Takeaway: Whether a petitioner will be successful on a motion for joinder when it is already a party to the proceeding to which it is requesting to join is dependent upon the panel because different panels have come to different conclusions.

In its Decision, the Board denied Petitioner’s Motion for Joinder, and did not institute inter partes review of any of the challenged claims (1-3, 8, 9, 12, 16, and 19) of the ’349 Patent. The ’349 Patent relates to heating, ventilating, and/or air conditioning (“HVAC”) systems.

The Board first addressed claim construction stating that the terms are construed using the broadest reasonable construction in light of the specification. The Board adopted the constructions from the related proceeding, which were not contested.

The Board then addressed the substance of the only ground of unpatentability – anticipation of the claims by Hideji. The Board found that Petitioner had demonstrated a reasonable likelihood of prevailing on this ground.

The Board then addressed whether the Petition was time barred under 35 U.S.C. § 315(b). Petitioner was served with a complaint alleging infringement of the ’349 Patent on September 25, 2013 and the Petition was filed more than a year later, on February 20, 2015. Therefore, the Board found that institution is barred by § 315(b). The Board then addressed whether the Petition should qualify for the joinder exception, which allows institution where a complaint has been served more than a year prior to the filing of a petition if the petition is joined to another proceeding. The Board noted that different panels have reached different conclusions regarding whether this exception applies when a party requests joinder of issues to a proceeding to which it is already a party. The Board then stated that § 315(c)’s use of “join as a party” indicates that only a person who is not already a party to an instituted review can be joined to the proceeding. The Board also noted that in a related proceeding, Petitioner filed a petition for review of the same claims on the same ground, but did not provide an affidavit attesting to the accuracy of the translation of Hideji, and did not obtain an affidavit until more than a year after Petitioner was served with the complaint. Therefore, the panel concluded that the Petition was defective and denied institution on that ground, but instituted on other grounds. Petitioner then filed the instant Petition and Motion for Joinder in a further effort to have the attested translation considered.

In his Dissent, Judge Tartal stated that § 315(c) allows joinder of any person who properly files a petition, including a petitioner who is already a party to an earlier instituted inter partes review. He also stated that § 315(c) allows joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder. Joinder is discretionary and decided on a case-by-case basis. Judge Tartal stated that in these circumstances, it would be in the public interest to allow joinder and to fully consider the merits of the ground of unpatentability, rather than denying institution based on Petitioner’s previous failure to attach an affidavit.

Zhongshan Broad Ocean Motor Co., Ltc., Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC c. Nidec Motor Corporation, IPR2015-00762

Paper 12: Decision Denying Institution of Inter Partes Review

Dated: July 20, 2015

Patent 7,626,349

Before: Benjamin D. Wood, James A. Tartal, and Patrick M. Boucher

Written by: Boucher

Dissent by: Tartal

Related Proceedings: IPR2014-01121; Nidec Motor Corp. v. Broad Ocean Motor LLC, No. 4:13-cv-01895-JCH (E.D. Mo.)