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
`
`NTDEC MOTOR CORPORATION
`
`Patent Owner
`
`US. Patent No. 7,626,349
`
`Issue Date: December 1, 2009
`Title: LOW NOISE HEATING, VENTILATTNG AND/OR
`AIR CONDITIONING (HVAC) SYSTEMS
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`
`MOTION FOR JOINDER TO RELATED
`
`INSTITUTED INTER PARTES REVIEW
`
`(37 C.F.R. §42.122(b))
`
`n.)
`
`.
`
`CaéNo, IPR2015-00762
`
`//
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`NY 790996V.2
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD;
`BROAD OCEAN MOTOR LLC; and
`BROAD OCEAN TECHNOLOGIES, LLC
`
`Petitioners
`
`NTDEC MOTOR CORPORATION
`
`Patent Owner
`
`US. Patent No. 7,626,349
`
`Issue Date: December 1, 2009
`Title: LOW NOISE HEATING, VENTILATTNG AND/OR
`AIR CONDITIONING (HVAC) SYSTEMS
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`
`MOTION FOR JOINDER TO RELATED
`
`INSTITUTED INTER PARTES REVIEW
`
`(37 C.F.R. §42.122(b))
`
`n.)
`
`.
`
`CaéNo, IPR2015-00762
`
`//
`
`NY 790996V.2
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I;
`
`THE BOARD HAS THE DISCRETION TO JOIN THE SAME
`
`PARTY UNDER 35 U.S.C. §315(c) .............................................................. 1
`
`II.
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION AND
`
`GRANT THE JOINDER MOTION ............................................................... 3
`
`III.
`
`CONCLUSION ............................................................................................... 5
`
`NY 790996v.2
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`— i ~
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`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`ABB Inc. v. ROY—G-BIV Corporation,
`{PR2013-00286 ...................................................................................................... 1
`
`Ariosa Diagnostics v. ISIS Innovation Limited,
`IPR2012—00022 .................................................................................................. 1, 2
`
`Medtronic, Inc. and Medtronic Vascular, Inc. v. Endotach LLC,
`
`IPR2014-00695 ...................................................................................................... 4
`
`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,
`IPR2014—00557 ...................................................................................................... 1
`
`Sony Corporation v. Yissam Research Development Company
`Of The Hebrew University OfJerusalem, IPR2013-00327 ................................... 1
`
`Target Corporation v. Destination Maternity Corporation,
`IPR2014—00508 .................................................................................................. 1, 2
`
`Volkswagen v. EmeraClzem, IPR2014-015 5 5 ........................................................... 1
`
`Statutes
`
`35 U.S.C. §102(b) ...................................................................................................... 4
`
`35 U.S.C. §315(b) ...................................................................................................... 5
`
`35 U.S.C. §315(C) .................................................................................................. 2, 5
`
`Regulations
`
`37 CPR. §42.122(b) ................................................................................................. 3
`
`NY ”i90996v2
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`- ii -
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`
`
`
`
`Petitioner is not seeking a “second bite at the apple” by introducing a
`
`previously uninvolved prior art reference. Rather,
`
`the Hideji Japanese Patent
`
`Publication JP2003—34885
`
`(“Hideji”) was excluded from consideration in
`
`IPR2014~01121 solely due to an omitted attesting affidavit.
`
`The English
`
`translation of Hideji filed in this proceeding as Ex. 1005, along with an attesting
`
`affidavit, is the very same English translation filed in [PR2014-01121. Nidec has
`
`not challenged the correctness of the English translation. No credible prejudice to
`
`Patent Owner
`
`is even remotely apparent.
`
`See VolkSWagen v.
`
`.EmemChem,
`
`IPR2014~01555, Paper 20 (Decision) at p. 6. Indeed, in the subject proceeding, the
`
`Patent Owner was able to file a Preliminary Response, which substantively
`
`addressed Hideji, on an expedited basis.
`
`1.
`
`THE BOARD HAS THE DISCRETION TO JOIN THE SAME PARTY
`
`UNDER 35 U.S.C. §315(c)
`
`As it must, Patent Owner Nidec recognizes that the Board has previously
`
`joined a second filed IPR petition to a previous IPR proceeding Where the
`
`petitioner seeking joinder was already a petitioner in the instituted proceeding. S_e§
`
`Patent Owner’s Preliminary Response
`
`at pp. 11—13
`
`(discussing Target,
`
`IPR2014-00508 (decision by expanded PTAB panel) ; Samsung, IPR2014—00557,
`
`Paper 10 at p. 16; Mcrosofi, IPR2013—00109, Paper 15; ABB, IPR2013~00286,
`
`Paper 14; Sony, IPR2013u00327, Paper 15; Ariosa, IPR2012—00022, Paper 166 at
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`NY 790996v.2
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`- l -
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`
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`pp. 18—22). Nevertheless, Patent Owner Nidec now argues the Board is statutorily
`
`precluded by 35 U.S.C. §315(c) from ever joining the same party. m Preliminary
`
`Response at pp. 4—10.
`
`Patent Owner Nidec’s argument
`
`to Withdraw the discretion previously
`
`exercised by the Board tracks the arguments made in the Target dissent. The
`
`Target dissent explained that the divergence in the interpretation of §315(c) by the
`
`majority and dissent stems from fundamentally different approaches to construing
`
`that statute:
`
`The majority reads §315(c) as if it grants discretion for
`
`the Board to act in any way not expressly prohibited by
`
`the statute. By contrast, [the dissent] interpret[s] §315(c)
`
`to grant discretion for the Board to act only in ways that
`
`are stated expressly in the statutes.
`
`Target v. Destination Maternity, IPR2014~00508, Paper 28, dissent at p. 2 (PTAB
`
`Feb. 12, 2015). However, under the Target dissent’s approach to statutory
`
`construction, the Board would never be able to exercise any discretion under any
`
`circumstances, because the Board would be restricted to doing only that which the
`
`statute already expressly says it can do.
`
`Petitioner Broad Ocean submits that its present motion for joinder complies
`
`with 35 U.S.C. §315(c) for the reasons stated in the majority opinion in Targer and
`
`in Ariosa, IPR2012—00022, Paper 166 at pp. 18-22. There is no dispute that
`
`Nv 790996v.2
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`u 2 _
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`
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`Petitioner’s Second Petition and motion for joinder were filed “no later than one
`
`month after the institution date of” IPR2014-01121. E 37 C.F.R. §42.122(b).
`
`II.
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION AND GRANT THE
`
`JOINDER MOTION
`
`Patent Owner Nidec does not dispute that the Dell factors for assessing a
`
`joinder motion have been satisfied here. & Motion for Joinder (Paper 4) at
`
`pp. 4—10. Consequently, the Board can, and should, exercise its discretion and
`
`grant Petitioner Broad Ocean’s joinder motion. Patent Owner Nidec does not
`
`dispute that it is well familiar with Hideji. Indeed, Patent Owner Nidec was able to
`
`file its Preliminary Response, which substantively addressed Hideji, within the
`
`shortened, expedited time period. E Order (Paper 9); Preliminary Response at
`
`pp. 20—25. Patent Owner does not dispute that the claims challenged in the Second
`
`Petition are already at issue in the instituted IPR2014-01121 proceeding. Both
`
`Petitioner and Patent Owner have adopted the Board’s claim constructions from
`
`IPR2014—011‘21. E Preliminary Response at p. 19.
`
`Patent Owner does not dispute that joinder will not result in unnecessary
`
`delay.
`
`Patent Owner does not dispute that any additional discovery will be
`
`minimal because the Second Petition relies upon the exact same Declaration of
`
`Dr. Mark Ehsani that was filed with the original petition.
`
`Rather, Patent Owner simply argues that Petitioner should not be allowed a
`
`“second” or “third” bite at the apple. But, this case does not represent a “second
`
`NY 790996v2
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`- 3 -
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`
`
`
`
`
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`bite at the apple” because Petitioner is not deriving any benefit of seeing the
`
`Board’s Decision to Institute in the prior IPR2014—01 121 case. Qf. Medtronic, Inc.
`
`and Medtronic Vascular,
`
`Inc.
`
`v. Endotach LLC, 1PR2014—00695, Decision
`
`(Paper 18) at p. 3 (PTAB Sept. 25, 2014).
`
`In Medtronic, the Board denied the
`
`petitioner’s joinder motion based on the petitioner’s failure to exhaust all
`
`procedures before presenting all of the grounds raised in the second petition to the
`
`Board in the first proceeding. ii at pp. 69 (“Furthermore, Petitioner did not raise
`
`its position that those grounds were not redundant in View of Patent Owner’s
`
`Infringement Contentions in any paper filed in IPR2014~00100 after institution,
`
`such as in a request for rehearing or its Supplemental Information Request”).
`
`In
`
`contrast, as Patent Owner Nidec admits, Petitioner Broad Ocean repeatedly sought
`
`to file the attesting affidavit in the instituted IPR2014—01121. Egg Preliminary
`
`Response at p. 16; Motion for Joinder (Paper 4) at pp. 5—6. Furthermore, unlike the
`
`petitioner in Medtronic, Petitioner Broad Ocean’s joinder does not involve joining
`
`any ground found to have been redundant in the first proceeding or that would be
`
`based on newly-cited prior art. Petitioner Broad Ocean is not seeking a “second
`
`bite at the apple” because the substance of its proposed ground of invalidity under
`
`35 U.S.C. §102(b) based on Hideji and its statement of facts regarding the attesting
`
`affidavit have not changed in response to the Board’s Decision to institute in the
`
`prior IPR2014—Ol 121 case. See Motion for Ioinder (Paper 4) at pp. 1—4.
`
`NY 790996v.2
`
`- 4 -
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`
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`Patent Owner’s
`
`lengthy discussion about 37 C.F.R. §42.104(c),
`
`se_e
`
`Preliminary Response at pp. 17~18, is irrelevant to this proceeding now because the
`
`English translation of Hideji filed with the Second Petition includes the attesting
`
`affidavit. & Ex. 1005 at p. 26.
`
`Lastly, and quite curiously, Patent Owner contends that “Broad Ocean could
`
`have easily avoided the time bar it now faces by simply filing the present petition
`
`for inter partes review when it first realized its error - as early as October 24,
`
`2014.” See Preliminary Response at p. 18. However, Patent Owner Nidec told the
`
`district court
`
`that
`
`its
`
`complaint was
`
`served on Petitioner Broad Ocean
`
`Technologies, LLC on September 30, 2013.
`
`_S_e_e Attachment A hereto. Thus, even
`
`if the Second Petition was filed on October 24, 2014, the 1-year time bar of
`
`35 U.S.C. §315(b) still would not have been satisfied, absent a joinder motion
`
`pursuant to §315(c).
`
`III.
`
`CONCLUSION
`
`The Board should exercise its discretion and join this proceeding with
`
`IPR2014—01 121.
`
`Dated: April 28, 2015
`
`Respectfully submitted,
`
`/S/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`
`Three World Financial Center
`
`New York, New York 10281—2101
`
`NY 790996v.2
`
`— 5 -
`
`
`
`
`
`
`
`ATTACHMENT A
`
`NY 790996v.2
`
`
`
`
`
`
`
`Case: 4:13—CV~01895wRLW Doe-#1 9 Filed: lOIOWlS Page: 1 of l PagelD #: 60
`
`In the United States District Court
`For the Eastern District of Missouri
`
`Nidcc Motor Corporation
`Pial’nlijfis)
`vs
`""“"I§E6§E1"‘O'éeafi"MoififLLCg'e't'iiI;'W”
`Defindamé)
`
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`j '
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`
`'CKSEfiHEIS'CV'1395'JCHM” "
`
`Alfidgvit of Snecial Process Server
`Received by McDowell one Associates on 9/30/2013 to be served on:
`
`Broad Ocean Technologies, LLC
`Benjamin An & Co., RC.
`11901 Olive Blvd., Ste 208
`St. Louis, MO 63141
`
`
`i, “2225”“ ~41th , being duly sworn, depose and say that on “[3,9“3 at 315.5 amérij,
`executed service by delivering a true copy of the Summons, Disclosure ofCorporate Interests
`Certificate and Original Petition with Exhibits A, B & C in accordance with state statutes in the
`manner marked below:
`
`( )
`
`iNDIVIDUAL SERVICE: Served the within-named person.
`
`fl
`
`as
`CORPORATE SERVlCE: By serving A3&( Z L\ 3 mg
`J: QgflanE MEQLL 'CLfi'
`
`
`
`(
`
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`
`SUBSTITUTE SERVICE: By serving
`
`as
`
`( )
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`are/pm and on
`at
`(W!
`POSTED SERViCE: After attempting service on
`I
`I
`at
`aIn/pm to a conspicuous place on the:property described herein.
`
`( )
`
`OTHER SERVICE: As described in the Comments below by serving
`
`COMMENTS:
`WWMWflWWWWTfi—W"
`
`
`
`l eeitify that i have no interest in the above action, am of legal age and have proper authority
`in the jurisdictiori in which this service was made.
`a
`wwfimfl,
`
`Appointed in a oordanee
`with State Statutes
`
`Subscribed and Sworn to before me on this i1 day
`of Q (13:4
`,1 Q )5 by the affiant who is
`personally known to me.
`
`\
`MODGWeii & Associates
`
`902 Sonlard Street
`St. Louis, MO 63i04
`(314) 621'9300
`
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`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §42.6(e) and 37 C.F.R. §42.105(b), the undersigned
`hereby certifies that on April 28, 2015, a complete and entire copy of the foregoing
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
`
`TO RELATED INSTITUTED Inter Partes Review was electronically served in
`its entirety on the Patent Owner of record (as agreed upon by counsel) at
`sbrown@hoveywilliams.corn, mwalters@hoveywilliarns.corn,
`and litigation@
`hoveywilliamscom.
`
`Additionally, the undersigned certifies that on April 28, 2015, a complete
`and entire copy of the foregoing PETITIONER’S REPLY IN SUPPORT OF
`ITS MOTION FOR JOINDER TO RELATED INSTITUTED Inter Partes
`
`Review was electronically served on the Patent Owner’s below—listed counsel of
`record at jschwent@thornpsoncoburn.com, djinkins@thornpsoncoburncorn, and
`syoo@thompsoncoburn.corn,
`in
`the
`co-pending
`litigation Ntdec Motor
`Corporation
`v. Broad Ocean Motor LLC et
`al., Civil Action No.
`4:13-CV-01895-JCH (ED. Mo), as agreed upon by the parties.
`
`Dated: April 28, 2015
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`
`Three World Financial Center
`
`New York, New York 1028 l~2101
`
`Attorneys for Petitioners Zhongshan
`Broad Ocean Motor Co, Ltd. ,'
`
`Broad Ocean Motor LLC; and
`
`Broad Ocean Technologies, LLC
`
`NY 790996v.2
`
`
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