throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 84
`Entered: April 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ABB INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`____________
`
`Cases IPR2013-00062 & IPR2013-00282
`Patent 6,516,236 B1
`____________
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`ABB Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1-10 of U.S. Patent No. 6,516,236 B1 (Ex. 1001 (“the ’236
`
`patent”)). Paper 4.1 On April 18, 2013, the Board instituted trial on claims
`
`1-4 and 8-10. Paper 23. On May 17, 2013, Petitioner filed a second Petition
`
`requesting an inter partes review of claims 1-10 of the ’236 patent.
`
`IPR2013-00282, Paper 1. With the second Petition, Petitioner filed a motion
`
`requesting joinder with IPR2013-00062. IPR2013-00282, Paper 4. On June
`
`10, 2013, Petitioner filed a motion limiting its second Petition to claims 5-7.
`
`IPR2013-00282, Paper 11. On August 9, 2013, the Board granted the
`
`second Petition and instituted a trial as to claims 5-7. IPR2013-00282, Paper
`
`14. On the same day, the Board granted the motion for joinder and joined
`
`IPR2013-00062 and IPR2013-00282. IPR2013-00282, Paper 15.
`
`During trial, ROY-G-BIV Corp. (“Patent Owner”) filed a Patent
`
`Owner Response (“PO Resp.”) addressing the challenges from the first
`
`Petition and a Supplemental Patent Owner Response (“Supp. PO Resp.”)
`
`addressing the challenges from the second Petition. Papers 30, 32. The
`
`Patent Owner Response was accompanied by an expert declaration from
`
`David B. Stewart, Ph.D. (Ex. 2011), author of the Stewart thesis relied upon
`
`by Petitioner. Petitioner filed a Reply (“Pet. Reply”) and, for the first time
`
`in this proceeding, presented expert testimony, namely declarations from
`
`Richard Voyles, Ph.D. (Ex. 1130) and Nikolaos Papanikolopoulos, Ph.D.
`
`(Ex. 1132). Paper 44. Drs. Voyles and Papanikolopoulos worked in the
`
`
`1 Citations to the record refer to IPR2013-00062 unless otherwise noted.
`2
`
`
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`same laboratory at Carnegie Mellon University as Dr. Stewart, and their
`
`testimony was presented by Petitioner to rebut Dr. Stewart’s expert
`
`testimony. Patent Owner also filed a motion to exclude evidence (“Mot.”).
`
`Paper 59. Oral hearing was held on January 23, 2014. A transcript of the
`
`hearing is included in the record as Paper 76 (“Transcript”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons
`
`discussed below, we determine that Petitioner has not met its burden to
`
`prove by a preponderance of the evidence that claims 1-10 of the ʼ236 patent
`
`are unpatentable.
`
`B. The ’236 Patent
`
`The ’236 patent relates generally to a system that facilitates the
`
`creation of hardware-independent motion control software. Ex. 1001, col. 1,
`
`ll. 13-16. In particular, the patent describes a high-level motion control
`
`application programming interface (“API”) made of functions that are
`
`correlated with driver functions associated with controlling a mechanical
`
`system that generates movement based on a control signal. See generally id.
`
`at col. 1, ll. 5-49. The object of the invention is to isolate the application
`
`programmer from the complexity of hardware devices, which often have a
`
`manufacturer-specific motion control command language and functionality
`
`that is highly hardware-dependent. See generally id. at col. 3, ll. 24-42. At
`
`the same time, the API allows the programmer to access base motion
`
`operations of the hardware device. Id.
`
`As described in the ’236 patent, the prior art includes a number of
`
`low-level software programs for directly programming individual motion
`
`control devices, or for aiding in the development of systems containing a
`
`
`
`3
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`number of motion control devices. Id. at col. 1, l. 55 – col. 2, l. 34. While
`
`providing complete control over the hardware, these low-level programs are
`
`highly hardware-dependent. Id. In describing the invention, the ’236 patent
`
`discloses a programming interface consisting of “component functions”
`
`containing code that relates to driver functions, which in turn are associated
`
`with, or contain code for, implementing the motion steps on a given motion
`
`control device. Id. at col. 3, ll. 56-66. The component functions support
`
`both core driver functions—those functions that must be supported by all
`
`software drivers—and extended driver functions—those functions that may,
`
`or may not be, supported by a particular software driver. Id. at col. 4, ll. 3-
`
`13. When feasible, component functions can emulate extended driver
`
`functions not supported by a particular device by using a combination of
`
`core driver functions. Id. at col. 4, ll. 25-44.
`
`C. Illustrative Claim
`
`Claim 1, the only independent claim, is reproduced below:
`
`1. A system for generating a sequence of control commands for
`controlling a selected motion control device selected from a
`group of supported motion control devices, comprising:
`
`a set of motion control operations, where each motion
`control operation is either a primitive operation the
`implementation of which is required to operate motion
`control devices and cannot be simulated using other
`motion control operations or a non-primitive operation
`that does not meet the definition of a primitive operation;
`
`a core set of core driver functions, where each core driver
`function is associated with one of the primitive
`operations;
`
`an extended set of extended driver functions, where each
`extended driver function is associated with one of the
`non-primitive operations;
`4
`
`
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`
`a set of component functions;
`
`component code associated with each of the component
`functions, where the component code associates at least
`some of the component functions with at least some of
`the driver functions;
`
`a set of software drivers, where
`
`each software driver is associated with one motion
`control device in the group of supported motion
`control devices,
`
`each software driver comprises driver code for
`implementing the motion control operations
`associated with at least some of the driver functions,
`and
`
`one of the software drivers in the set of software drivers
`is a selected software driver, where the selected
`software driver is the software driver associated with
`the selected motion control device;
`
`an application program comprising a series of component
`functions, where the application program defines the
`steps for operating motion control devices in a desired
`manner; and
`
`a motion control component for generating the sequence of
`control commands for controlling the selected motion
`control device based on the component functions of the
`application program, the component code associated with
`the component functions, and the driver code associated
`with the selected software driver.
`
`D. The Prior Art References Supporting the Alleged Unpatentability
`of Claims 1-10
`
`The following references are relied upon by Petitioner:
`
`Matthew Wayne Gertz, A Visual
`Programming Environment for Real-Time
`Control Systems (Ph.D. dissertation,
`Carnegie Mellon University)
`
`Nov.
`22,
`1994
`
`Ex.
`1002
`
`5
`
`Gertz
`
`
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`
`Stewart
`
`Morrow
`
`DDAG
`
`David Bernard Stewart, Real-Time Software
`Design and Analysis of Reconfigurable
`Multi-Sensor Based Systems (Ph.D.
`dissertation, Carnegie Mellon University)
`J. Dan Morrow, Bradley J. Nelson &
`Pradeep Khosla, Vision and Force Driven
`Sensorimotor Primitives for Robotic
`Assembly Skills, INST. FOR SOFTWARE RES.,
`paper 574
`MICROSOFT CORP., MICROSOFT WINDOWS
`VERSION 3.1 DEVICE DRIVER ADAPTION
`GUIDE, chs. 1-2, 4, 10-12
`
`Apr.
`1,
`1994
`
`Jan.
`1,
`1995
`
`1991
`
`Brockschmidt KRAIG BROCKSCHMIDT, INSIDE OLE 2
`
`1994
`
`HP86
`
`HEWLETT-PACKARD CO., INTERFACING AND
`PROGRAMMING MANUAL, HP 7550A
`GRAPHICS PLOTTER (3rd ed.)
`
`1986
`
`Ex.
`1004
`
`Ex.
`1005
`
`Ex.
`1006
`
`Ex.
`10112
`
`Ex.
`1019
`
`E. The Pending Grounds of Unpatentability Against Claims 1-10
`
`The following challenges to patentability under 35 U.S.C. § 103 were
`
`considered:
`
`References
`Gertz, Stewart, and Morrow
`Gertz, Stewart, Morrow, DDAG, and Brockschmidt
`Gertz, Stewart, Morrow, DDAG, and HP86
`
`
`Claims
`1-4 and 8-10
`5-7
`5-7
`
`II. DISCUSSION
`
`A. Antedating Gertz and Morrow
`
`1.
`
`Background
`
`Gertz is dated November 22, 1994 and Morrow is dated January 1,
`
`1995. PO Resp. 6. Patent Owner does not challenge these dates of
`
`publication. Instead, Patent Owner contends that the claimed invention of
`
`2 Exhibit number from IPR2013-00282.
`6
`
`
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`the ’236 patent was conceived prior to the earliest publication date for the
`
`references, namely November 22, 1994, and constructively reduced to
`
`practice on May 30, 1995, the filing date of the “priority application” (serial
`
`no. 08/454,736) that led to the ʼ236 patent. PO Resp. 6-7. Patent Owner
`
`further contends that the inventors were reasonably diligent from November
`
`21, 1994, to the date of the constructive reduction to practice. Id. Patent
`
`Owner contends that, as a consequence, neither Gertz nor Morrow qualifies
`
`as prior art. See 35 U.S.C. § 102(g) (2011); Mahurkar v. C.R. Bard, Inc., 79
`
`F.3d 1572, 1576 (Fed. Cir. 1996) (“Thus, under section 102(a), a document
`
`is prior art only when published before the invention date.”).
`
`For support, Patent Owner relies on the declaration testimony of its
`
`founder, chairman, and chief technical officer, David W. Brown, who also is
`
`named as a co-inventor on the ʼ236 patent. PO Resp. 6-7; Ex. 2010 ¶¶ 1-4.
`
`Mr. Brown testifies that he and his co-inventor conceived of the subject
`
`matter claimed in the ʼ236 patent prior to November 21, 1994. Ex. 2010 ¶ 7.
`
`In support of Mr. Brown’s testimony regarding conception, Patent
`
`Owner proffers two draft specification documents (Ex. 2010-1; Ex. 2010-2).
`
`Mr. Brown testifies that he and his co-inventor prepared these documents by
`
`July 24, 1994, in connection with their work on the XMC motion control
`
`software development project (the “XMC project”) that led to the ’236
`
`patent. Ex. 2010 ¶ 9. The XMC project was Mr. Brown’s primary
`
`responsibility throughout the 1994 and 1995 timeframe. Ex. 2010 ¶ 8.
`
`To show diligence, Patent Owner relies upon time logs prepared by
`
`Mr. Brown relating to his activities on the XMC project from November 20,
`
`1994, to May 30, 1995, and in July 1994 (Ex. 2010-3; Ex. 2010-6), and Mr.
`
`Brown’s testimony summarizing the time logs. PO Resp. 10-12; Ex. 2010
`
`
`
`7
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`¶¶ 20-21. To show constructive reduction to practice, Patent Owner relies
`
`on the “priority application” filed on May 30, 1995, that led to the issuance
`
`of the ʼ236 patent. PO Resp. 10; Ex. 2010-5. Mr. Brown’s declaration also
`
`includes an additional exhibit, a software specification dated February 22,
`
`1995 (Ex. 2010-4), portions of which, Mr. Brown testifies, were filed with
`
`the USPTO as an appendix to that application. Ex. 2010 ¶ 6. Mr. Brown
`
`refers to this software specification, which he also authored, briefly in his
`
`testimony. Id. ¶ 20.
`
`Mr. Brown’s testimony on diligence is contained in a section of his
`
`declaration headed “Time Logs Evidence of Diligence in Reduction to
`
`Practice.” In this section, Mr. Brown summarizes his “major activities” on
`
`the XMC project on a weekly basis. Id. ¶ 20. According to Mr. Brown,
`
`these summaries “reference to my time logs attached as Exhibits 2010-3
`
`through 2010-6.” Id. The time logs will be discussed further below.
`
`Petitioner responds, first, by challenging Patent Owner’s conception
`
`proofs. Pet. Reply 3. According to Petitioner, Patent Owner fails to “link[]”
`
`elements of certain claims (claims 5-7) to the proffered conception
`
`documents, and “admit[s]” that claim 10 is entitled to a May 30, 1996,
`
`effective filing date. Id. Second, Petitioner challenges Patent Owner’s
`
`corroborating evidence, particularly as it relates to diligence. Id. at 4-8.
`
`Petitioner asserts that Mr. Brown’s time records are unreliable for a variety
`
`of reasons, including the failure to provide independent corroborating
`
`evidence. Id. at 1-2. Petitioner also points to diligence “gaps,” for example,
`
`the holiday period of December 21, 1994 to January 3, 1995, during which
`
`Mr. Brown’s time records do not reflect work on the XMC project. Id. at 6.
`
`
`
`8
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`
`2.
`
`Discussion
`
`The oral testimony of an inventor, standing alone, is insufficient to
`
`prove conception. Mahurkar, 79 F.3d at 1577; Price v. Symsek, 988 F.2d
`
`1187, 1194 (Fed. Cir. 1993). “It has long been the case that an inventor’s
`
`allegations of early invention alone are insufficient—an alleged date of
`
`invention must be corroborated.” In re NTP, Inc., 654 F.3d 1279, 1291
`
`(Fed. Cir. 2011). As explained by the Federal Circuit in Mahurkar, the
`
`requirement arose out of concern that inventors testifying in patent
`
`infringement cases would be tempted to remember facts favorable to their
`
`case “by the lure of protecting their patent or defeating another’s patent.” 79
`
`F.3d at 1577. The corroboration requirement is not limited to conception. It
`
`applies also to inventor testimony regarding diligence and reduction to
`
`practice. Price, 988 F.2d at 1196. Here, Patent Owner relies on the filing of
`
`an application as a constructive reduction to practice, and there is no dispute
`
`concerning that date. However, corroboration is required for the testimony
`
`provided by Mr. Brown on conception and diligence.
`
`Corroboration evidence must be independent of the inventor.
`
`Independent corroboration may consist of testimony of a witness, other than
`
`the inventor, or it may consist of evidence of surrounding facts and
`
`circumstances, independent of information received from the inventor.
`
`Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981); Medichem, S.A. v.
`
`Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006) (“The requirement of
`
`independent knowledge remains key to the corroboration inquiry.”). As
`
`Patent Owner recognizes, corroboration is determined under a “rule of
`
`reason” analysis. Price, 988 F.2d at 1195. “An evaluation of all pertinent
`
`evidence must be made so that a sound determination of the credibility of the
`
`
`
`9
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`inventor’s story may be reached.” Id. However, “[t]he rule of reason . . .
`
`does not dispense with the requirement for some evidence of independent
`
`corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
`
`Price sets forth a set of factors that may bear on the inventor’s
`
`credibility and whether the inventor’s testimony has been corroborated
`
`adequately. 988 F.2d at 1195 n.3. These include: (1) delay between the
`
`event and the trial; and (2) interest of the corroborating witnesses. In
`
`Mahurkar, for example, the corroborating evidence included disclosure of
`
`the invention to third parties, who provided testimony and correspondence
`
`acknowledging receipt of, and describing prototypes of, the invention. 79
`
`F.3d at 1578-79.
`
`The only evidence of diligence is Mr. Brown’s testimony and
`
`documents. As required by Price, in assessing the need for corroboration of
`
`inventor testimony, we look at the record, as a whole, under the rule of
`
`reason. Time delay to the event in question is one factor. We note that the
`
`events in question took place over 20 years ago, a fact mentioned several
`
`times by Mr. Brown during his deposition testimony when he could not
`
`recall the answer to a question. Ex. 1129, 20:22; 39:20; 44:2; 90:14. We
`
`note also the diligence period required to antedate both references is over six
`
`months. Finally, we note the exceedingly high interest level of Mr. Brown
`
`(as inventor, founder, and CTO of Patent Owner) in the outcome.
`
`The cases relied on by Patent Owner support the conclusion that we
`
`must require more than the inventor’s own records for corroboration of his
`
`testimony. For example, in Sandt Technology, Ltd. v. Resco Metal &
`
`Plastics Corp., 264 F.3d 1344 (Fed. Cir. 2001), the corroborating evidence
`
`included a letter to a third party in response to a request for proposals, an
`
`
`
`10
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`affidavit from a third party attesting to a demonstration, and invoices for
`
`purchases of equipment. In Brown v. Barbacid, 436 F.3d 1376 (Fed. Cir.
`
`2006), the corroborating evidence included evidence of laboratory work
`
`performed by a scientist working in the same laboratory as the inventor. In
`
`Scott v. Koyama, 281 F.3d 1243, 1244 (Fed. Cir. 2002), a full written
`
`description of the invention was disclosed to others besides the inventors.
`
`Also, the diligence requirement in that case was only 17 days, and the
`
`inventor provided evidence of daily activities progressing toward building a
`
`plant to practice the process at issue. Id. at 1247-48. Patent Owner points to
`
`Scott as a case in which an inventor’s own records were sufficient
`
`corroboration. Transcript 31-32. We see no discussion of that in the
`
`decision, for the diligence issue there turned instead on the nature of the
`
`activities, not corroboration. Scott, 281 F.3d at 1247. In fact, the nature of
`
`the activities (described as “focused on selection of the construction
`
`company”) suggests that more than the inventor’s own activities were
`
`involved.3 Id. Finally, in Ohio Willow Wood Co. v. Alps South, LLC, 735
`
`F.3d 1333 (Fed. Cir. 2013), the corroborating evidence included witness
`
`testimony, documents, and physical samples.4
`
`Especially considering the high degree of Mr. Brown’s interest in the
`
`outcome of the case and other factors discussed, we find the evidence of
`
`
`3 The activities are described as “manifested by oral or written
`communications.” Scott, 281 F.3d at 1248.
`4 Patent Owner’s reliance (Transcript 24) on the Board’s final decision in
`Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-
`00001, Paper 59 (Nov. 13, 2013) is misplaced. There, the patent owner did
`not succeed in establishing prior invention for failure to present independent
`corroboration of conception and persuasive evidence of diligence.
`11
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`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`diligence presented by Patent Owner to be insufficient. As Patent Owner
`
`admitted at oral argument, none of the proffered corroboration is
`
`independent of Mr. Brown. Transcript 27. Moreover, the time records
`
`relied on do not stand by themselves, requiring explanation by Mr. Brown’s
`
`testimony to be comprehensible. In that respect, they are like the inventor
`
`testimony rejected by the Board in NTP. There, in affirming the Board, the
`
`Federal Circuit remarked: “It would be strange indeed to say that [the
`
`inventor], who filed the R.131 affidavit that needs corroborating, can by his
`
`own testimony provide that corroboration.” NTP, 654 F.3d at 1292.
`
`Over a month after the final oral hearing, Patent Owner, after
`
`receiving Board authorization, filed a motion to submit supplemental
`
`information on the issue of conception. Paper 78. In view of the lateness of
`
`the request, the Board asked that the proffered supplemental information be
`
`submitted with the motion. This information consists of a transcript of the
`
`deposition of Marc McClung and exhibits. Ex 2021. The deposition was
`
`taken by Petitioner in the parallel district court action. According to Patent
`
`Owner, the McClung testimony “provides independent corroboration of key
`
`conception evidence, i.e., the 7/24/1994 RGB Design Spec., McClung Ex. 5,
`
`Ex. 2010-1 (2nd RGB Spec.).” Paper 78, 2. Petitioner opposes the motion,
`
`citing prejudice due to the lateness of the submission. Paper 83, 1.
`
`Petitioner also contends that Mr. McClung is an “unnamed co-inventor”
`
`who, therefore, cannot provide independent corroboration. Id. at 4.
`
`Petitioner also points out that the McClung testimony does not corroborate
`
`the alleged diligence, which is a separate independent requirement. Id. at 5.
`
`We are not persuaded by Petitioner’s claim of prejudice. It appears
`
`that Petitioner held off noticing Mr. McClung’s deposition until the day after
`
`
`
`12
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`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`the final oral hearing in related proceeding IPR2013-00063, suggesting
`
`strategic delay. Paper 78, 1. However, we do agree with Petitioner that Mr.
`
`McClung’s testimony does not provide independent corroboration of
`
`diligence, which is required as discussed above. In view of our
`
`determination that Patent Owner has not proved diligence, we do not need to
`
`determine whether Patent Owner adequately demonstrated conception, and
`
`therefore do not need to reach the issues raised by Patent Owner’s motion
`
`and Petitioner’s opposition. We conclude, therefore, that Patent Owner has
`
`not antedated Gertz and Morrow; therefore, these references are prior art
`
`under 35 U.S.C. § 102(a).
`
`B. Claim Construction
`
`Consistent with the statute and the legislative history of the Leahy-
`
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), the
`
`Board will interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent. 37 C.F.R.
`
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,766 (Aug. 14, 2012). Claims are to be given their broadest
`
`reasonable interpretation consistent with the specification, reading the claim
`
`in light of the specification, as it would be interpreted by one of ordinary
`
`skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
`
`Cir. 2004).
`
`For purposes of this decision, we expressly construe only the terms
`
`“component function” and “component code,” as these terms are
`
`determinative. We, therefore, do not reach the dispute over “primitive
`
`operations.” See Transcript 37-38. Nor do we need to resolve the dispute
`
`over “function.” Transcript 41-46. At the oral hearing, Patent Owner agreed
`
`
`
`13
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`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`that its application of the prior art to the claims does not depend on which
`
`definition of the term “function” is applied, as discussed below. Transcript
`
`37, 41-42.
`
`1.
`
`“component function”
`
`The parties present opposing views on the construction of “component
`
`function.” Patent Owner proposes that the term “function” in “component
`
`function” requires code that can be executed within a program. Ex. 2018,
`
`36-37. Petitioner argues that executable code is not required. Pet. Reply 9.
`
`Instead, Petitioner proposes that the term “function” includes “‘in-line’
`
`functions, constructs in scripting languages, interpreted languages, and also
`
`visual programming constructs, regardless of how the program is stored or
`
`executed.” Id. at 10 (citing Ex. 1130 ¶¶ 39, 42-46).
`
`Neither party points to a special meaning in the patent specification.
`
`Patent Owner cites to the MICROSOFT COMPUTER DICTIONARY for the plain
`
`meaning of “function.” Transcript 41-42; Ex. 2018, 36 (citing Ex. 2016,
`
`212).5 The MICROSOFT COMPUTER DICTIONARY provides two definitions for
`
`the term “function”: “1. The purpose of, or the action carried out by, a
`
`program or routine”; and “2. A general term for subroutine.” Ex 2016, 4.
`
`Neither definition requires executable code. However, the first, broader
`
`definition requires an “action carried out by[] a program or routine.” Thus,
`
`we conclude that the broadest reasonable interpretation of the term
`
`“component function” requires an action carried out by a program or routine,
`
`
`5 Exhibit 2016 includes portions of the MICROSOFT COMPUTER DICTIONARY
`(3rd ed.), which was published in 1997. This is close enough in time to the
`May 30, 1995, effective filing date of the ’236 patent to provide guidance for
`the terms used in the ’236 patent.
`
`
`
`14
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`regardless of whether the action is defined by executable code. This is
`
`consistent with the specification of the ’236 patent, which explains that
`
`“[t]he application program 26 comprises a sequence of component functions
`
`arranged to define the motion control operations necessary to control a
`
`motion control device to move an object in a desired manner.” Ex. 1001,
`
`col. 8, ll. 26-30.
`
`2.
`
`“component code”
`
`Petitioner proposes that “component code is computer code which
`
`associates at least some of the component functions with at least some of the
`
`driver functions.” Pet. 22. According to Petitioner, this does not require a
`
`formal computer language, but rather only requires some “form of control
`
`flow, including visual programming constructs.” Pet. Reply 9. Patent
`
`Owner contends that even if “component code” does not require a formal
`
`language, it still requires some form of code. PO Resp. 20.
`
`We agree with Petitioner that a formal computer language is not
`
`required. However, we also agree with Patent Owner that “component
`
`code” requires some form of “code,” as the word “code” is recited explicitly
`
`by this limitation. The MICROSOFT COMPUTER DICTIONARY defines “code”
`
`as “[p]rogram instructions.” Ex. 2016, 2. We, therefore, determine that,
`
`applying the broadest reasonable interpretation of the term “component
`
`code,” program instructions are required to meet the limitation. This is
`
`consistent with the specification of the ’236 patent, which explains that “the
`
`software system designer writes component code that associates at least
`
`some of the component functions with at least some of the driver functions.”
`
`Ex. 1001, col. 7, ll. 56-59.
`
`
`
`15
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`
`C. Summary of Expert Testimony
`
`
`
`Three experts—all Ph.D.s from the same university laboratory—
`
`testified in this case. As noted, Petitioner initially presented no expert
`
`testimony. With its post-institution response, however, Patent Owner
`
`presented the testimony of David Stewart, Ph.D., author of the Stewart
`
`reference. Petitioner then presented, with its reply, the testimony of two
`
`rebuttal experts: Richard Voyles, Ph.D.; and Nikolaos Papanikolopoulos,
`
`Ph.D.
`
`
`
`For the reasons that follow, we credit Dr. Stewart’s testimony that
`
`certain elements in the patent claims are not present in the prior art relied on
`
`by Petitioner.
`
`1.
`
`Dr. Stewart’s Testimony
`
`
`
`As noted, Dr. Stewart is the author of the Stewart reference. Ex. 2011
`
`¶ 2. He also co-authored publications with Dr. Gertz, author of the Gertz
`
`reference. Id. Dr. Stewart has over 25 years of professional experience in
`
`software. Id. ¶ 4. He earned his Ph.D. in computer engineering from
`
`Carnegie Mellon University in 1994. Id. ¶ 5. His Ph.D. dissertation is the
`
`Stewart reference relied upon by Petitioner. Id.
`
`
`
`Dr. Stewart testifies that he is “very familiar” with the Gertz reference
`
`in addition to his own thesis, the Stewart reference. Id. ¶ 7. He knows Dr.
`
`Gertz personally and worked with him at Carnegie Mellon. Id. He further
`
`testifies that Dr. Gertz’s work built upon his own work. Id. ¶ 8.
`
`
`
`According to Dr. Stewart, robotics research in the early 1990s had
`
`solved the problems of robot movement. Id. ¶ 9. There was tremendous
`
`difficulty, however, with creating more sophisticated systems that included
`
`many sensors to provide feedback on the surrounding environment so that
`
`
`
`16
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`multiple robots could coordinate with one another. Id. The Stewart
`
`reference was an extension to a prior design on a real-time operating system
`
`known as Chimera, to improve the programmability of such robotic systems.
`
`Id. Dr. Stewart created Chimera as part of his Master’s thesis work. Id.
`
`
`
`The Stewart reference is focused on operating system functionality,
`
`and was intentionally designed to be independent of any robotic application.
`
`Id. This reference discloses the port-based object, which Dr. Stewart
`
`describes as an architectural concept that was achieved by combining the use
`
`of objects with port automata theory. Id. ¶ 10. Dr. Stewart explains that the
`
`main components of port-based objects are ports and functions. Id. ¶ 11. He
`
`describes the ports as being used for exchanging data with other objects and
`
`the functions as representing the encapsulation of code that needs to be
`
`executed at specific times. Id.
`
`
`
`Dr. Stewart further testifies that the Stewart reference discloses
`
`control modules and control tasks. Id. ¶ 12. He describes a control module
`
`as the source code or compiled binary code of the functions needed by the
`
`port-based object and the specification of its input and output ports. Id. He
`
`describes a control task as a control module executing on the target platform.
`
`Id.
`
`
`
`To summarize, Dr. Stewart testifies that the Stewart reference
`
`discloses a programming environment that has a port-based object model at
`
`its core, which targets the implication of dynamic and real-time multi-sensor
`
`and multi-actuator systems in a multiprocessor environment. Id. ¶ 16. He
`
`characterizes the Stewart reference as describing a system that is
`
`independent of the application, and even though it has been applied
`
`
`
`17
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`primarily to robotics control systems, there is nothing defined within the
`
`architecture that is robotics-specific. Id.
`
`
`
`Dr. Stewart’s testimony also summarizes the Gertz and Morrow
`
`references. Id. ¶¶ 17-25. According to Dr. Stewart, the Gertz reference
`
`attempted to bring visual programming to the port-based object system Dr.
`
`Stewart had developed. Id. ¶ 17. The Gertz reference describes a “visual
`
`programming environment” called Onika. Id. ¶ 18. The Onika system made
`
`available to users a library of control modules. Id. Each such module was
`
`associated with a file containing various parameters. Id. This file was called
`
`a control task. Id. A control task was the most basic building block
`
`available to the users of Onika. Id.
`
`
`
`Dr. Stewart testifies that the Gertz reference discloses graphical
`
`representations of control tasks based on Chimera’s port-based objects. Id.
`
`¶ 19. Configurations in Onika were combinations of control tasks. Id. ¶ 20.
`
`The final product of Onika was a “configuration file” that could be
`
`downloaded to a computer system running Chimera. Id. ¶ 21. To
`
`summarize, Dr. Stewart testifies that Onika was a visual programming
`
`environment executing on the developer’s computer that enabled users to
`
`create a complex configuration file from a library of pre-existing control
`
`modules on the target motion control computer. Id. ¶ 22. He explains that
`
`when that complex configuration file was used on the target motion control
`
`computer, the only code executing on that computer was the code in the pre-
`
`existing control modules. Id. Dr. Stewart describes the Morrow reference as
`
`leveraging the Stewart reference’s work by adding applications-specific
`
`capability for robotics. Id. ¶ 23.
`
`
`
`18
`
`

`

`IPR2013-00062/00282
`Patent 6,516,236 B1
`
`
`
`Dr. Stewart’s testimony takes issue with Petitioner’s analysis of the
`
`Stewart and Gertz references in several respects. Id. ¶¶ 29-47. Specifically,
`
`he testifies that the references are lacking at least four elements of the patent
`
`claims: (1) component function; (2) core driver function; (3) extended driver
`
`function; and (4) component code. Id. ¶ 29. Dr. Stewart explains the
`
`“actions” in Gertz are not component functions, and the “configurations”
`
`and “tasks” in Gertz are not driver functions. Id. ¶¶ 40-41. Furthermore, he
`
`testifies that there is no “code” in Onika relating “actions” to
`
`“conf

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