Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 25
`Entered: February 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.,
`BROAD OCEAN MOTOR LLC, and
`BROAD OCEAN TECHNOLOGIES, LLC,
`Petitioners,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`
`
`
`
`Case IPR2014-01121 (Patent 7,626,349 B2)
`Case IPR2014-01122 (Patent 7,208,895 B2)
`Case IPR2014-01123 (Patent 7,312,970 B2)1
`____________
`
`
`
`Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Requests for Rehearing
`37 C.F.R. § 42.71
`
`
`1 We exercise our discretion to issue a single decision for the three
`proceedings. The parties are not authorized to use this style of caption.
`
`
`571-272-7822
`
`
`
`
`
`Paper 25
`Entered: February 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.,
`BROAD OCEAN MOTOR LLC, and
`BROAD OCEAN TECHNOLOGIES, LLC,
`Petitioners,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`
`
`
`
`Case IPR2014-01121 (Patent 7,626,349 B2)
`Case IPR2014-01122 (Patent 7,208,895 B2)
`Case IPR2014-01123 (Patent 7,312,970 B2)1
`____________
`
`
`
`Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Requests for Rehearing
`37 C.F.R. § 42.71
`
`
`1 We exercise our discretion to issue a single decision for the three
`proceedings. The parties are not authorized to use this style of caption.
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`
`On January 21, 2015, we instituted inter partes review in IPR2014-
`
`01121 and IPR2014-01122, and denied institution of inter partes review in
`
`IPR2014-01123. Paper 20 in each of the proceedings. In all three
`
`proceedings, we denied institution on certain grounds advanced by
`
`Petitioners because those grounds relied on references that we determined
`
`were defective under 37 C.F.R. § 42.63(b). Dec. 7. 2 Specifically, each of
`
`those grounds relied on at least one Japanese reference; Petitioners filed an
`
`English translation of the reference, but failed to file an attesting affidavit
`
`with the translation as required by the rule.
`
`On February 4, 2015, Petitioners filed a Request for Rehearing in each
`
`of the three proceedings that advance arguments involving (1) regulations
`
`for making and responding to evidentiary objections under 37 C.F.R.
`
`§ 42.64(b); (2) regulations for correction of clerical or typographical
`
`mistakes under 37 C.F.R. § 42.104(c); and (3) our discretion under 37
`
`C.F.R. §§ 42.5(b) and (c)(3). Req. Reh’g 1.
`
`
`
`I. REHEARING STANDARD
`
`When rehearing a decision, the Board reviews the decision for an
`
`abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs
`
`where the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is
`
`
`2 Petitioners make substantially the same arguments in each proceeding. For
`convenience, we subsequently provide citations herein to our Institution
`Decision (Paper 20, “Dec.”) and to Petitioner’s Request for Rehearing
`(Paper 21, “Req. Reh’g”) in IPR2014-01123.
`2
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`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 v. Tamai, 366 F.3d 1325,
`
`1330 (Fed. Cir. 2004) (citing Eli Lilly & Co. v. Bd. of Regents of the Univ. of
`
`Wash., 334 F.3d 1264, 1266–67 (Fed. Cir. 2003)). The burden of showing
`
`that the decision should be modified lies with Petitioners, the parties
`
`challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed.” Id.
`
`
`
`II. REGULATIONS FOR MAKING AND RESPONDING TO
`EVIDENTIARY OBJECTIONS
`
`Under 37 C.F.R. § 42.64(b), an opportunity is afforded to parties to
`
`submit supplemental evidence in response to objections to evidence
`
`submitted during a preliminary proceeding. The procedure contemplates
`
`service of the objection “within ten business days of the institution of the
`
`trial” (37 C.F.R. § 42.64(b)(1)) and service of the supplemental evidence
`
`“within ten business days of service of the objection” (37 C.F.R. §
`
`42.64(b)(2)).
`
`Petitioners correctly contend that their defective exhibits, namely the
`
`Japanese references with unattested translations, are “evidence submitted
`
`during a preliminary proceeding.” Req. Reh’g 5. Petitioners also correctly
`
`3
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`contend that “supplemental evidence” includes the attesting affidavits later
`
`obtained by Petitioners. Id. Thus, we agree with Petitioners that the
`
`procedure allows service of its later-obtained attesting affidavits.
`
`Nevertheless, such a procedure ultimately fails to have the curative
`
`effect Petitioners desire. Specifically, 37 C.F.R. § 42.63(b) requires that “an
`
`affidavit attesting to the accuracy of the translation must be filed with the
`
`document” (emphases added). Consequently, the original Petitions are
`
`incomplete with respect to the grounds advanced by Petitioners that rely on
`
`the Japanese references. Later submission of the Japanese references with
`
`translations and attesting affidavits would require assignment of a new filing
`
`date. 37 C.F.R. § 42.106. The patents at issue in each of the proceedings
`
`are also the subject of Nidec Motor Corporation v. Broad Ocean Motor LLC
`
`et al., Civil Action No. 4:13-CV-01895-JCH (E.D. Mo., Sept. 25, 2013).
`
`Dec. 3. Petitioners’ original email message to the Board requesting
`
`guidance on filing the later-obtained attesting affidavits is dated October 29,
`
`2014 (Req. Reh’g, Ex. A), more than a year after service of the complaint in
`
`that civil action. Thus, following the procedure requested by Petitioners
`
`would result in a filing date that bars institution of inter partes reviews under
`
`35 U.S.C. § 315(b).
`
`Petitioners direct our attention to the Board’s grant of authorization to
`
`file supplemental evidence in Toyota Motor Corp. v. American Vehicular
`
`Sciences LLC, Case No. IPR2013-00415 (PTAB Dec. 5, 2013) (Paper 14).
`
`Req. Reh’g 6–8. We disagree with Petitioners’ assertion that the
`
`4
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`circumstances presented in that proceeding are “closely analogous” to those
`
`in these proceedings. See id. at 6. In Toyota, a Japanese reference was filed
`
`with an English translation and a certification of the translation that included
`
`certain defects. Id. The distinction between correction of an already filed,
`
`but defective, attesting affidavit and an attempt to file a new later-obtained
`
`attesting affidavit is fundamental. The rule, 37 C.F.R. § 42.63(b), is
`
`unequivocal and requires in this case that a certification of the translation
`
`“must be filed with” the Petition. A certification acquired for the first time
`
`after the Petition is filed does not comply with the requirements of 37 C.F.R.
`
`§ 42.63(b).
`
`
`
`III. REGULATIONS FOR CORRECTION OF CLERICAL OR
`TYPOGRAPHICAL MISTAKES
`
`As Petitioners note, during the conference call held on November 3,
`
`2014, we guided the parties to the provisions of 37 C.F.R. § 42.104(c),
`
`which allow correction of “a clerical or typographical mistake in the
`
`petition” without changing the filing date of the Petition, and authorized
`
`briefing by the parties. Req. Reh’g 3. After consideration of the parties’
`
`respective positions, we determined that Petitioners had not established that
`
`the facts supported a finding that the failure to include attesting affidavits
`
`resulted from a “clerical mistake.” Dec. 3–7.
`
`Petitioners now contend that the curative provisions of § 42.104(c)
`
`should extend to a “mistake of fact,” and that the facts support a finding that
`
`5
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`the failure to include attesting affidavits resulted from a “mistake of fact.”
`
`Req. Reh’g 11–12. Petitioners argue that our reliance on the analysis in
`
`Ford Motor Co. v. U.S., 157 F.3d 849 (Fed. Cir. 1998), was misplaced
`
`because the statute at issue in that case recited “clerical error” and “mistake
`
`of fact” as alternatives. Id. 10–11. Petitioners reason that, because the
`
`interpretation of “clerical error” by the Federal Circuit considered a
`
`distinction between the recited alternatives, our interpretation of “clerical
`
`mistake” is too narrow by excluding mistakes of fact. Id. 11–12.
`
`We are not persuaded by this reasoning, which implicitly assumes that
`
`the factual bases supporting the curative provisions of our rules are meant to
`
`be coextensive with those supporting the curative provisions of the statute at
`
`issue in Ford. Petitioners provide no support for this assumption. We
`
`decline to extend the basis for curing mistakes beyond what 37 C.F.R.
`
`§ 42.104(c) explicitly authorizes.
`
`
`
`IV. DISCRETION
`
`Petitioners correctly observe that the Board has discretion, under 37
`
`C.F.R. § 42.5(b), to waive any requirement of 37 C.F.R. Part 42, which
`
`includes the requirement in § 42.63(b) to include attesting affidavits with
`
`translations of foreign-language documents. Req. Reh’g 13. Petitioners
`
`additionally observe that 37 C.F.R. § 42.5(c)(3) provides that “[a] late action
`
`will be excused on a showing of good cause or upon a Board decision that
`
`consideration on the merits would be in the interests of justice.” Id. at 14.
`
`6
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`
`Petitioners’ reliance on § 42.5(c)(3) is tenuous because the excuse of a
`
`“late action” is addressed in terms of “times.” The defect with Petitioners’
`
`Japanese documents is not that the filing of the references and translations
`
`were untimely, but that, in the absence of supporting affidavits, the
`
`translations were incomplete when filed. Although Petitioner may be
`
`permitted to file the attesting affidavits late, that does not entitle Petitioner to
`
`retain the filing date associated with the original incomplete references.
`
`Thus, in this case, it is not the inability to file attesting affidavits late that
`
`precludes Petitioner, but the fact that complete translations with attesting
`
`affidavits were not obtained and filed prior to the date on which institution
`
`of inter partes review was barred under 35 U.S.C. § 315(b).
`
` We are mindful of the impact of our decision. Nevertheless, we are
`
`not persuaded that waiving the requirement of § 42.63(b) would be a prudent
`
`exercise of our discretion under these facts.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioners’ Requests for Rehearing are denied.
`
`
`
`
`
`
`
`7
`
`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`IPR2014-01123 (Patent 7,312,970 B2)
`
`PETITIONER
`
`Steven Meyer
`ptopatentcommunication@lockelord.com
`
`Charles Baker
`cbaker@lockelord.com
`
`
`PATENT OWNER
`
`Scott Brown
`jcrawford@hoveywilliams.com
`
`Matthew Walters
`mwalters@hoveywilliams.com
`
`
`
`
`
`
`
`
`8
`
`
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