`Tel: 571-272-7822
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`Paper 17
`Entered: April 11, 2014
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`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
`
`
`
`
`
`
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`IPR2013-00062/00282
`Patent 6,516,236 B1
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`I.
`
`INTRODUCTION
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`A. Background
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`ABB Inc. (“Petitioner”) filed a Petition requesting an inter partes
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`review of claims 1-10 of U.S. Patent No. 6,516,236 B1 (Ex. 1001 (“the ’236
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`patent”)). Paper 4.1 On April 18, 2013, the Board instituted trial on claims
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`1-4 and 8-10. Paper 23. On May 17, 2013, Petitioner filed a second Petition
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`requesting an inter partes review of claims 1-10 of the ’236 patent.
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`IPR2013-00282, Paper 1. With the second Petition, Petitioner filed a motion
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`requesting joinder with IPR2013-00062. IPR2013-00282, Paper 4. On June
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`10, 2013, Petitioner filed a motion limiting its second Petition to claims 5-7.
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`IPR2013-00282, Paper 11. On August 9, 2013, the Board granted the
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`second Petition and instituted a trial as to claims 5-7. IPR2013-00282, Paper
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`14. On the same day, the Board granted the motion for joinder and joined
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`IPR2013-00062 and IPR2013-00282. IPR2013-00282, Paper 15.
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`During trial, ROY-G-BIV Corp. (“Patent Owner”) filed a Patent
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`Owner Response (“PO Resp.”) addressing the challenges from the first
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`Petition and a Supplemental Patent Owner Response (“Supp. PO Resp.”)
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`addressing the challenges from the second Petition. Papers 30, 32. The
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`Patent Owner Response was accompanied by an expert declaration from
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`David B. Stewart, Ph.D. (Ex. 2011), author of the Stewart thesis relied upon
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`by Petitioner. Petitioner filed a Reply (“Pet. Reply”) and, for the first time
`
`in this proceeding, presented expert testimony, namely declarations from
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`Richard Voyles, Ph.D. (Ex. 1130) and Nikolaos Papanikolopoulos, Ph.D.
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`(Ex. 1132). Paper 44. Drs. Voyles and Papanikolopoulos worked in the
`
`
`1 Citations to the record refer to IPR2013-00062 unless otherwise noted.
`2
`
`
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`
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`IPR2013-00062/00282
`Patent 6,516,236 B1
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`same laboratory at Carnegie Mellon University as Dr. Stewart, and their
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`testimony was presented by Petitioner to rebut Dr. Stewart’s expert
`
`testimony. Patent Owner also filed a motion to exclude evidence (“Mot.”).
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`Paper 59. Oral hearing was held on January 23, 2014. A transcript of the
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`hearing is included in the record as Paper 76 (“Transcript”).
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`We have jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons
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`discussed below, we determine that Petitioner has not met its burden to
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`prove by a preponderance of the evidence that claims 1-10 of the ʼ236 patent
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`are unpatentable.
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`B. The ’236 Patent
`
`The ’236 patent relates generally to a system that facilitates the
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`creation of hardware-independent motion control software. Ex. 1001, col. 1,
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`ll. 13-16. In particular, the patent describes a high-level motion control
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`application programming interface (“API”) made of functions that are
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`correlated with driver functions associated with controlling a mechanical
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`system that generates movement based on a control signal. See generally id.
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`at col. 1, ll. 5-49. The object of the invention is to isolate the application
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`programmer from the complexity of hardware devices, which often have a
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`manufacturer-specific motion control command language and functionality
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`that is highly hardware-dependent. See generally id. at col. 3, ll. 24-42. At
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`the same time, the API allows the programmer to access base motion
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`operations of the hardware device. Id.
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`As described in the ’236 patent, the prior art includes a number of
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`low-level software programs for directly programming individual motion
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`control devices, or for aiding in the development of systems containing a
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`
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`3
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`IPR2013-00062/00282
`Patent 6,516,236 B1
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`number of motion control devices. Id. at col. 1, l. 55 – col. 2, l. 34. While
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`providing complete control over the hardware, these low-level programs are
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`highly hardware-dependent. Id. In describing the invention, the ’236 patent
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`discloses a programming interface consisting of “component functions”
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`containing code that relates to driver functions, which in turn are associated
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`with, or contain code for, implementing the motion steps on a given motion
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`control device. Id. at col. 3, ll. 56-66. The component functions support
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`both core driver functions—those functions that must be supported by all
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`software drivers—and extended driver functions—those functions that may,
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`or may not be, supported by a particular software driver. Id. at col. 4, ll. 3-
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`13. When feasible, component functions can emulate extended driver
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`functions not supported by a particular device by using a combination of
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`core driver functions. Id. at col. 4, ll. 25-44.
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`C. Illustrative Claim
`
`Claim 1, the only independent claim, is reproduced below:
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`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;
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`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
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`IPR2013-00062/00282
`Patent 6,516,236 B1
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`a set of component functions;
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`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;
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`a set of software drivers, where
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`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
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`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;
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`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
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`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.
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`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
`
`
`
`
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`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,
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`1995. PO Resp. 6. Patent Owner does not challenge these dates of
`
`publication. Instead, Patent Owner contends that the claimed invention of
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`2 Exhibit number from IPR2013-00282.
`6
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`IPR2013-00062/00282
`Patent 6,516,236 B1
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`the ’236 patent was conceived prior to the earliest publication date for the
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`references, namely November 22, 1994, and constructively reduced to
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`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
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`further contends that the inventors were reasonably diligent from November
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`21, 1994, to the date of the constructive reduction to practice. Id. Patent
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`Owner contends that, as a consequence, neither Gertz nor Morrow qualifies
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`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
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`is prior art only when published before the invention date.”).
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`For support, Patent Owner relies on the declaration testimony of its
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`founder, chairman, and chief technical officer, David W. Brown, who also is
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`named as a co-inventor on the ʼ236 patent. PO Resp. 6-7; Ex. 2010 ¶¶ 1-4.
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`Mr. Brown testifies that he and his co-inventor conceived of the subject
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`matter claimed in the ʼ236 patent prior to November 21, 1994. Ex. 2010 ¶ 7.
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`In support of Mr. Brown’s testimony regarding conception, Patent
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`Owner proffers two draft specification documents (Ex. 2010-1; Ex. 2010-2).
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`Mr. Brown testifies that he and his co-inventor prepared these documents by
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`July 24, 1994, in connection with their work on the XMC motion control
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`software development project (the “XMC project”) that led to the ’236
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`patent. Ex. 2010 ¶ 9. The XMC project was Mr. Brown’s primary
`
`responsibility throughout the 1994 and 1995 timeframe. Ex. 2010 ¶ 8.
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`To show diligence, Patent Owner relies upon time logs prepared by
`
`Mr. Brown relating to his activities on the XMC project from November 20,
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`1994, to May 30, 1995, and in July 1994 (Ex. 2010-3; Ex. 2010-6), and Mr.
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`Brown’s testimony summarizing the time logs. PO Resp. 10-12; Ex. 2010
`
`
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`7
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`IPR2013-00062/00282
`Patent 6,516,236 B1
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`¶¶ 20-21. To show constructive reduction to practice, Patent Owner relies
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`on the “priority application” filed on May 30, 1995, that led to the issuance
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`of the ʼ236 patent. PO Resp. 10; Ex. 2010-5. Mr. Brown’s declaration also
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`includes an additional exhibit, a software specification dated February 22,
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`1995 (Ex. 2010-4), portions of which, Mr. Brown testifies, were filed with
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`the USPTO as an appendix to that application. Ex. 2010 ¶ 6. Mr. Brown
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`refers to this software specification, which he also authored, briefly in his
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`testimony. Id. ¶ 20.
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`Mr. Brown’s testimony on diligence is contained in a section of his
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`declaration headed “Time Logs Evidence of Diligence in Reduction to
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`Practice.” In this section, Mr. Brown summarizes his “major activities” on
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`the XMC project on a weekly basis. Id. ¶ 20. According to Mr. Brown,
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`these summaries “reference to my time logs attached as Exhibits 2010-3
`
`through 2010-6.” Id. The time logs will be discussed further below.
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`Petitioner responds, first, by challenging Patent Owner’s conception
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`proofs. Pet. Reply 3. According to Petitioner, Patent Owner fails to “link[]”
`
`elements of certain claims (claims 5-7) to the proffered conception
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`documents, and “admit[s]” that claim 10 is entitled to a May 30, 1996,
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`effective filing date. Id. Second, Petitioner challenges Patent Owner’s
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`corroborating evidence, particularly as it relates to diligence. Id. at 4-8.
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`Petitioner asserts that Mr. Brown’s time records are unreliable for a variety
`
`of reasons, including the failure to provide independent corroborating
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`evidence. Id. at 1-2. Petitioner also points to diligence “gaps,” for example,
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`the holiday period of December 21, 1994 to January 3, 1995, during which
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`Mr. Brown’s time records do not reflect work on the XMC project. Id. at 6.
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`8
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`Patent 6,516,236 B1
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`2.
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`Discussion
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`The oral testimony of an inventor, standing alone, is insufficient to
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`prove conception. Mahurkar, 79 F.3d at 1577; Price v. Symsek, 988 F.2d
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`1187, 1194 (Fed. Cir. 1993). “It has long been the case that an inventor’s
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`allegations of early invention alone are insufficient—an alleged date of
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`invention must be corroborated.” In re NTP, Inc., 654 F.3d 1279, 1291
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`(Fed. Cir. 2011). As explained by the Federal Circuit in Mahurkar, the
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`requirement arose out of concern that inventors testifying in patent
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`infringement cases would be tempted to remember facts favorable to their
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`case “by the lure of protecting their patent or defeating another’s patent.” 79
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`F.3d at 1577. The corroboration requirement is not limited to conception. It
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`applies also to inventor testimony regarding diligence and reduction to
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`practice. Price, 988 F.2d at 1196. Here, Patent Owner relies on the filing of
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`an application as a constructive reduction to practice, and there is no dispute
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`concerning that date. However, corroboration is required for the testimony
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`provided by Mr. Brown on conception and diligence.
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`Corroboration evidence must be independent of the inventor.
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`Independent corroboration may consist of testimony of a witness, other than
`
`the inventor, or it may consist of evidence of surrounding facts and
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`circumstances, independent of information received from the inventor.
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`Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981); Medichem, S.A. v.
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`Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006) (“The requirement of
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`independent knowledge remains key to the corroboration inquiry.”). As
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`Patent Owner recognizes, corroboration is determined under a “rule of
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`reason” analysis. Price, 988 F.2d at 1195. “An evaluation of all pertinent
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`evidence must be made so that a sound determination of the credibility of the
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`9
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`Patent 6,516,236 B1
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`inventor’s story may be reached.” Id. However, “[t]he rule of reason . . .
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`does not dispense with the requirement for some evidence of independent
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`corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
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`Price sets forth a set of factors that may bear on the inventor’s
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`credibility and whether the inventor’s testimony has been corroborated
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`adequately. 988 F.2d at 1195 n.3. These include: (1) delay between the
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`event and the trial; and (2) interest of the corroborating witnesses. In
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`Mahurkar, for example, the corroborating evidence included disclosure of
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`the invention to third parties, who provided testimony and correspondence
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`acknowledging receipt of, and describing prototypes of, the invention. 79
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`F.3d at 1578-79.
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`The only evidence of diligence is Mr. Brown’s testimony and
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`documents. As required by Price, in assessing the need for corroboration of
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`inventor testimony, we look at the record, as a whole, under the rule of
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`reason. Time delay to the event in question is one factor. We note that the
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`events in question took place over 20 years ago, a fact mentioned several
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`times by Mr. Brown during his deposition testimony when he could not
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`recall the answer to a question. Ex. 1129, 20:22; 39:20; 44:2; 90:14. We
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`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
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`(as inventor, founder, and CTO of Patent Owner) in the outcome.
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`The cases relied on by Patent Owner support the conclusion that we
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`must require more than the inventor’s own records for corroboration of his
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`testimony. For example, in Sandt Technology, Ltd. v. Resco Metal &
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`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
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`10
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`affidavit from a third party attesting to a demonstration, and invoices for
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`purchases of equipment. In Brown v. Barbacid, 436 F.3d 1376 (Fed. Cir.
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`2006), the corroborating evidence included evidence of laboratory work
`
`performed by a scientist working in the same laboratory as the inventor. In
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`Scott v. Koyama, 281 F.3d 1243, 1244 (Fed. Cir. 2002), a full written
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`description of the invention was disclosed to others besides the inventors.
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`Also, the diligence requirement in that case was only 17 days, and the
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`inventor provided evidence of daily activities progressing toward building a
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`plant to practice the process at issue. Id. at 1247-48. Patent Owner points to
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`Scott as a case in which an inventor’s own records were sufficient
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`corroboration. Transcript 31-32. We see no discussion of that in the
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`decision, for the diligence issue there turned instead on the nature of the
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`activities, not corroboration. Scott, 281 F.3d at 1247. In fact, the nature of
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`the activities (described as “focused on selection of the construction
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`company”) suggests that more than the inventor’s own activities were
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`involved.3 Id. Finally, in Ohio Willow Wood Co. v. Alps South, LLC, 735
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`F.3d 1333 (Fed. Cir. 2013), the corroborating evidence included witness
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`testimony, documents, and physical samples.4
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`Especially considering the high degree of Mr. Brown’s interest in the
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`outcome of the case and other factors discussed, we find the evidence of
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`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.
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`diligence presented by Patent Owner to be insufficient. As Patent Owner
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`admitted at oral argument, none of the proffered corroboration is
`
`independent of Mr. Brown. Transcript 27. Moreover, the time records
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`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
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`testimony rejected by the Board in NTP. There, in affirming the Board, the
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`Federal Circuit remarked: “It would be strange indeed to say that [the
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`inventor], who filed the R.131 affidavit that needs corroborating, can by his
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`own testimony provide that corroboration.” NTP, 654 F.3d at 1292.
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`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
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`submitted with the motion. This information consists of a transcript of the
`
`deposition of Marc McClung and exhibits. Ex 2021. The deposition was
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`taken by Petitioner in the parallel district court action. According to Patent
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`Owner, the McClung testimony “provides independent corroboration of key
`
`conception evidence, i.e., the 7/24/1994 RGB Design Spec., McClung Ex. 5,
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`Ex. 2010-1 (2nd RGB Spec.).” Paper 78, 2. Petitioner opposes the motion,
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`citing prejudice due to the lateness of the submission. Paper 83, 1.
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`Petitioner also contends that Mr. McClung is an “unnamed co-inventor”
`
`who, therefore, cannot provide independent corroboration. Id. at 4.
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`Petitioner also points out that the McClung testimony does not corroborate
`
`the alleged diligence, which is a separate independent requirement. Id. at 5.
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`We are not persuaded by Petitioner’s claim of prejudice. It appears
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`that Petitioner held off noticing Mr. McClung’s deposition until the day after
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`12
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`the final oral hearing in related proceeding IPR2013-00063, suggesting
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`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
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`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
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`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-
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`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), the
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`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.
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`§ 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
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`“component function” and “component code,” as these terms are
`
`determinative. We, therefore, do not reach the dispute over “primitive
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`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
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`13
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`Patent 6,516,236 B1
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`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.
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`“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,
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`36-37. Petitioner argues that executable code is not required. Pet. Reply 9.
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`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
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`executed.” Id. at 10 (citing Ex. 1130 ¶¶ 39, 42-46).
`
`Neither party points to a special meaning in the patent specification.
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`Patent Owner cites to the MICROSOFT COMPUTER DICTIONARY for the plain
`
`meaning of “function.” Transcript 41-42; Ex. 2018, 36 (citing Ex. 2016,
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`212).5 The MICROSOFT COMPUTER DICTIONARY provides two definitions for
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`the term “function”: “1. The purpose of, or the action carried out by, a
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`program or routine”; and “2. A general term for subroutine.” Ex 2016, 4.
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`Neither definition requires executable code. However, the first, broader
`
`definition requires an “action carried out by[] a program or routine.” Thus,
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`we conclude that the broadest reasonable interpretation of the term
`
`“component function” requires an action carried out by a program or routine,
`
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`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.
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`regardless of whether the action is defined by executable code. This is
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`consistent with the specification of the ’236 patent, which explains that
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`“[t]he application program 26 comprises a sequence of component functions
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`arranged to define the motion control operations necessary to control a
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`motion control device to move an object in a desired manner.” Ex. 1001,
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`col. 8, ll. 26-30.
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`2.
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`“component code”
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`Petitioner proposes that “component code is computer code which
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`associates at least some of the component functions with at least some of the
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`driver functions.” Pet. 22. According to Petitioner, this does not require a
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`formal computer language, but rather only requires some “form of control
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`flow, including visual programming constructs.” Pet. Reply 9. Patent
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`Owner contends that even if “component code” does not require a formal
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`language, it still requires some form of code. PO Resp. 20.
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`We agree with Petitioner that a formal computer language is not
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`required. However, we also agree with Patent Owner that “component
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`code” requires some form of “code,” as the word “code” is recited explicitly
`
`by this limitation. The MICROSOFT COMPUTER DICTIONARY defines “code”
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`as “[p]rogram instructions.” Ex. 2016, 2. We, therefore, determine that,
`
`applying the broadest reasonable interpretation of the term “component
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`code,” program instructions are required to meet the limitation. This is
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`consistent with the specification of the ’236 patent, which explains that “the
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`software system designer writes component code that associates at least
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`some of the component functions with at least some of the driver functions.”
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`Ex. 1001, col. 7, ll. 56-59.
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`C. Summary of Expert Testimony
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`
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`Three experts—all Ph.D.s from the same university laboratory—
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`testified in this case. As noted, Petitioner initially presented no expert
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`testimony. With its post-institution response, however, Patent Owner
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`presented the testimony of David Stewart, Ph.D., author of the Stewart
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`reference. Petitioner then presented, with its reply, the testimony of two
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`rebuttal experts: Richard Voyles, Ph.D.; and Nikolaos Papanikolopoulos,
`
`Ph.D.
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`
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`For the reasons that follow, we credit Dr. Stewart’s testimony that
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`certain elements in the patent claims are not present in the prior art relied on
`
`by Petitioner.
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`1.
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`Dr. Stewart’s Testimony
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`
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`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
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`reference. Id. Dr. Stewart has over 25 years of professional experience in
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`software. Id. ¶ 4. He earned his Ph.D. in computer engineering from
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`Carnegie Mellon University in 1994. Id. ¶ 5. His Ph.D. dissertation is the
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`Stewart reference relied upon by Petitioner. Id.
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`
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`Dr. Stewart testifies that he is “very familiar” with the Gertz reference
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`in addition to his own thesis, the Stewart reference. Id. ¶ 7. He knows Dr.
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`Gertz personally and worked with him at Carnegie Mellon. Id. He further
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`testifies that Dr. Gertz’s work built upon his own work. Id. ¶ 8.
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`
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`According to Dr. Stewart, robotics research in the early 1990s had
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`solved the problems of robot movement. Id. ¶ 9. There was tremendous
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`difficulty, however, with creating more sophisticated systems that included
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`many sensors to provide feedback on the surrounding environment so that
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`multiple robots could coordinate with one another. Id. The Stewart
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`reference was an extension to a prior design on a real-time operating system
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`known as Chimera, to improve the programmability of such robotic systems.
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`Id. Dr. Stewart created Chimera as part of his Master’s thesis work. Id.
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`
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`The Stewart reference is focused on operating system functionality,
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`and was intentionally designed to be independent of any robotic application.
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`Id. This reference discloses the port-based object, which Dr. Stewart
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`describes as an architectural concept that was achieved by combining the use
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`of objects with port automata theory. Id. ¶ 10. Dr. Stewart explains that the
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`main components of port-based objects are ports and functions. Id. ¶ 11. He
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`describes the ports as being used for exchanging data with other objects and
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`the functions as representing the encapsulation of code that needs to be
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`executed at specific times. Id.
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`
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`Dr. Stewart further testifies that the Stewart reference discloses
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`control modules and control tasks. Id. ¶ 12. He describes a control module
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`as the source code or compiled binary code of the functions needed by the
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`port-based object and the specification of its input and output ports. Id. He
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`describes a control task as a control module executing on the target platform.
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`Id.
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`
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`To summarize, Dr. Stewart testifies that the Stewart reference
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`discloses a programming environment that has a port-based object model at
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`its core, which targets the implication of dynamic and real-time multi-sensor
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`and multi-actuator systems in a multiprocessor environment. Id. ¶ 16. He
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`characterizes the Stewart reference as describing a system that is
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`independent of the application, and even though it has been applied
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`
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`primarily to robotics control systems, there is nothing defined within the
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`architecture that is robotics-specific. Id.
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`
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`Dr. Stewart’s testimony also summarizes the Gertz and Morrow
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`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
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`programming environment” called Onika. Id. ¶ 18. The Onika system made
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`available to users a library of control modules. Id. Each such module was
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`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
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`available to the users of Onika. Id.
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`
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`Dr. Stewart testifies that the Gertz reference discloses graphical
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`representations of control tasks based on Chimera’s port-based objects. Id.
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`¶ 19. Configurations in Onika were combinations of control tasks. Id. ¶ 20.
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`The final product of Onika was a “configuration file” that could be
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`downloaded to a computer system running Chimera. Id. ¶ 21. To
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`summarize, Dr. Stewart testifies that Onika was a visual programming
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`environment executing on the developer’s computer that enabled users to
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`create a complex configuration file from a library of pre-existing control
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`modules on the target motion control computer. Id. ¶ 22. He explains that
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`when that complex configuration file was used on the target motion control
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`computer, the only code executing on that computer was the code in the pre-
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`existing control modules. Id. Dr. Stewart describes the Morrow reference as
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`leveraging the Stewart reference’s work by adding applications-specific
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`capability for robotics. Id. ¶ 23.
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`Dr. Stewart’s testimony takes issue with Petitioner’s analysis of the
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`Stewart and Gertz references in several respects. Id. ¶¶ 29-47. Specifically,
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`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
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`function; and (4) component code. Id. ¶ 29. Dr. Stewart explains the
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`“actions” in Gertz are not component functions, and the “configurations”
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`and “tasks” in Gertz are not driver functions. Id. ¶¶ 40-41. Furthermore, he
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`testifies that there is no “code” in Onika relating “actions” to
`
`“c