Trials@uspto.gov
`571-272-7822
`
`Paper 67
`Entered: October 5, 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,
`Petitioner,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00762
`Patent 7,626,349 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES,
`BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge
`JAMES A. TARTAL.
`
`
`Opinion Dissenting filed by Administrative Patent Judge
`PATRICK M. BOUCHER, in which Administrative Patent Judge
`BENJAMIN D. M. WOOD joins.
`
`TARTAL, Administrative Patent Judge
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing,
`Instituting Inter Partes Review, and Granting Motion for Joinder
`37 C.F.R. §§ 42.71, 42.108, and 42.122(b)
`
`
`571-272-7822
`
`Paper 67
`Entered: October 5, 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,
`Petitioner,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00762
`Patent 7,626,349 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES,
`BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge
`JAMES A. TARTAL.
`
`
`Opinion Dissenting filed by Administrative Patent Judge
`PATRICK M. BOUCHER, in which Administrative Patent Judge
`BENJAMIN D. M. WOOD joins.
`
`TARTAL, Administrative Patent Judge
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing,
`Instituting Inter Partes Review, and Granting Motion for Joinder
`37 C.F.R. §§ 42.71, 42.108, and 42.122(b)
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`
`Zhongshan Broad Ocean Motor Co., Ltd., Broad Ocean Motor LLC,
`and Broad Ocean Technologies, LLC, (“Petitioner”) requests rehearing
`(Paper 13, “Req. Reh’g”) of our Decision Denying Institution of Inter Partes
`Review (Paper 12, “Decision Denying Institution”) based on a determination
`that 35 U.S.C. § 315(c) precludes joinder under the circumstances and that
`the Petition is otherwise time barred under 35 U.S.C. § 315(b). Patent
`Owner, Nidec Motor Corporation, filed an authorized Opposition (Paper 14,
`“PO Opp.”), to which Petitioner filed an authorized Reply (Paper 15, “Pet.
`Reply”). For the reasons discussed below, we conclude the Decision
`Denying Institution was based on an erroneously narrow interpretation of
`§ 315(c) and, therefore, grant the Request for Rehearing. We further
`institute inter partes review, and grant the motion for joinder with
`Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2014-
`01121 (“IPR2014-01121”).1
`
`I.
`
`BACKGROUND
`
`On February 20, 2015, Petitioner filed a Petition (Paper 3, “Pet.”)
`pursuant to 35 U.S.C. § 311–319 to institute an inter partes review of claims
`1–3, 8, 9, 12, 16, and 19 (“the challenged claims”) of U.S. Patent
`No. 7,626,349 B2 (“the ’349 patent”). Concurrent with the Petition,
`Petitioner filed a motion to join this proceeding with IPR2014-01121, which
`was instituted on January 21, 2015. Paper 4 (“Joinder Mot.”); IPR2014-
`01121, Paper 20. Petitioner’s Joinder Motion was filed no later than one
`month after institution of the trial in IPR2014-01121, which is timely in
`
`
`1 The Acting Chief Judge, acting on behalf of the Director, has designated an
`expanded panel in this proceeding as provided for in 35 U.S.C. § 6(c).
`2
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`accordance with 37 C.F.R. § 42.122(b). Patent Owner filed a Preliminary
`Response (Paper 10, “Prelim. Resp.”) to the Petition on April 21, 2015.
`Pursuant to our authorization, Petitioner filed a Reply (Paper 11) on April
`28, 2015, limited to addressing the joinder issues. In our Decision Denying
`Institution, we determined that Petitioner established a reasonable likelihood
`of prevailing in showing the challenged claims as anticipated by Hideji,2 but
`denied institution under 35 U.S.C. § 315(b). Paper 12, 7–15.
`
`II. ANALYSIS
`
`A. Request for Rehearing
`When rehearing a decision on petition, the Board reviews the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
`occurs, inter alia, when a “decision . . . [was] based on an erroneous
`conclusion of law.” Stevens v. Tamai, 366 F.3d 1325, 1330 (Fed. Cir. 2004).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`Petitioner contends that “the Board abused its discretion in declining
`to adopt the broader interpretation of the phrase ‘join as a party’ in 35 U.S.C.
`§ 315(c), as set forth in Target [Corp. v. Destiny Maternity Corp., Case
`IPR2014-00508 (PTAB Feb. 12, 2015) (Paper 28)].” Req. Reh’g 3.
`Petitioner further asserts that “the Board has frequently granted joinder of an
`additional petition or proceeding (as opposed to an additional person) to an
`instituted inter partes review.” Id. at 4 (citing Ariosa Diagnostics v. Isis
`Innovation Ltd., Case IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 66);
`
`
`2 JP 2003-348885, published December 5, 2003 (Ex. 1003, “Hideji”).
`Petitioner provided an attested English translation of Hideji as Exhibit 1005.
`3
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`Samsung Elecs. Co. v. Virginia Innovation Scis., Inc., Case IPR2014-00557
`(PTAB June 13, 2014) (Paper 10); Microsoft Corp. v. Proxyconn, Inc., Case
`IPR2013-00109 (PTAB Feb. 25, 2013) (Paper 15); ABB Inc. v. Roy-G-Biv
`Corp., Case IPR2013-00288 (PTAB Aug. 9, 2013) (Paper 14); Sony Corp. v.
`Yissum Research Dev. Co., Case IPR2013-00327 (PTAB Sept. 24, 2013)
`(Paper 15)). Petitioner also states that in an Intervenor Brief, the Office
`argued to the Federal Circuit that “the Board has consistently held [that] it
`. . . has the discretion to join IPR proceedings, even if § 315(b) would
`otherwise bar the later-filed petition, and even if the petitions are filed by
`the same party.” Id. at 2 (quoting Brief for Intervenor – Director of the
`United States Patent and Trademark Office, Yissum Research Dev. Corp. v.
`Sony Corp., Appeal No. 2015-1342, Req. Reh’g, Attachment A, 18).3
`Patent Owner argues that the Board’s decision in this case “was not an
`abuse of discretion, but at most reflects a ‘reasonable difference of opinion’
`amongst judges on the Board.” PO Opp. 6. Patent Owner further states that
`the Board’s decision in Target is not precedential, and that the Intervenor’s
`Brief in Yissum “should not be construed as somehow limiting the discretion
`of judges on the Board.” Id. at 2–3.
`
`
`
`
`3 The parties are reminded that separate documents must be filed as
`numbered exhibits, rather than as “attachments” to a paper. See 37 C.F.R.
`§ 42.63.
`
`4
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`
`Section 315(c) provides:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`
`Upon consideration of the arguments asserted by Petitioner and Patent
`Owner, and for the reasons explained by several majority opinions in prior
`decisions of the Board, we conclude that § 315(c) permits the joinder of any
`person who properly files a petition under § 311, including a petitioner who
`is already a party to the earlier instituted inter partes review. See Target
`Corp. v. Destination Maternity Corp., Case IPR2014-00508 (PTAB Feb. 12,
`2015) (Paper 28); see also Medtronic Inc. v. Troy R. Norred, M.D., Case
`IPR2014-00823 (PTAB December 8, 2014) (Paper 12). We also conclude
`that § 315(c) encompasses both party joinder and issue joinder, and, as such,
`permits joinder of issues, including new grounds of unpatentability,
`presented in the petition that accompanies the request for joinder. See id.
`We determine Petitioner properly filed a petition under § 311, including an
`affidavit attesting to the accuracy of the English translation of Hideji.
`For the foregoing reasons, we conclude that the Decision Denying
`Institution was based on an improper construction of § 315(c), and thus, the
`denial of joinder constituted an abuse of discretion. Accordingly,
`Petitioner’s Request for Rehearing is granted.
`
`5
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`
`B. Institution of Inter Partes Review
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” Upon consideration of the Petition and the
`Preliminary Response, we hereby adopt and incorporate the analysis set
`forth in the Decision Denying Institution from page three (3), line one (1), to
`page eleven (11), line nine (9). We conclude that Petitioner has established
`a reasonable likelihood of prevailing on the challenge to claims 1–3, 8, 9, 12,
`16, and 19 as anticipated by Hideji. This is not a final decision as to
`patentability of claims for which inter partes review is instituted. Our final
`decision will be based on the record, as fully developed during trial.
`
`C. Motion for Joinder
`Petitioner seeks to join this proceeding to IPR014-01121. Joinder
`Mot. 4. Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
`Board will determine whether to grant joinder on a case-by-case basis,
`taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations. See 157 CONG. REC. S1376
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
`and when to allow joinder, the Office may consider factors including “the
`breadth or unusualness of the claim scope” and claim construction issues).
`When exercising its discretion, the Board is mindful that patent trial
`regulations, including the rules for joinder, must be construed to secure the
`
`6
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`§ 316(b); 37 C.F.R. § 42.1(b).
`Patent Owner argues that joinder should be denied due to the
`prejudice to Patent Owner in light of (1) the scheduling of oral argument in
`IPR2014-01121 for October 16, 2015; (2) Patent Owner’s substantial time
`and effort expended in developing a case of non-obviousness in response to
`the grounds instituted in IPR2014-01121; and, (3) Patent Owner’s potential
`need to file a motion to amend upon institution of additional grounds of
`alleged unpatentability. PO Opp. 1–2. Patent Owner also argues that
`equitable considerations weigh against joinder because, among other
`reasons, the Petition involves “an attempt to correct a fatal misstep entirely
`attributable to a petitioner after the expiration of the 315(b) bar.” Id. at 9.
`The Petition presents only one ground of unpatentability, alleging that
`claims 1–3, 8, 9, 12, 16, and 19 of the ’349 patent are anticipated by Hideji
`under 35 U.S.C. § 102(b). Pet. 5. Although the same ground was asserted
`by Petitioner in IPR2014-01121, institution was denied in the earlier
`proceeding, not on the merits, but because Petitioner failed to include an
`attesting affidavit with the English translation of Hideji, counter to the
`requirement set forth in 37 C.F.R. § 42.63(b). See Zhongshan Broad Ocean
`Motor Co., Ltd. v. Nidec Motor Corp., Case IPR2014-01121 (PTAB Jan. 21,
`2015) (Paper 20). In the institution decision in IPR2014-01121, the Board
`denied Petitioner’s motion to submit corrected exhibits to include an
`attesting affidavit to Hideji because Petitioner did not demonstrate that the
`failure to include the required affidavit was a clerical mistake that could be
`remedied in accordance with 37 C.F.R. § 42.104(c). Id. at 9–12.
`
`7
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`
`The public interest in securing the just, speedy, and inexpensive
`resolution of every proceeding would be served in this case more fully by
`considering the merits of the asserted ground of unpatentability based on
`Hideji rather than by denying consideration for reasons tied to Petitioner’s
`previous failure to submit the requisite attesting affidavit. With respect to
`the impact of joinder on the trial schedule, Petitioner states that it will accept
`a reduced period of time to reply to Patent Owner’s response to the Petition,
`and will accommodate reasonable logistical and scheduling requests by
`Patent Owner to accommodate joinder of the proceedings. Joinder Mot. 10.
`Although Patent Owner is correct that Petitioner has unsuccessfully
`pursued multiple approaches to resolve the deficiency in its Petition in
`IPR2014-01121, Petitioner is not attempting to cure a deficiency of the
`merits of a ground asserted in the prior Petition by filing a second Petition.
`Thus, contrary to Patent Owner’s assertion, this case is not similar to a case
`in which a petitioner seeks to introduce additional grounds based on
`additional prior art through a second petition. Patent Owner has been aware
`of the ground of unpatentability based on Hideji asserted in the Petition in
`this proceeding since a petition was filed in IPR2014-01121 on July 3, 2014.
`The Petition also relies upon the same declaration provided by Dr. Mark
`Ehsani in IPR2014-01121 (Ex. 1009). Further, upon joinder, the schedule in
`IPR2014-01121, including the date of oral argument, may be modified as
`necessary. 35 U.S.C. § 316(a)(11). Finally, the fact that Patent Owner has
`developed arguments related to other instituted and pending grounds of
`unpatentability, or may seek to amend the claims, does not constitute
`prejudice which weighs against joinder. Patent Owner will have the
`
`8
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`opportunity to file a motion to amend in the joined proceeding, should it
`choose to do so. For the foregoing reasons, we grant Petitioner’s Motion for
`Joinder.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is granted;
`FURTHER ORDERED that inter partes review is instituted in
`IPR2015-00762 with respect to the following ground of unpatentability:
`claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji under 35
`U.S.C. § 102(b);
`FURTHER ORDERED that no ground other than the one specifically
`instituted above is authorized for the inter partes review;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’349 patent is hereby instituted in IPR2015-00762
`commencing on the entry date of this Order, and pursuant to 35 U.S.C.
`§ 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a
`trial;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2014-01121 is granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-01121;
`FURTHER ORDERED that the ground of unpatentability on which
`trial was instituted in IPR2014-01121 is unchanged, and trial will proceed in
`the joined proceeding on that ground in addition to the ground instituted
`herein;
`
`9
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`
`FURTHER ORDERED that the parties will file all papers in
`IPR2014-01121, and that IPR2015-00762 is hereby terminated under 37
`C.F.R. § 42.72;
`FURTHER ORDERED that the case caption in IPR2014-01121 shall
`be changed to reflect the joinder with this proceeding in accordance with the
`attached example;
`FURTHER ORDERED that a conference call will be held on
`October 9, 2015, at 11:00 A.M. EDT, to discuss an expedited schedule for
`the joined proceeding; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the file of IPR2014-01121.
`
`
`
`
`10
`
`
`
`
`
`
`Opinion Dissenting filed by Administrative Patent Judge
`PATRICK M. BOUCHER, in which Administrative Patent Judge
`BENJAMIN D. M. WOOD joins.
`
`
`As in Target Corp. v. Destination Maternity Corp., Case IPR2014-
`00508 (PTAB Feb. 12, 2015) (Paper 28) (expanded panel), the Board uses
`an expanded panel on rehearing to arrogate power beyond that granted by
`Congress. Because the majority’s determination that 35 U.S.C. §§ 315(b)
`and 315(c) provide discretion to join time-barred issues to an inter partes
`review proceeding is ultra vires, I respectfully dissent.
`The cogent analysis of the Target dissent explains in detail why
`neither the plain language of §§ 315(b) and 315(c), nor their legislative
`history, supports the statutory construction applied by the majority. See
`Target, Dissent slip op. at 2–5 (Fitzpatrick, APJ, dissenting). Ultimately, the
`majority’s position is misplaced because it reads too much into § 315(c)’s
`use of the word “any.” The majority fails to consider the meaning of “any
`person” within the full context of other language in the statute—namely that
`“any person” is constrained by § 315(c) also to be one who can be “join[ed]
`as a party.” The majority also fails to provide a convincing explanation how
`reference to “any person” justifies so expansive a reading of the statute as to
`encompass the joinder of issues when the statute refers exclusively to the
`joinder of parties.1
`When Congress created inter partes review proceedings (“IPRs”), it
`was faced with balancing competing considerations—the desire to address
`
`
`1 See Target, Majority slip op. at 7 (“[T]he plain language of the statute . . .
`does not mention specifically the joinder of issues.”).
`
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`deficiencies in inter partes reexamination proceedings and the risk of
`creating avenues for harassment of patent owners:
`The Committee recognizes the importance of quiet title to
`patent owners to ensure continued investment resources. While
`this amendment is intended to remove current disincentives to
`current administrative processes, the changes made by it are not
`to be used as tools for harassment or a means to prevent market
`entry through repeated litigation and administrative attacks on
`the validity of a patent. Doing so would frustrate the purpose of
`the section as providing quick and cost effective alternatives to
`litigation.
`
`
`H.R. Rep. No. 112-98, pt.1, at 48 (2011). The one-year statutory bar of
`§ 315(b) limits the harassment potential of inter partes reviews by imposing
`a time restriction for action by those sued for infringement. Not only does
`the majority’s statutory construction of § 315(c) lack compelling support in
`the statute’s text or legislative history, it directly frustrates this
`Congressional objective of curtailing avenues for harassment by sanctioning
`“repeated . . . administrative attacks.”
`The specific facts underlying this proceeding illustrate the point. The
`instant Petition and Motion for Joinder have their origins in the denial of
`Petitioners’ challenge in IPR2014-01121 of claims 1–3, 8, 9, 12, 16, and 19
`as anticipated under 35 U.S.C. § 102(b) by Hideji. Paper 12, 13–14. That
`denial resulted from a finding by a unanimous panel, confirmed by a
`unanimous panel after a request for rehearing, that the petition in IPR2014-
`01121 was defective with respect to the Hideji challenge. Id. Petitioners
`secured evidence to correct the defect only after the one-year bar established
`by § 315(b) had become effective. Id. In exercising discretion that we do
`
`2
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`not possess, the majority endorses an end-run around a statutory bar that is
`contrary to Congressional intent and unsupported by the statute or its
`legislative history.
`
`Accordingly, I respectfully dissent.
`
`
`
`3
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`PETITIONER:
`Steven Meyer
`smeyer@lockelord.com
`
`Seth Atlas
`ptopatentcommunication@lockelord.com
`
`PATENT OWNER:
`
`Scott Brown
`sbrown@hoveywilliams.com
`
`Matthew Walters
`mwalters@hoveywilliams.com
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`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,
`Petitioner,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-011211
`Patent 7,626,349 B2
`____________
`
`
`1 Case IPR2015-00762 has been joined with this proceeding.
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