
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`Petitioner also knew that Homelite and Techtronic were involved in the design
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`and/or development of the accused products. (EX2019, Declaration of Matthew J.
`
`Levinstein, ¶ 5.) Petitioner knew that TTI NA provided consumer warranties for all
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`Ryobi 40V Lithium products, including the mowers accused of infringement in the
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`Litigation. (EX2021, Warranty On All RYOBI 40V Lithium-Ion Outdoor Tools,
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`available at https://www.ryobitools.com/support/warranties.) Petitioner knew all of
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`the foregoing at the time it filed its Petition at least because it shares legal counsel
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`with Homelite and Techtronic (and presumably TTI NA).
`
`
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`The three entities also attempted to settle the Litigation as one. Specifically,
`
`Lee Sowell, an employee of Petitioner (according to Petitioner1), attempted to settle
`
`
`1 Petitioner falsely states that Patent Owner “concludes, without any support that
`
`‘‘TTI’ stands for Techtronic Industries Co. Ltd..’” (Paper 13, at 4.) To the contrary,
`
`Patent Owner explained that Techtronic itself uses “TTI” to denote Techtronic, in
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`Techtronic’s annual report. (Paper 11, at 45.)
`
`
`
`3
`
`
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`the Litigation on behalf of Techtronic, Homelite, and Petitioner. Regardless of who
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`Mr. Sowell works for, he, as President of Petitioner, was aware of the Litigation, the
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`fact that both Homelite and Techtronic were named defendants, and that the
`
`unnamed RPIs all played an integral role in the design and sale of the accused
`
`products identified in the Litigation.
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`Second, Petitioner knew that there was substantial corporate overlap between
`
`itself and the unnamed RPIs when it filed its Petition. Techtronic and Petitioner
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`have blurred the lines of corporate separation between them for at least the reasons
`
`identified in Patent Owner’s Preliminary Response (which Patent Owner hereby
`
`incorporates by reference). (Paper 11, at 43-49.)
`
`
`
`There is additional overlap between Petitioner and the other unnamed RPIs:
`
`• Homelite and Petitioner share a principal place of business: 100 Innovation
`Way, Anderson, South Carolina 29621. (EX2007, District Court Litigation,
`Defendants’ Answer to Plaintiffs’ Second Amended Complaint, at 2.);
`• Homelite and Petitioner share counsel in the Litigation; (See, e.g., id.)
`• Petitioner and TTI NA have common directors. (Compare EX2022,
`Petitioner’s Delaware Annual Franchise Tax Report, at 5-6, with EX2023,
`TTI NA’s Delaware Annual Franchise Tax Report, at 4.);
`• Prior Petitioner IPRs have named TTI NA as an RPI. (See IPR2016-01772,
`Paper 2; IPR2016-01774, Paper 2; IPR2016-01846, Paper 2; IPR2017-00073,
`Paper 2; IPR2017-00126, Paper 1; IPR2017-00214, Paper 2; IPR2017-00432,
`Paper 1; IPR2017-01040, Paper 2; IPR2017-01042, Paper 2; IPR2017-01132,
`Paper 2; IPR2017-01137, Paper 2; IPR2017-01546, Paper 2.)
`• Prior IPRs brought by a related entity have named Petitioner, Techtronic, and
`TTI NA as RPIs. (See IPR2015-01461, Paper 2; IPR2015-01462, Paper 2.)
`
`
`
`
`4
`
`
`
`
`
`Lest there be any doubt that Petitioner, Techtronic, and TTI NA are
`
`intertwined corporate entities, Petitioner’s former President, Michael Farrah,
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`testifying in another proceeding, stated during a deposition that he could not
`
`distinguish between the three RPIs, and that they are all really part of the same
`
`company. (EX2024, Order Exercising Jurisdiction, Chamberlain Grp. v. Techtronic
`
`Indus. Co. Ltd. et al., No. 1:16-cv-06097, Dkt. 517 (filed Aug. 8, 2017), at 2-3 (“Q.
`
`You’re not sure which legal entity – entity Techtronic Industries Company Limited
`
`falls under? A. No. They’re partners—our co-development partners, really, part of
`
`our company. We treat them as our company.”).) Under these circumstances,
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`Petitioner knew that it failed to name Techtronic, Homelite and TTI NA as RPIs
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`when it filed its Petition.
`
`B.
`
`The Board Should Not Allow Petitioner To Update Its RPIs And
`Maintain Its Original Filing Date Because Petitioner Has Engaged
`In Gamesmanship And Failed To Identify The Unnamed RPIs In
`Bad Faith.
`
`
`
`In determining whether to allow a Petitioner to amend its mandatory notices
`
`to include RPIs, the Board will consider the following factors: whether there has
`
`been … bad faith by the petitioner, … or … gamesmanship by the petitioner. Elekta,
`
`Inc. v. Varian Medical Systems, Inc., Case IPR2015-01401, Paper 19 (PTAB Dec.
`
`31, 2015); see also Proppant Express Investments v. Oren Techs., IPR2017-01917,
`
`Paper 86 (precedential); see also Applications in Internet Time, LLC v. RPX Corp.,
`
`
`
`5
`
`
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`897 F.3d 1336, 1355 (Fed. Cir. 2018) (noting that a party cannot use willful
`
`blindness to circumvent the RPI disclosure requirements).
`
`
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`Here, Petitioner’s failure to name Techtronic, Homelite, and TTI NA as RPIs
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`when it filed its Petition was in bad faith given the circumstances of Petitioner’s
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`omission, or at the very least constitutes gamesmanship. As demonstrated in Section
`
`A., supra, Petitioner knew of the close relationship between itself and the unnamed
`
`RPIs as they related to the products accused of infringement by Patent Owner in the
`
`Litigation. Petitioner also knew that the unnamed RPIs and it were intertwined at
`
`the corporate level. And look no further for evidence of bad faith and gamesmanship
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`than Petitioner’s attempt to deprive the Board of the opportunity to evaluate
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`Petitioner’s Motion on a complete record. (See EX2019, Declaration of Matthew J.
`
`Levinstein, ¶¶ 5-12.) Ultimately, Petitioner knew when it filed its Petition that all
`
`of the unnamed RPIs stood to directly benefit if the Board invalidates the claims of
`
`the challenged patents in this proceeding.
`
`
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`Petitioner does not offer a mea culpa to the Board and claim that its failure to
`
`include the unnamed RPIs was mere inadvertence or mistake. Rather, Petitioner
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`sticks to its guns that the unnamed RPIs are not RPIs at all as a basis for its good
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`faith. (Paper 13, at 3-6 (explaining that neither Techtronic nor Homelite controlled
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`the filing of the Petition and therefore are not RPIs).) At best, Petitioner is
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`continuing to be willfully blind to the well-established relationships between it and
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`
`
`6
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`
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`the unnamed RPIs as they relate to this proceeding and the Litigation, knowing full
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`well that if it were caught, it could simply move to amend its mandatory notices
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`while retaining its original filing date, as it has now done. At worst, Petitioner
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`intentionally concealed the unnamed RPIs in bad faith. Regardless, there is no basis
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`for the Board to conclude under these circumstances that Petitioner reasonably
`
`believed that the unnamed RPIs were not actually RPIs. The Board should not
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`permit Petitioner to update its mandatory notices and retain its filing date.
`
`C. The Board Should Not Allow Petitioner To Circumvent § 312
`Without Consequence.
`
`When a petitioner fails to identify all RPIs at the time of filing, the Board may
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`not consider an IPR petition. Id. at § 312(a)(1)-(2). Permitting amendments to
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`mandatory disclosures, upon cursory proclamations of good faith “effectively
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`nullifies the requirement set forth in 312 that all real parties in interest must be
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`identified for a petition to be considered.” See Toshiba Memory Corp. v. Anza Tech.
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`Inc., IPR 2018-01597, Paper 35 at 2-3 (PTAB June 6, 2019) (BEST, A.P.J.,
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`concurring). Here, there is no dispute that Petitioner failed to meet its burden to
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`name three RPIs. (See Sections A., B., supra.) Petitioner must bear the consequence
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`of its omission, and the Board should not permit Petitioner to retain its filing date.
`
`
`
`
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`Respectfully submitted,
`
`7
`
`
`
`Dated: September 10, 2020
`
`
`
`
`
`By: /s/ James J. Lukas, Jr.
`James J. Lukas, Jr.
`GREENBERG TRAURIG, LLP
`77 W. Wacker Dr., Suite 3100
`Chicago, IL 60601
`Phone: (312) 456-8400
`Fax: (312) 456-8435
`
`Counsel for Patent Owner
`
`8
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`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. 42.6(e), the undersigned hereby certifies that on
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`the below date, I caused the forgoing to be served by electronic mail to the
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`following:
`
`Edward H. Sikorski
`Tiffany Miller
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Ed.Sikorski@us.dlapiper.com
`Tiffany.Miller@us.dlapiper.com
`
`James M. Heintz
`DLA Piper LLP (US)
`One Fountain Square, Suite 300
`Reston, VA 20190-5602
`James.Heintz@us.dlapiper.com
`
`
`
`
`By: /s/ James J. Lukas, Jr.
`James J. Lukas, Jr.
`GREENBERG TRAURIG, LLP
`77 W. Wacker Dr., Suite 3100
`Chicago, IL 60601
`Phone: (312) 456-8400
`Fax: (312) 456-8435
`
`Counsel for Patent Owner
`
`9
`
`Dated: September 10, 2020
`
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