UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.
`Petitioner
`
`NIDEC MOTOR CORPORATION
`
`Patent Owner
`
`Case IPR2014—01 121
`
`Patent 7,626,349
`
`PETITIONER’S MOTION TO SUBMIT A CORRECTED
`
`EXHIBIT AND MAINTAIN FILING DATE
`
`PURSUANT TO 37 C.F.R. §42.104(c)
`
`NY 7"/'6545v.!
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.
`Petitioner
`
`NIDEC MOTOR CORPORATION
`
`Patent Owner
`
`Case IPR2014—01 121
`
`Patent 7,626,349
`
`PETITIONER’S MOTION TO SUBMIT A CORRECTED
`
`EXHIBIT AND MAINTAIN FILING DATE
`
`PURSUANT TO 37 C.F.R. §42.104(c)
`
`NY 7"/'6545v.!
`
`
`
`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner moves to (1) submit a corrected Exhibit 1005 (an English
`
`translation of Japanese Patent Publication JP 2003348885 which includes an
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`affidavit attesting to the accuracy of the English translation and is provided
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`herewith);
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`(2) expunge the version of Exhibit 1005 currently on file; and
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`(3) maintain the July 3, 2014 filing date.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On September 25, 2013, Patent Owner Nidec Motor Corporation filed
`
`the patent infringement suit, Nidec Motor Corporation 12. Broad Ocean Motor LLC
`
`er a[., Civil Action No. 4:13—CV—0l895—JCH (E.D. M0.) (the “Litigation”) which
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`asserted US. Patent No. 7,626,349 (EX. 1001) against Petitioner.
`
`2.
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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
`
`translation thereofi 3 Ex. 1012, Rees Declaration at 115.
`
`3.
`
`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 Nathan J. Rees
`
`(Reg.
`
`No. 63,820) as Lead Counsel and Daniel A. Prati (Reg. No. 65,869) as Back—Up
`
`Counsel. fie Paper No. 1 at p. 2.
`
`4.
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`Along with its petition, Petitioner submitted Exhibit 1003 (JP 2003-
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`348885 in Japanese), Exhibit 1004 (an English Abstract of JP 2003-34885), and
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`NY 776545v.l
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`1
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`
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`Exhibit 1005 (an English translation of JP 2003648885). Then Lead Counsel
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`Rees intended to file an attesting affidavit with the translation. Ex. 1012, Rees
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`Decl. at 116. The failure to do so was unintentional and inadvertent. Ex. 1012,
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`Rees Decl. at 1114.
`
`5.
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`The English language translation of JP 2003 -348885 was obtained by
`
`Petitioner’s litigation counsel Charles S. Baker in furtherance of Petitioner’s
`
`defense of the Litigation. Because the English translation of JP 2003-348 885 was
`
`obtained for use in the Litigation,
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`then Lead Counsel Rees assumed that an
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`affidavit attesting to the accuracy of the translation had been obtained from the
`
`translator at the time of translation and had been included as part of Exhibit 1005.
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`E Ex. 1012, Rees Decl. at $16.
`
`6.
`
`On July 25, 2014, the Patent Office issued the Notice Of Filing Date
`
`Accorded To Petition which identified, as a defect, that the Exhibits lacked a label
`
`with the petitioner’s name and exhibit number. flee Paper No. 4 at p. 2.
`
`7.
`
`I On July 28, 2014, Petitioner filed its Response To Notice Of Filing
`
`Date Accorded To Petition, and therein noted tha
`
`“the first page of each
`
`[corrected] Exhibit has been labeled with the Petitioner’s name and Exhibit number
`
`in accordance With the Notice.” E Paper No. 6 at p. 2.
`
`8.
`
`During the course of placing the label on the first page of
`
`Exhibit 1005, then Lead Counsel Rees did not notice that an affidavit attesting to
`
`NY 776545v.1
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`2
`
`
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`the accuracy of the English translation of JP 2003 -3 488 85 was not included as the
`
`last page of Exhibit 1005.
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`_S,_e5_: EX. 1012, Rees Decl. at W10-11. This oversight
`
`Was also unintentional and inadvertent.
`
`fie-,e_ Ex. 1012, Rees Decl. at 1114.
`
`9.
`
`On July 31, 2014, the Patent Office accepted the corrected petition
`
`filed on July 28, 2014. §e_e_ Paper No. 8.
`
`10.
`
`On October 3, 2014, Petitioner moved to have Messrs. Reesand Prati
`
`of Fulbright & Jaworski L.L.P. withdrawn as its counsel in this proceeding. E
`
`Paper No. 9. Petitioner is now represented in this proceeding by Steven F. Meyer
`
`(Reg. No. 36,513) and Charles S. Baker (pro hac vice) of Locke Lord LLP as lead
`
`counsel and back-up counsel, respectively.
`
`§_e_e_: Paper No. 15. Messrs. Rees and
`
`Prati are not associated with Locke Lord LLP. §e_e EX. 1012, Rees Decl. at 112.
`
`11.
`
`In its Preliminary Response filed on October 24, 2014, the Patent
`
`Owner argued that Exhibit 1005 did not satisfy the requirements of 37 C.F.R.
`
`§42.63(b) because there was no attesting affidavit accompanying the English
`
`translation of JP 2003—348885.
`
`12. Unable to locate an attesting affidavit, replacement Lead Counsel
`
`Meyer arranged to obtain the attached affidavit from the translator who prepared
`
`the English translation of JP 2003~348885 that was filed with the original petition
`
`on July 3, 2014 as Exhibit 1005.
`
`NY 776545v.1
`
`3
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`
`
`III. DISCUSSION
`
`Section 42.104(c) permits the correction of clerical errors Without changing
`
`the filing date of the petition. E 37 C.F.R. §42.104(c). Because 37 C.F.R.
`
`§42.104(c)
`
`is remedial
`
`in nature,
`
`it
`
`is entitled to a “liberal
`
`interpretation”.
`
`Syntroleum Corp. v. Neste Oil Oyj, 1PR2013—00178, Paper No.21 (Decision --
`
`Motion to Correct Petition) at p. 4. For instance,
`
`in Arthrex, Inc. v. Bonutti
`
`Skeletal Innovations, LLC, IPR2013—0063 1, Paper No. 15 (Decision), the petitioner
`
`was allowed to correct its petition by filing two originally omitted foreign language
`
`patents, which is a more substantive omission than that presented here.
`
`Petitioner
`
`submits
`
`that
`
`the omission of an attesting affidavit
`
`from
`
`Exhibit 1005 as originally filed on July 3, 2014 was a clerical error that
`correctable under 37 C.F.R. §42.104(c).
`The error arose when counsel
`
`is
`for
`
`Petitioner believed that an attesting affidavit had been obtained for evidentiary
`
`purposes in the Litigation and had been included at the end of Exhibit 1005. gee
`
`Ex. 1012, Rees Decl. at 116. Counsel for Petitioner at that time was unaware that no
`
`such attesting affidavit had been included with Exhibit 1005. E Ex. 1012, Rees
`
`Decl. at 1114.
`
`This clerical error was not noticed when a corrected version of Exhibit 1005
`
`was filed on July 28, 2014. E EX. 1012, Rees Decl. at 1110-11. The correction
`
`to Exhibit 1005 was limited to placing a label with the Petitioner’s name and
`
`NY 776545v.1
`
`4
`
`
`
`Exhibit numberion the first page of Exhibit 1005. E Paper No. 6 at p. 2. There
`
`was no separate, independent review of the entirety of Exhibit 1005 undertaken at
`that time. Exhibit 1005 was merely refiled with a new label on its first page.
`
`This clerical error had no effect on Patent OWner’s ability to file a
`
`Preliminary Response, which it did on October 24, 2014. Q. 77 Fed. Reg. 48680,
`
`48699 (Aug. 14, 2012). Patent Owner has not been prejudiced by the omission of
`
`an attesting affidavit. The substance of the English translation is not being
`
`corrected in any Way nor has Patent Owner alleged that the English translation
`
`submitted by Exhibit 1005 is inaccurate. Because Exhibit 1003 presented JP 2003-
`
`348885 itself (in Japanese), Patent Owner could have obtained its own English
`
`translation which would be necessary in order to identify any alleged error in
`
`Petitioner’s translation. In the event that a trial is instituted, Patent Owner can then
`
`object to the admissibility of the English translation for unreliability on the basis of
`
`any alleged errors in the transiation. E 37 C.F .R. §42.64(b)(1).
`
`IV.
`
`CONCLUSION
`
`Petitioner requests that its Motion To Submit A Corrected Exhibit And
`
`Maintain Filing Date Pursuant To 37 C.F.R. §42.104(c) be granted.
`
`Dated: November 10, 2014
`
`Respectfully submitted,
`
`/ Steven F. Meyer /
`Steven F. Meyer (Reg. No. 35,613)
`Counsel for Petitioner
`
`NY 776545v.l
`
`5
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`
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`ATTACHMENT TO MOTION
`
`AFFIDAVIT ATTESTING TO ACCURACY
`OF THE ENGLISH TRANSLATION OF
`
`JP 2003648885
`
`NY 77654-5v.I
`
`
`
`It
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`If
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`
`
`Verification
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`I, Nam Z/7/61’!/\
`
`, being fluent in both the Japanese and English languages,"
`
`hereby certify under penalty of perjury under the laws of the United States that
`
`JP2003~348885,. and
`Japanese Unexamined Patent Application Publication No.
`the atfached English language translation thereof, are accurate and conqfilete
`
`renditions of each other, understand1'ng that willful false statelncnts and the like are
`
`punishable by fine or imprisonment, or both (18 U.S.C. §1001).
`
`L73?’
`
`ex?
`
`\*cl'
`
`Signature
`
`.
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`Executed this.
`
`38
`
`dayof
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`05$.
`
`M, 2014,
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e) and 37 C.F.R. §42.lO5(b), the undersigned
`hereby certifies that on November 10, 2014, a complete and entire copy of the
`foregoing Petitioner’s Motion To Submit A Corrected Exhibit And Maintain Filing
`Date Pursuant To
`37 CPR.
`§42.104(c)
`and attached Declaration were
`electronically served in their entirety on the Patent Owner of record (as agreed
`upon by counsel) at sbroWn@hoveywilIiams.com, mwalters@hoveywilliams.coin,
`and 1itigation@hoveywilliams.com.
`
`the undersigned certifies that on November 10, 2014, a
`Additionally,
`complete and entire copy of the foregoing Petitioner's Motion To Submit A
`Corrected Exhibit And Maintain Filing Date Pursuant To 37 C.F.R. §42.104(c) and
`attached Declaration were electronically served on the Patent Owner’s below-listed
`counsel
`of
`record
`at
`jschwent@thompsoncoburn.com,
`djinkir1s@
`tl1OII1pSOI1C0lI)1.1l'I1.COII1,
`and syoo@thompsoncoburn.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. M0,), as agreed upon by the parties.
`
`Dated: November 10, 2014
`
`/ Steven F. Meyer /
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`
`Three World Financial Center
`
`New York, New York 10281-2101
`(212) 415-8535
`sn1eyer@1ockelord.com
`
`Attorneys for Petitioner Zhongshan
`Broad Ocean Motor Co., Ltd. ;
`
`Broad Ocean Motor LLC; and
`
`Broad Ocean Technologies, LLC
`
`NY 776545v.1
`
`
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