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 No. IPR2014-00938
`Patent 7,429,827
`
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION
`TO THE PENDING MOTION TO TERMINATE
`THIS PROCEEDING FOR PETITIONER’S FAILURE
`TO IDENTIFY ALL REAL PARTIES IN INTEREST
`
`
`
`
`
`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 No. IPR2014-00938
`Patent 7,429,827
`
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION
`TO THE PENDING MOTION TO TERMINATE
`THIS PROCEEDING FOR PETITIONER’S FAILURE
`TO IDENTIFY ALL REAL PARTIES IN INTEREST
`
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`I. Coleman’s February 20, 2014 LLC Agreement – Giving Southwire
`“Full, Exclusive, and Complete...Control” Over Coleman’s “Business,
`Operations and Affairs” – Leaves No Doubt That Southwire Was An
`RPI When The Petition Was Filed.
`There is no dispute that, under applicable law, a non-party’s status as a real-
`
`party-in-interest (“RPI”) turns on whether there was “actual control or the
`
`opportunity for control” over the decision to file the inter partes review (IPR)
`
`petition and/or the arguments in it. See Ppr. 44, p. 2, 3, 6, 9, 13; see also Zoll
`
`Lifecor Corp. v. Philips Elec. North America Corp. et al., IPR2013-00616, Ppr. 17
`
`at 10 (“Factors for determining actual control or the opportunity for control include
`
`existence of a financially controlling interest in the petitioner [; …] the non-party’s
`
`relationship with the petitioner; the non-party’s relationship to the petition itself,
`
`including the nature and/or degree of involvement in the filing; and the nature of
`
`the entity filing the petition.”)
`
`Here, Southwire Company LLC’s (“Southwire’s) “control or the opportunity to
`
`control” over the IPR is definitively established by Coleman Cable LLC’s
`
`(Coleman’s) Limited Liability Company Agreement (the “LLC Agreement”),
`
`signed on Feb. 20, 2014 by Floyd Smith as Southwire’s “Secretary,” and disclosed
`
`for the first time in Petitioner’s opposition as Exhibit 1015. The LLC Agreement
`
`(1) names Southwire as Coleman’s sole managing “Member” and (2) provides:
`
`“The Member [Southwire] shall have full, exclusive and complete discretion
`to manage and control the business and affairs of the Company, to make all
`decisions affecting the business, operations and affairs of the Company and
`1
`
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`to take all such actions as it deems necessary or appropriate to accomplish the
`purpose of the Company as set forth herein. Subject to the provisions of this
`Agreement, the Member shall have general and active management of the
`business and operations of the Company.” Id. at ¶ 7. (Emphasis added).
`Since “full, exclusive, and complete…control…to make all decisions
`
`
`
`affecting [Coleman’s] business, operations and affairs” certainly includes
`
`Coleman’s legal “affairs,” such as deciding whether to file an IPR petition and
`
`what arguments to advance, it could hardly be clearer that when the Petition was
`
`filed, Southwire possessed the “actual control or the opportunity for control” over
`
`Coleman’s decisions necessary to establish Southwire’s RPI status. Id. The “full,
`
`exclusive, and complete…control” language, ignored by Petitioner, renders moot
`
`the question of whether Smith was wearing a Coleman “hat” or a Southwire “hat”
`
`when he executed the Power of Attorney (“POA”) that authorized the filing of the
`
`IPR petition; under either scenario, that “decision” was under Southwire’s “full,
`
`exclusive and complete . . . control.” Id.
`
`
`
`Petitioner’s other newly-introduced evidence is fully consistent with
`
`Southwire possessing the “control or opportunity for control” necessary to
`
`establish RPI status. Petitioner admits that: (1) when Southwire acquired Coleman
`
`in February 2014, it immediately replaced Coleman’s Directors and Officers with
`
`Southwire’s Officers. Ex. 1044, ¶¶ 5-7; (2) From February 11, 2014, when
`
`Southwire acquired Coleman, through February 20, 2014, when Southwire’s Smith
`
`
`
`2
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`executed the LLC Agreement, Ex. 1015, p.3; through June 2014, when Smith
`
`signed the POA authorizing the filing of the IPR Petition; and through January
`
`2015, when Smith retired, Smith was responsible for handing legal affairs for both
`
`Coleman and Southwire. Ex. 1044, ¶ 13; (3) In March 2014, Southwire adopted a
`
`Resolution (also signed by Smith) granting certain of Southwire’s officers power to
`
`bind the companies managed by it, including Coleman.1 Ex. 1044, ¶ 9, citing Ex.
`
`1016; (4) Coleman’s agreement to participate in and contribute $150,000.00
`
`toward the IPRs was after its acquisition by Southwire and thus under Southwire’s
`
`control. Ex. 1044, ¶ 16; and (5) The stubs for checks used to pay for the IPR, Ex.
`
`1042, though drawn from an account nominally bearing Coleman’s name, bore
`
`Southwire’s name and address.
`
`
`
`Southwire’s control of Coleman’s bank accounts is inherent to Southwire’s
`
`“full, exclusive, and complete” control over Coleman’s “business, operations, and
`
`affairs.” Id. Thus, the decision to contribute $150,000.00 toward the IPRs is
`
`attributable “full[y], exclusive[ly], and compete[ly]” to Southwire. Id. The printing
`
`of Southwire’s name and address on checks ostensibly drawn on accounts in
`
`1 The Resolution adds further proof of Southwire’s exclusive control and whether
`
`or not Coleman “approved” it is irrelevant: Since Southwire was in “full, exclusive
`
`and complete . . . control” of all decisions by Coleman, Southwire’s passing of the
`
`Resolution in the first place made Coleman’s “approval” a fait accompli.
`
`
`
`3
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`Coleman’s name is further proof of such control, not a software “glitch” happening
`
`without Southwire’s direction. Ex. 1042. The admitted sharing of employees, the
`
`joint press releases (on Southwire letterhead), and additional evidence discussed in
`
`Patent Owner’s moving papers, likewise support Southwire’s exercise of its control
`
`over Coleman in all aspects of its “business, operations and affairs.”
`
`
`
`This case presents an even clearer cut picture of control by an unnamed RPI
`
`than ZOLL, IRP2013-00616, ppr. 17 at 5, 10, 12, where the evidence was indirect.
`
`Here, Southwire’s control is established by direct evidence (i.e., the LLC
`
`Agreement). The indirect evidence merely confirms Southwire’s control already
`
`definitively established by the LLC Agreement.
`
`
`
`Southwire’s “full, exclusive, and complete” control over Coleman as its sole
`
`managing member renders Petitioner’s “changing hat” argument legally irrelevant.
`
`See Direct Marketing Concepts, Inc. v. Trudeau, 266 F.Supp.2d 794, 797 (N.D.
`
`Ill., 2003) (An argument that a sole managing-member “has somehow worn one
`
`hat individually and has worn another hat in his exclusive and total control of [his
`
`LLC] companies, is precisely the kind of manipulative litigation tactic that justifies
`
`judicial rejection.”); see also Kramer v. Stelter, 588 F. Supp.2d 862, 867 (N.D. Ill.
`
`2008) (LLCs “are in privity with their individual owners, particularly, as is the case
`
`here, when the owner has exclusive control over the LLC.”)
`
`
`
`4
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`In light of the foregoing, Petitioner has failed to carry its burden to prove
`
`
`
`that all RPIs existing at the time the Petition was filed were named.
`
`II. Termination Is Not Unfair To Petitioner.
`Termination at this stage, which is mandated by Petitioner’s failure to name
`
`Southwire as an RPI prior to the one-year bar date of 35 U.S.C. §§ 312 and 315, is
`
`not unfair to Petitioner. It bears repeating that on June 6, 2014, when Smith
`
`executed the POA, Ppr. 5, enabling Coleman’s participation in this IPR, he knew
`
`that Southwire had “full, exclusive, and complete . . . control” over Coleman’s
`
`“business, operations, and affairs” – because he had signed the LLC Agreement.2
`
`These facts were not known to Patent Owner until Petitioner filed its opposition.
`
`Because Petitioner filed its Petition near the statutory one-year deadline, even if
`
`Patent Owner had raised the issues in its preliminary response, it would have been
`
`too late to cure. As such, responsibility for the statutory consequences of
`
`Petitioner’s conscious decision to omit Southwire as an RPI when the Petition was
`
`filed, near the end of the statutory one-year period, rests solely with Petitioner.3
`
`II. Conclusion
`This IPR proceeding should be terminated for Petitioner’s failure to identify
`
`
`
`Southwire as a real party-in-interest, as required by 35 U.S.C. § 312(a)(2), prior to
`
`expiration of the one-year statutory bar of 35 U.S.C. § 315.
`
`
`2 Despite multiple extensions, Petitioner did not present a declaration by Smith.
`
`3 Since Southwire has been an RPI since day one, 37 C.F.R. § 42.8 is inapplicable.
`5
`
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`Respectfully Submitted,
`SHIELLS LAW FIRM, P.C.
`
`__/Theodore F. Shiells______
`Theodore F. Shiells
`Reg. No. 31,569
`
`
`
`Dated: July 28, 2015
`
`
`
`SHIELLS LAW FIRM P.C.
`Pacific Place Building
`1910 Pacific Avenue - Suite 14000
`Dallas, Texas 75201
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on July 28, 2015, a copy of the PATENT OWNER’S REPLY TO
`
`PETITIONER’S OPPOSITION TO THE PENDING MOTION TO
`
`TERMINATE THIS PROCEEDING FOR PETITIONER’S FAILURE TO
`
`IDENTIFY ALL REAL PARTIES IN INTEREST was served on Lead and
`
`Backup Attorneys for Petitioner, via the consented to method of email to the
`
`following email addresses:
`
`mark.nelson@dentons.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, daniel.valenzuela@dentons.com, and
`
`iptdocketchi@dentons.com,
`
`Respectfully submitted,
`______/Theodore F. Shiells/________
`Theodore F. Shiells
`
`
`
`
`Dated: July 28, 2015
`
`
`
`
`
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
