UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE TI-IE PATENT TRIAL AND APPEAL BOARD
`
`ZHONGSI-IAN BROAD OCEAN MOTOR CO., LTD.
`'
`Petitioner
`
`NIDEC MOTOR CORPORATION
`Patent Owner
`
`'
`
`Case IPR2014—0I12I
`
`Patent 7,626,349
`
`PETITIONEIFS REQUEST FOR REHEARING OF DECISION
`DENYING THE MOTION TO SUBMIT A CORRECTED EXHIBIT
`
`AND MAINTAIN FILING DATE PURSUANT TO 37 C.F.R. §42.7l(d),
`AND THE RESULTING DENIAL OF INSTITUTION OF
`
`INTER PARTES REVIEW WITIZI RESPECT TO THE
`
`ANTICIPATION GROUNDS BASED ON THE PRIOR ART
`
`HIDEJI REFERENCE
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`NY 78390lv.l
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF
`
`REQUESTIEID ................................................................................................ .. 1
`
`.
`
`II.
`
`LEGAL STANDARDS ................................................................................. ..2
`
`III.
`
`BASIS FOR RELIEF REQUESTED ............................................................ ..2
`
`A.
`
`The Decision Vitiated Petitionefs Rights Pursuant
`To 37 C.F.R. §42.64(b) ............................................................. ..2
`
`B.
`
`The Boarci Failed To Consider Petitioner’s Mistake
`
`Of Fact To Be A Cicrical Mistake Under 37 C.F.R.
`
`§42.I04(c) ......................
`
`....................................................... .. 10
`
`C.
`
`Correction Under 37 C.F.R. §§42.5(b) and (c)(3) ............. ..13
`
`IV.
`
`CONCLUSION ........................................................................................... ..14
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`NY 78390! v.1
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`TABLE OF AUTHORITIES
`
`Cases
`
`12. Bd. ofRegenrs of!/1e Um'v.1ofWas/7.,
`Elz'Lz'Zly & Co.
`334 F.3d 1264 (Fed. Cir. 2003) ..................
`........................................................ ..2
`
`Ford Motor Co. v. U.S., 157 F.3d 849 (Fed. Cir. 1998) ............................ ..11, 12, 14
`
`LKQ Corp. 12. CIear/amp, LLC, 1PR2013—00020,
`Paper 17 (Decision) (PTAB Mar. 5, 2013) ...................................................... ..4, 9
`
`Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir. 2004) .................................................. ..2
`
`Symfroleum Corp. v. Nestle 01'! Oyj,
`IPRZO13-00178, Papc1‘21 (PTAB Jan. 16, 2013) .............................................. .. 12
`
`Toyota Motor Corp. v. /Imericrcm Ve/*zz'cu/or S'cz'€rzcéS LLC,
`IPR2013—0041 5 ............................................................................................. ..6, 7, 8
`
`Statutes
`
`19 U.S.C. §1520(c)(l) |1"cpea1ed in 2004] ............................................................. ..10
`35 U.S.C. §102(b) ................................................................................................ ..1,2
`
`Regulations
`
`............................................. ..1, 3,10,12
`37 C.F.R. §42.104(c) ................................
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`. ..13
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`.
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`37 C.F.R. §§42.S(b) and (c)(3) .
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`37 C.F.R. §42.63(b) ............................................................................................. ..2, 4
`
`37 C,F.R. §42.6'4(b) ......................................................................................... ..1, 3, 4
`37 C.F.R. §42.64(b)(1) ...............................................................................
`............ ..5
`37 C.F.R. §42.71(c) .................................................................................................. ..2
`37 C.F.R. §42.71(d) ....................................
`........................................................... ..2
`
`Other Authorities
`
`77 Fed. Reg. 48612, 48646 (Aug. 14, 2012) ........................................................... ..6
`
`NY 78390lv.1
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`ii-
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`

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`Pursuant to 37 CPR. §42.7l(d), the petitioner, Zhongshan Broad Ocean
`
`Motor Co., Ltd. et al. (“Petitioner”), requests rehearing of the Decision (Paper
`
`No. 20) denying Petitioner’s Motion to Submit a Corrected Exhibit and the
`
`resulting denial of the institution of an 1'm‘er parres review of U.S. Patent
`
`No.7,626,349 (“the ‘349 patent”) based on proposed Ground No.1 under
`
`35 U.S.C. §102(b).
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`The Decision denied Pctitioner’s motion under 37 C.F.R. §42.104(c) (Paper
`
`No. 17 or ‘‘Motion’’) to file an afiidavit attesting to the accuracy of the originally
`
`filed English translation of JP 12003-348885 (the “Hideji Reference”). E Paper
`
`No.20 at pp. 9~l2. As a result, theBoard declined to institute an inter pczrres
`review of claims 1-3, 8-9, 22, 16, and 19 underi35 U.S.C. §102(b) based on the
`
`Hideji Reference, but did institute an inter partes review of those claims under
`
`§103 based on other prior art references. §_c§ Paper No. 20 (Decision) at pp. 13 &
`
`17. Petitioner requests that the Board reconsider its Decision denying the Motion
`
`in light of: (1) the governing regulations for making and responding to evidentiary
`
`objections, 37 C.F.R. §42.64(b); or,
`(2) a
`liberal
`interpretation of 37 C.F.R.
`§42.104(c) that would allow the correction of a rnistake of fact. Alternatively, the
`
`Board should allow a beiated filing of the attesting affidavit under 37 C.F.R.
`
`§42.5(b) and/or §42.5(c)(3). Upon a reconsideration and grant of the Motion by
`
`NY 783901v.1
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`the Board, Petitioner further requests that trial be instituted on claims L3, 8, 9, 12,
`
`l_6, and 19 of the ‘349 patent under §l02(b) based on the English translation of the
`
`I-Iideji Reference forthe reasons stated in the Petition.
`
`II.
`
`LEGAL STANDARDS
`
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehendcd or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R.
`
`§42.7l(d). “When rehearing a decision on petition,
`
`the panel will review the
`
`decision for an abuse ol“discretion.” 37 C.F.R. §42.7l(c). “An abuse of discretion
`
`occurs Where the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is
`
`based on an erroneous conclusion of law; (3) rests on clearly erroneous fact
`
`findings; or (4) involves a record that contains no evidence on which the Board
`
`could rationally base its decision.” Stevens 12. ‘Taxman’, 366 F.3d 1325, 1329 (Fed.
`
`Cir. 2004) (quoting Eli Lilly & Co. v. Bci. ofRegem‘s of the Univ. of Wash, 334
`
`F.3d 1264, l266~67 (Fed. Cir. 2003)).
`
`III. BASIS FOR RELIEF REQUESTED
`
`A.
`
`The Decision Vitiated Petitioner’s Rights Pursuant To 37 CFR.
`I §42.64(b)
`
`The Board recognizes that a failure to file an attesting certificate with the
`
`English translation as required by 37 C.F.R. §42.63(b) is not absolutely fatal, but
`
`rather is remediablc. See Broad Ocrecm, lPR20l4—0l 121 Paper No. 20 (Decision)
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`NY 78390lv,l
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`at p. 9 (PTAB Jan. 21, 2015) (“We authorized Petitioners to file a motion under
`37 C.F.R. §42. l04(c) to establish that the failure to submit attesting affidavits with
`
`the documents results from a clerical error that may be excused by allowing
`
`attesting afiidavits to be filed subsequent to the filing of the documents”). The
`
`Decision is contrary to law because it vitiatcd Petitioner’s ability to cure Patent
`
`Owner Nidee’s evidentiary objections to the English translation of the Hideji
`
`Reference within ten (10) business days of an institution of trial as expressly
`
`provided by 37 C.F.R. §42.64(b). Petitioner raised this issue at the very beginning
`
`of the November 3, 2014 conference call discussed in the Order (Paper No. 16).
`
`Indeed, in an October 29, 2014 email to assigned Paralegal Kattula requesting the
`
`conference call, Petitioner expressly raised for discussion only the §42.64(b) issue.
`
`_Se_e Attachment A hereto. However, during the conference call the Board steered
`
`away from the §42.64(b) issue and stya§pg)g1te raised the prospect of moving to
`
`correct the petition pursuant to 37 CPR. §42.104(c).
`
`As discussed below, the case law is clear that Nidee’s evidentiary objections
`
`were improperly raised in its Preliminary Response, and can only be raised after an
`
`institution of trial. The Board’s defaeto grant of Nidee’s implicit motion to
`
`exclude the Hideji Reference, prior to an institution of trial, improperly deprived
`
`Petitioner of its unfettered right to submit supplemental evidence in the form of the
`
`attesting affidavit pursuant to §42.64(b)(2). See LKQ Corp. v. Clearlamp, LLC,
`
`NY 783‘9(}]v.i
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`IPR2013—O0020, Paper 17 (Decision) at pp. 2-4 (PTAB Mar. 5, 20.13) (dismissing
`
`Patent OWner’s request in its Preliminary Response for Board to consider “lack of
`
`authentication” objections to petitioner’s documentary evidence as part of the
`
`determination to institute trial).
`
`While it
`
`is true that according to 37 C.F.R. §42.63(b),
`
`the filing of a
`
`documentary exhibit in support of the petition in a language other than English
`
`requires “a translation ofthe document into English and an affidavit attesting to the
`
`accuracy of the translation
`
`filed with the document,” that rule does not dictate
`
`the denial of the petition for non—compliance with §42.63(b), without giving the
`
`Petitioner an opportunity to later tile that attesting affidavit. The opportunity to
`
`file the omitted attesting affidavit alter an institution of trial
`
`is provided by
`
`37 C.F.R. §42.64(b), which states:
`
`(b) Other evidence. For evidence other than deposition
`
`evidence:
`
`(1) Objection.
`Any ob_jecti0n to evidence submitted
`tlurilig (I preliniimiry proceeding must be served within
`
`ten business days of the institution of the trial. Once a
`
`trial has been instituted, any objection must be served
`
`within five business days of’ service oi’ evidence to which
`
`thelobjection is directed. The objection must identify the
`
`grounds for the objection with sufficient particularity to
`
`allow correction in the form of supplemental evidence.
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`(2) Supplemental evidence.
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`The party relying on
`
`evidence to which an objection is timely served may
`
`respond to the objection by
`
`serving supplemental
`
`evidence within ten business days of service of the
`
`objection.
`
`(emphasis added).
`
`The “evidence submitted during a preliminary proceeding” referred to in
`
`37 C.F.R. §42.64(b)(l) encompasses the documentary exhibits that were filed with
`
`the petition. See 37 C.l'i.R. §42.2 (delinitien of “Preliminary Proceeding”). The
`
`“supplemental evidence” recited in §42.64(b)(2) includes the attesting affidavit
`
`obtained by Petitioner "Broad Ocean.
`
`Indeed,
`
`the rulemakirig for §42.64(b)(2)
`
`shows that “supplemental evidence” encompasses a substitute declaration.
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`Comment 185: One comment requested that proposed
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`§42.64(b)(2), which provides
`
`for
`
`the submission of
`
`supplemental evidence, allow a party to submit substitute
`
`declarations bearing the same exhibit number but clearly
`
`marked as substitutes and that the list of exhibits simply
`
`list the substitute exhibit.
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`Response:
`
`The comment
`
`is adopted, although no
`
`modification to the proposed rule is required. Section
`
`42.64(b)(2)
`
`allows
`
`parties
`
`to
`
`submit
`
`substitute
`
`declarations as supplemental evidence in the manner
`
`identified in the comment.
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`Nv 78390Iv.1
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`See 77 Fed. Reg. 48612, 48646 (Aug. 14, 2012). This commentary by the Patent
`Office makes clear that the supplemental evidence may be filed with the Board as a
`
`substitute exhibit under §42.64(b)('2), not just served on the opposing party.
`
`The circumstances presented in this IPR_procceding are closely analagous to
`
`those presented in Toyota Motor Corp. v.
`
`/lmerican Ve/aicttlar Sciences LLC,
`
`IPR2013-00415 which should be controlling of the present motion.
`
`In Toyota
`
`Motor, the Petitioner Toyota Motor filed, in support of its petition, the Japanese-
`
`language original of lshihara J P H01—l97145 as Exhibit 1004 and an English
`
`translation thereof along with a purported
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`certification” of translation as
`
`(C
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`Exhibit 1005.
`
`In its Preliminary Response, the Patent Owner American Vehicular
`
`argued that
`
`the originally tilec “certification” did" not qualify as an attesting
`
`affidavit because it was not made under oath, lacked a “perjury” statement and
`
`lacked authentication, and consequently “the translation of Ishihara should be
`
`stricken from the record and no trial should be instituted based on Ground 3.” See
`
`Toyota Motor, lPR2013—0041S, Paper No. 12 (Preliminary Response) at pp. 23-26.
`
`In response, just as Petitioner Broad Ocean initially sought to do here (seg
`
`AttachrnentA hereto), Petitioner Toyota Motor sought “authorization to file
`
`supplemental evidence,
`
`i.e., a declaration of a foreign language translator,
`
`to
`
`support a foreign ianguage document relied on by Petitioner as prior art.” Toyota
`
`Motor, IPR2013—00415, Paper No. 14 (Order) at p. 2 (PTAB Dec. 5, 2013). The
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`NY 783901v.l
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`Board denied Petitioner Toyota Motor’s request as being unnecessary in View of
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`§42.64(b) itself, stating:
`
`During the conference, the Boarddireeted attention ofthe
`
`parties to 37 C.I*‘.R. § 42.64. Any objection to evidence
`
`filed during a pre_li'minary proceeding (prior to institution
`of trial) must be served within ten business days of
`
`institution or trial. 37 CFR. § 42.64(b)(1). The party
`
`relying on evidence to which an objection is timely
`
`served may
`
`respond to
`
`the objection by serving
`
`supplemental
`
`evidence within ten" business days of
`
`service of
`
`the
`
`objection.
`
`37 C.F.R.
`
`§42.64(b)(2).
`
`Because the action contemplated by Petitioner
`
`is
`
`Specifically covered by 37 C.F.R. § 42. 64(b)(1) and §
`
`42.64(b)(2),
`
`the Board instructed the parties to follow
`
`the procedure outlined therein.
`
`Id. (emphasis added).
`
`llere, the procedure dictated by the Board (i.e., a motion to
`
`correct under §42.l04(c)) and the denial oi" that motion improperly deprived
`
`Petitioner Broad Ocean oi’ the corrective procedure outlined in §42.64(b)(l) and
`
`§42.64(b)(2).
`
`Interestingly, in Toyota Motor, the Board instituted a trial, but not based on
`
`lshihara JP H0l—i97l45 because it was deemed to be redundant.
`
`S_e_e Toyota
`
`Motor, IPR20l3-0415, Paper No. l5 (Decision) at p. 26 (PTAB Jan. 13, 2014).
`
`Nevertheless, Patent Owner American Vehicular subsequently maintained its
`
`NY 733-9t>iv.i
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`objection to the “certification” for the English translation of Ishihara. E Toyota
`
`Motor, IPR20l3—004l5, Paper No. 21 (“Patent OWner’s Amended Objections To
`
`Evidence”) at pp.
`
`l—4.
`
`In response, Petitioner Toyota Motor ‘filed with the Board
`
`“supplemental evidence exhibits” including substitute Exhibit 1005 consisting of
`
`the English translation of
`
`Ishihara
`
`and a new replacement “Translator’s
`
`Declaration”,
`
`See Toyota Motor,
`
`IPR20l3—00415, Paper No.23 (“Exhibit
`
`Transmittal Letter”). Thus, in Toyota Motor, the parties followed the procedure
`
`outlined in §42.64(b_)(l) & (2).
`
`Similarly,
`
`in LKQ Corp.
`
`v.
`
`(Hear/amp, LLC,
`
`IPR20l3—00020, the Patent
`
`Owner Clearlamp, in its Preliminary Response, argued that the Autopia, Eastwood
`
`and SHO documents submitted as Exhibits 1004, 1005 and 1007 to the petition
`
`were inadmissible due to a lack of authentication under FederaliRules of Evidence
`
`901 and 902. LKQ, 1PR2013—00020, Paper No. 14 (“Preliminary Response”) at
`
`pp. 25-26. The Board treated this argument in the Preliminary Response as being a
`
`motion to exclude.
`
`‘See LKQ, 1PR20l3—00020, Paper No. 17 (Decision) at p. 2 n.1
`
`(PTAB Mar. 5, 2013). The Board then denied this “motion to exclude” because it
`
`would deny Petitioner LKQ the opportunity to correct “as permitted under the
`
`rules”, i.e., §42.64(b)(2).
`
`As stated above, motions to exclude are not authorized
`
`until much later during a trial,
`
`if a trial
`
`is instituted.
`
`Clearlamp‘s “motion to exclude” is premature and also
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`NY 73390lv.l
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`prevents LKQ from correcting as permitted by the rules.
`
`If
`
`a
`
`trial 1
`
`is
`
`instituted, Clearlamp will
`
`have
`
`full
`
`opportunity to object, serve, reconsider any supplemental
`
`evidence and iinally file a motion to exclude evidence.
`
`To the extent that Clearlamp urges the Board to consider
`
`the evidentiary issues as part 01 our determination to
`
`institute a trial, Clearlamp has failed to explain, in any
`
`1neaningt11l_ way, why we should deviate from the rules
`
`governing infer pmzes review.
`
`Paper No. 17 (Decision) at p. 4. Subsequently, the Board instituted a trial on a
`
`§103 ground using the eviden_tiary—challenged Eastwood reference [Exhibit 1004]
`
`as a secondary reference. Paper No. 18 (Decision) at pp. 2, 10-11.
`
`in short, here, the Board acted contrary to law by declining to institute a trial
`
`based on the Hicleji Reference based solely on a defect in authentication of the
`
`English translation of that re Ference. By doing so, the Board improperly rendered
`
`37 C.F.R. §42.64(b) a nullity, and improperly deprived Petitioner Broad Ocean of
`
`the opportunity to correct as allowed under that rule. Furthermore, the Board knew
`
`over two months before the Decision (Paper No. 20, dated January 21, 2015) that
`
`Petitioner Broad Ocean had obtained an attesting affidavit authenticating the
`
`English translation of the Hideji Reference. glee Paper_No. 17 (Petitioner’s Motion
`
`to Submit A Corrected 1-Exhibit). The Board should have assessed the substantive
`
`merits of the petition and instituted a trial, if warranted, thereby giving Petitioner
`
`Nv 7s390iv.1
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`I
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`9—
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`Broad Ocean the opportunity to ‘lite
`
`the attesting affidavit as supplemental
`
`evidence. The Board’s ‘Failure to do so is an error of law.
`
`B.
`
`The Boa rd Failed To Consider Petitioner’s Mistake Of Fact To Be
`
`A Clerical Mistake Under 37 C.F.R. §42.104(c)
`
`The Board’s Decision den in >' Petitioner’s Motion was a clearl
`Y
`E;
`
`Y
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`erroneous
`
`legal conclusion because the Board improperly imported an unduly narrow
`
`interpretation of “clerical error” based on a long ago abrogated customs statute,
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`19 use §l520(e)(l)
`
` repealed in 2004],
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`into the phrase “a clerical or
`
`typographical mistake in the petition” appearing in 37 C.F.R. §42.l04(c). That
`
`statute, 19 U.S.C. §l520(c)(1), which was construed in Ford Motor_C0. v. US,
`
`157 F.3d 849 (Fed. Cir.
`
`i998), allowed for the correction of “a clerical error,
`
`mistake of fact, or other inadvertance not amounting to an error in the construction
`
`oflaw”.
`
`lit. at 857. Because “clerical error” and “mistake of fact” were expressly
`
`recited as alternatives in §lS20(c)(l). the term “clerical error” was construed to be
`
`exclusive ofa “mistake of fact” For purposes of 19 U.S.C. §l520(c)(1):
`
`To begin with, this court addresses the requirements of
`
`title 19 For evaluating whether an error is correctable.
`
`In
`
`the first place, the party seeking to correct must show that
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`its error "fits within one of the statutory categories as a
`
`‘clerical error’, as a ‘mistake of fact,’ or as some ‘other
`
`inadvertance.’
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`NY 78390lv.§
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`If an error qualities as an ‘error in construction of a law,’
`
`that inquiry is dispositive, but ifit does not so qualify, the
`
`party seeking correction must show that
`
`its error fits
`
`within one of"the_ three correctable categories.
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`Ford Motor, 157 F.3d at 857-58.
`
`The applicable rule in these proceedings, 37 C.F.R. §42.l04(c), has no such
`
`delineation between “clerical error” and “mistake of fact” but rather recites a
`
`“clerical or typographical mistake”. Because of the “liberal interpretation” to be
`
`afforded 37 CFR. §42.lO4(c), Symfro/e2.tm Corp. v. Nestle Oil Oyj,
`
`IPR20l3—
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`00178, Paper 21 at p. 4 (PT/\B Jan. 16, 2013), the Board incorrectly construed the
`
`“clerical mistake” language in §e42. 1 04(0) to be exclusive ofa mistake of fact.
`
`The Federal Circuit in Ford Motor defined “mistake of fact” as follows:
`
`A mistake of ‘Fact is any mistake except a mistake of law.
`
`It has been defined as a mistake which takes place when
`
`some fact which indeed exists is unknown, or a fact
`
`which is thought to exist,
`
`in reality does not exist. A
`
`mistake oi’ fact exists where a person understands the
`
`- Facts to be other than they are, whereas a mistake of law
`
`exists where a person knows the facts as they really are
`but has a mistaken belief as to the legal consequences of
`
`those facts.
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`NY 783901v.1
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`157 F.3d at 859.
`
`'Petitioner’s Motion and supporting papers demonstrate that the
`
`omission of authentication for
`
`the English translation filed with the Hideji
`
`Reference was a “mistake of fact.”
`
`When Petitioner submitted the Hidcji Reference (Exhibit 1003) and its
`
`respective English translation (lfixhibit 1005), its then-l..ead Counsel Rees intended
`
`to file an attesting affidavit with the translations.
`
`1012, Rees Deal. at fll6. Then
`
`Lead Counsel Rees mistakenly believed that the authentication for the English
`
`translation to the .1-Iideji Reference existed, when i_n reality it did not exist. That
`
`belief was based on the fact that the English translation of the Hideji Reference
`
`was obtained by litigation counsel for use in the district court proceedings and an
`
`affidavit attesting to the accuracy of the translation would have been obtained from
`
`the translator at the time of translation and included as part of Exhibit 1005. See
`
`Ex. 1012, Rees Decl. at filo. As Rees’ declaration explained, the failure to do so
`
`was unintentional and inadvertent. Ex. 1012, Rees Dec]. at $114.]
`
`Petitoner’s then Lead Counsel Rees’ “mistake of “fact” qualifies as a “clerical
`
`mistake” under 37 C.F.R. §42.104(c) because he relied. on “a fact which is thought
`
`to exist,
`
`[which]
`
`in reality does not exist.” Ford Motor, 157 F.3d at 859.
`
`I The Board accepted Petit'ioner’s statement of facts as accurate for the purposes of
`
`its Decision. fiee Paper No. 20 (Decision) at p. 9.
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`NY 7'839t}lv.l
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`
`

`
`Therefore, iPctitioner respectfully requests the Board to reconsider its Decision
`
`denying Petitioner’s Motion to Submit A Corrected Exhibit and Maintain Filing
`
`Date.
`
`C.
`
`Correction Under 37 C.F.R. §§42.5(b) and (c)(3)
`
`Petitioner was &1Ltil10t'l’zi’.C_Ll
`
`to address a belated filing of the attesting
`
`affidavits under 37 C.l'*‘.R.
`
`§>42.5(b) and/or §42.5(c)(3)
`
`in this Request
`
`for
`
`Rehearing. See Attachment B hereto.
`
`Section 42.63(b) provides that “['w'|hen a party relies on a document or is
`
`required to produce a document in a language other than English, a translation of
`
`the document
`
`into English and an atiidavit attesting to the accuracy of the
`
`translation must be filed wit]: the document.” See 37 C.F.R. §42.63(b) (emphasis
`
`added).
`
`The Board has the power, under 37 C.F.R. §42.5(b),
`
`to waive any
`
`requirement of’ Part 42. which includes the requirement
`
`in §42.63(b) that an
`
`attesting affidavit be tiled at the same time as the English translation, and should
`
`do so here. Waiver is appropriate here because there has been no prejudice to the
`
`Patent Owner. The belated attesting affidavit did not change the substance of the
`
`English language translation of the l-[ideji Reference, which the Patent Owner has
`
`had from the service of the original Petition. The Patent Owner was not deprived
`
`of the opportunity to make any substantive argument about the Hideji Reference in
`
`its Preliminary Response.
`
`NY 7s390iv.'I
`
`-
`
`— 13-
`
`

`
`Furthermore, 37 C.F.R. §42.5(c)(3) provides that “[a] late action will be
`
`excusedon a showing of‘ good cause or upon a Board decision that consideration
`
`on the merits wouid be in the interests ofjustice.
`
`The Board excusing the late
`
`3!
`
`"filing of the attesting affidavit here would be in the interests ofjustice for the same
`
`reasons that waiver is appropriate and ‘because the Petition demonstrates that there
`
`is a reasonable likelihood that ciaims 1-3, 8, 9, 12, 16 and 19 ofthe ‘349 patent are
`
`invalid under §102(b) based on the I-lideji Reference.
`
`IV. CON CLUSFION
`
`In view of the foregoing errors in the Decision, Petitioner respectfully
`
`requests that
`
`the Board reconsider its Decision, grant Petitioner’s_ Motion To
`
`Submit A Corrected Exhibit And Maintain Filing Date Pursuant To 37 C.F.R.
`
`§42.104(c), and/or allow a belated tiling of the attesting affidavit under 37 C.F.R.
`
`§42.5(b) and/or §42.5(c)(3), and grant 1’etitioner’s request to institute inter partes
`
`review of claims 1~3, 8, 9, 12, 16 and 19 ofthe ‘349 Patent ‘under §102(b) based on
`
`the Hideji Reference.
`
`Dated: February 4, 2015
`
`Respectfully submitted,
`
`/ §z‘_efi2_g-'z_!*_'._ [l_/_I_e_)__2_e_::_/
`No. 35,613)
`Steven F, Meyer
`Lead Counsel For Petitioner
`
`NY 7339mm
`
`—
`
`14—
`
`

`
`ATTACHMENT A TO RE UEST
`
`
`
`
`NY 78390] v.1
`
`

`
`Meyer, Steven F.
`
`From:
`Sent:
`
`To:
`
`Cc:
`
`Kattula, Amy <Amy.Kattula@USPTO.GOV>
`Wednesday, October 29, 2014 1:37 PM
`
`Meyer, Steven F.
`
`Baker, Charles; sbrown@hoveywilliarns.com; mwalters@hoveywil|iams.com;
`Iitigation@hoveywilliamscom;jschwent@thompsoncoburn.com;
`djinkins@thompsoncoburn.com; syoo@thompsoncoburn.com
`
`-
`
`Subject:
`
`RE: IPR NOS. 2014-01121 through 2014-01123
`
`Thank you.
`
`I will check with the panel and get back to you.
`
`From: Meyer, Steven F. lmallto:Sl‘/|eyer@%oc%<elord.comj
`Sent: Wednesday, October 29, 2014 1:36 PM
`To: Kattula, Amy
`Cc: Baker, Charles; sbrown@hoveyMljia_ms.com,' mwaitersgflhoveywiliiarns.com; litigation@hoveyLwilliams.com;
`jschwent@thompsoncoburn.com; djinkins@thompsoncoburn.com; syoo@thompsoncoburn.com
`Subject: IPR Nos. 2014-01121 through 201401123
`
`I
`
`I
`
`Dear Ms. Kattula
`
`Following-up on the voice mail that I just left for you. lam replacement lead counsel for Petitioner Broad Ocean in lPR
`
`Nos. 2014-01121 through 201401123. On Friday, October 24, 2014, we were served with Patent Owner's Preiirninary
`
`Response in each of these three lPR's . In each Preliminary Response, the Patent Owner argued that no weight should be
`given to arguments or evidence relying on a prior art Japanese reference because there was no certification of the filed
`English translation thereof. We befieve that in so doing, the Patent Owner has objected to evidence submitted during
`
`the preliminary proceeding. See 37 C.?.R. 42.64(b)(1). Consequently, Petitioner is allowed to timely serve" supplemental
`evidence. See 37 C.F.R. 42.64(b)(2}. Comment No. 185 and Response published in the Federal Register regarding 37
`
`C.F.R. 42.64(b)(2) provides that ”Section 42.6-4(b)(2) ailows parties to submit substitute declarations as supplernentai
`
`evidence in the manner identified in the comment" (ie., as a substitute exhibit along with a list of exhibits that simply
`list the substitute exhibit}. See 77 Fed Reg. at 48646 (Aug. 14, 2012).
`
`Petition Broad Ocean wishes to file as a substitute exhibit the previously filed English translation of the Japanese
`reference, along with the certification ofthe English translation as the last page. is this an acceptable approach? if not,
`
`can you please let me know the proper procedure for effectuating a filing of the certification.
`
`Thank you
`
`l". Me_\'a-t‘
`
`.‘€E‘e.Ve:t
`Pttrtner
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`
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`
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`\§(‘\x’ 3 mri-'.,_ l§'.l(_‘L':li‘1‘_;('E}[r)\ Qikill
`
`I‘i';z_m_-,r,:;a,"u_
`
`CONFIDENTIALITY NOTICE:
`
`This message and any attached files may contain privileged or other confidential information, If you have
`received it in error, please advise the sender by reply email and immediately delete the message and any
`attachments without copying or disclosing the contents. Thank you.
`'
`
`

`
`ATTACHMENT B TO REQUEST
`
`NY '."83901v.1
`
`

`
`Mexer, Steven F.
`
`-
`
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Counsel,
`
`Kattula, Amy <Amy.Kattula@USPTO.GOV>
`Tuesday, February 03, 2015 5:12 PM
`Meyer, Steven F.
`
`sbr0wn@hoveywilliamscom; rnwalters@hoveywi|1iams.com;
`litigatien@hoveywilliamscom;jschwent@_thompsoncobumcom;
`djinkins@thompsoncoburn.com; syoo@thompsoncoburn.com; Baker, Charles
`RE: IPR Nos. 2014-01121 through 2014-01123
`
`Petitioner is authorized to address the identified issues in its Request for Rehearing.
`
`Amy Kattula
`Paralegal Specialist
`Patent Triai and Appeal Board
`571-272-4683
`
`Amy.Kattuia@uspto.gov
`
`;
`
`[rnai|to:BMirag|ia@locl<e|ord.com] On Behalf of Meyer, Steven F.
`From: Miraglia, Bettina
`Sent: Tuesday, February 03, 2015 11:14 AM
`To: Kattula, Amy
`Cc: sbrown@hoveywi|liams.com; rnwalters@hoveylgilliamscom; Iitigation@_hoveywil|iams.com;
`jschwent@thompsoncoburrtcom; glji31l<ins@thompsoncoburn.com; syoo@thornpsoncoburn.corra; Baker, Charies
`Subject: IPR Nos. 2014-01121 through 2014-01123
`
`Paralegal Kattula:
`
`February 3. 2015
`
`I am lead counsel for Petitioner Broad Ocean in IPR Nos. 2014-01 121 through 2014-01 123. On
`January 21, 2015, the PTAB entered a Decision in each of these lPRs that denied the motion to correct an
`exhibit to include an attesting affidavit along with the previously submitted English translation of a Japanese
`language prior art reference. Petitioner intends to timely file a request for rehearing pursuant to 37 C.F.R.
`§42.71(d).
`1
`
`Petitioner respectfully stlbmlts that the PTAB may waive the requirement of §42.63(b) that "a
`translation of the document into English and an altitlavit attesting to the accuracy of the translation must be
`filed with the document” pursuant to 37 C.l7.R. §42.5(_b) or, alternatively. excuse the late filing of the attesting
`affidavit pursuant to 37 C.F.R. §42.5{c)(3). Doing so would be in the interests of justice because eacl1 petition
`demonstrates that there is a reasonable likelihood that the identified claims of the Nidec patent are invalid based
`on the Japanese language prior art reference. The Patent Owner Nidec has not been prejudiced because the
`attesting affidavits do not change the substance of the originally filed English translation.
`
`

`
`Petitioner seeks permission to raise this issue in its request for rehearing or, alternatively, for
`. permission to file a motion seeking relief under 37 CFR. §42.5(b) and §42.5(c)(3).
`
`Thank you.
`
`Sincerely.
`
`Steven F. Meyer
`
`Steven ‘F: Meyer
`Partner
`
`i,A.f§t‘.iZ:’.’
`
`Ii
`
`is mi
`
`3 World Financial Center, 20th I-'ii('>c'n1‘
`New York, New York 1028? -2] O1
`
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`Visit www.iockeIord.com
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`
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`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e) and 37 C.F.R. §42.105(b), the undersigned
`hereby certifies that on February 4, 2015 a complete and entire copy of the
`foregoing PETITIONER’S REQUEST FOR REHEARING OF DECISION
`DENYING THE M()TION TO SUBMIT A CORRECTED EXHIBIT AND
`MAINTAIN FILING DATE PURSUANT TO 37 C.F.R. §42.71(d), AND THE
`RESULTING DENIAL OF INSTITUTION OF INTER PARTES REVIEW
`
`WITH RESPECT TO THE ANTICIPATION GROUNDS BASED ON THE
`
`PRIOR ART I-IIDEJI REFERENCE was electronically served in its entirety on
`the
`Patent Owner
`of
`record
`(as
`agreed
`upon
`by
`counsel)
`at
`sbrown@hovcywilliainscom,
`mwaltcrs@hoveywi11ia1ns.com,
`and
`litigation@hoveywilliamscom.
`
`Additionally, the undersigned certifies that on February 4, 2015 a complete and
`entire copy of the foregoing I’ETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING TIIE MOTION TO SUBMIT A CORRECTED
`
`EXHIBIT AND MAINTAIN FILING DATE PURSUANT TO 37 C.F.R.
`
`§42.7l(d), AND THE RESULTING I)ENIA'L OF INSTITUTION OF INTER
`PARTES REVIEW WITH RESPECT TO THE ANTICIPATION GROUNDS
`
`BASED ON THE PRIOR ART In-IIDEJI REFERENCE was electronically served
`on
`the
`Patent
`Owncr’s
`bclow—1isted
`counsel
`of '
`record
`at
`
`and
`djinkins@thompsoncoburn.corn,
`jschwent@thompsoncoburn.corn,
`syoo@thompsoncobum.com, in the co~pending litigation Nidec Motor Corporation 12.
`Broad Ocean Motor LLC er a/., Civil Action No. 4:13—CV—01895—JCI-I (E.D. Mo.), as
`agreed upon by the parties.
`
`Dated: February 4, 2015
`
`NY 73390§v.l
`
`/ Stevc«:i:2_E.__W/1:1fe_}2_e”1*_[w_M
`Steven iF.i1VIeyer (Reg. No. 35,613)
`LOCKE LORD LLP
`
`Three World Financial Cent