throbber
IPR2014-00936
`PATENT OWNER’S OPPOSITION TO RENEWED MOTION TO EXPUNGE
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner,
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`
`______________
`
`U.S. Patent No. 7,196,477 B2
`
`IPR Case No.: IPR2014-00936
`______________
`
`PATENT OWNER’S OPPOSITION TO
`RENEWED MOTION TO EXPUNGE
`
`Petitioner’s present motion (Paper 72) is a renewal of its January 29, 2016
`
`motion to expunge the same documents from each of the IPR2014-00935 (Patent
`
`8,089,370 B2) (Paper 66), IPR2014-00936 (Patent 7,196,477 B2) (Paper 68),
`
`

`

`IPR2014-00936
`PATENT OWNER’S OPPOSITION TO RENEWED MOTION TO EXPUNGE
`
`IPR2014-00938 (Patent 7,429,827 B2) (Paper 70). On February 4, 2016, this
`
`Board denied this motion on the basis that “[t]he time for appeal in the subject
`
`cases, however, has not yet expired” and it “explicitly order[ed] the record to be
`
`preserved until after the resolution of any appeal or time for appeal.” Order at 2,
`
`Paper 69 (Emphasis added).
`
`Further, following Petitioner’s Counsel’s expression of interest in filing a
`
`renewed motion to expunge, in an email dated November 9, 2017, the Board stated
`
`that “[t]he parties should notify the Board whether Patent Owner declines or
`
`decides to file a petition for certiorari. The panel intends not to expunge
`
`documents until all avenues and times for appeal have been exhausted. The
`
`panel will maintain the records under seal in the interim.” (Emphasis added).
`
`Patent Owner affirmatively represents his intent to file a petition for a writ of
`
`certiorari and has secured an extension to file said petition for certiorari with
`
`respect to the Federal Circuit’s affirmance in case no. 16-1773, stemming from the
`
`Final Written Decision in IPR2014-00935 (Patent 8,089,370) (‘370 Patent), Paper
`
`65. See attached copy of Supreme Court docket number 17A531, which extended
`
`the period to file a writ of certiorari to January 25, 2018.
`
`Accordingly, since the conditions set by this Board in its February 4, 2016
`
`Order (and reiterated in an email dated November 9, 2017) for renewal of the
`
`motion have not been met; i.e., that renewal be after “[t]he time for appeal in the
`
`

`

`IPR2014-00936
`PATENT OWNER’S OPPOSITION TO RENEWED MOTION TO EXPUNGE
`
`subject cases” and “after the resolution of any appeal or time for appeal” (emphasis
`
`added), Petitioner’s renewed motion to expunge is premature. Petitioner has set
`
`forth no just cause for this Board to depart from its prior Order, since Petitioner’s
`
`confidential documents will remain safely under seal since until all appeals in the
`
`foregoing “cases” are resolved.
`
`Furthermore, the timing of Petitioner’s present renewed motion to expunge
`
`raises questions. As this Board surely knows, a case is presently pending before
`
`the Supreme Court that involves a fundamental challenge to the constitutionality of
`
`all PTABs IPR proceedings, Oil States Energy Services, LLC v. Greene’s Energy
`
`Group, LLC, Case No. 16-712. Oral argument for this case took place today,
`
`November 27, 2017.
`
`It is unknown whether the timing of Petitioner’s present renewed motion to
`
`expunge is an attempt to “beat the clock” on the Supreme Court’s decision in Oil
`
`States Energy Services or is motivated by some other undisclosed strategy.
`
`However, since there clearly is no urgency for Petitioner to renew its motion to
`
`expunge at this time, and this Board’s grant of Petitioner’s motion at this time may
`
`cause unintended consequences that have not been fully considered or briefed, it is
`
`respectfully submitted that it would not be just for this Court to grant Petitioner’s
`
`clearly premature renewed motion to expunge, particularly while the fundamental
`
`constitutionality of IPRs is in question before the Supreme Court.
`
`

`

`IPR2014-00936
`PATENT OWNER’S OPPOSITION TO RENEWED MOTION TO EXPUNGE
`
`For the foregoing reasons, Petitioner’s present renewed motion to expunge
`
`should be denied as premature.
`
`
`
`No fees are believed to be due to the United States Patent and Trademark
`
`Office in connection with this filing, but authorization is hereby given for any
`
`required fees to be charged to Deposit Account 50-5656 of SHIELLS LAW FIRM
`
`P.C.
`
`
`Dated: November 27, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`__/Theodore F. Shiells/_______
`Theodore F. Shiells
`Reg. No. 31,569
`
`SHIELLS LAW FIRM P.C.
`Pacific Place Building
`1910 Pacific Avenue - Suite 14000
`Dallas, Texas 75201
`
`Attorneys for Patent Owner
`
`
`
`

`

`IPR2014-00936
`PATENT OWNER’S OPPOSITION TO RENEWED MOTION TO EXPUNGE
`
`
`
`
`
`
`CERTIFICATE OF FILING AND SERVICE
`
`The undersigned certifies that, in addition to being filed electronically
`
`through the Patent Trial and Appeal Board’s Patent Review Processing System
`
`(PRPS), the foregoing PATENT OWNER’S OPPOSITION TO RENEWED
`
`MOTION TO EXPUNGE was served on the Counsel for the Petitioner via email,
`
`on this date, to the following email addresses:
`
`mark.nelson@dentons.com
`Mark C. Nelson (Reg. No. 43,830)
`Dentons US LLP
`2000 McKinney Ave.Suite 1900
`Dallas, Texas 75201
`
`lissi.mojica@dentons.com
`Lissi Mojica (Reg. No. 63,421)
`kevin.greenleaf@dentons.com
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, California 94304-1125
`
`daniel.valenzuela@dentons.com
`Daniel Valenzuela (Reg. No. 69,027)
`Dentons US LLP
`233 South Wacker Drive, Suite 7800
`Chicago, IL 60606-6306
`
`iptdocketchi@dentons.com
`
`
`
`__/Theodore F. Shiells/_______
`Theodore F. Shiells
`
`

`

`11/20/2017
`
`Search - Supreme Court of the United States
`
`Search documents in this case:
`
`Search
`
`
`
`No. 17A531
`
`Title:
`
`Docketed:
`
`Lower Ct:
`
`Simon Nicolas Richmond, Applicant
`v.
`Coleman Cable, LLC, et al.
`
`November 14, 2017
`
`United States Court of Appeals for the Federal Circuit
`
` Case Numbers:
`
`(2016-1773)
`
`DATE
`
`Nov 03 2017
`
`PROCEEDINGS AND ORDERS
`
`Application (17A531) to extend the time to file a petition for a writ of certiorari from November 26, 2017 to January 25, 2018, submitted to The
`Chief Justice.
`
`Nov 17 2017
`
`Application (17A531) granted by The Chief Justice extending the time to file until January 25, 2018.
`
`NAME
`
`ADDRESS
`
`Attorneys for Petitioner
`
`Theodore Frederick Shiells
` Counsel of Record
`
`Shiells Law Firm, P.C.
`1910 Pacific Avenue, Suite 14000
`Dallas, TX 75201
`
`tfshiells@shiellslaw.com
`
`Party name: Simon Nicolas Richmond
`
` 
`
`PHONE
`
`(214) 979-7312
`
`https://www.supremecourt.gov/search.aspx?filename=/docket/DocketFiles/html/Public/17A531.html
`
`1/1
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket