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

Patent Trial and Appeal Board

Jul 20, 2015

11701350 (P.T.A.B. Jul. 20, 2015)

Trials@uspto.gov Paper 12
571-272-7822 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.

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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
Joinder. We also deny the Petition and do not institute an inter partes
review.

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I. BACKGROUND
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-
moving component 410. Id. at col. 3, ll. 50–52. Permanent magnet motor
406 includes shaft 408, stationary assembly 412, and rotatable assembly 414.
Id. at col. 3, ll. 52–54. The rotatable and stationary assemblies are coupled
magnetically, and the rotatable assembly is coupled to the air-moving
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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Although the claims at issue are drawn to performing sine wave
commutation using independent “values of Q and d axis currents,” the
specification of the ’349 patent does not mention “values of Q and d axis
currents” outside of its claims. Petitioners’ witness, Dr. Mark Ehsani,
explains that “vector control” provides one method of controlling
permanent-magnet synchronous motors, and that “[t]he concept of vector
control, which typically uses d and [Q] current components, arises from [a]
principle [in which] torque arrives from the interaction of two magnetic
fields, one originating from the stator and one originating from the rotor.”
Ex. 1009 ¶ 13. The drawing from page 6 of Dr. Ehsani’s Declaration is
reproduced below.

The drawing from Dr. Ehsani’s Declaration illustrates a rotor, which has a
permanent magnet having north and south poles Nr and Sr, respectively, and
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illustrates a stator, which includes electromagnets that result in a virtual
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 axis
1
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.
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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
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coterminous with “permanent magnet motor.” Zhongshan Broad Ocean
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.
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Figure 2 is a block diagram of a driving device for a permanent magnet
synchronous motor. Id. at ¶ 28. Driving device 50 includes three-phase
pulse-width modulation (“PWM”) inverter 31, alternating-current power
supply 32, rectifier circuit 33, and control device 34. Id. at ¶ 30. The
control device includes power input part 35, three-phase/two-phase
coordinate conversion part 36, rotor speed and position calculating part 37,
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,
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
conditioning system that correspond to the system controller (see id. at 12–
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14), motor controller (see id. at 14–15), air-moving component or blower
(see id. at 15–17, 35), and permanent magnet motor (see id. at 17–19),
combinations of which elements are recited in each of independent claims 1,
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.
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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).

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.
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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Hideji’s disclosure that the flux current Id target value is expressed in terms
of Iq as k×Iq
2
. Id. (citing Ex. 1005 ¶¶ 38–39).
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
prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as
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
patent on September 25, 2013. The Petition was filed on February 20, 2015,
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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Different panels of the Board have reached different conclusions
whether the exception to the time bar applies when a party requests joinder
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
Feb. 12, 2015) (Paper 28) (expanded panel) with SkyHawke Techs., LLC v.
L&H Concepts, LLC, Case No. IPR2014-01485, slip op. (PTAB Mar. 20,
2015) (Paper 13). Petitioners contend that “[t]he Board has discretion to join
a properly filed IPR petition to a previously instituted IPR proceeding, even
where the petitioner seeking joinder is already a petitioner in the instituted
proceeding.” Mot. 4 (citations omitted). Patent Owner responds that the
“[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
supports an interpretation of [§] 315(c) that does not permit joinder of a
second petition by the same party, particularly when that petition is
otherwise time-barred under [§] 315(b).” Prelim. Resp. 4.
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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proceeding. A person cannot be joined as a party to a proceeding in which
it is already a party. That the statute uses the expansive term “any person” is
of little moment because the overall language of the statute places
unambiguous limits on the term. Specifically, the phrase “join as a party”
excludes a person who is already a party.
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
for inter partes review challenging, inter alia, claims 1–3, 8, 9, 12, 16, and
19 as anticipated under 35 U.S.C. § 102(b) by Hideji. Zhongshan Broad
Ocean Motor Co., Ltd. v. Nidec Motor Corporation, Case No. IPR2014-
01121, slip op. at 6 (PTAB Jan. 21, 2015) (Paper 20). Although a purported
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
institution of that ground. Id. at 13. A unanimous panel also denied
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
filed prior to the date on which institution of inter partes review was barred
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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Feb. 24, 2015) (Paper 25). Petitioners filed the instant Petition and Motion
for Joinder in a further effort to have an attested translation of Hideji
considered, despite the time bar of § 315(b). Mot. 5–6.
Petitioners trivialize the defect in their original petition by their
characterization that “[w]ith [their] original petition, [Petitioners] filed an
English translation of Hideji, but omitted an affidavit attesting to the
accuracy of that translation.” Mot. 2. In fact, Petitioners were not even in
possession of an attested translation of Hideji until more than a year after
they were served with a complaint alleging infringement of the ’349 patent.
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,
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
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).

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no inter partes review is
instituted.

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.

In this case the Board is presented with the issues of: (1) whether the
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
the Petition not previously instituted may be joined. For the reasons
explained by several majority opinions in prior decisions of the Board, I am
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
party to the earlier instituted inter partes review. See Medtronic Inc. v. Troy
R. Norred, M.D., Case IPR2014-00823 (PTAB December 8, 2014) (Paper
12); Target Corp. v. Destination Maternity Corp., Case IPR2014-00508
(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.
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
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
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
regulations, including the rules for joinder, must be construed to secure the
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
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
the institution decision in IPR2014-01121 the Board denied Petitioners’
motion to submit corrected exhibits to include an attesting affidavit to Hideji
because Petitioners did not demonstrate that the failure to include the
required affidavit was a clerical mistake that could be remedied in
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,
and inexpensive resolution of every proceeding would be served in this case
more fully by considering the merits of the alleged ground of unpatentability
based on Hideji rather than by denying consideration on reasons tied to
Petitioners’ previous failure to attach the requisite attesting affidavit. With
respect to the impact of joinder on the trial schedule, Petitioners states that it
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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.
I have further considered Patent Owners arguments against joinder
(Paper 10, 4–18), and it is my opinion that joinder is warranted under the
particular facts of this case. While Patent Owner is correct that Petitioners
have unsuccessfully pursued multiple approaches to resolve the deficiency in
its petition in IPR2014-01121, Petitioners are not attempting to cure a
deficiency in the merits of a ground asserted in the prior Petition by filing a
second petition. Thus, contrary to Patent Owner’s assertion, this case is not
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
been aware of the ground of unpatentability based on Hideji asserted in the
Petition in this proceeding since a petition was filed in IPR2014-01121 on
July 3, 2014. The Petition also relies upon the same declaration provided by
Dr. Mark Ehsani in IPR2014-01121 (Ex. 2009). Thus, it is my opinion that
the prejudice to Patent Owner of joining the ground at this stage of the
proceeding is minimal. I also agree with the analysis and conclusion set
forth in the majority opinion that Petitioners have established a reasonable
likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19
as anticipated by Hideji.
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For the reasons above, I dissent from the majority decision not to
institute inter partes review on the ground of unpatentability of claims 1–3,
8, 9, 12, 16, and 19 of the ’349 patent as anticipated by Hideji under 35
U.S.C. § 102(b) and would join this proceeding with IPR2014-01121.
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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