from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-01121, IPR2015-00762.
R. Brown, Hovey Williams LLP, Overland Park, KS, argued for
appellant. Also represented by Matthew B. Walters;
Christopher Michael Holman, University of Missouri-Kansas
City School of Law, Kansas City, MO.
F. Meyer, Locke Lord LLP, New York, NY, argued for appellees.
Also represented by JOSEPH Anthony Farco; Charles Baker,
K. Kelley, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA argued for intervenor. Also
represented by FRANCES Lynch, Joseph Matal, Scott
R. Marsh, Arnold & Porter Kaye Scholer LLP, Washington,
DC, for amicus curiae Biotechnology Innovation Organization.
Also respresented by Sean Michael Callagy, San Francisco, CA.
Dyk, Reyna, and WALLACH, Circuit Judges.
Motor Corporation ("Nidec") appeals a final written
decision of the Patent Trial and Appeal Board
("Board") in an inter partes review
("IPR"). The Board determined that claims 1-3, 8,
9, 12, 16, and 19 of U.S. Patent No. 7, 626, 349 (the
"'349 Patent") are invalid as anticipated or
obvious. We affirm.
Nidec owns the '394 patent, which is directed to
low-noise heating, ventilating, and air conditioning
("HVAC") systems. The patented HVAC system includes
a permanent magnet electric motor that turns a fan in order
to move air through ductwork. As compared to conventional
HVAC systems, the invention achieves quieter operation of the
motor due to improvements in the motor controller.
Specifically, the improved motor controller performs sinewave
commutation instead of more conventional square-wave
commutation. Commutation refers generally to the repeated
sequencing of electrical currents applied to windings within
the permanent magnet motor that causes the motor to rotate.
Square-wave commutation involves abrupt changes in the
voltage applied to a given winding as the sequence
progresses, similar to repeatedly flipping a switch between
three voltage states: positive, zero, and negative. Sinewave
commutation, by contrast, involves more gradual and
continuous oscillations in applied voltage, similar to
sliding a dimmer switch between those states. As compared to
square-wave commutation, sinewave commutation results in less
vibration and noise generated from the electric motor.
Zhongshan Broad Ocean Motor Co., Ltd.; Broad Ocean Motor LLC;
and Broad Ocean Technologies, LLC (collectively, "Broad
Ocean") filed an IPR petition challenging claims 1-3, 8,
9, 12, 16, and 19 of the '349 patent (the
"challenged claims"). In a revised petition
("First Petition"), Broad Ocean asserted that the
challenged claims are invalid as obvious over the combination
of U.S. Patent No. 5, 410, 230 ("Bessler") and a
published doctoral thesis by Peter Franz Kocybik
("Kocybik"). Broad Ocean also asserted that the
challenged claims are invalid as anticipated by Japanese
Patent Publication JP 2003-348885 ("Hideji").
January 21, 2015, the Board instituted review on the ground
of obviousness over Bessler and Kocybik. The Board declined
to institute review on the ground of anticipation by Hideji,
however, because Broad Ocean had failed to provide an
affidavit attesting to the accuracy of the submitted
translation of Hideji as required by 37 C.F.R. §
month later, Broad Ocean filed a second petition for IPR
("Second Petition"), again asserting that the
challenged claims are anticipated by Hideji. This time, Broad
Ocean included the required affidavit. At the same time,
Broad Ocean requested that the Board join the Second Petition
with Broad Ocean's already-instituted IPR involving the
First Petition pursuant to 35 U.S.C. § 315(c) (allowing
for joinder in an IPR at the discretion of the Director of
the United States Patent and Trademark Office
20, 2015, a panel of three Administrative Patent Judges again
declined to institute review on the ground that Hideji
anticipates. The panel majority determined that Broad Ocean
had been served with a complaint alleging infringement of the
'349 patent on September 25, 2013-more than one year
before Broad Ocean filed the Second Petition-and, therefore,
the Second Petition was time barred under 35 U.S.C. §
315(b). The majority further held that the exception to the
time bar for requests for joinder under 35 U.S.C. §
315(b), (c), did not apply here because, according to the
majority's interpretation, the joinder provision does not
permit a party to join issues to a proceeding to which it is
already a party.
Ocean requested a rehearing of the panel's decision,
which was granted by an expanded panel of five Administrative
Patent Judges. The expanded administrative panel set aside
the original panel's decision and concluded that
§ 315(c) permits the joinder of any person who properly
files a petition under § 311, including a petitioner who
is already a party to the earlier instituted [IPR]. We also
conclude 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.
J.A. 936 (citations omitted). Having determined that the
joinder provision is broad enough to permit joinder with
respect to the Second Petition, the expanded panel instituted
review of the Second Petition and granted Broad Ocean's