Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: July 20, 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 IPR2015-00762
`Patent 7,626,349 B2
`
`____________
`
`
`
`
`
`Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge PATRICK M.
`BOUCHER, in which Administrative Patent Judge BENJAMIN D. M.
`WOOD joins.
`
`Opinion Dissenting filed by Administrative Patent Judge TARTAL.
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: July 20, 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 IPR2015-00762
`Patent 7,626,349 B2
`
`____________
`
`
`
`
`
`Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge PATRICK M.
`BOUCHER, in which Administrative Patent Judge BENJAMIN D. M.
`WOOD joins.
`
`Opinion Dissenting filed by Administrative Patent Judge TARTAL.
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`
`
`BOUCHER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`On February 20, 2015, Zhongshan Broad Ocean Motor Co., Ltd.,
`
`Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC
`
`(“Petitioners”) filed a Petition (Paper 3, “Pet.”) pursuant to 35 U.S.C.
`
`§§ 311–319 to institute an inter partes review of claims 1–3, 8, 9, 12, 16,
`
`and 19 (“the challenged claims”) of U.S. Patent No. 7,626,349 B2 (“the ’349
`
`patent”). Concurrent with their Petition, Petitioners filed a Motion for
`
`Joinder (Paper 4, “Mot.”) to join this proceeding with IPR2014-01121 (“the
`
`related proceeding”), which was instituted on January 21, 2015. Nidec
`
`Motor Corporation (“Patent Owner”) filed a Preliminary Response (Paper
`
`10, “Prelim. Resp.”) to the Petition on April 21, 2015. Pursuant to our
`
`authorization, Petitioners filed a Reply (Paper 11) on April 28, 2015, limited
`
`to addressing the joinder issues.
`
`For the reasons provided below, we deny Petitioner’s Motion for
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`Joinder. We also deny the Petition and do not institute an inter partes
`
`review.
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`
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`2
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`IPR2015-00762
`Patent 7,626,349 B2
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`I. BACKGROUND
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`A. The ’349 patent (Ex. 1001)
`
`The ’349 patent relates to heating, ventilating and/or air conditioning
`
`(“HVAC”) systems that use air-moving components, such as a blower. Ex.
`
`1001, col. 1, ll. 8–11. Figure 4 of the ’349 patent is reproduced below.
`
`
`
`Figure 4 is a block diagram of HVAC system 400, which includes system
`
`controller 402, motor controller 404, permanent magnet motor 406, and air-
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`moving component 410. Id. at col. 3, ll. 50–52. Permanent magnet motor
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`406 includes shaft 408, stationary assembly 412, and rotatable assembly 414.
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`Id. at col. 3, ll. 52–54. The rotatable and stationary assemblies are coupled
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`magnetically, and the rotatable assembly is coupled to the air-moving
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`component via the shaft to drive rotation of the air-moving component. Id.
`
`at col. 3, ll. 54–58. The motor controller is configured to perform sinewave
`
`commutation in response to one or more control signals received from the
`
`system controller to produce continuous-phase currents in the permanent
`
`magnet motor for driving the air-moving component. Id. at col. 3, ll. 59–63.
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`3
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`IPR2015-00762
`Patent 7,626,349 B2
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`Although the claims at issue are drawn to performing sine wave
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`commutation using independent “values of Q and d axis currents,” the
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`specification of the ’349 patent does not mention “values of Q and d axis
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`currents” outside of its claims. Petitioners’ witness, Dr. Mark Ehsani,
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`explains that “vector control” provides one method of controlling
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`permanent-magnet synchronous motors, and that “[t]he concept of vector
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`control, which typically uses d and [Q] current components, arises from [a]
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`principle [in which] torque arrives from the interaction of two magnetic
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`fields, one originating from the stator and one originating from the rotor.”
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`Ex. 1009 ¶ 13. The drawing from page 6 of Dr. Ehsani’s Declaration is
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`reproduced below.
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`The drawing from Dr. Ehsani’s Declaration illustrates a rotor, which has a
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`permanent magnet having north and south poles Nr and Sr, respectively, and
`
`
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`4
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`IPR2015-00762
`Patent 7,626,349 B2
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`illustrates a stator, which includes electromagnets that result in a virtual
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`stator magnet having north and south poles Ns and Ss, respectively. Id. at
`¶ 15. The d axis is aligned with the rotor and the Q axis1 is offset 90° from
`
`the d axis. The motor commutates the winding currents to maintain
`
`orthogonality of the d and Q axes as the rotor turns. Id. at ¶ 16.
`
`The ’349 patent incorporates by reference the disclosure of U.S.
`
`Patent No. 7,342,379 B2 (Ex. 3001, “the ’379 patent”). Ex. 1001, col. 4, ll.
`
`23–29. The ’379 patent describes embodiments in which a Q-axis current is
`
`calculated “based on a given [d-axis] current injection to produce a desired
`
`rotor torque.” Ex. 3001, col. 5, ll. 27–30. The ’379 patent also describes
`
`embodiments in which the Q-axis current and the d-axis injection current
`
`“are multiplexed.” Id. at col. 5, ll. 51–57.
`
`
`
`B. Illustrative Claim
`
`Claim 1 of the ’349 patent is illustrative of the claims at issue:
`
`1. A heating, venting and/or air conditioning (HVAC) system
`comprising a system controller, a motor controller, an air-
`moving component, and a permanent magnet motor having a
`stationary assembly, a rotatable assembly in magnetic coupling
`relation to the stationary assembly, and a shaft coupled to the
`air-moving component, wherein the motor controller is
`configured for performing sinewave commutation, using
`independent values of Q and d axis currents, in response to one
`or more signals received from the system controller to produce
`
`
`1 Dr. Ehsani uses a lower-case letter q in referring to this axis. We use an
`upper-case letter Q for consistency with the claims that are before us.
`5
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`IPR2015-00762
`Patent 7,626,349 B2
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`continuous phase currents in the permanent magnet motor for
`driving the air-moving component.
`
`
`C. Asserted Ground of Unpatentability
`
`Petitioners challenge claims 1–3, 8, 9, 12, 16, and 19 as anticipated
`
`under 35 U.S.C. § 102(b) by JP 2003-348885, published December 5, 2003
`
`(Ex. 1003, “Hideji”). Pet. 5. Petitioners provide an attested English
`
`translation of the reference as Exhibit 1005.
`
`
`
`D. Related Proceedings
`
`In addition to IPR2014-01121, the ’349 patent is a subject of Nidec
`
`Motor Corp. v. Broad Ocean Motor LLC, Civil Action No. 4:13-CV-01895-
`
`JCH (E.D. Mo.). Id. at 3.
`
`
`
`E. Claim Construction
`
`The Board interprets claims using the broadest reasonable
`
`construction in light of the specification of the patent in which they appear.
`
`37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,766 (Aug. 14, 2012).
`
`In the related proceeding, the Board construed “using independent
`
`values of Q and d axis currents,” which is recited in independent claims 1,
`
`16, and 19, as requiring the use of Q and d axis current values that are
`
`developed independently of each other, without relying on one to derive the
`
`other; and construed “back-emf motor,” which is recited in claim 9, as
`
`6
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`IPR2015-00762
`Patent 7,626,349 B2
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`coterminous with “permanent magnet motor.” Zhongshan Broad Ocean
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`Motor Co., Ltd. v. Nidec Motor Corp., Case No. IPR2014-01121, slip op. at
`
`7–8 (PTAB Jan. 21, 2015) (Paper 20). Neither party contests these
`
`constructions, which we adopt for purposes of this decision.
`
`
`
`II. ANALYSIS
`
`A. Anticipation by Hideji
`
`Hideji discloses a refrigerant circuit of an air conditioning device with
`
`a compressor driven by a permanent magnet synchronous motor.2 Ex. 1005
`
`¶ 22. Figure 2 of Hideji is reproduced below.
`
`
`2 Hideji uses the terms “permanent magnet synchronous motor” and
`“brushless DC motor” synonymously. Ex. 1005 ¶ 22.
`7
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`Patent 7,626,349 B2
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`Figure 2 is a block diagram of a driving device for a permanent magnet
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`synchronous motor. Id. at ¶ 28. Driving device 50 includes three-phase
`
`pulse-width modulation (“PWM”) inverter 31, alternating-current power
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`supply 32, rectifier circuit 33, and control device 34. Id. at ¶ 30. The
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`control device includes power input part 35, three-phase/two-phase
`
`coordinate conversion part 36, rotor speed and position calculating part 37,
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`speed control part 38, phase control part 39, current control part 40, two-
`
`phase/three-phase coordinate conversion part 41, and induced voltage
`
`detecting part 42. Ex. 1005 ¶ 32. Two-phase/three-phase coordinate
`
`conversion part 41 outputs pulse-modulated sinusoidal voltage commands
`
`Vu, Vv, and Vw to a switching element of the three-phase PWM inverter,
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`thereby providing quasi-sinusoidal three-phase alternating current to the
`
`motor. Id. at ¶ 33. Three-phase/two-phase coordinate conversion part 36
`
`converts coordinates of two-phase alternating current Iu and Iv introduced by
`
`current input part 35 to a revolving coordination system on the rotor of the
`
`motor, and calculates flux current Id (d-axis current) and torque current Iq
`
`(Q-axis current). Id. at ¶ 35.
`
`We have reviewed Petitioners’ analysis of claims 1–3, 8, 9, 12, 16,
`
`and 19, and conclude that Petitioners have demonstrated a reasonable
`
`likelihood of prevailing on their contention that each of those claims is
`
`anticipated by Hideji. Pet. 11–48. In particular, at this stage of the
`
`proceeding, Petitioners have identified adequately features of Hideji’s air
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`conditioning system that correspond to the system controller (see id. at 12–
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`8
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`IPR2015-00762
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`14), motor controller (see id. at 14–15), air-moving component or blower
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`(see id. at 15–17, 35), and permanent magnet motor (see id. at 17–19),
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`combinations of which elements are recited in each of independent claims 1,
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`16, and 19. Petitioners also have identified sufficient structure of Hideji’s
`
`brushless DC motor that includes stator and rotor components, i.e.,
`
`stationary and rotatable assemblies with a shaft coupled to the air-moving
`
`component or blower, as recited in the independent claims. Id. at 17–19.
`
`Petitioners support their analysis with testimony of Dr. Ehsani. Ex. 1009.
`
`Of particular relevance to Petitioners’ analysis is their further
`
`contention that Hideji discloses “performing sinewave commutation, using
`
`independent values of Q and d axis currents, in response to one or more
`
`control signals received from the system controller to produce continuous
`
`phase currents in the permanent magnet motor for driving the air-moving
`
`component,” recited in each of independent claims 1, 16, and 19. Pet. at 19–
`
`26. Patent Owner contends that Hideji fails to disclose the use of
`
`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.” Prelim. Resp. 20.
`
`Petitioners observe that Figure 2 of Hideji illustrates that three-phase /
`
`two-phase coordinate conversion part 36 outputs separate values for Iq and
`Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that
`
`
`3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are
`identified directly as such in the original Japanese reference. Ex. 1003, 8.
`9
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`IPR2015-00762
`Patent 7,626,349 B2
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`[t]he three-phase/two-phase coordinate conversion part 36
`converts the coordinates of the alternating current Iu and Iv
`introduced by the current input part 35 to a revolving
`coordination system (d-q coordination system) on the rotor of
`the brushless DC motor 30A, and calculates flux current Id (d-
`axis current) and torque current Iq (q-axis current).
`
`
`
`
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`Ex. 1005 ¶ 35. Petitioners reason that such transformation results in
`
`separate, independent values of Q and d axis currents determined from
`
`control signals received from the system controller. Pet. 23. Petitioners
`
`support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38.
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`Patent Owner responds that “the values coming from part 36 are at
`
`best a transform into the rotating frame of reference of actual measured
`
`currents” and that “[t]hey are not the demanded currents generated by the
`
`controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of
`
`these values as “Iq” and “Id” in the original Japanese reference, Patent Owner
`
`also contends that they “are not values one of ordinary skill would refer to as
`
`Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the
`
`current control part 40 output that is used to create the continuous phase sine
`
`wave commutated currents for the motor after being transformed back out of
`
`the rotating frame of reference,” reasoning that “[i]f Iq and Id are not
`
`independent at this step, the ‘motor controller’ is not using ‘independent
`
`values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at
`
`24. Patent Owner contends that such inputs are not independent, noting
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`10
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`Patent 7,626,349 B2
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`Hideji’s disclosure that the flux current Id target value is expressed in terms
`2. Id. (citing Ex. 1005 ¶¶ 38–39).
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`of Iq as k×Iq
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`We conclude that Petitioners have established a reasonable likelihood
`
`of prevailing on their contention that Hideji discloses performing sinewave
`
`commutation using independent values of Q and d axis currents in the
`
`manner recited in each of independent claims 1, 16, and 19. Thus, we
`
`conclude that Petitioners have established a reasonable likelihood of
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`prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as
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`anticipated by Hideji.
`
`
`
`B. Time Bar Under 35 U.S.C. § 315(b)
`
`Section 315(b) provides:
`
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the
`date on which the petitioner . . . is served with a complaint
`alleging infringement of the patent. The time limitation set
`forth in the preceding sentence shall not apply to a request for
`joinder under subsection (c).
`
`
`
`Petitioners were served with a complaint alleging infringement of the ’349
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`patent on September 25, 2013. The Petition was filed on February 20, 2015,
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`more than a year later. Notwithstanding our determination that the Petition
`
`meets the standard set forth in 35 U.S.C. § 314(a), we conclude that
`
`institution of an inter partes review is barred by § 315(b).
`
`
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`11
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`Different panels of the Board have reached different conclusions
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`whether the exception to the time bar applies when a party requests joinder
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`of issues to a proceeding to which it is already a party. Compare Target
`
`Corp. v. Destiny Maternity Corp., Case No. IPR2014-00508, slip op. (PTAB
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`Feb. 12, 2015) (Paper 28) (expanded panel) with SkyHawke Techs., LLC v.
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`L&H Concepts, LLC, Case No. IPR2014-01485, slip op. (PTAB Mar. 20,
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`2015) (Paper 13). Petitioners contend that “[t]he Board has discretion to join
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`a properly filed IPR petition to a previously instituted IPR proceeding, even
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`where the petitioner seeking joinder is already a petitioner in the instituted
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`proceeding.” Mot. 4 (citations omitted). Patent Owner responds that the
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`“[t]he plain language of the statute, considered in light of its legislative
`
`history and the overall purpose and policy objectives of the AIA, strongly
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`supports an interpretation of [§] 315(c) that does not permit joinder of a
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`second petition by the same party, particularly when that petition is
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`otherwise time-barred under [§] 315(b).” Prelim. Resp. 4.
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`Section 315(c) provides:
`
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`
`In our view, the phrase “join as a party” indicates that only a person who is
`
`not already a party to an instituted inter partes review can be joined to the
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`12
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`proceeding. A person cannot be joined as a party to a proceeding in which
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`it is already a party. That the statute uses the expansive term “any person” is
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`of little moment because the overall language of the statute places
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`unambiguous limits on the term. Specifically, the phrase “join as a party”
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`excludes a person who is already a party.
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`It is instructive to recall the factual circumstances that led to the filing
`
`of the instant Petition. In the related proceeding, Petitioners filed a petition
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`for inter partes review challenging, inter alia, claims 1–3, 8, 9, 12, 16, and
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`19 as anticipated under 35 U.S.C. § 102(b) by Hideji. Zhongshan Broad
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`Ocean Motor Co., Ltd. v. Nidec Motor Corporation, Case No. IPR2014-
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`01121, slip op. at 6 (PTAB Jan. 21, 2015) (Paper 20). Although a purported
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`English translation of Hideji was filed as an exhibit, it did not include an
`
`affidavit attesting to the accuracy of the translation as required by 37 C.F.R.
`
`§ 42.63(b). Id. at 9. After briefing by the parties and the submission of
`
`testimonial evidence by Petitioners, a unanimous panel concluded that the
`
`petition was defective with respect to the ground based on Hideji, and denied
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`institution of that ground. Id. at 13. A unanimous panel also denied
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`Petitioners’ Request for Rehearing of that decision, noting that “it is not the
`
`inability to file attesting affidavits late that precludes Petitioner[s], but the
`
`fact that complete translations with attesting affidavits were not obtained and
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`filed prior to the date on which institution of inter partes review was barred
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`under 35 U.S.C. § 315(b).” Zhongshan Broad Ocean Motor Co., Ltd. v.
`
`Nidec Motor Corporation, Case No. IPR2014-01121, slip op. at 7 (PTAB
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`13
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`IPR2015-00762
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`Feb. 24, 2015) (Paper 25). Petitioners filed the instant Petition and Motion
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`for Joinder in a further effort to have an attested translation of Hideji
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`considered, despite the time bar of § 315(b). Mot. 5–6.
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`Petitioners trivialize the defect in their original petition by their
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`characterization that “[w]ith [their] original petition, [Petitioners] filed an
`
`English translation of Hideji, but omitted an affidavit attesting to the
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`accuracy of that translation.” Mot. 2. In fact, Petitioners were not even in
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`possession of an attested translation of Hideji until more than a year after
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`they were served with a complaint alleging infringement of the ’349 patent.
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`See Ex. 1005, 26 (attestion dated October 28, 2014). They could not have
`
`filed an affidavit attesting to the accuracy of the translation at any time
`
`during the one-year window provided by § 315(b) because no such affidavit
`
`existed. This is a more substantively significant defect than the mere
`
`omission of an existing affidavit that could establish the accuracy of the
`
`translation.
`
`Petitioners’ filing of the instant Petition and Motion for Joinder begs
`
`the obvious question: What is different now? In the related proceeding,
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`Petitioners requested that the Board exercise its discretion to institute based
`
`on a ground for which insufficient evidence existed until after the statutory
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`time window had closed.4 In this proceeding, Petitioners also request that
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`the Board exercise its discretion to institute based on a ground for which
`
`insufficient evidence existed until after the statutory time window had
`
`closed. For the reasons expressed above, we disagree that we have such
`
`discretion through the joinder provision of § 315(c).
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`
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`III. ORDER
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`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied and no inter partes review is
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`instituted.
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`
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`4 In the related proceeding, the parties did not raise, and we did not address,
`whether we even had discretion to do so in light of 35 U.S.C. § 312(a)(3)(B):
`“A petition filed under section 311 may be considered only if . . . the petition
`identifies the evidence that supports the grounds for the challenge to each
`claim, including . . . affidavits or declarations of supporting evidence and
`opinions, if the petitioner relies on expert opinions.”
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`Opinion Dissenting filed by Administrative Patent Judge TARTAL.
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`
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`In this case the Board is presented with the issues of: (1) whether the
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`
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`Petitioners may be joined to an inter partes review previously instituted to
`
`which it is a party; and, (2) whether grounds of unpatentability asserted in
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`the Petition not previously instituted may be joined. For the reasons
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`explained by several majority opinions in prior decisions of the Board, I am
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`of the opinion that 35 U.S.C. § 315(c) permits the joinder of any person who
`
`properly files a petition under § 311, including a petitioner who is already a
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`party to the earlier instituted inter partes review. See Medtronic Inc. v. Troy
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`R. Norred, M.D., Case IPR2014-00823 (PTAB December 8, 2014) (Paper
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`12); Target Corp. v. Destination Maternity Corp., Case IPR2014-00508
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`(PTAB Feb. 12, 2015) (Paper 28). I am also of the opinion that § 315(c)
`
`encompasses both party joinder and issue joinder, and, as such, permits
`
`joinder of issues, including new grounds of unpatentability, presented in the
`
`petition that accompanies the request for joinder. See id.
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`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
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`Board will determine whether to grant joinder on a case-by-case basis,
`
`taking into account the particular facts of each case, substantive and
`
`procedural issues, and other considerations. See 157 CONG. REC. S1376
`
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
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`and when to allow joinder, the Office may consider factors including “the
`
`breadth or unusualness of the claim scope” and claim construction issues).
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`When exercising its discretion, the Board is mindful that patent trial
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`regulations, including the rules for joinder, must be construed to secure the
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`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`
`§ 316(b); 37 C.F.R. § 42.1(b).
`
`The Petition presents only one ground of unpatentability, alleging
`
`claims 1–3, 8, 9, 12, 16, and 19 of the ’349 patent are anticipated by Hideji
`
`under 35 U.S.C. § 102(b). Pet. 5. Although the same ground was asserted
`
`by Petitioners in IPR2014-01121, institution was denied in the earlier
`
`proceeding, not on the merits, but because Petitioners failed to include an
`
`attesting affidavit with the English translation of Hideji, counter to the
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`requirement set forth in 37 C.F.R. §42.63(b). See Zhongshan Broad Ocean
`
`v. Nidec Motor, Case IPR2014-01121 (PTAB Jan. 21, 2015) (Paper 20). In
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`the institution decision in IPR2014-01121 the Board denied Petitioners’
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`motion to submit corrected exhibits to include an attesting affidavit to Hideji
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`because Petitioners did not demonstrate that the failure to include the
`
`required affidavit was a clerical mistake that could be remedied in
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`accordance with 37 C.F.R. §104(c). Id. at 9–12.
`
`It is my opinion that the public interest in securing the just, speedy,
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`and inexpensive resolution of every proceeding would be served in this case
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`more fully by considering the merits of the alleged ground of unpatentability
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`based on Hideji rather than by denying consideration on reasons tied to
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`Petitioners’ previous failure to attach the requisite attesting affidavit. With
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`respect to the impact of joinder on the trial schedule, Petitioners states that it
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`2
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`
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`IPR2015-00762
`Patent 7,626,349 B2
`
`
`
`will accept a reduced period of time to reply to Patent Owner’s response to
`
`the Petition, and will accommodate reasonable logistical and scheduling
`
`requests by Patent Owner to accommodate joinder of the proceedings. Paper
`
`4, 10.
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`I have further considered Patent Owners arguments against joinder
`
`(Paper 10, 4–18), and it is my opinion that joinder is warranted under the
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`particular facts of this case. While Patent Owner is correct that Petitioners
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`have unsuccessfully pursued multiple approaches to resolve the deficiency in
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`its petition in IPR2014-01121, Petitioners are not attempting to cure a
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`deficiency in the merits of a ground asserted in the prior Petition by filing a
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`second petition. Thus, contrary to Patent Owner’s assertion, this case is not
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`similar to a case in which a petitioner seeks to introduce additional grounds
`
`based on additional prior art through a second petition. Patent Owner has
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`been aware of the ground of unpatentability based on Hideji asserted in the
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`Petition in this proceeding since a petition was filed in IPR2014-01121 on
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`July 3, 2014. The Petition also relies upon the same declaration provided by
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`Dr. Mark Ehsani in IPR2014-01121 (Ex. 2009). Thus, it is my opinion that
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`the prejudice to Patent Owner of joining the ground at this stage of the
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`proceeding is minimal. I also agree with the analysis and conclusion set
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`forth in the majority opinion that Petitioners have established a reasonable
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`likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19
`
`as anticipated by Hideji.
`
`3
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`
`
`IPR2015-00762
`Patent 7,626,349 B2
`
`For the reasons above, I dissent from the majority decision not to
`
`
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`
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`institute inter partes review on the ground of unpatentability of claims 1–3,
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`8, 9, 12, 16, and 19 of the ’349 patent as anticipated by Hideji under 35
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`U.S.C. § 102(b) and would join this proceeding with IPR2014-01121.
`
`4
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`
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`
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`IPR2015-00762
`Patent 7,626,349 B2
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`
`
`PETITIONER
`
`Steven Meyer
`Seth Atlas
`LOCKE LORD LLP
`smeyer@lockelord.com
`ptopatentcommunications@lockelord.com
`
`
`
`PATENT OWNER
`
`Scott Brown
`Matthew Walters
`HOVEY WILLIAMS LLP
`jcrawford@hoveywilliams.com
`mwalters@hooveywilliams.com
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