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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: August 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BROAD OCEAN TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`REGAL BELOIT AMERICA, INC.,
`Patent Owner.
`
`Cases IPR2017-00802 and IPR2017-00803
`Patents 5,954,476 and 6,318,358 B1
`
`Before MITCHELL G. WEATHERLY, TIMOTHY J. GOODSON, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`I. DISCUSSION
`
`On June 30, 2017, the panel entered an order instructing the parties to
`
`provide additional briefing on the following issues:
`
`(1) whether Broad Ocean Motor, LLC (“BOM”) should be named as a
`
`real party in interest;
`
`
`
`IPR2017-00802 and -00803
`Patents 5,954,476 and 6,318,358 B1
`
`(2) whether Broad Ocean Technologies, LLC (“BOT”) should be
`
`named as a real party in interest; and
`
`(3) whether the failure to name either entity as a real party in interest
`
`precludes institution of inter partes review in either IPR2017-00802 or
`
`IPR2017-00803.
`
`IPR2017-00802, Paper 9; IPR2017-00803, Paper 7. Petitioner filed its brief
`
`in each proceeding on July 7. IPR2017-00802, Paper 10; IPR2017, Paper 8
`
`(collectively “Pet. Reply”). Patent Owner filed its brief in each proceeding
`
`on July 14. IPR2017-00802, Paper 11; IPR2017, Paper 9 (collectively
`
`“PO Surreply”).
`
`Mr. Terry Zhang, General Manager of each of BOT and BOM, newly
`
`identified Broad-Ocean Motor (Hong Kong) Company, Ltd. (“BOM HK”) as
`
`being related to BOM and BOT. Ex. 1011 ¶ 18; Ex. 1012 ¶ 13. Mr. Zhang
`
`testifies that each of BOM and BOT are a “wholly owned subsidiary” of
`
`BOM HK. Ex. 1011 ¶ 18 (relating to BOT); Ex. 1012 ¶ 13 (relating to
`
`BOM). Mr. Zhang also testifies that BOM HK is a wholly owned subsidiary
`
`of Zhongshan Broad-Ocean Motor Co., Ltd. (“ZBOM”).1 Based on this
`
`testimony, Patent Owner argues that Petitioner’s failure to identify BOM HK
`
`as a real party in interest demands that we deny the Petition. PO Surreply,
`
`5–8.
`
`The panel wishes to receive additional briefing from Petitioner
`
`responding to Patent Owner’s Surreply on the whether BOM HK should be
`
`named as a real party in interest and the effect of adding BOM HK as a real
`
`
`1 Petitioner previously identified ZBOM as a real party in interest. Pet. 4.
`
`2
`
`
`
`IPR2017-00802 and -00803
`Patents 5,954,476 and 6,318,358 B1
`
`party in interest, if any, on the viability of the Petition. Accordingly,
`
`Petitioner shall file a paper addressing the following issues:
`
`(i) whether BOM HK should be named as a real party in
`
`interest;
`
`(ii) whether Petitioner would seek to amend the Petition to add
`
`BOM HK as a real party in interest assuming arguendo that BOM HK
`
`should have been so named;
`
`(iii) if Petitioner answers (ii) in the affirmative, whether the
`
`filing date of the Petition would require adjustment; and
`
`(iv) if Petitioner answers (iii) in the affirmative, whether the
`
`Petition would be time-barred under 35 U.S.C. § 315(b).
`
`Petitioner shall address these issues in a single paper filed in each
`
`proceeding of no more than four (4) pages by no later than August 10, 2017.
`
`Patent Owner is not authorized to submit further briefing on these issues.
`
`II. ORDER
`
`For the reasons given, it is:
`
`ORDERED that Petitioner shall file one paper in both proceedings of
`
`no more than four (4) pages in length by no later than August 10, 2017; and
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`FURTHER ORDERED that Petitioner’s paper shall specifically
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`address the questions set forth above.
`
`3
`
`
`
`IPR2017-00802 and -00803
`Patents 5,954,476 and 6,318,358 B1
`
`PETITIONER:
`
`David Roodman
`Daniel Crowe
`Robert G. Lancaster
`Emma Harty
`BRYAN CAVE LLP
`daroodman@bryancave.com
`dacrowe@bryancave.com
`rglancaster@bryancave.com
`emma.harty@bryancave.com
`
`PATENT OWNER:
`
`Alan H. Norman
`Anthony F. Blum
`THOMPSON COBURN LLP
`anorman@thompsoncoburn.com
`ablum@thompsoncoburn.com
`
`4
`
`
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