`571-272-7822
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`Paper 71
`Entered: December 10, 2015
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`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 IPR2014-011211
`Patent 7,626,349 B2
`
`____________
`
`
`
`
`
`Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.121
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`
`
`1 Case IPR2015-00762 has been joined with this proceeding.
`
`
`
`IPR2014-01121
`Patent 7,626,349 B2
`
`
`
`On December 10, 2015, a conference call was held with the parties,
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`initiated by Patent Owner to comply with the requirement of conferring with
`
`the Board prior to filing a Motion to Amend.
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`Entry of proposed substitute claims is not automatic, but only upon
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`Patent Owner demonstrating the patentability of each proposed substitute
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`claim. See 37 C.F.R. § 42.20(c). The Motion to Amend (1) may propose
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`substitute claims that only narrow, not broaden, the scope of a claim; (2)
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`may propose a reasonable number of substitute claims; and (3) should
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`respond to a ground of unpatentability in the trial. 37 C.F.R. § 42.121(a)(3).
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`Guidance regarding the mechanics and substance of motions to amend
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`appears in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027
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`(PTAB June 11, 2013) (Paper 26), as well as MasterImage 3D, Inc. v. RealD
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`Inc., IPR2015-00040 (PTAB July 15, 2015) (Paper 42). The latter paper
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`clarifies certain guidance provided in the former. We also directed the
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`parties to the Federal Circuit’s recent decision in Prolitec, Inc. v. Scentair
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`Techs., Inc., --- F.3d ---, 2015 WL 7873637 (Fed. Cir. 2015).
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`Patent Owner explained that it intends to file a conditional Motion to
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`Amend the three challenged independent claims of the subject patent. Patent
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`Owner further confirmed that such amendment will be responsive to the
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`Hideji ground added to this proceeding on October 5, 2015. Paper 67. In
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`light of Patent Owner’s intention to file a Motion to Amend, some
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`modification of the Supplemental Scheduling Order (Paper 70) may be
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`warranted. The parties will confer to discuss stipulation of an adjustment to
`
`2
`
`
`
`IPR2014-01121
`Patent 7,626,349 B2
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`
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`the schedule with respect to DUE DATES 3 and/or 4, as authorized by the
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`Supplemental Scheduling Order. Paper 70, 2.
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`The Motion to Amend should demonstrate that each proposed
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`substitute claim is supported by the written description of the application
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`upon which the substitute claims rely, and should address the patentability of
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`each proposed substitute claim over the prior art of record and the prior art
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`known to Patent Owner, accounting for the basic knowledge and skill
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`possessed by a person of ordinary skill in the art, even without reliance on
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`any particular prior-art reference. See 37 C.F.R. § 42.121(b). Although the
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`Motion to Amend should thus address the prior art involved in the
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`proceeding before the addition of the Hideji ground, the Motion to Amend is
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`not to be used as an opportunity to reargue positions as earlier developed
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`with respect to that prior art. Further, the Motion to Amend should include
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`claim constructions for any new term used in a proposed substitute claim
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`where the meaning of such terms reasonably can be anticipated to be
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`disputed. The plain and ordinary meaning of terms should be provided in
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`the Motion, together with the supporting evidence.
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`
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`It is
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`ORDERED that Patent Owner has satisfied the requirement of
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`conferring with the Board prior to filing a Motion to Amend under 37 C.F.R.
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`§ 42.121(a).
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`3
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`IPR2014-01121
`Patent 7,626,349 B2
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`
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`PETITIONER:
`
`Steven Meyer
`ptopatentcommunication@lockelord.com
`
`Charles Baker
`cbaker@lockelord.com
`
`Joseph Farco
`JFarco@lockelord.com
`
`
`
`PATENT OWNER:
`
`Scott Brown
`jcrawford@hoveywilliams.com
`
`Matthew Walters
`mwalters@hoveywilliams.com
`
`
`
`
`
`4