Filed on behalf of Nidec Motor Corporation
`By:
`Scott R. Brown
`Matthew B. Walters
`HOVEY WILLIAMS LLP
`10801 Mastin Blvd., Suite 1000
`Overland Park, Kansas 66210
`Tel: (913) 647-9050
`Fax: (913) 647-9057
`
`
`
`IPR2015-00762
`
`
`
`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 No. IPR2015-00762
`U.S. Patent No. 7,626,349
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`
`I.
`
`II. THE BOARD SHOULD DENY BROAD OCEAN’S SECOND PETITION
` BECAUSE IT IS TIME BARRED. .................................................................... 3
`
`
`
` A. Broad Ocean Filed its Second Petition More Than One Year After Being
` Served With a Complaint Asserting the ’349 Patent. ................................... 3
`
`B. Broad Ocean Cannot Join Itself as a Party. .................................................. 3
`
`
`
`
`
` 1. The Second Petition Attempts to Cure Broad Ocean’s Error in
` IPR2014-01121, but No Binding Precedent Permits Broad Ocean’s
` Joinder. ..................................................................................................... 4
`
`
`
` 2. Broad Ocean’s Motion Should Be Denied Because 35 U.S.C. § 315(c)
` Does Not Authorize a Party Joining Itself in Another IPR. .................... 4
`
`
`
` i. The Plain Language of 35 U.S.C. § 315(c) Only Permits Joinder
` of a New Party to an IPR. .................................................................... 4
`
`
`
` ii. Legislative History Supports Limiting 315(c) to the Joinder of
` Nonparties. .......................................................................................... 7
`
`
`
`C. If the Board Has Authority to Grant Joinder, It Should Nonetheless
` Deny Broad Ocean’s Motion. .....................................................................10
`
`
`
` 1. The Board has Broad Discretion to Deny Broad Ocean’s Motion
` For Joinder. ............................................................................................10
`
`
`
` 2. The Board Has Reserved Joinder of the Same Party Under 315(c)
` for Instances in Which Joinder Provides an Equitable Remedy. ...........11
`
`
`
` 3. The Board Consistently Denies Joinder in Cases Like This, Where
` an Absence of Strong Equitable Considerations Favoring Joinder .......13
`
` 4. Broad Ocean Now Seeks its Third Bite at the Apple. ...........................16
`
`
`
`
`III. LEGAL STANDARDS FOR INSTITUTION OF INTER PARTES
` REVIEW ..........................................................................................................18
`
`
`
`i
`
`

`
`IV. GROUND 1 FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY CLAIM. ......19
`
`
`
` A. NMC Adopts the Board’s Claim Constructions in Related Inter Partes
` Review IPR2014-01121. .............................................................................19
`
`
`
`B. Hideji Fails to Disclose Using Sine Wave Commutation Using
` Independent Values of Q and d Axis Currents. .........................................20
`
`V. CONCLUSION .................................................................................................25
`
`
`
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`
`ABB Inc. v. Roy-G-Biv Corp.
` IPR2013-00286 (PTAB Aug. 19, 2013) ...............................................................13
`
`Ariosa Diagnostics v. Isis Innovation Ltd.
` IPR2012-00022 (PTAB Sept. 2, 2014) ................................................................13
`
`Dell Inc. v. Network-1 Security Solutions, Inc.
` IPR2013-00385 (PTAB July 29, 2013) ..............................................................7, 9
`
`Garcia v. United States
` 469 U.S. 70 (1984) ................................................................................................. 8
`
`Killip v. Office of Pers. Mgmt.
` 991 F.2d 1564 (Fed. Cir. 1993) .............................................................................. 6
`
`Ling v. Payne
` 476 U.S. 926 (1986) ............................................................................................... 6
`
`Medtronic v. Endotach
` IPR2014-00695 (PTAB Sept. 25, 2014) ................................................... 5, 14, 15
`
`Micro Motion v. Invensys Systems
` IPR2014-01409 (PTAB Feb. 18, 2015) ............................................. 10, 11, 13, 15
`
`Net Moneyin, Inc. v. Verisign, Inc.
` 545 F.3d 1359 (Fed. Cir. 2008) ............................................................................25
`
`Reloaded Games v. Parallel Networks
` IPR2014-0095 (PTAB Oct. 22, 2014) ..................................................................16
`
`Samsung v. Virginia Innovation
` IPR2014-00557 (PTAB June 13, 2014) ...............................................................12
`
`Skyhawke Technologies v. L&H Concepts
` IPR2014-01485 (PTAB March 20, 2015) .............................................................. 5
`
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00327 (PTAB Sept. 24, 2013) ..............................................................13
`
`
`
`iii
`
`

`
`
`Standard Innovation v. Lelo
` IPR2014-00907 (PTAB Dec. 1, 2014) .................................................................15
`
`Target v. Destination Maternity Corporation
` IPR2014-00508 (PTAB Feb. 12, 2015) ............................... 5, 6, 7, 8, 9, 10, 11, 12
`
`ZTE Corp. and ZTE (USA) Inc. v. ContentGuard Holdings Inc.
` IPR2013-00454 (PTAB Sept. 25, 2013) ................................................................ 9
`
`
`Statutes
`
`
`35 U.S.C. § 102(b) ...................................................................................................20
`
`35 U.S.C. § 311(a) ..................................................................................................... 6
`
`35 U.S.C. § 314(a) ...................................................................................................18
`
`35 U.S.C. § 315(b) .................................................... 1, 3, 4, 9, 10, 11, 13, 14, 15, 18
`
`35 U.S.C. § 315(c) ...................................................... 4, 5, 6, 7, 8, 10, 13, 14, 16, 18
`
`35 U.S.C. § 325 .......................................................................................................... 8
`
`35 U.S.C. § 325(c) ..................................................................................................... 7
`
`
`
`Other Authorities
`
`
`37 CFR § 1.104(c) ............................................................................................. 17, 18
`
`37 CFR § 42.104(c) ..................................................................................................17
`
`37 CFR § 42.108 ......................................................................................................18
`
`37 CFR § 42.123 ......................................................................................................16
`
`37 CFR § 42.64(b)(2) ...............................................................................................16
`
`Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method Patents,
` 77 FR 48680-01 ....................................................................................................17
`
`
`
`iv
`
`

`
`
`H.R Rep. 112-98 (2011) .......................................................................................7, 10
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ...... 18, 19
`
`
`
`
`v
`
`

`
`Nidec Motor Corporation (“NMC”) submits this Preliminary Response in
`
`opposition to the Second Petition for Inter Partes Review (the “Second Petition”)
`
`filed by Zhongshan Broad Ocean Motor Co., Ltd., Broad Ocean Motor LLC; and
`
`Broad Ocean Technologies, LLC (collectively “Broad Ocean”) regarding certain
`
`claims of U.S. Patent No. 7,626,349 (the “’349 patent”). Broad Ocean's Second
`
`Petition should be denied in its entirety for the reasons set forth below.
`
`INTRODUCTION
`
`I.
`
`
`Broad Ocean’s Second Petition seeks invalidation of claims 1-3, 8-9, 12, 16,
`
`and 19 of the ’349 patent. (Paper 3, at 5). Broad Ocean simultaneously filed a
`
`motion for joinder with IPR2014-01121, and the Board ordered that NMC may
`
`oppose that motion in its preliminary response (Paper 9, at 2).
`
`Broad Ocean’s Second Petition should be denied. Broad Ocean’s Second
`
`Petition is statutorily time barred by 35 U.S.C. § 315(b) for being filed more than
`
`one year after Broad Ocean was served with a complaint for infringement of
`
`the ’349 patent. Moreover, the Board should exercise its discretion to deny the
`
`petition because the petition amounts to nothing more than an attempted end-run
`
`around this Board’s prior rulings denying Broad Ocean’s attempts to correct its
`
`own fatal filing error. Accordingly, the Board should simply deny the Second
`
`Petition as untimely.
`
`The invention of the ’349 patent relates to improvements in an HVAC
`
`
`
`1
`
`

`
`electric motor controller that provide a motor that operates with reduced torque
`
`cogging and torque ripple resulting in quieter operation, improved torque control,
`
`and improved performance in the HVAC system. The challenged claims require an
`
`HVAC system motor controller that performs sine wave commutation on the motor
`
`resulting in smooth motor operations. Sine wave commutation results in reduction
`
`in torque cogging and ripple, which in turn reduces vibrations in the HVAC system
`
`that can otherwise be amplified through a duct system. The prior art, which uses 6-
`
`step commutation, attempted to address these unwanted vibrations and noise by
`
`employing mechanical dampers to the rotating parts of the system. Such
`
`dampening can now be avoided and the vibrations prevented in the first instance as
`
`a result of the invention. Additionally, independent Q and d axis current control
`
`provides improved torque control and consequently airflow control in the HVAC
`
`system.
`
`If the Board addresses the substance of Broad Ocean’s Second Petition, the
`
`Board should deny the Second Petition because Broad Ocean has not shown a
`
`reasonable likelihood of prevailing. According to Broad Ocean, both of the ’349
`
`patent’s challenged independent claims and 7 of the dependent claims are
`
`anticipated by Japanese Patent Publication JP 2003-348885 to Hideji (“Hideji”)
`
`(Ex. 1003, 1005). Broad Ocean alleges that Hideji anticipates because it
`
`purportedly discloses sine wave commutation in an HVAC motor. But Broad
`
`
`
`2
`
`

`
`Ocean incorrectly asserts that the reference discloses the claim limitation “wherein
`
`the motor controller is configured for performing sine wave commutation, using
`
`independent values of Q and d axis currents.” In fact, Hideji discloses that it
`
`employs calculations in the rotating frame of reference in which Q and d axis
`
`currents depend on each other. By failing to acknowledge this critical missing
`
`limitation in the reference, Broad Ocean’s sole ground, Ground 1, fails. Broad
`
`Ocean makes no argument that Hideji renders the claims obvious. Accordingly,
`
`there is no basis to institute on Broad Ocean’s sole ground.
`
`For these reasons, Broad Ocean cannot, as a matter of law, show that any of
`
`the challenged claims are unpatentable. Thus, Broad Ocean has not shown a
`
`reasonable likelihood of prevailing with respect to any of the challenged claims,
`
`and this Board should deny inter partes review.
`
`II. THE BOARD SHOULD DENY BROAD OCEAN’S SECOND
`PETITION BECAUSE IT IS TIME BARRED.
`
`A. BROAD OCEAN FILED ITS SECOND PETITION MORE THAN
`ONE YEAR AFTER BEING SERVED WITH A COMPLAINT
`ASSERTING THE ’349 PATENT.
`
`
`In its Second Petition, Broad Ocean admits that it was served with a
`
`complaint asserting the ’349 patent more than one year prior to the Second Petition.
`
`(Paper No. 3, at 4). Thus, the Board lacks statutory authority to institute this
`
`proceeding and should deny Broad Ocean’s Second Petition. 35 U.S.C. § 315(b).
`
`B. BROAD OCEAN CANNOT JOIN ITSELF AS A PARTY.
`
`
`
`3
`
`

`
`
`
`1. THE SECOND PETITION ATTEMPTS TO CURE BROAD
`OCEAN’S ERROR IN IPR2014-01121, BUT NO BINDING
`PRECEDENT PERMITS BROAD OCEAN’S JOINDER.
`
`
`The Board has denied every motion Broad Ocean has filed in attempt to cure
`
`its own filing missteps in IPR2014-01121. In a last-ditch effort to recover from its
`
`own fatal omission, Broad Ocean attempts to circumvent the 315(b) statutory bar
`
`through a misapplication of 35 U.S.C. § 315(c). While non-precedential opinions
`
`from different PTAB panels arrive at different conclusions on this point, the face
`
`of section 315(c) provides only for the joinder of parties. Broad Ocean nevertheless
`
`asserts that the Board has discretion under 315(c) to join itself and this petition to
`
`the previously instituted IPR proceeding, even though Broad Ocean is already a
`
`party to the instituted IPR.
`
`2. BROAD OCEAN’S MOTION SHOULD BE DENIED
`BECAUSE 35 U.S.C. § 315(C) DOES NOT AUTHORIZE A
`PARTY JOINING ITSELF IN ANOTHER IPR.
`
`
`i. THE PLAIN LANGUAGE OF 35 U.S.C. § 315(C) ONLY
`PERMITS JOINDER OF A NEW PARTY TO AN IPR.
`
`
`The plain language of the statute, considered in light of its legislative history
`
`and the overall purpose and policy objectives of the AIA, strongly supports an
`
`interpretation of 315(c) that does not permit joinder of a second petition by the
`
`same party, particularly when that petition is otherwise time-barred under 315(b).
`
`On its face, 315(c) only authorizes the Director to “join [a person] as a party”
`
`
`
`4
`
`

`
`to an instituted IPR. 35 U.S.C. § 315(c)(emphasis added). As a matter of simple
`
`logic, a person cannot be “joined” to an instituted review “as a party” if that
`
`person is already a party to the instituted review. Skyhawke Technologies v. L&H
`
`Concepts, IPR2014-01485, Paper 13, at 3-4 (PTAB March 20, 2015)(“a person
`
`cannot be joined as a party to a proceeding in which it is already a party. The
`
`statute does not refer to the joining of a petition or new patentability challenges
`
`presented therein, nor does the statute refer to the joining of a new issue (as
`
`opposed to a person)”); Target v. Destination Maternity Corporation, IPR2014-
`
`00508, Paper 28, dissent at 9-10 (PTAB Feb. 12, 2015)(“In our view, § 315(c) is
`
`not ambiguous as to whether it permits joinder of grounds or issues. It
`
`unambiguously does not. … [315 (c)] states that a person ‘may join as a party’ and,
`
`despite referring to ‘a petition,’ nowhere refers to the joining of that petition.”).
`
`See also Medtronic v. Endotach, IPR2014-00695, Paper 18, concurrence, at 1-2
`
`(PTAB Sept. 25, 2014)(“315(c) authorizes joinder of a person, not a petition, to an
`
`instituted inter partes review. It does not provide a mechanism for joining an
`
`additional petition to [an instituted IPR].”)
`
`Broad Ocean relies principally on the majority opinion in Target. The Target
`
`majority found the language of 315(c) ambiguous and assumed that, since the
`
`phrase “may join as a party” does not explicitly exclude joinder of issues by a
`
`person who is already party to the IPR, then such joinder must be permitted. But
`
`
`
`5
`
`

`
`the explicit recitation in 315(c) of “may join as a party” is best interpreted as
`
`excluding joinder if that joinder does not result in the joining of any new party to
`
`an instituted IPR. There is an express grant to allow joinder only if the predicate
`
`that the person is not already a party is met. Because the Patent Office may only
`
`assume powers expressly granted to it, the Target expansive permissive view must
`
`be wrong. Ling v. Payne, 476 U.S. 926, 937 (1986); Killip v. Office of Pers. Mgmt.,
`
`991 F.2d 1564, 1569 (Fed. Cir. 1993)(“Any and all authority pursuant to which an
`
`agency may act ultimately must be grounded in an express grant from Congress.”).
`
`The Target majority focused heavily on the “any person” language
`
`appearing in 315(c), concluding that an “interpretation that requires us to read ‘any
`
`party’ as excluding the same petitioner, in essence, reads the word ‘any’ out of the
`
`statute.” Target, Paper 28, at 8. The fact is, however, that other language in the
`
`statute clearly limits the otherwise expansive scope of “any person,” and this in no
`
`way constitutes reading the word “any” out of the statute. Indeed, as the Target
`
`majority recognized, “any party” does not include the patent owner, because 311(a)
`
`specifies that a petition “may” be filed by “a person who is not the owner of a
`
`patent.” Id. at 7. Just as 311(a) excludes the patent owner from the otherwise
`
`expansive “any person” language, 315(c) excludes a person that is already a party
`
`by means of the language “as a party.”
`
`If Congress had intended 315(c) to enable a party to an instituted IPR to
`
`
`
`6
`
`

`
`introduce new issues to the IPR, it surely could have enacted statutory language to
`
`that effect. Also, if the PTO thought that such joinder was authorized by 315(c), it
`
`could have addressed this contingency in the rulemaking implementing inter partes
`
`review. The fact that neither Congress nor the PTO has addressed the matter more
`
`explicitly suggests that 315(c) was not intended to be interpreted so broadly.
`
`Properly construed, 315(c) serves the important function of allowing the
`
`Board discretion to join a subsequent petitioner to an already instituted IPR.
`
`Petitioner’s Motion cites to a good example of this. In Dell Inc. v. Network-1
`
`Security Solutions, Inc., IPR2013-00385, Paper 17, at 3 (PTAB July 29, 2013),
`
`Dell successfully sought joinder as a new party to an instituted IPR, and in granting
`
`the motion for joinder the Board explicitly noted the fact that the petition for
`
`joinder did not introduce any new issues, which weighed in favor joinder. Id. at 7.
`
`ii. LEGISLATIVE HISTORY SUPPORTS LIMITING
`315(C) TO THE JOINDER OF NONPARTIES.
`
`
`The Final Committee Report states that under 315(c) and 325(c), “[t]he
`
`director may allow other petitioners to join an inter partes or post-grant review.”
`
`H.R Rep. 112-98, pt. 1, at 76 (2011)(emphasis added). The Target majority cites to
`
`statements made by Senator Kyl prior to enactment of the statute, statements that
`
`are ambiguous and not entirely on point. Target, Paper 28, at 10-14. As noted by
`
`the Target dissent, one of the statements cited by the majority was made by Kyl in
`
`2008, in connection with a quite different version of the statute that was never
`
`
`
`7
`
`

`
`enacted. Id., dissent at 13. Another cited statement did not specifically identify
`
`315(c), and the dissent found this statement to be ambiguous with respect to
`
`whether the senator was even referring to 315(c), or whether he might have instead
`
`been referring to 35 U.S.C. § 325, a different section altogether. Id., dissent at 12.
`
`But statements by an individual member of Congress should not be given the
`
`same weight as a Full Committee Report. Garcia v. United States, 469 U.S. 70, 76
`
`(1984)(“In surveying legislative history we have repeatedly stated that the
`
`authoritative source for finding the Legislature's intent lies in the Committee
`
`Reports on the bill, which ‘represen[t] the considered and collective understanding
`
`of those Congressmen involved in drafting and studying proposed legislation.’ …
`
`We have eschewed reliance on the passing comments of one Member … and
`
`casual statements from the floor debates.”)(internal citations omitted).
`
`Congress clearly intended for the Office to have substantial discretion to
`
`manage IPR proceedings in a timely and efficient manner, and, consistent with this
`
`intent, granted the Office discretion to join new parties to an already instituted IPR.
`
`It also makes sense that Congress would want the Office to have the discretion to
`
`consider joining new issues raised by the subsequently joined party. Of course, in
`
`the interest of timing, efficiency, and fairness to the patent owner, it would be
`
`preferable if the newly joined party does not introduce any new issues. For
`
`example, in Dell the Board expressly found that the fact that the petition did not
`
`
`
`8
`
`

`
`introduce any new issues weighed in favor of joinder. Dell, Paper 17, at 7.
`
`The same fairness concerns do not pertain with respect to the party who
`
`initiated the IPR in the first place. Under 315(b) this party has already enjoyed a
`
`year since the filing of a complaint asserting the patent and was allowed to raise
`
`issues and introduce prior art to be considered in the IPR. Considerations of
`
`fairness for the patent owner weigh against the joinder of new issues once the one-
`
`year window provided by 315(b) has closed.
`
`The Target majority also emphasized that “a primary purpose of the AIA
`
`was to ‘limit unnecessary and counterproductive litigation costs,’ and concluded
`
`that this purpose supported a broad interpretation of the Board’s discretion to take
`
`up new issues as a means for relieving the district court from the necessity of
`
`addressing them. Target, Paper 28, at 12. But the Board has already stated that the
`
`primary interest in conducting its procedures “pertains to the just, speedy, and
`
`inexpensive resolution of proceedings before the Patent Trial and Appeal Board,
`
`and not to the just, speedy, and inexpensive resolution of the parties’ disputes
`
`generally.” See ZTE Corp. and ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`
`IPR2013-00454, Paper 12, at 7 (PTAB Sept. 25, 2013).
`
`By overemphasizing the importance of reducing district court work loads,
`
`the Target majority fails to appreciate yet another primary objective of Congress in
`
`enacting the AIA: limiting the potential for harassment of patent owners, and the
`
`
`
`9
`
`

`
`resulting diminution of the value of issued patents. H.R. Rep. No. 112-98, Part 1, at
`
`48 (“The Committee recognizes the importance of quiet title to patent owners to
`
`ensure continued investment resources”; and condemning “harassment … through
`
`repeated …administrative attacks on the validity of a patent.”).
`
`To achieve the proper balance, Congress imposed constraints on inter partes
`
`review, including strict timing limits that limit potential harassment. The 315(b)
`
`one-year statutory bar is a good example of this. An interpretation of 315(c) that
`
`permits an end-run around the 315(b) bar would short-circuit Congressional intent.
`
`Conversely, as noted by the Target dissent, interpreting 315(c) in a manner that
`
`preserves the 315(b) statutory bar “reduces patent owner harassment by preserving
`
`the time limitation Congress enacted in 315(b).” Target, Paper 18, at 10.
`
`C.
`
`IF THE BOARD HAS AUTHORITY TO GRANT JOINDER, IT
`SHOULD NONETHELESS DENY BROAD OCEAN’S MOTION.
`
`
`
`1. THE BOARD HAS BROAD DISCRETION TO DENY
`BROAD OCEAN’S MOTION FOR JOINDER.
`
`
`Should the Board conclude that it has discretion under 315(c) to allow
`
`joinder of an existing party, it should nonetheless deny joinder based on the
`
`specific and unique facts of this case. In previous decisions the Board allowed
`
`joinder when it operates as an equitable remedy. Micro Motion v. Invensys Systems,
`
`IPR2014-01409, Paper 14, at 14 (PTAB Feb. 18, 2015)(“This is not a case were
`
`circumstances have changed and it would make joinder an equitable remedy for
`
`
`
`10
`
`

`
`petitioner.”). Typically, this has involved a prejudicial change of circumstances
`
`brought about through no fault of the petitioner, and often as a direct result of some
`
`action taken by the patent owner. In contrast, the Board has routinely denied
`
`joinder in cases where a less than diligent petitioner is simply seeking “a second
`
`bite at the apple,” absent some compelling public policy consideration weighing in
`
`favor of joinder. Id.
`
`Analysis of Board decisions reveals a fairly coherent standard, which
`
`permits joinder when certain equitable considerations are present, but consistently
`
`denies joinder when it simply serves as a vehicle for a less-than-diligent petitioner
`
`to introduce subject matter that could and should have been introduced during the
`
`one year window provided by 315(b).
`
`2. THE BOARD HAS RESERVED JOINDER OF THE SAME
`PARTY UNDER 315(C) FOR INSTANCES IN WHICH
`JOINDER PROVIDES AN EQUITABLE REMEDY.
`
`
`Target is a prime example of a case where the equities appear to have
`
`strongly favored the petitioner. As noted by the Target majority, “all but one of the
`
`new grounds [asserted in the second petition] is based upon a Japanese patent
`
`publication (Asada), which Petitioner contends was known to Patent Owner and
`
`requested in federal court discovery, but which was withheld from Petitioner until
`
`after the Petition in [the instituted IPR], and a bar under 35 U.S.C. § 315(b)
`
`arose.” Target, Paper 28, at 2-3)(emphasis added).
`
`
`
`11
`
`

`
`In Target the petitioner argued that if the Board denied the opportunity for
`
`joinder under such circumstances “a patent owner in parallel litigation with a
`
`petitioner can readily subvert the purposes of the AIA … and the IPR process by
`
`withholding any significant prior art it may be uniquely aware of, or additional
`
`asserted claims, until after the petitioner’s one-year deadline under § 315(b).” Id.,
`
`Paper 22, at 14. Significantly, the equitable and policy considerations present in
`
`Target do not apply to Broad Ocean’s Motion here, which is nothing more than an
`
`attempt to recover from its own missteps in IPR2014-01121.
`
`Similar equitable considerations run throughout the decisions identified in
`
`Target as instances in which the Board has permitted joinder of a petitioner to an
`
`instituted IPR with respect to which the petitioner is already a party. In Samsung v.
`
`Virginia Innovation, the second petition sought a very limited expansion of the
`
`proceedings in order to address the relevance of a single prior art reference (the
`
`Seaman reference) to a single subject matter (HDMI). IPR2014-00557, Paper 10
`
`(PTAB June 13, 2014). Notably, in Samsung the relevance of the same reference to
`
`the same subject matter was already being addressed in the context of two related
`
`and already instituted IPRs and the Board emphasized that joinder served “the
`
`public interest in having consistency of outcome concerning similar sets of
`
`claimed subject matter and prior art.” Id. (emphasis added).
`
`In Microsoft Corp. v. Proxyconn, Inc., the petitioner had expeditiously filed
`
`
`
`12
`
`

`
`a second petition after learning that the patent owner had asserted additional claims
`
`in concurrent district court litigation. IPR2013-00109, Paper 15 (PTAB Feb. 25,
`
`2013). The Board allowed joinder after noting an overlap in the cited prior art, no
`
`discernible prejudice to either party, and that the petitioner had been diligent and
`
`timely in filing the second petition after learning of the newly asserted claims.
`
`In ABB Inc. v. Roy-G-Biv Corp., the Board granted joinder after noting that
`
`the prior art cited in the second petition substantially overlapped with the prior art
`
`at issue in the first proceeding and the patent owner had explicitly waived its right
`
`to oppose the motion. IPR2013-00286, Paper 14 (PTAB Aug. 19, 2013).
`
`In Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of
`
`Jerusalem, the Board noted that the petitions in that and in a related proceeding
`
`were timely filed under 35 U.S.C. §§ 315(b) and (c) and involve the same patent
`
`and parties. IPR2013-00327, Paper 15 (PTAB Sept. 24, 2013). It is highly
`
`significant that in Sony the petitioner’s motion was not time-barred by 315(b), in
`
`stark contrast with Petitioner’s time-barred motion presently before the Board.
`
`Likewise, in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 166,
`
`at 16-18 (PTAB Sept. 2, 2014) the 315(b) time bar did not apply.
`
`None of these equitable considerations are present here where the Second
`
`Petition is time barred entirely through the fault of Broad Ocean.
`
`3. THE BOARD CONSISTENTLY DENIES JOINDER IN
`CASES LIKE THIS, WHERE AN ABSENCE OF STRONG
`
`
`
`13
`
`

`
`EQUITABLE CONSIDERATIONS FAVORING JOINDER
`
`
`Conversely, cases in which the Board has denied a motion for joinder under
`
`315(c) aptly illustrate the sort of circumstances that do not support joinder.
`
`Medtronic, IPR2014-00695, Paper 18, for example, bears striking similarities to
`
`the facts presented by Broad Ocean’s motion in the present case. In Medtronic, the
`
`petitioner initially tried to introduce additional prior art into an already instituted
`
`IPR by means of a Request for Authorization to File a Motion to Submit
`
`Supplemental Information. The Board denied that motion, finding it to be improper.
`
`The petitioner then filed a second petition and motion for joinder under 315(c) that
`
`asserted new invalidity grounds, relying on references that were the subject of the
`
`denied Supplemental Information Request. Unsurprisingly, the Board denied the
`
`joinder as unjustified under the facts of the case.
`
`In Medtronic the Board found significant that, absent joinder, the petition
`
`was time barred under 315(b), and that the petitioner had “created its own 315(b)
`
`bar situation.” Id., Paper 18, at 5. The Board characterized the petition as an
`
`attempted “second bite at the apple,” and opined that “this ‘second bite at the apple’
`
`situation is particularly noteworthy in view of the 315(b) bar at issue here, as well
`
`as a difference of opinion that currently exists at the Board as to whether the board
`
`has discretion under 35 U.S.C. 315(c) to allow joinder of a person to an ongoing
`
`inter partes review when that person is already a party to the ongoing inter partes
`
`
`
`14
`
`

`
`review.” Id., at 3-4 The panel assumed (without deciding) that it had discretion to
`
`allow joinder under the circumstances of that case but went on to find that “when a
`
`315(b) bar would apply absent joinder, we hesitate to allow a petitioner a second
`
`bite… absent a good reason for doing so.” Id., at 4.
`
`Similarly, in the present case, Broad Ocean’s attempts to file the originally
`
`missing attesting affidavit under 42.104(c) as part of a corrected exhibit has been
`
`denied, and Broad Ocean’s associated motion for rehearing has been denied. Broad
`
`Ocean seeks yet another bite at the apple. Particularly in view of the 315(b) bar at
`
`issue, the difference of opinion that currently exists at the Board, and absence of
`
`any “good reason for doing so,” the Board in this case should also deny joinder.
`
`In Micro Motion the Board also denied petitioner’s attempt to obtain “a
`
`second bite at the apple.” Micro Motion, Paper 14. There, the petitioner attempted
`
`to introduce an analysis of the claim, which it could have offered in its previous
`
`petition but had neglected to do so. In denying joinder, the Board emphasized that
`
`this was “not a case were circumstances have changed that would make joinder an
`
`equitable remedy for petitioner.” Id., at 14. In Micro Motion the fact that the
`
`petition was time-barred under 315(b) also weighed against joinder. Id., at 15.
`
`See also Standard Innovation v. Lelo, IPR2014-00907, Paper 10 (PTAB Dec.
`
`1, 2014) (denying “second bite at the apple,” where petitioner had failed to present
`
`“cogent argument or evidence to explain why the grounds of unpatentability
`
`
`
`15
`
`

`
`asserted in the Petition could not have been asserted in the [petitioner’s previously
`
`filed case].”); Reloaded Games v. Parallel Networks, IPR2014-00950, Paper 12
`
`(PTAB Oct. 22, 2014) (denying attempted “second bite of the apple”).
`
`4. BROAD OCEAN NOW SEEKS ITS THIRD BITE AT THE
`APPLE.
`
`
`In deciding Broad Ocean’s Motion in the present case, the Board should bear
`
`in mind that this is in effect Broad Ocean’s third attempted bite at the apple. Broad
`
`Ocean has tried every available procedural avenue for introducing the attesting
`
`affidavit, and the Board has consistently rejected these attempts. Broad Ocean
`
`moved under 42.104(c) to file the attesting affidavit as part of a corrected ex