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
`
`DECLARATION OF MATTHEW J. LEVINSTEIN IN
`SUPPORT OF PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO UPDATE ITS
`MANDATORY NOTICES
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`
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`Chervon (HK) Limited
`Exhibit 2019 - Page 1
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`
`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
`
`DECLARATION OF MATTHEW J. LEVINSTEIN IN
`SUPPORT OF PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO UPDATE ITS
`MANDATORY NOTICES
`
`
`
`
`
`
`
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`
`
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`
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`Chervon (HK) Limited
`Exhibit 2019 - Page 1
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`
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`I, Matthew J. Levinstein, declare as follows:
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`1.
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`I am an attorney license to practice law in the state of Illinois. I am a
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`member in good standing in all jurisdictions and forums where I have
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`been admitted to practice.
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`2.
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`I am designated as Back-Up Counsel to represent Patent Owner
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`Chervon (HK) Limited (“Patent Owner”) in this proceeding, pending
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`pro hac vice. I am also counsel of record in the parallel district court
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`litigation: Chervon (HK) Limited et al. v. One World Technologies,
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`Inc. et al., Case No. 1:19-cv-01293 (D. Del.), filed on July 11, 2019
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`(the “Litigation”). The Litigation involves the same patent at issue in
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`this proceeding.
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`3.
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` As a result of representing Patent Owner in this forum and in the
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`Litigation, I have an established familiarity with the subject matter at
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`issue in this proceeding. As a result of my representation of Chervon
`
`(HK) Limited
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`in
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`these matters, I have acquired substantial
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`understanding of the underlying technological issues at stake in this
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`matter.
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`4.
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` I am submitting this Declaration in support of Patent Owner’s
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`Opposition to Petitioner’s Motion to Updates its Mandatory Notices to
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`Add Real-Parties-in-Interest.
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`
`
`2
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`Chervon (HK) Limited
`Exhibit 2019 - Page 2
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`
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`5.
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` Patent Owner is in possession of certain exemplary documents that
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`further support that: (i) the unnamed RPIs—Techtronic and Homelite
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`in particular—were
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`intimately
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`involved
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`in
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`the design and/or
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`development of
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`the accused products
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`in
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`the Litigation (the
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`“Documents”); (ii) Petitioner knew the unnamed RPIs were intimately
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`involved in the design and/or development of the accused products in
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`the Litigation; (iii) the unnamed RPIs should have been named as
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`RPIs by Petitioner when Petitioner filed its Petition; and (iv)
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`Petitioner did not name the unnamed RPIs because it was engaging in
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`gamesmanship and/or in bad faith.
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`6.
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`The Documents belong to Petitioner and/or Techtronic, who have
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`designated them “Highly Confidential—Outside Counsel’s Eyes
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`Only—Subject to Prosecution Bar” under the terms of the protective
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`order entered in the Litigation.
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`7.
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`Petitioner did not address the Documents (or the unnamed RPIs’
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`contributions to the design and/or development of the accused
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`products from the Litigation more generally) in its Motion to Update
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`its Mandatory Notices. (See generally Paper 12.)
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`8.
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`On September 10, 2020, Patent Owner sought Petitioner’s permission
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`to attach the Documents to Patent Owner’s Opposition to Petitioner’s
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`
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`3
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`Chervon (HK) Limited
`Exhibit 2019 - Page 3
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`
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`Motion to Update its Mandatory Notices from Petitioner’s counsel.
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`(See EX2020, Correspondence Between Messrs. Erik M. Bokar and
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`Edward H. Sikorksi, at 1.).
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`9.
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`Patent Owner intended to file the Documents—TTI1293_00000736,
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`TTI1293_00000764, and TTI1293_00001293—under seal. (See id.,
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`at 2.)
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`10. Petitioner refused Patent Owner’s request. (See id., at 1.)
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`11. Counsel for Petitioner is the same as in the Litigation. Petitioner
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`could have permitted Patent Owner to submit these documents on an
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`“under seal” basis in the interests of full disclosure and so that the
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`Board could evaluate Patent Owner’s Motion on a complete record.
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`12. Petitioner’s refusal of a routine request
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`is demonstrative of
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`Petitioner’s continued gamesmanship and bad faith with respect to its
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`RPI disclosure obligations.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements are made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the validity of the patents at issue.
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`
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`4
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`Chervon (HK) Limited
`Exhibit 2019 - Page 4
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`
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`Dated: September 10, 2020
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`Respectfully submitted,
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`/
`/Matthew J. Levinstein
`Matthew J. Levinstein (Pro Hac
`Vice pending)
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`
`
`
`5
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`Chervon (HK) Limited
`Exhibit 2019 - Page 5
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the below date, I caused the forgoing to
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`be served by electronic mail to the following:
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`Lead Counsel
`
`Edward H. Sikorski. (Reg. No. 39,478)
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Tel.: (619) 699-2645
`Fax: (619) 764-6645
`Ed.Sikorski@us.dlapiper.com
`
`
`
`
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`Back-Up Counsel
`
`James M. Heintz (Reg. No. 41,828)
`DLA Piper LLP (US)
`One Fountain Square, Suite 300
`Reston, VA 20190-5602
`Tel.: (703) 773-4148
`Fax: (703) 773-5008
`James.Heintz@us.dlapiper.com
`
`Tiffany Miller (Reg. No. 52,032)
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Tel.: (619) 699-3445
`Fax: (619) 764-6445
`Tiffany.Miller@us.dlapiper.com
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`Date: September 10, 2020
`
`/James J. Lukas, Jr./
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`
`
`6
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`Chervon (HK) Limited
`Exhibit 2019 - Page 6
`
`
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