`571-272-7822
`
`
`
`
`Paper 13
`Entered: September 3, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZHONGSHAN BROAD-OCEAN MOTOR CO. LTD.,
`Petitioner,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00465
`Patent 8,049,459 B2
`____________
`
`
`
`
`
`
`Before BENJAMIN D. M. WOOD and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`
`
`IPR2015-00465
`Patent 8,049,459 B2
`
`
`A conference call was held on September 3, 2015, between respective
`counsel for Petitioner Zhongshan Broad-Ocean Motor Co. Ltd., Patent
`Owner Nidec Motor Corporation, and Judges Wood and Tartal. Patent
`Owner initiated the conference call to confer with us in regard to filing a
`motion to amend.
`Patent Owner began the conference call by explaining that it intends
`to file a conditional motion to amend claim 18 in response to certain
`unpatentability contentions at issue in the proceeding.
`Entry of proposed substitute claims is not automatic, but only upon
`Patent Owner demonstrating the patentability of each proposed substitute
`claim. See 37 C.F.R. § 42.20(c). During the call, we explained that a motion
`to amend proposing substitute claims (1) may only narrow, not broaden, the
`scope of a claim, (2) may only propose a reasonable number of substitute
`claims, and (3) should respond to a ground of unpatentability involved in the
`trial. 37 C.F.R. § 42.121(a)(3). We also noted that our rules were amended
`on May 19, 2015, to change the page limits for certain papers associated
`with a motion to amend. See Amendments to the Rules of Practice for Trials
`Before the Patent Trial and Appeal Board, 80 Fed. Reg. 28,561, 28,565
`(May 19, 2015).
`Guidance regarding the mechanics and substance of motions to amend
`appears in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027
`(PTAB June 11, 2013) (Paper 26), as well as MasterImage 3D, Inc. v. RealD
`Inc., IPR2015-00040 (PTAB July 15, 2015) (Paper 42). The latter paper
`clarifies certain guidance provided in the former. A motion to amend should
`demonstrate that each proposed substitute claim is supported by the written
`
`2
`
`
`
`IPR2015-00465
`Patent 8,049,459 B2
`
`description of the application upon which the substitute claims rely, and
`should address the patentability of each proposed substitute claim over the
`prior art of record and the prior art known to Patent Owner, accounting for
`the basic knowledge and skill set possessed by a person of ordinary skill in
`the art, even without reliance on any particular prior art reference. See 37
`C.F.R. § 42.121(b). Further, a motion to amend should include claim
`constructions for any new term used in a proposed substitute claim where
`the meaning of such terms reasonably can be anticipated to be disputed. The
`plain and ordinary meaning of terms should be provided in the motion,
`together with the supporting evidence.
`ORDER
`In consideration of the foregoing, it is:
`ORDERED that Patent Owner has satisfied the requirement of
`conferring with us prior to filing a Motion to Amend under 37 C.F.R.
`§ 42.121(a).
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-00465
`Patent 8,049,459 B2
`
`PETITIONER:
`Gang Luo
`W. Scott Strickland
`OLIFF PLC
`gluo@oliff.com
`wstrickland@oliff.com
`
`PATENT OWNERS
`
`Scott R. Brown
`Matthew B. Walters
`HOVEY WILLIAMS LLP
`sbrown@hoveywilliams.com
`mwalters@hoveywilliams.com
`litigation@hoveywilliams.com
`
`4
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