{"id":1738,"date":"2017-08-22T17:52:11","date_gmt":"2017-08-22T21:52:11","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1738"},"modified":"2017-09-03T18:28:40","modified_gmt":"2017-09-03T22:28:40","slug":"shennanigans","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1738","title":{"rendered":"Shenanigans"},"content":{"rendered":"

In NIDEC Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.<\/a>, [2016-2321] (August 22, 2017), the Federal Circuit affirmed the Board’s determination that\u00a0claims 1\u20133, 8, 9, 12, 16, and 19 of U.S.\u00a0Patent No. 7,626,349 are invalid as\u00a0anticipated or obvious.<\/p>\n

The Board instituted review on\u00a0the ground of obviousness over Bessler and Kocybik, but\u00a0declined to institute review on the ground of anticipation
\nby Hideji, because Broad Ocean had failed to provide an affidavit attesting to the accuracy of\u00a0the submitted translation of Hideji as required by 37\u00a0C.F.R. \u00a7 42.63(b).<\/p>\n

Broad Ocean filed a second petition again asserting that the\u00a0challenged claims are anticipated by Hideji, including the required affidavit, and requesting\u00a0that the Board join the\u00a0Second Petition with Broad Ocean\u2019s already-instituted\u00a0IPR involving the First Petition. \u00a0The Board again declined to institute review, this time on the grounds that the Petition was time-barred.<\/p>\n

Broad Ocean requested a rehearing of the panel\u2019s decision,\u00a0which was granted by an expanded panel of five\u00a0Administrative Patent Judges. \u00a0The expanded administrative\u00a0panel set aside the original panel\u2019s decision and
\nconcluded that\u00a0\u00a7 315(c) permits the joinder with the original IPR.<\/p>\n

On appeal the parties agreed that, if the Federal Circuit affirmed as to obviousness, it need not address Nidec\u2019s challenges to the\u00a0procedural aspects of the Board\u2019s joinder decision and its holding concerning anticipation by Hideji. \u00a0Because the Federal Circuit affirmed as to invalidity for obviousness, it did not have to reach the Board’s joinder decision.<\/p>\n

Judges Dyk and Wallach wrote separate to\u00a0express their concerns as to the United\u00a0States Patent and Trademark Office\u2019s position on\u00a0joinder and expanded panels. \u00a0Although the panel did not decide the \u00a0propriety of joinder, the judges had “serious questions” as to the Board\u2019s (and the Director\u2019s)\u00a0interpretation of the relevant statutes and current\u00a0practices. \u00a0Judges Dyk and Wallach think it\u00a0unlikely that Congress intended that petitioners could\u00a0employ the joinder provision to circumvent the time bar
\nby adding time-barred issues to an otherwise timely\u00a0proceeding.<\/p>\n

Of greater note is Judges Dyk and Wallach’s concern about the PTO\u2019s practice\u00a0of expanding administrative panels to decide requests\u00a0for rehearing. \u00a0Broad Ocean\u00a0requested rehearing and further requested that the rehearing be\u00a0decided by an expanded panel. \u00a0While Judges Dyk and Wallach recognized\u00a0the importance of achieving uniformity in PTO decisions, they\u00a0questioned whether the practice of expanding panels
\nwhere the PTO is dissatisfied with a panel\u2019s earlier decision\u00a0is the appropriate mechanism of achieving the desired\u00a0uniformity.<\/p>\n

It is difficult to image a practice more offensive to fair adjudication then adding judges to a panel to achieve a desired outcome. \u00a0It is outrageous to make parties participate in an adjudication where the outcome is predetermined by court packing.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In NIDEC Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., [2016-2321] (August 22, 2017), the Federal Circuit affirmed the Board’s determination that\u00a0claims 1\u20133, 8, 9, 12, 16, and 19 of U.S.\u00a0Patent No. 7,626,349 are invalid as\u00a0anticipated or obvious. The … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-1738","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1738","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1738"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1738\/revisions"}],"predecessor-version":[{"id":1742,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1738\/revisions\/1742"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1738"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1738"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1738"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}