Case 6:11-cv-00622-LED Document 135-1 Filed 04/12/13 Page 2 of 7 PageID #: 3262
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`April 12, 2013
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`Squire Sanders (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, Ohio 44114
`
`Steven M. Auvil
`T +1 216 479 8023
`steven.auvil@squiresanders.com
`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`211 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Re:
`
`ROY-G-BIV Corp. v. ABB, Ltd. et al., Civil Action No. 6:11-cv-00622-00624-LED
`
`Dear Chief Judge Davis:
`
`In accordance with the November 27, 2012 Docket Control Order (Doc. 97), Defendants
`respectfully request permission to file a motion for summary judgment of indefiniteness under 35
`U.S.C. § 112, ¶ 2 regarding certain terms and claims in the asserted patents.1
`
`The patents are directed to motion control middleware systems, and each of the asserted patent
`claims requires both “primitive” and “non-primitive” operations. For instance, claim 1 of the
`‘236 patent requires:
`
`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.
`
`The patent specification purports to define these terms and provides examples of both. But the
`definitions are insolubly ambiguous as they do not provide an objective guide by which one
`skilled in the art could determine whether they were practicing the invention for at least the
`following reasons:
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`the applicant classifies one of its example motion control operations (MOVE
`RELATIVE) as both a primitive operation and a non-primitive operation;
`
`the patents purport to define a “primitive operation” as one that “cannot be simulated
`using a combination of other motion control operations,” but the patents’ examples of
`“primitive operations” can be broken down into several smaller operations (and therefore
`can be simulated using other motion control operations); and
`
`
`1 The following claims are currently asserted in this case: claims 1-5 in U.S. Patent No. 6,513,058; claims 1-10 in
`U.S. Patent No. 6,516,236; claims 5-16 in U.S. Patent No. 6,941,543; and claims 16-30 and 46-59 in U.S. Patent
`No. 8,073,557.
`39 Offices in 19 Countries
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`separate legal entities.
`
`Please visit squiresanders.com for more information.
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`Case 6:11-cv-00622-LED Document 135-1 Filed 04/12/13 Page 3 of 7 PageID #: 3263
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`Squire Sanders (US) LLP
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`
`The Honorable Leonard Davis
`April 12, 2013
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`the patent purports to define a primitive operation as “necessary for motion control,” yet,
`they fail to notify the public how the example motion control operations identified in the
`specification are indeed necessary for motion control.
`
`Based on the above, a person of skill in the art is not able to determine whether a given operation
`is “primitive” or “non-primitive,” or otherwise determine the bounds of the claims. Thus, the
`claims do not “inform the public . . . which features may be safely used or manufactured without
`a license and which may not.” See Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364,
`369 (1938). Additionally, dependent claim 8 in the ‘543 patent requires “the application
`program,” which lacks antecedent basis, causing a fatal ambiguity in claim 8.
`
`I.
`
`Applicable Legal Standards for Indefiniteness
`
`“The definiteness requirement of § 112, ¶ 2 ‘focuses on whether the claims, as interpreted in
`view of the written description, adequately perform their function of notifying the public of the
`[scope of the] patentee’s right to exclude.’” Advanced Display Techs. of Texas, LLC v. AU
`Optronics Corp., 6:11-cv-011 (E.D. Tex. July 12, 2012) (Davis, J.) (quoting S3 Inc. v. nVIDIA
`Corp., 259 F.3d 1364, 1371-72 (Fed. Cir. 2001)). “Determination of claim indefiniteness is a
`legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
`claims.” Personalized Media Commc’ns, L.L.C. v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998).
`When analyzing indefiniteness, “the fact that [a patentee] can articulate a definition supported by
`the specification…does not end the inquiry. Even if a claim term’s definition can be reduced to
`words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the
`definition into meaningfully precise claim scope.” Halliburton Energy Servs., Inc. v. M-I LLC
`514 F.3d 1244, 1251 (Fed. Cir. 2008).
`
`II.
`
`Overview of Motion Control Technology and the Relevant Claim Terms
`
`Motion control systems, in general, are systems used in a variety of manufacturing applications
`to control movement of an object along a desired path—such as a factory robot or a precision
`cutting tool. According to RGB, motion control systems previously required programmers to
`write source code that was unique to each particular machine (i.e., was hardware dependent).2
`The patents are directed to a middleware system for motion control that “facilitates the creation
`of hardware independent motion control software” to allow a programmer to draft generic
`applications without even knowing the identity of the machine tool.3 To achieve this goal, the
`programmer defines a set of generic motion control operations, which may either be “primitive
`operations” or “non-primitive operations.”4
`
`According to the patent:
`
`Primitive operations are operations that are necessary for motion control and
`cannot be simulated using a combination of other motion control operations.
`
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`2 IPR2013-00062, RGB Preliminary Resp. at p. 7.
`3 ‘236 Patent at 1:13-15; ‘058 Reexam, 10/12/10 at 1; IPR2013-00062, Preliminary Resp. at pp.7-9.
`4 ‘058 patent at 6:56-57.
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`Case 6:11-cv-00622-LED Document 135-1 Filed 04/12/13 Page 4 of 7 PageID #: 3264
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`Squire Sanders (US) LLP
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`
`The Honorable Leonard Davis
`April 12, 2013
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`include GET POSITION and MOVE
`Examples of primitive operations
`RELATIVE, which are necessary for motion control and cannot be emulated
`using other motion control operations.5
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`Based on this statement, all parties agree that “primitive operations” means “motion control
`operations, such as GET POSITION and MOVE RELATIVE, necessary for motion control,
`which cannot be simulated using a combination of other motion control operations.”6
`
`The patents describe a non-primitive operation as any operation that “do[es] not meet the
`definition of a primitive operation[],”7 which includes any operation that can be simulated using
`a combination of other (i.e., “primitive”) operations. The patents give one example—
`CONTOUR MOVE, which is the “coordinated movement of two motors to form an arc,” such as
`a robot arm painting a car door in a circular motion.8
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`III. The Scope of the Claims Cannot be Determined from the Intrinsic Evidence
`
`It is impossible to distinguish the boundary between a primitive operation and a non-primitive
`operation. Here, although the specification gives definitions for primitive and non-primitive
`operations, it also provides contradictions. The result is that the intrinsic evidence offers no
`guidance informing the public what constitutes a primitive operation.
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`Using the agreed-upon definition, the patent claims are indefinite for at least the following
`reasons.
`
`First, RGB’s own treatment of the term MOVE RELATIVE shows that the named inventors
`cannot distinguish between “primitive” and “non-primitive” operations—proving the terms are
`insolubly ambiguous as applied. See Advanced Display Techs. of Texas, 6:11-cv-011 at p. 25. In
`connection with the filing of the patents, RGB submitted a number of “appendices” to the
`specification consisting of portions of a manual covering an exemplary software system called
`“XMC.”9 The appendices each classify MOVE RELATIVE as a “non-primitive” operation.10
`However, the specification classifies MOVE RELATIVE as a primitive operation, as set forth
`above.
`
`5 ‘058 patent at 6:56-63.
`6 Joint Claim Construction and Prehearing Statement of Plaintiff and Defendants, Ex. A – Claim Constructions on
`Which the Parties Agree (Doc. No. 134(A)).
`7 e.g., ‘058 patent at 6:63-65.
`8 IPR2013-00062, RGB Preliminary Resp. at p. 7.
`9 See, e.g., ‘236 patent at 7:51-53 (“The SPI for the exemplary software system 22 is attached hereto as Appendix
`A”). “XMC” stands for Microsoft® WOSA, eXtensions for Motion Control. As alleged by RGB in its P.R. 3-
`1(f) disclosure in this case, “Plaintiff’s XMC software, when used alone or in combination with third party
`hardware, such as third-party motion control devices, computers, and other objects incorporates or reflects each of
`the asserted claims of the ‘058, ‘236, ‘543, and ‘557 patents.”
`10 Appendix A at 47-48 (“This interface consists of extra motion control functions that may or may not be
`implemented by the motion control hardware…. (*pDrvExt_Motion)->MoveRel()”); Appendix C at 3 (“the
`driver may or may not implement the set of commands…. Enum XMC_DRVEXT_CMD
`(XMC_DCE_MOTION_MOVEREL).”
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`Case 6:11-cv-00622-LED Document 135-1 Filed 04/12/13 Page 5 of 7 PageID #: 3265
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`Squire Sanders (US) LLP
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`
`The Honorable Leonard Davis
`April 12, 2013
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`Second, GET POSITION 11 and MOVE RELATIVE (the only two examples of primitive
`operations provided in the patents) do not meet RGB’s definition of a “primitive operation”
`because each is broken into constituent parts, and thus can be emulated using other motion
`control operations. For example, MOVE RELATIVE moves an object from Point A to Point
`B—a process that necessarily can be divided into at least an acceleration operation, a
`deceleration operation, and likely a set velocity in between.12
`
`The prosecution record highlights this problem. RGB told the USPTO that “motion control
`operations include such things as ‘moving to a specific location in the system, ‘querying the
`system for the current position,’ and ‘GetAcceleration,’ ‘SetAcceleration,’ ‘SetVelocity’
`‘GetPosition,’ and ‘IsInMotion.’”13 By defining “SetAcceleration” and “SetVelocity” as motion
`control operations, RGB admits that MOVE RELATIVE is not a primitive operation because it
`can be simulated using the combination of acceleration and velocity components.14
`
`Further, GET POSITION also requires constituent operations, including: (1) sending a query; (2)
`receiving position data in response to that query; and (3) reading the received position data.
`Thus, GET POSITION can be emulated using a combination of operations.
`
`Third, the patents fail to notify the public how either GET POSITION or MOVE RELATIVE are
`“necessary for motion control,” or conversely, what motion control operations are not necessary
`for motion control. Indeed, MOVE RELATIVE is not “necessary for motion control” in a
`system that merely turns a spindle, which is one of the systems accused by RGB in this case.
`Turning a spindle does not require a MOVE RELATIVE operation. If an operation is only
`performed in certain motion control applications by certain devices, it cannot be fairly described
`as “necessary for motion control.”15
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`The intrinsic evidence shows that the terms “primitive” and “non-primitive” fail to notify the
`public of their proper scope such that the public cannot determine what does not constitute an
`infringing act. For at least these reasons, Defendants submit that the claims are indefinite.
`
`IV. Dependent Claim 8 Of The ‘543 Patent Is Fatally Ambiguous
`
`The antecedent basis rule exists to avoid ambiguity in patent claims. See Energizer Holdings,
`Inc. v. ITC, 435 F.3d 1366, 1370 (Fed. Cir. 2006); MPEP § 2173.05(e) (8th ed., Rev. 9, Aug.
`
`11 Although the patent and RGB suggest that GET POSITION is a motion control operation, this operation does not
`actually accomplish motion control by itself.
`12 More abstractly, and when command parameters are considered any move operation (for example) may be
`performed by an arbitrary number of smaller moves (e.g., two “1/2 moves”, three “1/3 moves”, etc).
`13 ‘058 patent reexamination (95/000398) April 28, 2008 reply at p. 39. See also IPR2013-00062, RGB Preliminary
`Resp. at p. 30 (listing similar set of exemplary motion control operations).
`14 Cf. IPR2013-00062, RGB Preliminary Resp. at p. 22-23 (asserting operations in a prior art reference were not
`primitive, because they could be “dissected into reading individual data from the trackball regarding its position,
`velocity and acceleration along the different axes.”
`15 See, e.g., IPR2013-00062, RGB Preliminary Resp. at p. 33 (arguing that certain operations in a prior art reference
`are not primitive operations since “they are not supported at all in ATSs and are described as ‘optional’ with
`respect to ATMs.”)
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`Case 6:11-cv-00622-LED Document 135-1 Filed 04/12/13 Page 6 of 7 PageID #: 3266
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`Squire Sanders (US) LLP
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`
`
`The Honorable Leonard Davis
`April 12, 2013
`
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`2012). Claim 8 of the ‘543 patent lacks an antecedent basis for the “application program”
`limitation in that claim, and the resulting ambiguity renders claim 8 indefinite.
`
`RGB has described its claimed invention as including a “middleware” layer of software working
`between an application program and a software driver, and according to RGB the “functional
`interrelationship” of these three components was a key distinction over prior art.16 Independent
`claim 5 in the ‘543 patent does not expressly recite an “application program.” However, claim 8
`depends on claim 5, and refers to “said application program” from claim 5, making it ambiguous
`and indefinite. Even if the “application program” was implicit in claim 5, there would still be a
`question of where it fits into claim 5, which would be essential for understanding the “functional
`interrelationship” of the claim elements that RGB indicated was so important. Without any way
`to determine the placement of the “application program” in claim 5, claim 8 is indefinite.
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`V.
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`Ripeness for Summary Judgment
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`Claim 8 of the ‘543 patent is fatally ambiguous in light of the specification and prosecution
`history. A determination of whether the claim meets 35 U.S.C. §112, ¶ 2 can be made based on
`the intrinsic evidence of the patent. Accordingly, this issue is ripe for summary judgment and
`Defendants seek leave to file a motion for summary judgment during the Markman phase of this
`litigation.
`
`The layers of problems with “primitive” and “non-primitive” operations are less obvious on the
`whole. Although the inconsistencies of the examples given in the specification are compelling,
`Defendants acknowledge that the Court would benefit from expert testimony on the more subtle
`problems relating to defining a primitive operation as one that is necessary for motion control
`and cannot be simulated using a combination of other motion control operations. Therefore,
`should the Court prefer to defer resolution of these indefiniteness issues until a more complete
`record can be developed, Defendants seek leave to file a motion for summary judgment on the
`indefiniteness of “primitive” and “non-primitive” operations at the time dispositive motions are
`due under the Docket Control Order.
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`VI. Conclusion
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`For the reasons described above, Defendants contend that the term “primitive operations”
`indefinite and that claim 8 of the ‘543 patent is indefinite. Therefore, Defendants seek leave to
`file a motion for summary judgment on these issues.
`
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`16 ‘543 Reexam, 10-10-10 Comments, pp. 2–3, 9 (“the claims of the ‘543 patent provide an intermediate
`“middleware” layer comprising component functions, thereby separating the Application Layer from the Driver
`Layer with an intermediate layer.”)
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`Case 6:11-cv-00622-LED Document 135-1 Filed 04/12/13 Page 7 of 7 PageID #: 3267
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`Squire Sanders (US) LLP
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`Respectfully submitted,
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`
`
`/s/ Steven M. Auvil
`Steven M. Auvil
`Counsel for Defendants ABB
`Ltd., ABB Inc.,
`MeadWestvaco Texas, LP,
`and MeadWestvaco
`Corporation
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`
`
`The Honorable Leonard Davis
`April 12, 2013
`
`/s/ Nick G. Saros
`Nick G. Saros
`Counsel for Defendants
`Honeywell, Inc. and Motiva
`Enterprises, LLC
`
`/s/ Sean M. McEldowney
`Sean M. McEldowney
`Counsel for Defendant
`Siemens Corporation,
`Siemens Industry, Inc.,
`Siemens Product Lifecycle
`Management Software, Inc.,
`Siemens Product Lifecycle
`Management Software II
`(US) Inc., and Siemens AG
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`6
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