`
`______________
`
`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. (SHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (SHIEN 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.
`______________
`
`Case No. IPR2014-00936
`Patent 7,196,477
`
`REPLY TO OPPOSITION TO MOTION TO EXPUNGE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2014-00936
`
`Reply to Opposition to Motion to Expunge
`
`Contrary to Patent Owner’s Opposition,
`
`the present Motion is NOT a
`
`renewal of all of its Motions to Expunge the same documents from each of
`
`IPR2014-00935 (Paper 66), IPR2014-00936 (Paper 68), and IPR2014-00938
`
`(Paper 70) (January 29, 2016). The present motion only relates to the ’936 IPR,
`
`which was undeniably terminated on August 23, 2016. See Ex. 1068. Patent
`
`Owner’s arguments relating to its appeal on the ’935 IPR (which is not the subject
`
`of this motion) are, therefore irrelevant.
`
`Patent Owner’s remaining arguments carry no weight. First, while Patent
`
`Owner states there is no “just cause” for granting the motion, the Board already
`
`granted a virtually identical unopposed motion in the ’938 IPR, holding,
`
`“Petitioner has established good cause for expunging the Subject Exhibits.” ’938
`
`IPR, paper 73 at 3. Second, Patent Owner’s appeal of the ’935 IPR is unrelated to
`
`this terminated IPR because the confidential information will remain in the record
`
`for the ’935 IPR. Third, Patent Owner’s “beat the clock” argument lacks merit
`
`because this Motion does not affect the issuance of the trial certificates for the ’936
`
`and ’938 IPRs, the criteria for which is limited to “[a]fter the Board issues a final
`
`written decision in an inter partes review, … and the time for appeal has expired
`
`or any appeal has terminated.” 37 C.F.R. § 42.80 (emphasis added). Furthermore,
`
`Patent Owner’s request for delay is contrary to the current state of the law. See,
`
`IPR2017-01092, paper 12 at 4–6 (citing MCM Portfolio LLC v. Hewlett-Packard
`
`1
`
`
`
`IPR2014-00936
`
`Reply to Opposition to Motion to Expunge
`
`Co., 812 F.3d 1284, 1288–1293 (Fed. Cir. 2015); cert. denied sub nom. MCM
`
`Portfolio LLC v. Hewlett-Packard Co., 137 S.Ct. 292 (U.S. Oct. 11, 2016) (No. 15-
`
`1330)). Put simply, the ’936 IPR is finished. Patent Owner’s attempt to delay by
`
`opposing this Motion should be denied.
`
`Finally, Petitioner follows-up with its email request of November 9, 2017,
`
`for the Board to please confirm that the Office is preparing trial certificates for the
`
`’936 and ’938 IPRs, according to 37 C.F.R. § 42.80 and 35 U.S.C. § 318(b).
`
`Petitioner feels this request is appropriate because it has been over 1.25 and 1.75
`
`years since the time for appeal expired or the appeals terminated. There is a public
`
`interest
`
`in certainty by issuing speedily certificates to avoid parallel
`
`trials
`
`concerning unpatentable claims. See 37 C.F.R. § 42.1.
`
`Accordingly, Petitioner
`
`respectfully requests that
`
`the Board expunge
`
`Exhibits 1018, 1021, 1031, 1042, 1043, 1044, and 1046, which contain
`
`confidential information of the Petitioner, from the record in this proceeding.
`
`Respectfully submitted,
`
`Dated:
`
`November 30, 2017
`
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`DENTONS U.S. LLP
`
`/Mark Nelson/
`Mark C. Nelson
`Reg. No. 43,830
`Kevin Greenleaf
`Reg. No. 64,062
`Daniel Valenzuela
`Reg. No. 69,027
`
`2
`
`
`
`IPR2014-00936
`
`Reply to Opposition to Motion to Expunge
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on November 30, 2017, a copy of Petitioner's
`
`REPLY TO OPPOSITION TO MOTION TO EXPUNGE for Inter Partes Review
`
`of U.S. Patent No. 7,196,477 was served on the Counsel for the Patent Owner via
`
`email to the following email addresses:
`
`tfshiells@shiellslaw.com
`
`admin@shiellslaw.com
`
`marcusb@tlpmb.com
`
`Respectfully submitted,
`
`Dated:November 30, 2017
`
`Nell Butler
`
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`
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