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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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`ONE WORLD TECHNOLOGIES, INC.,
`D/B/A TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
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`v.
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`CHERVON (HK) LIMITED,
`Patent Owner.
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`Case IPR2020-00885
`U.S. Patent No. 9,648,805
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`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO UPDATE MANDATORY NOTICE
`TO ADD REAL PARTIES-IN-INTEREST
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to the Board’s order of August 27, 2020 (Paper 12), Petitioner
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`submits this reply in support of its motion to update its mandatory notices.
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`Patent Owner’s opposition offers unsupported rhetoric but fails to address
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`the undisputed fact central to the motion—namely, none of the parties sought to be
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`added as real parties-in-interest is statutorily barred from filing an IPR petition.
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`Patent Owner relies nearly exclusively on Ventex Co., Ltd. v. Columbia Sportswear
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`North Am., Inc., IPR2017-00651, Paper 148 (Jan. 24, 2019), arguing the to-be-
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`named RPIs are “clear beneficiaries” of this proceeding. Opp., 2-5. Ventex,
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`however, turned on whether beneficiaries of a petition were time-barred under 35
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`U.S.C. § 315(b) from pursing their own IPR petitions. Id., 8. The one-year time
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`bar also was central to Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
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`1336 (Fed. Cir. 2018) (“AIT”), the case that guided the Ventex panel. In contrast,
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`none of the to-be-named RPIs here were served with a complaint more than one
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`year before the petition was filed. This fundamental difference explains the glaring
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`omission by Patent Owner of any alleged motive or benefit that would support its
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`claims of bad faith and gamesmanship. As Petitioner established, there was none.
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`In fact, Patent Owner’s unsupported claims of bad faith and gamesmanship
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`are belied by another undisputed fact—namely, Patent Owner knew about each to-
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`be-named RPI long before the petition was filed. Unlike Ventex and AIT, Patent
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`Owner is not at risk of an untimely administrative attack against its patents, and all
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`1
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`RPIs will be bound by the outcome and the estoppel of § 315(e) or § 325(e). And
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`in contrast to Patent Owner’s “willful blindness” comment from AIT—where the
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`petitioner’s actions were intended to circumvent its client’s one-year bar under
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`§ 315(b)—no RPI in this proceeding is subject to that bar. Opp., 5-6; AIT, 1335.
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`None of Patent Owner’s arguments warrant denial of Petitioner’s motion. In
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`general, an RPI “may be the petitioner itself, and/or it may be the party or parties at
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`whose behest the petition has been filed.” Office Patent Trial Practice Guide.
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`However, “[t]here is no rule establishing that every party who has been sued for
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`infringement of a patent is necessarily a real party-in-interest in every proceeding
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`challenging the patentability of the claims of that patent.” Puzhen Life USA, LLC
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`v. Esip Series 2, LLC, IPR2017-02197, Paper 13 at 5 (PTAB, Apr. 11, 2018).
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`Here, Mr. Sowell’s declaration unequivocally confirms that Petitioner “had
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`no obligation to consult with any of those three companies or obtain their
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`permission to file the IPR and PGR petitions in this matter.” Ex. 1036, ¶4.
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`Homelite’s alleged activity of “import[ing] and distribut[ing]” the accused
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`products (Opp., 3) does not demonstrate control over Petitioner’s decision to file
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`this proceeding. Patent Owner also fails to explain how a warranty card from
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`Techtronic Industries North America Inc. demonstrates control over Petitioner.
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`Opp., 3. And despite Patent Owner’s speculation (Opp., 3-4), it is commonplace
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`for settlement discussions to explore how all parties might resolve their
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`2
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`differences. Patent Owner identifies no authority to support the conclusion that
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`Mr. Sowell’s discussion with Mr. Clancy should invoke the notion of real parties-
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`in-interest, especially where public policy strongly favors the resolution of disputes
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`via settlement. Patent Owner’s attorney argument that when Mr. Sowell used
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`“TTI” he meant the Petitioner’s parent is belied by the actual facts—Mr. Sowell
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`has confirmed his employer does business as TTI, and Patent Owner’s own
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`research has confirmed Mr. Sowell works for One World Technologies, the
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`Petitioner. Ex. 2022. Patent Owner also offers no authority that an overlap in
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`corporate addresses or directors means that two entities are necessarily real parties-
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`in-interest. Opp., 4. And the perception of a former President regarding corporate
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`organization (Opp., 4) is far less relevant than Mr. Sowell’s dispositive declaration.
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`Finally, Patent Owner’s unsupported claims of “gamesmanship” and “bad
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`faith” are highly ironic, given that Patent Owner waited until the afternoon its
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`response was due to inform Petitioner that Patent Owner was about to violate the
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`district court’s Protective Order by submitting documents produced by the
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`defendants in the district court proceeding that cannot be used “under any
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`circumstances for any other proceeding”—a prohibition that Patent Owner agreed
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`and the district court ordered. The timing of that request and Patent Owner’s
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`reference to it speak volumes. In short, Patent Owner’s Opposition punctuates that
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`this motion should be granted so the Board can address the merits of the Petition.
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`3
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`Dated:
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`September 14, 2020
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`Respectfully submitted,
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` /s/ Edward H. Sikorski
`Edward H. Sikorski
`Reg. No. 39,478
`Attorney for Petitioner
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
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`42.105(b) on the Patent Owner by electronic copy of this PETITIONER’S REPLY
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`IN SUPPORT OF ITS MOTION TO UPDATE MANDATORY NOTICE TO
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`ADD REAL PARTIES-IN-INTEREST. Service is made electronically upon
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`agreement of the parties.
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`Keith R. Jarosik
`Greenberg Traurig, LLP
`77 W. Wacker Drive
`Suite 3100
`Chicago IL 60601-1732
`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
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`jarosikk@gtlaw.com
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`SchladweilerB@gtlaw.com
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`NicodemaM@gtlaw.com
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`LukasJ@gtlaw.com
`LevinsteinM@gtlaw.com
`SandC@gtlaw.com
`GilfordB@gtlaw.com
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`Dated:
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`September 14, 2020
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` /s/ Edward H. Sikorski
`Edward H. Sikorski
`Reg. No. 39,478
`Attorney for Petitioner
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`WEST\291774937.1
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`
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