Zhongshan Broad Ocean Motor Co., Ltd. et al. v. Nidec Motor Corporation

IPR2015-00762
U.S. Pat. No. 7,626,349B2
October 5, 2015

Brief Summary: Expanded Board granted previously denied Motion for Joinder, finding § 315(c) permits the joinder of any person who properly files a petition under § 311, including a petition who is already a party to the earlier instituted inter partes review” and “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.”

Summary: Zhongshan requested rehearing of prior Board decision denying joinder of IPR2014-01121 filed on July 24, 2014, also regarding the ‘349 patent. IPR2015-00762 was filed on Feb. 20, 2015 with a petition to join IPR2014-01121 (also regarding the ‘349 patent) (timely filed within one month of institution of the IPR2014-01121 trial (37 C.F.R. § 42.122(b)). The petition to institute IPR for IPR2015-00762 was denied under 35 U.S.C. § 315(b) because the complaint alleging infringement was served on Sept. 25, 2013 and the Petition was not filed until Feb. 20, 2015 (i.e., after the § 315(b) one year bar). IPR2014-01121 filed on July 24, 2014, prior to expiration of the one-year time bar. Section 315(b) states that that “[t]he time limitation…shall not apply to a request for joinder under subsection (c)” (regarding joinder). The earlier decision denied the request for joinder, finding “the phrase ‘join as a party’ [in 315(c)] indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding” as “[a] person cannot be joined as a party to a proceeding in which it is already a party” (“the phrase ‘join as a party’ excludes a person who is already a party”). The expanded Board reviewed that decision for an abuse of discretion which occurs “when a ‘decision…[was] based on an erroneous conclusion of law’” (Stevens, FC 2004). It determined that the decision “was based on an erroneously narrow interpretation of § 315(c)” and therefore granted Zhongshan’s request. The opinion explains that § 315(c) permits the joinder of any person who properly files a petition under § 311, including a petition who is already a party to the earlier instituted inter partes review” and “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.” The Motion for Joinder was therefore granted. APJ Boucher and APJ Wood dissented, arguing that “the majority’s decision…reads too much into § 315(c)’s use of the word ‘any’” in “any person”.

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