`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Sikorski, Ed
`Trials
`Heintz, James M.; Miller, Tiffany
`RE: IPRs2020-00883 -00887, IPR2020-00888, PGR2020-00059, -00060, -00061
`Tuesday, May 5, 2020 3:20:03 PM
`RE Petitions for IPR and PGR against Chervon HK Ltd. Patents Waiver of Service Requested.msg
`
`Dear Mr. Kellogg,
`
`Apologies that our Certificates of Service did not indicate the parties’ prior agreement regarding
`service but I had exchanged emails with Patent Owner’s counsel, Mr. Keith Jarosik, on April 30 and
`May 1, before filing the nine (9) petitions identified below. I attach Mr. Jarosik’s response in which
`he kindly agreed to “accept electronic service and waive service of paper copies for the noted
`patents.” It was only after his agreement that the below-listed petitions were filed. I did not copy
`Mr. Jarosik on this email but his contact information is jarosikk@gtlaw.com .
`
`Please let me know if you need more information.
`
`Best regards,
`-Ed Sikorski
`
`Ed Sikorski
`T +1 619.699.2645
`M +1 619.992.2645
`E ed.sikorski@us.dlapiper.com
`
`DLA Piper Logo
`
`
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, California 92101-4297
`United States
`www.dlapiper.com
`
`
`Petitions and U.S. Patents:
`IPR2020-00883 = U.S. 9,060,463
`IPR2020-00884 = U.S. 9,596,806
`IPR2020-00885 = U.S. 9,648,805
`IPR2020-00886 = U.S. 9,826,686
`IPR2020-00887 = U.S. 9,986,686
`IPR2020-00888 = U.S. 10,070,588
`PGR2020-00059 = U.S. 10,477,772
`PGR2020-00060 = U.S. 10,485,176
`PGR2020-00061 = U.S. 10,524,420
`
`
`
`From: Trials <Trials@USPTO.GOV>
`
`
`
`Sent: Tuesday, May 05, 2020 11:15 AM
`To: Sikorski, Ed <Ed.Sikorski@us.dlapiper.com>; Heintz, James M. <Jim.Heintz@us.dlapiper.com>;
`Miller, Tiffany <tiffany.miller@us.dlapiper.com>
`Cc: Trials <Trials@USPTO.GOV>
`Subject: IPRs2020-00883 -00887
`
`[EXTERNAL]
`
`Counsel,
`
`The certificate of service for the Petition in IPR2020-00883 indicates Patent Owner was served “by
`electronic copy of this Petition for Inter Partes Review and supporting material.” Pursuant to 37 C.F.R. §§
`42.6(e)(1), 42.105(b), electronic service is permissible upon agreement of the parties. Please clarify by
`response to this email whether service was made electronically upon prior agreement of the parties. Your
`response is requested by no later than 5:00 PM Eastern on May 6, 2020. Thank you.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`The information contained in this email may be confidential and/or legally privileged. It has been sent for the sole use
`of the intended recipient(s). If the reader of this message is not an intended recipient, you are hereby notified that any
`unauthorized review, use, disclosure, dissemination, distribution, or copying of this communication, or any of its
`contents, is strictly prohibited. If you have received this communication in error, please reply to the sender and destroy
`all copies of the message. To contact us directly, send to postmaster@dlapiper.com. Thank you.
`
`
`
`jarosikk@gtlaw.com
`Sikorski, Ed
`Lewis, Damon
`RE: Petitions for IPR and PGR against Chervon HK Ltd. Patents – Waiver of Service Requested
`Friday, May 1, 2020 9:57:02 AM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`[EXTERNAL]
`
`Ed,
`Yes, I will accept electronic service and waive service of paper copies for the noted patents.
`Best regards,
`-Keith
`___________________________________________________
`Keith Jarosik
`Shareholder
`
`Greenberg Traurig, LLP
`77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
`T +1 312.456.1063
`From: Sikorski, Ed [mailto:ed.sikorski@dlapiper.com]
`Sent: Thursday, April 30, 2020 2:33 PM
`To: Jarosik, Keith (Shld-Chi-IP-Tech) <jarosikk@gtlaw.com>
`Cc: Lewis, Damon <damon.lewis@dlapiper.com>
`Subject: Petitions for IPR and PGR against Chervon HK Ltd. Patents – Waiver of Service Requested
`*EXTERNAL TO GT*
`
`Hi Keith, I represent One World Technologies and Techtronic Industries, which were sued for patent
`infringement by your client, Chervon (HK) Ltd. The case caption is Chervon (HK) et al. v. One World
`Technologies, Inc., et al., No. 19-cv-01293-LPS (D.Del.). I am copying my colleague, Damon Lewis.
`We plan to file petitions for IPR and PGR over the next couple days on the asserted patents (listed
`below), and because you are the official contact person in the USPTO’s records for each of them, I
`am reaching out to ask if you would kindly accept electronic service and waive service of paper
`copies. Given everyone’s work-from-home situation due to Covid-19, we feel it would be to
`everyone’s benefit to avoid printing, shipping, and receiving paper copies.
`Please let me know at your earliest convenience.
`Thanks,
`-Ed Sikorski
`U.S. Patents:
`9,648,805
`9,060,463
`9,596,806
`9,826,686
`9,986,686
`10,070,588
`10,477,772
`10,485,176
`
`
`
`10,524,420
`Thanks again,
`Ed Sikorski
`ed.sikorski@us.dlapiper.com
`DLA Piper Logo
`
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, California 92101-4297
`United States
`www.dlapiper.com
`
`The information contained in this email may be confidential and/or legally privileged. It has been sent for the sole use
`of the intended recipient(s). If the reader of this message is not an intended recipient, you are hereby notified that any
`unauthorized review, use, disclosure, dissemination, distribution, or copying of this communication, or any of its
`contents, is strictly prohibited. If you have received this communication in error, please reply to the sender and destroy
`all copies of the message. To contact us directly, send to postmaster@dlapiper.com. Thank you.
`
`If you are not an intended recipient of confidential and privileged information in this email,
`please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or
`disseminate the information.
`
`