IN THE 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.
`______________
`
`Case IPR2014-00938
`Patent 7,429,827
`
`OPPOSITION TO MOTION TO TERMINATE
`
`
`
`______________
`
`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.
`______________
`
`Case IPR2014-00938
`Patent 7,429,827
`
`OPPOSITION TO MOTION TO TERMINATE
`
`
`
`Request for Rehearing
`Case No.: IPR2014-00938
`
`I.
`
`SOUTHWIRE WAS NOT AN RPI AT THE FILING DATE..................2
`A. Applicable legal principles ..................................................................2
`
`B.
`
`The evidence establishes that Southwire did not control, direct, or
`fund the IPRs, or have the opportunity to do so. .................................3
`
`C.
`
`The companies did not blur the corporate lines...................................7
`
`the
`the so-called "evisceration" of
`D. Richmond's "evidence" of
`corporate distinctions is not compelling. .............................................8
`
`SOUTHWIRE MAY HAVE BECOME AN RPI ON JULY 6, 2015......13
`II.
`III. PETITIONERS MAY ADD AN RPI DURING A TRIAL......................14
`
`i
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`
`
`Request for Rehearing
`Case No.: IPR2014-00938
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`Patent owner ("Richmond") brings its Motion to Terminate ("Mot.") more
`
`than one year after the IPRs were filed based on "evidence" that was either
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`available at the time the IPRs were filed, or recent statements (many by third
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`parties) regarding events that occurred long after the IPRs were filed and instituted
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`and thus do not bear on whether Southwire was a real party in interest ("RPI") at
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`the time the IPRs were filed. As demonstrated below, (1) Southwire Company,
`
`LLC ("Southwire") did not control, or have the ability to control, direct or fund the
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`IPR petitions, and (2) Petitioner
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`(Coleman Cable, LLC ("Coleman")) and
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`Southwire did not blur the corporate lines between themselves such that Southwire
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`was an RPI.
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`Even today the two companies are separate. They maintain separate bank
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`accounts, payrolls, plants and facilities, as well employee health, welfare,
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`retirement plans, websites, and ownership of intellectual property. On July 6, 2015,
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`however, Southwire and Coleman completed integration of their customer-facing
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`invoicing such that going forward the two companies may outwardly appear more
`
`like one company. Southwire, therefore, may have become an RPI on that date. As
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`such, petitioners concurrently update their mandatory notices to identify Southwire
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`as an RPI. But as set forth below, Southwire was not an RPI at the time of filing or
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`institution, was never sued by Richmond in district court, and remains separate
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`from Coleman even today. The Board should not terminate the IPRs.
`
`1
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
`
`I.
`
`SOUTHWIRE WAS NOT AN RPI AT THE FILING DATE.
`
`A.
`
`Applicable legal principles
`
`Section 312 governs the filing of petitions and requires, among other things,
`
`that the petitioner identify all RPIs at the time the petition is filed. 35 U.S.C. § 312.
`
`Section 315 prohibits petitions that are filed more than one year after the petitioner,
`
`an RPI, or a privy was served with a complaint. 35 U.S.C. § 315(b). Together,
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`these two statutes ensure that petitioners identify all RPIs to the Board when the
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`IPRs are filed. IPR2012-00042 (Paper 16, at 15-16) (focusing privity/RPI issue on
`
`date of
`
`filing). A different rule, 37 C.F.R. § 42.8(b), permits adding (or
`
`subtracting) RPIs due to changed circumstances. That rule does not affect petition
`
`filing dates.
`
`Whether a non-party is an RPI is a highly fact-dependent question. Office
`
`Patent Trial Practice Guide, 48,756, 48,759 ("Trial Practice Guide") (citing
`
`Taylor v. Sturgell, 553 U.S. 880 (2008)). Taylor identifies a six-factor test,
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`including, whether the third party exercised or could have exercised control over
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`the IPR, and whether a pre-existing legal relationship with the party named
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`justifies binding the third party. Id. at 883. While in general terms, "a real party in
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`interest is a 'party that desires review of the patent' or 'at whose behest the petition
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`has been filed'" (CBM2014-00179 (Paper 11, at 9) (citing Trial Practice Guide at
`
`48,759), "this does not mean that any party that desires review of a patent is a real
`
`2
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
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`party in interest." IPR2013-00215 (Paper 47, at 5). Rather, "[c]ourts invoke the
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`terms 'real party-in-interest' and 'privy' to describe relationships and considerations
`
`sufficient to justify applying conventional principles of estoppel and preclusion."
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`Trial Practice Guide 77 Fed. Reg., at 48,759; IPR2015-00203 (Paper 13, at 5-6).
`
`No one single factor controls. CBM2014-00179 (Paper 11, at 8).
`
`B.
`
`The evidence establishes that Southwire did not control, direct, or
`fund the IPRs, or have the opportunity to do so.
`
`The RPI analysis focuses on “the relationship between a party and a
`
`proceeding.” IPR2014-01288 (Paper 13, at 11). The control inquiry, therefore,
`
`focuses on whether the non-party could exert control over the IPR, not
`
`the
`
`petitioner. Id.; see also CBM2014-00179 (Paper 11, at 10) (citations omitted)
`
`(focusing on whether non-party "had the opportunity to present proofs and
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`argument" or "to direct or control the content" of the filing).
`
`Coleman, not Southwire, controlled the petitions. Although Mr. Floyd Smith
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`worked at Southwire as Executive VP, Secretary and General Counsel (he is now
`
`retired), he also acted as Secretary of Coleman from the time Coleman Cable, Inc.
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`was acquired on February 11, 2014. See Ex. 1042 ("Cochran Decl." at ¶¶ 12-13).
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`Mr. Smith signed the Power of Attorney for Coleman in these IPRs as "Secretary,"
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`reflecting his title at Coleman and solely on behalf of Coleman. Id. He typically
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`signed Power of Attorney documents on behalf of Southwire using his Southwire
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`title. Id., at ¶ 13; Ex. 1017. Mr. Smith did not act as Southwire's "proxy," or on
`
`3
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`Request for Rehearing
`Case No.: IPR2014-00938
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`behalf of Southwire, when he authorized the filing of the IPRs. Id. Because Mr.
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`Smith did not have the authority to sign a Coleman-related document on
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`Southwire’s behalf (id. at ¶¶ 9-10, 13-14), Southwire could not have controlled or
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`directed the IPRs. Id. Nor would Southwire have been motivated to do so in June
`
`2014 as it did not sell any allegedly infringing products, had not been sued, and
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`was only beginning to determine how it and Coleman would fit together. 1
`
`Southwire did not fund the IPRs or corresponding litigation. Coleman, not
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`Southwire, budgeted and paid for the IPRs. Coleman Cable, Inc. established an
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`accrual to, among other things, pay for legal services, including defending against
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`the Richmond litigation and the then-possible IPRs―before being acquired by
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`Southwire. Id. at ¶ 15. After the acquisition, Coleman maintained the accrual under
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`the leadership of Coleman’s Treasurer, Mr. Guyton Cochran.2 Id. In the second
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`quarter of 2014, Coleman agreed to contribute $150,000.00 toward the IPRs. Id. at
`
`¶ 16. The invoices for the IPR work were addressed to Coleman and sent to
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`1 That Smith as GC of Southwire was apparently involved in the acquisition of
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`Coleman (see Richmond Ex. 2056) is not surprising, but does nothing to establish
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`that Southwire controlled or could have controlled the IPRs.
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`2 Mr. Cochran is also the CFO of Southwire, but was acting only on behalf of
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`Coleman with respect to the IPRs and district court litigation. Id. at ¶¶ 8-9.
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`4
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
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`Coleman's outside litigation counsel, Jonathan Goodman of Patzik, Frank &
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`Samotny Ltd. ("PFS"), who, together with Loeb & Loeb, defend Coleman in
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`Richmond's district court litigation. Greenleaf Decl., at ¶ 3, Ex. 1043; Cochran
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`Dec., at ¶¶ 16, 18. Coleman paid its portion of the overall IPR costs from its bank
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`accounts, from its earnings. Cochran Decl., at ¶¶ 17-21; Ex. 1019; Greenleaf Decl.,
`
`at ¶¶ 4-6.3 Notably, the check stubs of two checks include Southwire's name. Id. at
`
`¶¶ 16, 18-20. But the checks are from Coleman, were signed by Mr. Cochran as
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`Coleman's Treasurer, and payment was drawn from Coleman's account. Id. at ¶¶
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`16, 18-20. In sum, Coleman paid for the entirety of the IPRs out of its accounts,
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`which Southwire did not contribute to or control. Id. at ¶¶ 17, 20-21.
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`Richmond's "evidence" of Southwire's purported direction and control fails
`
`to rebut the presumption that the correct RPIs were identified. 4 As explained
`
`above, Mr. Smith acted solely on behalf of Coleman when he authorized the IPRs.
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`3 There remains an outstanding balance of approximately $14K, which will also be
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`paid by Coleman. Id. at ¶ 21.
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`4 While the ultimate burden of persuasion on whether Southwire was an RPI rests
`
`with petitioners, the burden to demonstrate control "rests with him who asserts that
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`control (or the right to exercise it) existed…". Gonzalez v. Banco Central Corp., 27
`
`F.3d 751, 759 (1st Cir. 1994) (cited in Trial Practice Guide at 48,759).
`
`5
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
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`That Mr. Smith was also an officer of Southwire does not establish that
`
`it
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`controlled or could have controlled the IPRs. See, e.g., Stilwell Value Partners I,
`
`L.P. v. Prudential Mut. Holding Co., No. 06-4432, 2008 WL 1900945, at *9 (E.D.
`
`Pa. Apr. 24, 2008) (quoting United States v. Bestfoods, 524 U.S. 51, 69 (1998) ("A
`
`well-established principle of corporation law recognizes 'that directors and officers
`
`holding positions with a parent and its subsidiary can and do 'change hats' to
`
`represent the two corporations separately, despite their [corporations'] common
`
`ownership….'") Courts, in fact, "presume" that the directors are wearing their
`
`"subsidiary hats" and not their "parent hats" when acting for the subsidiary. Id.; see
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`also IPR2014-00689, Paper No. 32, at p.19-20 ("While [a shared officer] may act
`
`on behalf of petitioner at times, and PGSAI at other times, this employment
`
`association does not … demonstrate that PGSAI has the ability to control the
`
`proceedings before the Board.")
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`Richmond also points to petitioner and an unnamed party sharing counsel as
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`a consideration. (Mot. at 6). But in both Zoll (IPR2013-00616, Paper 17) and RPX
`
`(IPR2014-00171, Paper 57), the shared counsel included litigation counsel. Here,
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`Dentons represents Coleman only in the IPRs. PFS and Loeb & Loeb represent
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`Coleman in the litigation, where Southwire is not even a party. There is no sharing
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`of litigation counsel; nor would such sharing establish control. See, e.g., IPR2015-
`
`00506 (Paper 8, at 6) (same attorneys insufficient to demonstrate control).
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`6
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
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`The companies did not blur the corporate lines.
`C.
`A bedrock principle of corporate law is to respect corporate distinctions. See
`
`Bestfoods, 524 U.S. 51, 69 (1998). Southwire acquired Coleman and made it a
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`wholly-owned subsidiary on February 11, 2014. Cochran Decl., at ¶¶ 5-8; Ex.
`
`1015. But a party does not become an RPI merely through association with another
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`party. Trial Practice Guide at 48,760 (referring to trade associations and joint
`
`defense groups). Nor does the goal of integrating the two companies mean that
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`Southwire was an RPI on or after the IPR's filing date. See, e.g., IPR2014-01096,
`
`Paper 11, at 17 (rejecting that status as corporate parent or subsidiary suffices to
`
`establish RPI status); IPR2014-00217, Paper 21, at 7 (same).
`
`The two companies, in fact, were careful to maintain separation for both
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`practical and legal reasons. Cochran Decl. at ¶¶ 22-24. Among the legal reasons
`
`the companies remained separate were to preserve tax advantages, that Coleman
`
`decided not to adopt a Resolution (Ex. 1016) that would have permitted Southwire
`
`officers acting in their capacity as such to make decisions for Coleman, and to
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`honor vendor agreements. Cochran Decl., at ¶¶ 8-11, 23; Ex. 1020. The practical
`
`considerations included the difficulties combining two companies having separate
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`bank accounts, invoicing, billing/shipping systems, sales forces, employees' health,
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`welfare, and retirement plans, plants and facilities, and websites. Id. at ¶ 24.
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`The two companies' planned independence manifested before and after the
`
`7
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
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`acquisition. For example, Coleman sent a letter to its customers prior to the
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`acquisition ensuring them that the "transaction" would not affect the status quo. Id.
`
`at ¶ 25; Ex. 1028. Another letter was sent post-transaction (Ex. 2038) explaining
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`among other things, "For Coleman customers: Your Coleman contacts will remain
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`the same, you will continue to submit purchase orders to Coleman Cable and you
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`product shipments will continue to flow from Coleman Cable facilities." Id. at ¶
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`26; Ex. 2036. The letter further states that the two companies are working to "craft"
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`the integration strategy. Id. Another letter similarly maintains the distinctions
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`between the two companies by repeatedly referring to them and their customers
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`separately. Id. at ¶ 27; Ex. 2051. These letters are evidence of respecting corporate
`
`boundaries, not of line-blurring.
`
`D.
`
`Richmond's "evidence" of the so-called "evisceration" of the
`corporate distinctions is not compelling.
`
`Richmond's "evidence" generally falls
`
`into two types:
`
`(i) evidence
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`purporting to relate to alleged line-blurring around the time of filing, and (ii)
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`undated or recent evidence that does not bear on whether Southwire was an RPI at
`
`the time of filing. None of it rebuts the presumption that Southwire was not an RPI
`
`at the time of filing, or thereafter for that matter.
`
`As explained above, the companies maintained corporate separateness. The
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`announcements (Exs. 2046 and 2043) identify the two companies separately and
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`therefore do not represent line-blurring as, for example, in Atlanta Gas (IPR2013-
`
`8
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`
`
`Request for Rehearing
`Case No.: IPR2014-00938
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`00453 (Paper 88)). There, the two companies referred to themselves under an
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`umbrella term "AGL Resources." Here, Coleman rejected using such an umbrella
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`term. Cochran Decl., at ¶ 11; Ex. 1018. And although an advertisement (Ex. 2048)
`
`states the two companies are "now connected as one," the advertisement maintains
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`the distinction between the two companies by referring to them separately and, in
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`any event, the two companies were not integrated in June 2014.
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`Coleman's application to transact business in Florida (Ex. 2047) also
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`maintains the corporate distinction. It was signed by Mr. Cochran in his capacity as
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`Treasurer of Coleman. Id., at ¶ 35. Because the document was filed post-
`
`acquisition, it lists Southwire as a parent/member of Coleman. Id. The Board has
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`previously held a parent company's similar statements insufficient to demonstrate
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`control. See, e.g., IPR2014-00869 (Paper No. 8, at 8-9). Ms. Foster was listed as a
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`contact because Coleman did not have employees to receive information regarding
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`tax issues. Id. at ¶ 35. She referred Coleman-related information to Mr. Cochran to
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`handle as Treasurer of Coleman. Id. Coleman thus maintained control.
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`Richmond makes much of
`
`the LinkedIn pages allegedly establishing
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`impermissible corporate line blurring. (Mot. at 8-9; Exs. 2050-54). They do not.
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`First, such "evidence" is of dubious reliability and is normally regarded as
`
`inadmissible hearsay. See, e.g., Tank v. Deutsche Telekom, AG, No. 11 C-4619,
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`2013 WL 1707954, at *2 (N.D. Ill. Apr. 19, 2013) (citing Pace Am., Inc. v. Elixir
`
`9
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`
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`Request for Rehearing
`Case No.: IPR2014-00938
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`Indus. No. 06 C-4661, 2009 WL 211953, at *7 n.7 (N.D.Ill. Jan. 27, 2009)) (third-
`
`party web page is inadmissible hearsay and of "low" persuasive value). Here, for
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`example, Ex. 2050 identifies Ms. Biggs’ profile as being "import coordinator" for
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`"Coleman Cable/Southwire" as of June 2014. That information, however, is not
`
`correct. Ms. Biggs was a Coleman employee and remained so until February 2015,
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`the date she resigned. Cochran Decl., at ¶ 37.; Exs. 1031-32.
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`Second, even if some of the information were correct, the "evidence" does
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`not demonstrate line blurring. For example, Ms. Van is a Coleman employee who
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`also has a title at Southwire. But she, like Mr. Cochran, Mr. Smith and others who
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`wore "hats" at both companies, respected the distinction between their different
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`positions and maintained it. Id. at ¶¶ 10-11, 38. Coleman's employees draw salaries
`
`from Coleman, have separate health, welfare, and retirement plans from
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`Southwire's employees. Id. at ¶ 32. And in any event, only two of these executives
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`(Mr. Smith and Mr. Guyton) had involvement in the IPRs, and neither acted on
`
`behalf of Southwire. See generally id. at ¶¶ 9-10, 12-21. Moreover, neither
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`Southwire nor Coleman control their employees' social media accounts, including
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`LinkedIn. Id. at ¶ 38. The LinkedIn profiles thus do not demonstrate line-blurring
`
`that would make Southwire an RPI. See Stilwell 2008 WL 1900945, at *9;
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`Bestfoods, 524 U.S. at 69 (generally presumed that dual-role officer or director is
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`acting for subsidiary when wearing "subsidiary hat" and vice versa).
`
`10
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`Request for Rehearing
`Case No.: IPR2014-00938
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`The remaining "evidence" fails to rebut petitioner's evidence of corporate
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`separateness. First, the third-party characterizations of Coleman and Southwire
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`(e.g., Exs. 2056 and 2057) are hearsay and do nothing to establish line blurring.
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`The National Hardware Show Exhibit Directory (Ex. 2040) is also third-party
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`generated as is the PRWeb announcement (Ex. 2055). And although it appears that
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`a tweet (Ex. 2041) was sent from an employee overeager for the July 6, 2015 date
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`(the significance of which is discussed later), no Southwire signage appeared at the
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`booth. Cochran Decl., at ¶ 40; Ex. 1034.5 Regardless, this "evidence" is very recent
`
`and therefore does nothing to establish that Southwire was an RPI at the time the
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`petitions were filed. See, e.g., IPR2014-00488 and 00607, Paper 52, at 10
`
`(discounting the relevance of communications after the filing date).
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`5 The sales purported to be Southwire sales (Ex. 2059) on Amazon are actually
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`Coleman's sales of Coleman's products to Amazon for resale.
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`Id. at ¶ 41; Exs.
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`1035-36 and 1037-1038.
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`In fact, the only sales of Moonray products by a
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`Southwire entity were by Southwire Canada to its Canadian retailer customers, and
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`even those products were obtained from Coleman (id.) thus maintaining separation
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`of the products for internal purposes. Regardless, such later sales cannot establish
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`Southwire as an RPI because the inquiry in the IPR proceeding concerns
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`patentability. IPR2012-00042, Paper 16, at 17.
`
`11
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`Request for Rehearing
`Case No.: IPR2014-00938
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`Second, Richmond cites to a recent website printout that purports to identify
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`"Coleman Cable Southwire Intl" as Consignee of an alleged April 2015 shipment
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`of product. (Mot. at 10-11; Exs. 2052 and 2053). There is no "Coleman Cable
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`Southwire Intl." Id. at ¶ 43. Without more information, Coleman cannot ascertain
`
`the source of the information contained in the exhibits, but the Waukegan, Illinois
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`address identified as the destination of the products is Coleman's principal place of
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`business. Id. Ex. 1039 has the same quantity and weight as the items identified
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`Exs. 2052-53 and identifies "Coleman Cable, Inc." as the consignee. Id. Also,
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`Coleman and Southwire had separate sales forces that did not have ready access
`
`the other company's SKUs, and that were not paid commission on sales of the other
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`company's products. Id. at ¶ 24. Thus, corporate lines were maintained.
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`Third, contrary to Richmond's representation, Southwire and Coleman do
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`not both purport to own the Moonrays trademark. Ex. 2057 is a press release from
`
`third-party Security Equipment Supply and does not constitute an admission of
`
`Southwire. Ex. 2058, however, demonstrates that the companies maintain separate
`
`intellectual property. The Moonrays mark, moreover, is owned by WIIP, Inc., an
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`entity that holds intellectual property relating to Coleman, but not Southwire.
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`Cochran Decl., at ¶ 23; Ex. 1021.
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`The evidence presented, when taken in total, establishes that Southwire was
`
`not an RPI at the time the petitions were filed, instituted, or thereafter—certainly
`
`12
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`Request for Rehearing
`Case No.: IPR2014-00938
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`not before July 6, 2015. Southwire did not control, have the ability to control,
`
`direct or fund the IPRs. Southwire has not been sued, and Coleman is not litigating
`
`this IPR as Southwire’s "proxy." Southwire and Coleman, moreover, maintained
`
`their corporate separateness for both practical and legal reasons. This case is thus
`
`different than Atlanta Gas (IPR2013-00453) where, after the petitioner (subsidiary)
`
`was sued for infringement, (i) negotiations with another company involving
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`indemnity in connection with the litigation were conducted by the parent, (ii)
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`AGLR participated in the IPR, (iii) the parent paid the IPR filing fee, and (iv) the
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`two companies referred to themselves using the umbrella term "AGL Resources."
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`This case is also distinguishable from Galderma (IPR2014-01422) where the
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`patent owner produced evidence of intertwined control not present here and dated
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`on or before the petition's filing date, and from Zoll (IPR2013-00616) where
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`evidence demonstrated direct
`
`involvement by officers of the parent
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`in the
`
`proceedings, the parties referred to themselves under the umbrella "ZOLL," and
`
`the parent and subsidiary were both in lawsuits against the patent owner.
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`II.
`
`SOUTHWIRE MAY HAVE BECOME AN RPI ON JULY 6, 2015.
`
`Coleman and Southwire began executing plans to implement a broader,
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`outward-facing integration in March 2015 with the advent
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`the Fast Forward
`
`Program, Phase II. Cochran Decl., at ¶ 28; Ex. 1029. A main goal of that program
`
`was for Southwire to replace Coleman as the outward-facing supplier of Coleman's
`
`13
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`Request for Rehearing
`Case No.: IPR2014-00938
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`products. Id. at ¶¶ 29-30; Ex. 1030. This program was to be accomplished by July
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`6, 2015. Id. After that date, the two companies may outwardly appear more like a
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`single company because, for example, all invoicing will be Southwire branded. Id.
`
`at ¶ 31. Thus, petitioners now identify Southwire as an RPI. But even now, the
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`companies remain separate. Coleman and Southwire have separate bank accounts,
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`payrolls, employee health, welfare, and retirement plans, plants and facilities,
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`intellectual property, collective bargaining agreements, and websites. Id. at ¶ 32.
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`III. PETITIONERS MAY ADD AN RPI DURING A TRIAL.
`
`Sections 312 and 315 require that petitions identify RPIs. But they do not
`
`address adding an RPI during the pendency of an IPR trial—an issue addressed by
`
`37 C.F.R. § 42.8(b). See also, http://www.uspto.gov/patents-application-process/
`
`appealing-patent-decisions/patent-trial-and-appeal-board-ptab-faqs ("If there is a
`
`change in the real party in interest after the brief is filed…."). It is clear that, when
`
`appropriate, petitioners may add an RPI without affecting the filing date. See, e.g.,
`
`IPR2014-01203, Paper 13, at 8 n.8; IPR2013-00069, Paper 11, at 2 n.1 (permitting
`
`change from Nexans, Inc. to successor-in-interest Berk-Tek, LLC); IPR2012-
`
`00042, Paper 16, at 15-16 (criticizing patent owner for focusing on institution date,
`
`instead of petition filing date). In light of the events of July 6, 2015, it is possible
`
`that Southwire became an RPI on that date. Petitioners, therefore, out of abundance
`
`of caution, concurrently update their mandatory notices to include Southwire.
`
`14
`
`
`
`Request for Rehearing
`Case No.: IPR2014-00938
`
`This update, however, does not change the filing date of the IPRs and thus
`
`does not bar the IPRs. Rule 37 C.F.R. § 42.8(b) rule was written with knowledge
`
`of 35 U.S.C. §§ 312 and 315, but did not include the time-bar language. Hence, it
`
`is clear that adding RPIs via 37 C.F.R. § 42.8(b) does not serve to time bar the
`
`IPRs. Were the rule interpreted otherwise, it would be contrary to public policy. It
`
`would discourage otherwise necessary and practical corporate acquisitions and
`
`restructuring. And it might
`
`limit how otherwise independent companies
`
`(parent/subsidiaries, joint-ventures, etc.) could govern themselves by throwing into
`
`question, for example, whether a single individual could serve as an officer or
`
`board member
`
`in both companies,
`
`even if maintaining separation of
`
`responsibilities. Such an absurd result could not have been intended. See Griffin v.
`
`Oceanic Contractors, Inc., 458 U.S. 564, 575 (1982) ("[I]nterpretations of a statute
`
`which would produce an absurd result are to be avoided if alternative
`
`interpretations consistent with the legislative purpose are available.")
`
`Such a result would also be against the interests of justice. First, Southwire
`
`was not an RPI at the time the IPRs were filed. Second, terminating the IPRs at this
`
`late date (oral argument is in September 2015) would deprive numerous petitioners
`
`and RPIs their right to have the Board issue a final written decision on the merits.
`
`Finally, terminating the IPRs would reward Richmond for waiting until the 11th
`
`hour to bring his RPI challenge based on dated, unreliable information.
`
`15
`
`
`
`Request for Rehearing
`Case No.: IPR2014-00938
`
`Respectfully submitted,
`
`Dated: __July 17, 2015_______
`
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`DENTONS US LLP
`
`__/Mark C. Nelson/______
`Mark C. Nelson
`Reg. No. 43,830
`Lissi Mojica
`Reg. No. 63,421
`Kevin Greenleaf
`Reg. No. 64,062
`Dimitry Kapmar
`Reg. No. 62,998
`Daniel Valenzuela
`Reg. No. 69,027
`
`16
`
`
`
`Request for Rehearing
`Case No.: IPR2014-00938
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the OPPOSITION TO MOTION TO
`
`TERMINATE, Exhibits 1015-1044 and an Updated List of Exhibits for Inter
`
`Partes Review of U.S. Patent No. 7,429,827 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: __July 17, 2015_______
`
`___/Nona Durham/_________
`Nona Durham
`
`17
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