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 OPPOSITION TO
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ............................................................................................. ii
`TABLE OF AUTHORITIES ........................................................................................... .. ii
`
` IPR2014-01121 IS SET FOR ORAL ARGUMENT ON OCTOBER 16, AND THUS A
`I.
`IPR2014—01 121 IS SET FOR ORAL ARGUMENT ON OCTOBER 16, AND THUS A
`I.
` GRANT OF REHEARING WOULD SUBSTANTIALLY PREJUDICE PATENT OWNER. ... 1
`GRANT OF REHEARING WOULD SUBSTANTIALLY PREJUDICE PATENT OWNER. ...1
`
`II. THE INTERVENOR’S BRIEF FILED IN YISSUM RESEARCH DID NOT TRANSFORM
`II. THE INTERVENOR’S BRIEF FILED IN YISSUM RESEARCH DID NOT TRANSFORM
` TARGET INTO BINDING PRECEDENT ...................................................................... 2
`TARGET INTO BINDING PRECEDENT .................................................................... ..2
`
`III. INTERVENOR’S BRIEF DOES NOT INTRODUCE ANY CONVINCING NEW
`III.
`INTERVENOR’S BRIEF DOES NOT INTRODUCE ANY CONVINCING NEW
` ARGUMENT IN SUPPORT OF TARGET’S INTERPRETATION OF SECTION 315(C). ...... 5
`ARGUMENT IN SUPPORT OF TARGET ’S INTERPRETATION OF SECTION 315(C). .... ..5
`
`IV. A RREASONABLE DIFFERENCE OF OPINION DOES NOT CONSTITUTE ABUSE
`IV. A RREASONABLE DIFFERENCE OF OPINION DOES NOT CONSTITUTE ABUSE
` OF DISCRETION. ................................................................................................... 6
`OF DISCRETION. ................................................................................................. ..6
`
`V. REHEARING IS UNLIKELY TO CHANGE THE BOARD’S DECISION BECAUSE
`V. REHEARING IS UNLIKELY TO CHANGE THE BOARD’S DECISION BECAUSE
` EQUITABLE CONSIDERATIONS WEIGH AGAINST JOINDER. ................................... 7
`EQUITABLE CONSIDERATIONS WEIGH AGAINST JOINDER. ................................. ..7
`
`VI. THIS CASE IS NOT THE APPROPRIATE VEHICLE FOR ADDRESSING THE
`VI. THIS CASE IS NOT THE APPROPRIATE VEHICLE FOR ADDRESSING THE
` BOARD’S DIFFERENCE OF OPINION. ...................................................................10
`BOARD’S DIFFERENCE OF OPINION. ................................................................. .. 10
`
`VII.CONCLUSION. .....................................................................................................13
`VII.CONCLUSION. ................................................................................................... .. 13
`
`CERTIFICATE OF SERVICE ..........................................................................................14
`CERTIFICATE OF SERVICE ........................................................................................ .. 14
`
`
`
`i
`
`
`
`
`
`

`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`ABB Inc. v. Roy-G-Biv Corp.
` IPR2013-00286 (PTAB Aug. 9, 2013) .................................................................10
`
`Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc.
` IPR2014-01365 (PTAB Feb. 4, 2015) .................................................................... 7
`
`Arris Group, Inc. v. Cirrex Systems LLC
` IPR2015-00530 (PTAB July 27, 2015) .................................................................. 9
`
`Chevron, USA, Inc. v. Natural Resource Defense Council, Inc.
` 467 US 837 (1984) .................................................................................................. 4
`
`Harmonix Music Systems, Inc. v. Princeton Digital Image Corp.
` IPR2015-00271 (PTAB June 2, 2015) .................................................................... 9
`
`Medtronic v. Endotach
` IPR2014-00695 (PTAB Sept. 25, 2014) ................................................................. 5
`
`Micro Motion v. Invensys Systems
` IPR2014-01409 (PTAB Feb. 18, 2015) .................................................................. 8
`
`Microsoft Corp. v. Proxyconn, Inc.
` IPR2013-00109 (PTAB Feb. 25, 2013) ................................................................10
`
`Promega Corp. v. Life Tech. Corp.
` 773 F.3d 1338 (Fed. Cir. 2014) .............................................................................. 6
`
`Samsung Electronics v. Affinity Labs of Texas
` IPR2015-00821 (PTAB May 15, 2015) .................................................................. 9
`
`Samsung v. Virginia Innovation
` IPR2014-00557 (PTAB June 13, 2014) ................................................................10
`
`SecureBuy LLC v. CardinalCommerce Corp.
` CBM2014-00035 (PTAB Apr. 25, 2014) .............................................................11
`
`
`
`
`ii
`
`

`
`Skyhawke Technologies v. L&H Concepts
` IPR2014-01485 (PTAB Mar. 20, 2015) ................................................................. 5
`
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00327 (PTAB Sept. 22, 2014) ...............................................................10
`
`
`Target Corp. v. Destiny Maternity Corp.
` IPR2014-00508 (PTAB Feb. 12, 2015) ..............................................................2, 8
`
`Versata Dev. Grp., Inc. v. SAP Am., Inc.
` 793 F.3d 1306 (Fed. Cir. 2015) ........................................................................3, 12
`
`Yissum Research Dev. Corp. v. Sony Corp.
` Appeal No. 2015-1342 (Fed. Cir. June 25, 2015) ......................................... 2, 4, 7
`
`
`Other Authorities
`35 U.S.C. § 314 ........................................................................................................11
`
`35 U.S.C. § 324 ........................................................................................................12
`
`35 U.S.C. § 325 .......................................................................................................... 2
`
`35 U.S.C. §271 ........................................................................................................... 6
`
`35 U.S.C. §315 ...................................................................... 4, 6, 7, 8, 10, 11, 12, 13
`
`37 C.F.R. § 42.1 ......................................................................................................... 2
`
`37 C.F.R. § 42.71 ....................................................................................................... 1
`
`PTAB Standard Operating Procedure, 1 § III.E (Rev. 14, May 8, 2015) .................. 5
`
`Wasserman, Mellisa F., The Changing Guard of Patent Law: Chevron Deference
`for the PTO, 54 Wm. & Mary L. Rev. 1959 (2013) ............................................... 4
`
`
`
`iii
`
`

`
`Pursuant to 37 C.F.R. § 42.71(d), Petitioners requested rehearing of the
`
`Decision (Paper 12) denying Petitioners’ Motion for Joinder and the resulting denial
`
`of the institution of an inter partes review of U.S. Patent No. 7,626,349 (“the ’349
`
`patent”). For the following reasons, Petitioners fail to meet their burden of showing
`
`that the Decision should be modified. Nidec Motor Corporation (“Nidec”)
`
`respectfully requests that this Board deny Petitioners’ Motion.
`
`I.
`
`IPR2014-01121 IS SET FOR ORAL ARGUMENT ON OCTOBER 16,
`AND THUS A GRANT OF REHEARING WOULD SUBSTANTIALLY
`PREJUDICE NIDEC.
`
`Petitioners seek to join IPR2014-01121. (Paper 4, at 4). Oral argument in
`
`IPR2014-01121 is scheduled for October 16, 2015. IPR2014-01121, Paper 21. At
`
`this late date, a grant of rehearing would substantially prejudice Nidec. Indeed, that
`
`proceeding is concluding and Nidec has expended substantial time and effort
`
`developing a case of non-obviousness, including identification of objective
`
`indications of non-obviousness. See IPR2014-01121, Paper 29. Nidec’s effort in
`
`IPR2014-01121 may be entirely wasted if anticipation based on Hideji (IPR2015-
`
`00762, Paper 3, at 11-44) is now joined to that proceeding. Nidec may then have to
`
`amend and much of the work to date may become moot. Nidec urges the Board to
`
`bear this potential for prejudice in mind in deciding this Motion, particularly given
`
`that Petitioners’ sole purpose in seeking rehearing is to attempt yet another “bite at
`
`the apple” to rectify a “substantively significant defect” in their original petition.
`
`
`
`1
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`

`
`(Decision, Paper 12, at 14). Permitting joinder now would be contrary to the goal of
`
`securing “the just speedy, and inexpensive resolution of every proceeding” and the
`
`Board should not exercise its discretion to Nidec’s prejudice. 37 C.F.R. § 42.1(b);
`
`35 U.S.C. § 325(d).
`
`II. THE INTERVENOR’S BRIEF FILED IN YISSUM RESEARCH DID
`NOT TRANSFORM TARGET INTO BINDING PRECEDENT
`
`On June 25, 2015, the PTO’s Office of the Solicitor filed an Intervenor’s Brief
`
`with the Federal Circuit in Yissum Research Dev. Corp. v. Sony Corp., Appeal No.
`
`2015-1342 (Attachment A to Petitioners’ Motion for Rehearing) (the “Intervenor’s
`
`Brief”). Grasping at straws, Petitioners now argue essentially that the Intervenor’s
`
`Brief has somehow transformed the Board’s 4-3 decision in Target Corp. v. Destiny
`
`Maternity Corp., IPR2014-00508, into binding precedent, and that the panel in the
`
`present case has “abused its discretion by narrowly interpreting the phrase ‘join as a
`
`party’ to exclude a person who is already a party because it is inconsistent with the
`
`broader interpretation of that phrase set forth” by the Target majority. In fact, Target
`
`has not been designated as a precedential opinion, and it has not been transformed
`
`into binding precedent by statements appearing in the Intervenor’s Brief that have
`
`been taken entirely out of context. The suggestion that judges on this (and other)
`
`panels who have chosen not to follow Target have abused their discretion is quite
`
`simply wrong.
`
`The Intervenor’s Brief was filed by the Solicitor acting in his role as advocate
`
`
`
`2
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`

`
`for affirmance of a specific Board decision, and should not be construed as somehow
`
`limiting the discretion of judges on the Board. The briefs filed by the Solicitor in
`
`Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) demonstrate
`
`that the Solicitor’s job is to defend PTO legal actions, not state PTO policy. When
`
`Versata was before the district court, the PTO argued that “issues decided by the
`
`PTAB at the institution stage are preserved for review at the time of an appeal to the
`
`Federal Circuit of the PTAB’s final written decision.” Id. at 1318. However, on
`
`appeal the PTO did an about-face, and argued for “what it characterize[d] as a
`
`‘jurisdiction[al]’ bar on [the Federal Circuit’s] review of at least some of the issues
`
`decided at the initial decision to institute stage.” Id. The Federal Circuit pointed out
`
`the “‘bait-and-switch’ aspect to the Government’s newly-arrived-at position: when
`
`it helps the Government’s position, a predicate issue, they argue, can be reviewed
`
`on appeal; but when it might hurt, the issue becomes not reviewable.” Id.
`
`Ultimately, the Federal Circuit decided in Versata that the PTO was “right the
`
`first time,” and adopted the position that the PTO argued for at the district court
`
`level, while rejecting the arguments the PTO’s Solicitor made before the Federal
`
`Circuit. Id. Suffice it to say that a single appellate brief filed by the Solicitor as
`
`Intervenor on behalf of one panel’s decision should not be taken as a definitive
`
`statement of PTO policy, nor does it transform a 4-3 panel decision into binding
`
`precedent that limits the discretion of subsequent panels.
`
`
`
`3
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`

`
`Petitioners state that in the Intervenor’s Brief “the Patent Office told the
`
`Federal Circuit that it should defer to the Board’s broad interpretation of 315(c) set
`
`forth in Target,” citing Chevron, USA, Inc. v. Natural Resource Defense Council,
`
`Inc., 467 US 837, 842-43 (1984), and apparently suggest that panels should bestow
`
`Chevron deference on Target. But Chevron deference applies to judicial review of
`
`agency decisions, and is generally limited to decisions resulting from formal
`
`rulemaking and adjudications. Melissa F Wasserman, The Changing Guard of
`
`Patent Law: Chevron Deference for the PTO, 54 Wm. & Mary L. Rev. 1959, 1967-
`
`76 (2013). Significantly, the courts have not applied Chevron deference to PTO
`
`decisions. Id. More importantly, Chevron deference does not apply to Board
`
`decisions, and Chevron in no way compels one panel to defer to an earlier non-
`
`precedential panel opinion.
`
`Petitioners point to language in the Intervenor’s Brief asserting that the PTO
`
`“has acted to ensure that its pronouncements remain consistent on this issue, which
`
`is the antithesis of Yissum’s suggestion that the USPTO ‘cannot make up its mind
`
`about the proper interpretation of 315(c).’” When read in context, it seems clear that
`
`the Solicitor attempts to refute the appellant’s contention that the PTO had “flipped
`
`and then flopped” in its interpretation of 315(c). Intervenor’s Brief at 20. Perhaps a
`
`better response would have been to point out that there currently exists a difference
`
`of opinion on the Board, and that this is not flip-flopping, but rather a foreseeable
`
`
`
`4
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`

`
`and legitimate state of affairs in a situation like this, where no regulations or
`
`precedential case law control interpretation of ambiguous statutory language.
`
`Petitioners’ suggestion that the PTO has somehow announced to judges on the
`
`Board that they must follow Target is belied by post-Target panel decisions that
`
`have followed the rationale set forth in the Target dissent, including the panels that
`
`decided the present case and Skyhawke Technologies v. L&H Concepts, IPR2014-
`
`01485, Paper 13, at 3-4 (PTAB March 20, 2015). See also Medtronic v. Endotach,
`
`IPR2014-00695, Paper 18, concurrence, at 1-2 (PTAB Sept. 25, 2014). Petitioners
`
`quote language from the Intervenor’s Brief implying that somehow the Board did
`
`not have the “opportunity to ensure consistency in” Skyhawke because the petitioner
`
`did not seek rehearing. But when an expanded panel is designated, “the judges on
`
`the initial panel shall, if available, be designated as part of the expanded panel.”
`
`PTAB Std. Oprt’g Proc. 1 § III.E (Rev. 14, May 8, 2015). Since Skyhawke was
`
`unanimous, even if the panel was expanded to five members it seems very likely that
`
`the original three members would still constitute the majority. The Skyhawke panel
`
`was well aware of Target, so there is no reason to think those three judges would be
`
`likely to change their decision.
`
`III.
`
`INTRODUCE ANY
`INTERVENOR’S BRIEF DOES NOT
`CONVINCING NEW ARGUMENT IN SUPPORT OF TARGET’S
`INTERPRETATION OF SECTION 315(C).
`
`In large part, the Intervenor’s Brief rehashes statements taken from the
`
`
`
`5
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`

`
`majority opinion in Target, without introducing any new arguments that should
`
`weigh in favor of the Board reaching a different decision in this case. Although the
`
`Solicitor asks the court for deference, as discussed above, Chevron does not require
`
`a panel of the Board to defer to an earlier non-precedential opinion by another panel.
`
`The Intervenor’s Brief argues that the Target majority’s conclusion that the
`
`language of 315(c) allowing the Board to “join [a person] as a party” allows the
`
`joinder of a person who is already a party to an instituted IPR is “consistent with [the
`
`Federal Circuit’s] construction of 35 U.S.C. §271(f)(1)” in Promega Corp. v. Life
`
`Tech. Corp. 773 F.3d 1338, 1351-1352 (Fed. Cir. 2014). But in Promega, the
`
`question was whether the statutory language “to actively induce” requires
`
`involvement of a third party. The court concluded that no third party is required,
`
`because while “the word ‘induce” can suggest that one is influencing or persuading
`
`‘another[,”] induce also encompasses the more broad concept of ‘to bring about, to
`
`cause.’” 773 F.3d at 1351. The Federal Circuit’s opinion in Promega thus has little
`
`bearing on the meaning of “join as a party” in 315(c).
`
`IV. A REASONABLE DIFFERENCE OF OPINION DOES NOT
`CONSTITUTE ABUSE OF DISCRETION.
`
`The Board’s decision in the case was not an abuse of discretion, but at most
`
`reflects a “reasonable difference of opinion” amongst judges on the Board. Various
`
`panels have recognized the legitimacy of this ongoing difference of opinion. For
`
`example, in Amneal Pharmaceuticals v. Endo Pharmaceuticals the panel adopted
`
`
`
`6
`
`

`
`the Target majority’s interpretation of 315(c), but went on to state that “[we] respect
`
`our colleagues’ well-reasoned position in [the Target dissent, and recognize] that
`
`reasonable minds can differ on an interpretation of 35 U.S.C. §315 as it relates to
`
`joining a party to an earlier proceeding in which the party is already a participant.”
`
`Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., IPR2014-01365,
`
`Paper 13, at 4 (PTAB February 4, 2015). Similarly, the Intervenor’s Brief finds the
`
`statute to be “ambiguous” as to whether a party can be added to a proceeding to
`
`which it is already a party. Intervenor’s Brief at 19.
`
`V. REHEARING IS UNLIKELY TO CHANGE THE BOARD’S
`DECISION BECAUSE EQUITABLE CONSIDERATIONS WEIGH
`AGAINST JOINDER.
`
`Even if the Board were to rehear this case and reverse itself on the question
`
`of whether 315(c) permits discretionary joinder under these circumstances, it would
`
`be highly unlikely to change the ultimate outcome of the case because equitable
`
`considerations weigh strongly against joinder. In fact, given the impending October
`
`16, 2015 oral argument in IPR2014-01121, and the resulting prejudice to Nidec if
`
`rehearing is granted, the equitable considerations favoring denial of joinder are even
`
`stronger now than when the Board issued its original Decision in this case.
`
`In its Preliminary Response, Nidec summarized numerous Board decisions
`
`which clearly established that, in cases where the Board concluded that it had
`
`discretion under 315(c) to grant joinder, permission to join had been expressly
`
`
`
`7
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`

`
`reserved for situations in which joinder operates as an equitable remedy. Nidec’s
`
`Preliminary Response, Paper 10 at 10-13. Typically, this has involved a prejudicial
`
`change of circumstances brought about through no fault of a petitioner, and often as
`
`a direct result of some action taken by the patent owner. See, e.g., Micro Motion v.
`
`Invensys Systems, IPR2014-01409, Paper 14, at 14 (“This is not a case where
`
`circumstances have changed that would make joinder an equitable remedy for
`
`Petitioner.”); Target v. Destination Maternity Corporation, IPR2014-00508, Paper
`
`28, at p.2-3 and Paper 3, at 2-3; (patent publication known to Patent Owner and
`
`requested in federal court discovery was withheld from Petitioners until after a bar
`
`arose under § 315(b)).
`
`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. Nidec’s
`
`Preliminary Response, Paper 10 at 14-16. And this practice continues to this day.
`
`For example, in Samsung v. Affinity Labs of Texas, after noting that different Board
`
`panels had come to contrary positions on the issue of same-party joinder under
`
`315(c), the panel found that it did not need to address the issue because joinder was
`
`not supported by equitable considerations. Samsung Electronics v. Affinity Labs of
`
`Texas, IPR2015-00821, Paper 10, at 4 (PTAB May 15, 2015). The panel pointed
`
`out that this was not a “case of changed circumstances - such as new claims being
`
`
`
`8
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`

`
`asserted during district court litigation or new threats of infringement - that would
`
`make joinder an equitable remedy.” Id.
`
`Similarly, in Harmonix Music Systems, Inc. v. Princeton Digital Image Corp.,
`
`the Board denied a motion for joinder after finding that the petitioner had not
`
`“satisfied its burden of proof in showing entitlement to joinder,” and that the
`
`petitioner had presented “no persuasive argument or evidence to explain why the
`
`grounds of unpatentability asserted in the Petition could not have been asserted in
`
`[an already instituted IPR].” Harmonix Music Systems, Inc. v. Princeton Digital
`
`Image Corp., Paper 15, at 10 (PTAB June 2, 2015). In Arris Group, Inc. v. Cirrex
`
`Systems LLC, the Board denied joinder after finding that “although Petitioner alleges
`
`this is not a second bite at the apple, Petitioner fails to provide a basis for why it
`
`could not have challenged the additional claims in the First Petition.” Arris Group,
`
`Inc. v. Cirrex Systems LLC, Paper 12, at 8-9 (PTAB July 27, 2015).
`
`Tellingly, none of the decisions cited by Petitioners in which the Board
`
`granted joinder involved an attempt to correct a fatal misstep entirely attributable to
`
`a petitioner after the expiration of the 315(b) bar. Petitioners’ Motion for Rehearing
`
`at 4-5. For example, the 315(b) time bar did not apply in Ariosa Diagnostics v. Isis
`
`Innovation and Sony Corp. v. Yissum Research. Ariosa Diagnostics, Inc. v. Isis
`
`Innovation Ltd., Paper 24; Sony Corp. v. Yissum Research Dev. Co. of the Hebrew
`
`Univ. of Jerusalem, IPR2013-00327, Paper 15.
`
`
`
`9
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`

`
`In Samsung v. Virginia Innovation, the petition sought a very limited
`
`expansion of the proceedings in order to address the relevance of a single prior art
`
`reference to a single subject matter, in a case where 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 sought “consistency of
`
`outcome concerning similar sets of claimed subject matter and prior art.” Samsung
`
`v. Virginia Innovation, IPR2014-00557, Paper 10.
`
`In Microsoft Corp. v. Proxyconn, the petitioner had proceeded expeditiously
`
`in filing a second petition after learning that the patent owner had asserted additional
`
`claims in concurrent district court litigation and the petitioner had been diligent and
`
`timely in filing a motion after becoming aware of the newly asserted claims.
`
`Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, Paper 15.
`
`Finally, in ABB Inc. v. Roy-G-Biv Corp., the Board granted the petition for
`
`joinder after noting that the prior art references cited in the second petition
`
`substantially overlapped with the references at issue in the already instituted
`
`proceedings, and the patent owner had explicitly waived its right to oppose the
`
`motion for joinder. ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286, Paper 14.
`
`VI. THIS CASE IS NOT THE APPROPRIATE VEHICLE FOR
`ADDRESSING THE BOARD’S DIFFERENCE OF OPINION.
`
`Petitioners assert that the only way to resolve the inconsistent interpretations
`
`of 315(c) by various judges and panels “would be to have an expanded panel finally
`
`
`
`10
`
`

`
`decide how the Patent Office will interpret 315(c) once and for all.” Target clearly
`
`demonstrates that an expanded panel would not establish consistency unless the
`
`decision is designated precedential, and Petitioners address this reality in a footnote
`
`by requesting that the proposed expanded panel decision be made precedential.
`
`As of September 12, 2015, the PTO website indicates that only one PTAB
`
`decision involving the interpretation of the AIA has been declared precedential,
`
`SecureBuy LLC v. CardinalCommerce Corp., CBM2014-00035, Paper 12 (PTAB
`
`April 25, 2014). http://www.uspto.gov/patents-application-process/patent-trial-and-
`
`appeal-board/decisions
`
`and
`
`http://www.uspto.gov/patents-application-
`
`process/appealing-patent-decisions/decisions-and-opinions/precedential, last visited
`
`September 13, 2015. SecureBuy was a three-judge panel’s decision interpreting
`
`CBM review. The idea of expanding the panel and then declaring the resulting
`
`expanded decision precedential is thus apparently without precedent.
`
`Petitioners go on to argue that “the need to decide this issue now is all the
`
`more pressing given that Petitioners cannot appeal the narrow interpretation of
`
`315(c) set forth in the subject decision to the Federal Circuit.” Petitioners assume
`
`that 35 U.S.C. § 314(d) disallows any appeal of any Board decision granting or
`
`denying a motion for joinder under 315(c), and as a consequence “the Federal Circuit
`
`cannot resolve any conflicts in the Board panels’ constructions of 315(c), and thus
`
`there is a “pressing need” to decide the issue now, presumably by means of a
`
`
`
`11
`
`

`
`precedential expanded panel decision. The only authority cited in support of this
`
`interpretation of § 314(d) is the Intervener’s Brief.
`
`Petitioners are correct in noting that the Intervenor’s Brief does argue that
`
`§ 314(d) denies the Federal Circuit jurisdiction to review a Board decision to
`
`institute an IPR and join it with another IPR under 315(c). However, the Intervenor’s
`
`Brief was filed on June 25, 2015, prior to the Federal Circuit’s precedential opinion
`
`in Versata. In Versata, the PTO made essentially the same argument with respect to
`
`35 U.S.C. § 324(e), but the Federal Circuit rejected the PTO’s position, finding that
`
`the Federal Circuit does have authority to review a decision to institute once the
`
`review has been finally decided. 793 F.3d. at 1323. Versata points out that 314(d)
`
`and 324(e) are counterparts, “except that 314(d) applies specifically to IPR cases,
`
`whereas 324(e) applies to PGR and CBM” cases. Id. at 1316. Indeed, the language
`
`of 314(d) and 324(e) are identical except for the fact that one references IPR and the
`
`other PGR.
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`It thus seems quite likely that the Board’s disagreement over the proper
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`interpretation of 315(c) will be resolved in the not too distant future by Yissum
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`Research, since that case has already been briefed. The imminent decision in Yissum
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`Research weighs against the Board taking the unprecedented step of convening an
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`expanded panel to render a precedential decision on the interpretation of 315(c).
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`Furthermore, even if Yissum Research does not decide the issue, the PTO
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`could resolve it through rulemaking or by designating as precedential a subsequent
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`decision where equitable considerations weigh more strongly in favor of joinder.
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`This is not the right case to address the difference of opinion, particularly given the
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`potential prejudice to Nidec in view of the impending October 16 oral argument.
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`VII. CONCLUSION.
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`For all these reasons, the petition for rehearing should be denied.
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`Dated: September 18, 2015
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`Respectfully Submitted,
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` /s/ Scott R. Brown
`Scott R. Brown, Reg. No. 40,535
`Matthew B. Walters, Reg. No. 65,343
`HOVEY WILLIAMS LLP
`10801 Mastin Blvd., Suite 1000
`Overland Park, Kansas 66210
`Tel: (913) 647-9050
`Fax: (913) 647-9057
`sbrown@hoveywilliams.com
`mwalters@hoveywilliams.com
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`ATTORNEYS FOR PATENT OWNER
`NIDEC MOTOR CORPORATION
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the 18th day of September, 2015, a
`true and accurate copy of the foregoing Patent Owner’s Opposition to Petitioners’
`Request for Rehearing was filed through the Patent Review Processing System and
`served on the following counsel for Petitioners via email:
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`Steven F. Meyer
`LOCKE LORD LLP
`Three Financial Center
`New York, New York 10281-2101
`Tel: (212) 415-8535
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`smeyer@lockelord.com
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` /s/ Scott R. Brown
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