Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 80
`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 IPR2013-00074 & IPR2013-00286
`Patent 8,073,557 B2
`____________
`
`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
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 80
`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 IPR2013-00074 & IPR2013-00286
`Patent 8,073,557 B2
`____________
`
`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
`
`
`
`
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`ABB Inc. (“Petitioner”) filed a Petition (IPR2013-00074) requesting
`
`an inter partes review of claims 16-30 and 46-59 of U.S. Patent No.
`
`8,073,557 B2 (Ex. 1001 (“the ’557 patent”)). Paper 8.1 On April 18, 2013,
`
`the Board granted the Petition and instituted trial for claims 16-25, 27, and
`
`28. Paper 17. On May 17, 2013, Petitioner filed a second Petition
`
`requesting an inter partes review of claims 16-30 and 46-59 of the ’557
`
`patent. IPR2013-00286, Paper 1. With the second Petition, Petitioner filed
`
`a motion requesting joinder with IPR2013-00074. IPR2013-00286, Paper 4.
`
`On June 10, 2013, Petitioner filed a motion limiting its second Petition to
`
`claims 26, 29, 30, and 46-59. IPR2013-00286, Paper 10. On August 9,
`
`2013, the Board granted the second Petition and instituted a trial as to claims
`
`26, 29, 30, and 46-59. IPR2013-00286, Paper 13. On the same day, the
`
`Board granted the motion for joinder and joined IPR2013-00074 and
`
`IPR2013-00286. IPR2013-00286, Paper 14.
`
`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 24, 27. The
`
`Patent Owner Response was accompanied by an expert declaration from
`
`David B. Stewart, Ph.D. (Ex. 2014), 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
`
`
`1 Citations to the record refer to IPR2013-00074 unless otherwise noted.
`2
`
`
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`Richard Voyles, Ph.D. (Ex. 1130), and Nikolaos Papanikolopoulos, Ph.D.
`
`(Ex. 1132). Paper 44. Drs. Voyles and Papanikolopoulos worked in the
`
`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 50. Oral hearing was held on January 23, 2014. This hearing
`
`included four proceedings: IPR2013-00062, IPR2013-00074, IPR2013-
`
`00282, and IPR2013-00286. A transcript of the hearing is included in the
`
`record as Paper 70 (“Transcript”). This final decision addresses two of the
`
`four proceedings: IPR2013-00074 and IPR 2013-00286. A separate final
`
`decision (“the ’062 Decision”) addresses the remaining two proceedings,
`
`IPR2013-00062 and IPR2013-00282 (“IPR2013-00062/282”). This decision
`
`will refer to the ’062 Decision and will, in places, rely on the analysis
`
`therein.
`
`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 16-30 and 46-59 of the
`
`ʼ557 patent are unpatentable.
`
`B. The ’557 Patent
`
`The technology of the ’557 patent is identical to that described in the
`
`’062 Decision. The patent at issue there, U.S. Patent No. 6,516,236 (“the
`
`
`
`3
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`’236 patent”), is related to the ʼ557 patent.2 For the purposes of this
`
`decision, therefore, we rely upon that prior description in the ’062 Decision.
`
`C. Illustrative Claim
`
`Claim 16 is reproduced below:
`
`16. A motion control system, comprising:
`
`an application program comprising at least one call to at least one
`component function;
`
`a plurality of motion control devices, where
`
`a plurality of unique controller languages are associated with the
`plurality of motion control devices,
`
`each controller language comprises at least some control
`commands for processing information associated with motion
`control devices, and
`
`each of the motion control devices comprises
`
`a controller capable of generating electrical signals based on at
`least one control command of the controller language
`associated with the motion control device, and
`
`a mechanical system capable of causing a motion control
`operation based on electrical signals generated by the
`controller,
`
`a set of software drivers each comprising driver code, where
`
`each software driver is associated with at least one of the plurality
`of controller languages, and
`
`each software driver exposes a service provider interface defining
`a set of driver functions, where
`
`the driver functions are independent of the plurality of
`controller languages,
`
`
`2 The ’557 patent is a continuation of U.S. Patent Application No.
`10/316,451 (now abandoned), which is a continuation-in-part of the ’236
`patent.
`
`
`
`4
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`
`at least one driver function is an extended driver function that is
`associated with a non-primitive motion operation that can be
`performed using at least one primitive motion operation,
`where the at least one primitive motion operation cannot be
`performed using a combination of primitive or non-primitive
`motion operations,
`
`at least one driver function is a core driver function that is
`associated with a primitive motion operation,
`
`the driver code of at least one software driver associates at least
`one driver function with at least one control command of the
`at least one controller language associated with at least one
`of the software drivers, and
`
`at least one selected software driver is associated with at least
`one selected motion control device;
`
`a motion component comprising component code, where the motion
`component exposes an application programming interface
`comprising a set of component functions, where;
`
`each component function is implemented by component code,
`
`at least the component code is independent of the plurality of
`controller languages, and
`
`the component code associates at least one of the component
`functions with at least one of the driver functions;
`
`wherein
`
`the at least one selected software driver generates at least one
`control command in the controller language associated with the
`at least one selected motion control device based on the calls to
`component functions of the application program, the
`component code, and the driver code of the at least one selected
`software driver.
`
`
`
`5
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`
`D. The Prior Art References Supporting the Alleged Unpatentability
`of Claims 16-30 and 46-59
`
`The following references are relied upon by Petitioner:
`
`Gertz
`
`Stewart
`
`Morrow
`
`Matthew Wayne Gertz, A Visual
`Programming Environment for Real-Time
`Control Systems (Ph.D. dissertation,
`Carnegie Mellon University)
`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
`
`Nov.
`22,
`1994
`
`Apr.
`1,
`1994
`
`Jan.
`1,
`1995
`
`Brockschmidt KRAIG BROCKSCHMIDT, INSIDE OLE 2
`
`1994
`
`Architect
`
`Compumotor Division, Parker Hannifin
`Corporation, Motion Architect User Guide
`
`1994
`
`Ex.
`1002
`
`Ex.
`1004
`
`Ex.
`1005
`
`Ex.
`1006
`Ex.
`1008
`
`E. The Pending Grounds of Unpatentability
`
`The following challenges to patentability under 35 U.S.C. § 103 were
`
`considered:
`
`References
`Gertz, Stewart, and Morrow
`
`Gertz, Stewart, Morrow, Brockschmidt, and Architect
`
`Claims
`16-25, 27, and 28
`26, 29, 30, and
`46-59
`
`
`
`
`
`6
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`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. As in IPR2013-00062/282, Patent Owner contends that
`
`the claimed invention of the ’557 patent was conceived prior to the earliest
`
`possible 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 ʼ557 patent. PO
`
`Resp. 6. Patent Owner further contends that the inventors were reasonably
`
`diligent from November 21, 1994, to the date of the constructive reduction
`
`to practice. Id. at 7. 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.”).
`
`Patent Owner relies here on the same declaration testimony of its
`
`founder, chairman, and chief technical officer, David W. Brown, and
`
`evidence that was relied on in IPR2013-00062/282. See Exs. 2013 through
`
`2013-6.
`
`2.
`
`Discussion
`
`For the reasons discussed in the ’062 Decision, we determine that the
`
`testimony and documents offered by Patent Owner are not sufficient to
`
`establish that the invention date of claims 16-25, 27, and 28 is prior to the
`
`publication date of Gertz and Morrow.
`
`7
`
`
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`
`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” because these terms are
`
`determinative for the same reasons explained in the ’062 Decision.
`
`1.
`
`“component function”
`
`The parties present the same opposing views on the construction of
`
`“component function” as those discussed in the ’062 Decision. See Ex.
`
`2021, 36-37; Pet. Reply 9-10 (citing Ex. 1130 ¶¶ 39, 42-46); Transcript 41-
`
`42. For the reasons set forth in the ’062 Decision, we conclude that the
`
`broadest reasonable interpretation of the term “component function” requires
`
`an action carried out by a program or routine, regardless of whether the
`
`
`
`8
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`action is defined by executable code. This is consistent with the
`
`specification of the ’557 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. 9, ll. 15-19.
`
`2.
`
`“component code”
`
`The parties have the same disagreement on the construction of
`
`“component code” as that discussed in the ’062 Decision. See Pet. Reply 9;
`
`PO Resp. 21. For the reasons discussed in the ’062 Decision, we determine
`
`that the term “component code” requires program instructions. This is
`
`consistent with the specification of the ’557 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. 8, ll. 45-48.
`
`C. Summary of Expert Testimony
`
`
`
`As in IPR2013-00062/282, three experts—Drs. Stewart, Voyles, and
`
`Papanikolopoulos—testified in this case. These declarations are similar to
`
`those submitted in IPR2013-00062/282, which are discussed in the ’062
`
`Decision. As the issues raised here relative to the component function and
`
`component code limitations are the same, we rely on that analysis for the
`
`purposes of this decision.
`
`D. Obviousness Ground Based on Gertz, Stewart, and Morrow
`
`Petitioner challenges claims 16-25, 27, and 28 as being unpatentable
`
`under 35 U.S.C. § 103(a) based on the combination of Gertz, Stewart, and
`
`
`
`9
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`Morrow. Claims 17-25, 27, and 28 depend, either directly or indirectly,
`
`from claim 16.
`
`As discussed in the ’062 Decision, we give significant weight to the
`
`testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are
`
`not the same as the claimed component functions, and that Gertz does not
`
`describe any code (i.e., the claimed component code) that associates
`
`component functions with driver functions as claimed. Petitioner does not
`
`provide sufficient evidence to rebut this testimony. Thus, as described
`
`below, we are not persuaded that Petitioner has established, by a
`
`preponderance of the evidence, that the combination of Gertz, Stewart, and
`
`Morrow renders claims 16-25, 27, and 28 unpatentable under 35 U.S.C.
`
`§ 103(a).
`
`Similar to Petitioner’s challenge to the patentability of claim 1 in
`
`IPR2013-00062/282, Petitioner’s challenge here relies on Gertz alone for the
`
`claimed component function and component code features. Pet. 30-31, 45,
`
`51-52; Pet. Reply 12-13. Stewart and Morrow are relied upon for additional
`
`features of the claims. Because Petitioner’s challenge fails with respect to
`
`the component function and component code features of the claims, we do
`
`not need to address issues regarding Stewart and Morrow. Therefore, the
`
`discussion below focuses on Gertz.
`
`1.
`
`“component function”
`
`The contentions presented on this claim feature are similar to those in
`
`IPR2013-00062/282. Petitioner relies on Gertz’s “actions” to meet this
`
`claim limitation. Pet. 31, 45; Transcript 15. Patent Owner contends that
`
`
`
`10
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`Gertz’s “actions” are not component functions. PO Resp. 27 (citing Ex.
`
`2014 ¶ 40).
`
`For the reasons set forth in the ’062 Decision, we agree with Patent
`
`Owner, and determine that Petitioner has not explained persuasively why
`
`information regarding the arrangement of control tasks defines an “action
`
`carried out by a program or routine,” as required by a component function.
`
`Thus, Petitioner has not established, by a preponderance of the evidence,
`
`that Gertz teaches the claimed component functions.
`
`2.
`
`“component code”
`
`The contentions presented on this claim feature are similar to those in
`
`IPR2013-00062/282. Again, Petitioner does not point to any specific
`
`element or feature disclosed in Gertz as teaching the claimed component
`
`code and, instead, explains that “ordinary artisans would recognize . . . that
`
`the configuration files that [Gertz] creates comprise software code that binds
`
`various components together into a programming sequence (including
`
`Turing equivalents) that have been the basis of computer programming for
`
`over a century.” Pet. Reply 12-13 (citing Ex. 1030 ¶¶ 37-39, 42-46).3
`
`Patent Owner responds that Gertz’s configuration files do not connect the
`
`control tasks and configurations to actions using code. PO Resp. 29-30
`
`(citing Ex. 2014 ¶ 44).
`
`
`
`For the reasons set forth in the ’062 Decision, we agree with Patent
`
`Owner and determine that Petitioner has not explained persuasively why the
`
`configuration information in Gertz includes an “action statement in a
`
`
`3 It appears that Petitioner’s citation should be to Exhibit 1130 rather than
`Exhibit 1030.
`
`11
`
`
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`computer language.” Thus, Petitioner has not established, by a
`
`preponderance of the evidence, that Gertz teaches or suggests the claimed
`
`component code.
`
`Petitioner’s challenge with respect to dependent claims 17-25, 27, and
`
`28 fails for the reasons set forth regarding claim 16.
`
`E. Obviousness Ground Based on Gertz, Stewart, Morrow,
`Brockschmidt, and Architect
`
`1.
`
`Claims 26, 29, and 30
`
`Claims 26, 29, and 30 depend, either directly or indirectly, from claim
`
`16 and, therefore, include the “component function” and “component code”
`
`limitations we have determined are missing from Gertz. Petitioner’s
`
`challenge to claims 26, 29, and 30 does not cure these deficiencies in Gertz,
`
`and the other references (Brockschmidt and Architect) are not relied upon to
`
`meet these elements. We, therefore, determine that Petitioner has not
`
`established that the combination of Gertz, Stewart, Morrow, Brockschmidt,
`
`and Architect renders claims 26, 29, and 30 unpatentable under 35 U.S.C.
`
`§ 103(a) for the reason set forth above regarding claim 16.
`
`2.
`
`Claims 46-59
`
`Claims 46-59 each recite the “component function” and “component
`
`code” features. Petitioner relies on Gertz as disclosing these features in
`
`claims 46-59 and presents the same arguments as presented above for the
`
`challenge to claims 16-25, 27, and 28. See IPR2013-00286 Pet. 30-31, 57-
`
`59; Pet. Reply 12-13. Petitioner does not rely on the additional references
`
`(Brockschmidt and Architect) to meet the component function and
`
`component code elements. As explained above, we do not find these
`
`
`
`12
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`arguments persuasive. Thus, Petitioner has not established, by a
`
`preponderance of the evidence, that Gertz teaches or suggests the claimed
`
`component function and component code. We, therefore, determine that
`
`Petitioner has not established that the combination of Gertz, Stewart,
`
`Morrow, Brockschmidt, and Architect renders claims 46-59 unpatentable
`
`under 35 U.S.C. § 103(a).
`
`F. Motion to Exclude
`
`Patent Owner’s Motion filed on December 19, 2013 (“Mot.”) seeks to
`
`exclude certain arguments made in Petitioner’s Reply (Mot. 8) and portions
`
`of Petitioner’s expert testimony (Mot. 9-14). For example, Patent Owner
`
`alleges that the contention related to Gertz teaching the claimed core driver
`
`function as a result of the cycle function in the method of a port-based object
`
`raises a new argument (Mot. 8) and that testimony of Petitioner’s expert, Dr.
`
`Papanikolopoulos, advances a new position on driver functions (Mot. 12-
`
`13). Because we have not relied upon these arguments, they do not affect
`
`our decision. The issues raised in Patent Owner’s Motion are moot, and the
`
`Motion is, therefore, dismissed.
`
`Although we ultimately do not rely on these arguments for our
`
`decision, we note that a motion to exclude evidence is not the proper vehicle
`
`for resolution of a dispute regarding reply arguments and evidence
`
`exceeding the proper scope of a reply. A motion to exclude “must identify
`
`the objections in the record.” 37 C.F.R. §42.64(c). In the Motion, Patent
`
`Owner does not identify where in the record an objection originally was
`
`made. If an issue arises regarding whether a reply argument or evidence in
`
`
`
`13
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`support of a reply exceeds the scope of a proper reply, the parties should
`
`contact the Board to discuss the issue.
`
`
`
`III. CONCLUSION
`
`We conclude that Petitioner has failed to meet its burden of proof, by
`
`a preponderance of the evidence, that claims 16-25, 27, and 28 are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Gertz, Stewart, and
`
`Morrow and that claims 26, 29, 30, and 46-59 are unpatentable under
`
`35 U.S.C. § 103 as obvious over Gertz, Stewart, Morrow, Brockschmidt, and
`
`Architect.
`
`This is a final written decision of the Board under 35 U.S.C. § 318(a).
`
`Parties to the proceeding seeking judicial review of the decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that Petitioner has failed to prove by a preponderance of
`
`the evidence that claims 16-30 and 46-59 of U.S. Patent No. 8,073,557 B2
`
`are unpatentable; and
`
`FURTHER ORDERED that Patent Owner’s Motion to Exclude is
`
`dismissed.
`
`
`
`
`
`
`
`
`14
`
`
`
`IPR2013-00074/00286
`Patent 8,073,557 B2
`
`For PETITIONER:
`
`Rick McLeod
`Michael Jones
`KLARQUIST SPARKMAN LLP
`john.vandenberg@klarquist.com
`michael.jones@klarquist.com
`
`Steve Auvil
`SQUIRE SANDERS (US) LLP
`Steven.Auvil@squiresanders.com
`
`
`For PATENT OWNER:
`
`Richard Black
`FOSTER PEPPER PLLC
`blacr@foster.com
`
`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER LLP
`meyer@BSFLLP.com
`
`Douglas R. Wilson
`HEIM, PAYNE & CHORUSH LLP
`dwilson@hpcllp.com
`
`
`
`
`
`
`
`
`15
`
`
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