UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
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`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.
`Petitioner
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`v.
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`NIDEC MOTOR CORPORATION
`Patent Owner
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`___________________________
`
`Case IPR2014-01121
`Patent 7,626,349
`___________________________
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`
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`DECLARATION OF NATHAN J. REES IN SUPPORT OF
`PETITIONER’S MOTION TO SUBMIT A CORRECTED
`EXHIBIT AND MAINTAIN FILING DATE
`PURSUANT TO 37 C.F.R. §42.104(c)
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`NY 776584v.1
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`IPR2014-01121 - Ex. 1012
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`Zhongshan Broad Ocean Motor Co., Ltd., Petitioner
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`Nidec Motor Corporation, Patent Owner
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`1
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`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
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`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.
`Petitioner
`
`
`v.
`
`
`
`NIDEC MOTOR CORPORATION
`Patent Owner
`
`___________________________
`
`Case IPR2014-01121
`Patent 7,626,349
`___________________________
`
`
`
`DECLARATION OF NATHAN J. REES IN SUPPORT OF
`PETITIONER’S MOTION TO SUBMIT A CORRECTED
`EXHIBIT AND MAINTAIN FILING DATE
`PURSUANT TO 37 C.F.R. §42.104(c)
`
`
`
`
`
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`
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`NY 776584v.1
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`IPR2014-01121 - Ex. 1012
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`
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`Zhongshan Broad Ocean Motor Co., Ltd., Petitioner
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`Nidec Motor Corporation, Patent Owner
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`1
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`1, Nathan J. Rees, declare as follows:
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`1.
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`I graduated from Franklin Pierce Law Center with a Juris Doctorate
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`degree (cum laude) in 2007.
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`2.
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`I joined Fulbright& Jaworski LLP in 2007 and am now a senior
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`associate with Fulbright & Jaworski LLP.
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`3.
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`I am admitted to practice before the United States Patent and
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`Trademark Office and my registration no. is 63,820.
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`4.
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`I am aware that on September 25, 2013, Nidec Motor Corporation
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`filed the patent infringement suit, Nidec Motor Corporation v. Broad Ocean Motor
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`LLC, et al., Civil Action No. 4:13-CV-01895-JCH (E.D. M0.) (the “Litigation”)
`
`which asserted U.S. Patent No. 7,626,349 against Broad Ocean Motor LLC, et al.
`
`(“the Petitioner”). Charles S. Baker, then a partner at Fulbright & Jaworski LLP,
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`was retained by the Petitioner to defend it against the Litigation.
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`5.
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`As part of developing its defenses against the Litigation, Petitioner
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`identified Japanese Patent Publication JP 2003—348885 and obtained an English
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`translation thereof.
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`6.
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`The English language translation of JP 2003—348885 was obtained by
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`Petitioner’s litigation counsel Charles S. Baker in furtherance of Petitioner’s
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`defense of the Litigation. Because the English translation of JP 2003—348885 was
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`obtained for use in the Litigation,
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`I assumed that an affidavit attesting to the
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`NY 776584v.l
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`- 1 -
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`2
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`
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`accuracy of the translation had been obtained from the translator at the time of the
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`translation for evidentiary purposes and had been included as part of Exhibit 1005.
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`7.
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`On July 3, 2014, Petitioner filed a petition for inter partes review of
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`U.S. Patent No. 7,626,349. The Petition identified me
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`as Lead Counsel and
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`Daniel A. Prati (Reg. No. 65,869) as Back—Up Counsel. S3 Paper No. 1 at p. 2.
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`8.
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`Along with the petition, we submitted Exhibit 1003 (JP 2003-348885
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`in Japanese), Exhibit 1004 (an English Abstract of JP 2003-34885),
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`and
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`Exhibit 1005 (an English translation of JP 2003—348885).
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`9.
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`On July 25, 2014, the Patent Office issued the Notice Of Filing Date
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`Accorded To Petition which identified, as a defect, that the Exhibits lacked a label
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`with the petitioner’s name and exhibit number. E Paper No. 4 at p. 2.
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`10. On July 28, 2014, we filed the Response To Notice Of Filing Date
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`Accorded To Petition, and therein noted that “the first page of each [corrected]
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`Exhibit has been labeled with the Petitioner’s name and Exhibit number in
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`accordance with the Notice.” gag Paper No. 6 at p. 2.
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`11. During the course of placing the label on the first page of
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`Exhibit 1005, nobody noticed that an affidavit attesting to the accuracy of the
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`English translation of JP 2003—348885 was not
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`included as the last page of
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`Exhibit 1005.
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`NY 776584v.l
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`- 2 ~
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`3
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`12. On July 31, 2014, the Patent Office accepted the corrected petition
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`filed on July 28, 2014. E Paper No. 8.
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`13. On October 3, 2014, Petitioner moved to have me and Mr. Prati of
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`Fulbright& Jaworski L.L.P. withdrawn as its counsel
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`in this proceeding.
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`S_eg
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`Paper No. 9.
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`14. At no point in time did I
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`intend to file the English translation of
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`JP 2003-348885 without an affidavit of attestation.
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`It was an unintended and
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`inadvertent oversight.
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`15.
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`I hereby declare that all
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`statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with the knowledge
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`that willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States Code
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`and that such willful false statements may jeopardize the validity of U.S. Patent
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`No. 7,626,349.
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`Dated: November 10, 2014
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`V
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`H
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`Respectful]
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`'
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`Nathan J . Rees
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`Fulbright & Jaworski LLP
`Registration No. 63,820
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`NY 776534»/.1
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`— 3 -
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §42.6(e) and 37 C.F.R. §42.105(b), the undersigned
`hereby certifies that on November 10, 2014, a complete and entire copy of the
`foregoing DECLARATION OF NATHAN J. REES IN SUPPORT OF
`PETITIONER’S MOTION TO SUBMIT A CORRECTED EXHIBIT AND
`MAINTAIN FILING DATE UNDER 37 C.F.R. §42.l04(c) was electronically
`served in its entirety on the Patent Owner of record (as agreed upon by counsel) at
`sbrown@hoveywilliams.com, mwalters@hoveywilliams.com,
`and litigation@
`hoveywilliams.com.
`
`the undersigned certifies that on November 10, 2014, a
`Additionally,
`complete and entire copy of the foregoing DECLARATION OF NATHAN J.
`REES IN SUPPORT OF PETITIONER’S MOTION TO SUBMIT A
`
`CORRECTED EXHIBIT AND MAINTAIN FILING DATE UNDER 37 C.F.R.
`§42.104(c) was electronically served on the Patent Owner’s below-listed counsel
`of record at jschwent@thompsoncobum.com, djinkins@thompsoncobum.com, and
`syoo@thompsoncobum.com,
`in
`the
`co-pending
`litigation Nidec Motor
`Corporation
`v. Broad Ocean Motor
`(LLC
`et
`al.,
`Civil
`Action
`No. 4:13-CV-01895-JCH (E.D. Mo.), as agreed upon by the parties.
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`Dated: November 10, 2014
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`/ Steven F. Me)_2er/
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`
`Three World Financial Center
`
`New York, New York 10281-2101
`(212) 415-8535
`smeyer@lockelord.com
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`Attorneys for Petitioner Zhongshan
`Broad Ocean Motor Co., Ltd. ,-
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`Broad Ocean Motor LLC; and
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`Broad Ocean Technologies, LLC
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`NY 776584v.l
`
`5
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