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