Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 17
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` Entered: April 18, 2013
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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
`____________
`
`Case IPR2013-00074
`Patent 8,073,557 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Patent 8,073,557 B2
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`I.
`
`INTRODUCTION
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`A. Background
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`
`
`
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`ABB, Inc. (“Petitioner”) filed a petition to institute an inter partes review of
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`claims 16-30 and 46-59 (the “challenged claims”) of U.S. Patent 8,073,557 B2 (the
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`“’557 patent”). 35 U.S.C. § 311. For the reasons described below, we institute an
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`inter partes review of claims 16-25, 27, and 28 on only one of the proposed
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`grounds: obviousness over the combination of Gertz, Stewart, and Morrow.
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`ABB contends that the challenged claims are unpatentable under 35 U.S.C.
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`§§102 and/or 103 based on the following prior art references:
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`1. Gertz, Matthew W., A Visual Programming Environment for Real-Time
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`Control Systems. Ph.D. dissertation, Carnegie Mellon University,
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`Nov. 22, 1994 (Ex. 1002) (“Gertz”);
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`2. Microsoft Corporation, WOSA (Windows Open Services Architecture)
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`Extensions for Financial Services, Revision 1.1, April 14, 1994 (Ex. 1003)
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`(“WOSA/XFS”);
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`3. Stewart, David B., Real-Time Software Design and Analysis of
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`Reconfigurable Multi-Sensor Based Systems. Ph.D. dissertation, Carnegie
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`Mellon University, April 1, 1994 (Ex. 1004) (“Stewart”);
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`4. Morrow, J. Dan; Nelson, Bradley J.; and Khosla, Pradeep, Vision and Force
`
`Driven Sensorimotor Primitives for Robotic Assembly Skills. Institute for
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`Software Research, paper 574, January 1, 1995 (Ex. 1005) (“Morrow”);
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`5. Brockschmidt, Kraig, Inside OLE 2, Microsoft Press Programming Series,
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`1994 (Ex. 1006) (“Brockschmidt”);
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`6. Michael Wright et al., U.S. Patent No. 5,453,933 (Ex. 1007) (“Wright”); and
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`7. Compumotor Division, Parker Hannifin Corporation, Motion Architect User
`
`Guide, released Aug., 1994 (Ex. 1008) (“Architect”).
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`2
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`IPR2013-00074
`Patent 8,073,557 B2
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`
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`The specific grounds asserted in the Petition (Pet. 26-44) are all asserted against all
`
`the challenged claims as detailed below.
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`Reference[s]
`
`Gertz
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`WOSA/XFS
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`Gertz, Stewart, and Morrow
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`Gertz and Brockschmidt
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`WOSA/XFS and Brockschmidt
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`Gertz and Architect
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`WOSA/XFS and Architect
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`WOSA/SFX, Gertz, and Wright
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`Basis
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`§ 102
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`§ 102
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Petitioner states that two related patents, U.S. 6,516,236 (the “’236 patent”)
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`and U.S. 6,513,058 (the “’058 patent”), are involved in concurrent district court
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`litigation. ABB also has filed Petitions in IPR2013-00062, involving the
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`’236 patent, and IPR2013-00063, involving the ’058 patent. The ’557 patent
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`shares much of the specification of both the ’236 and the ’058 patents. In a
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`separate decision, we instituted a trial in IPR2013-00062. See IPR2013-00062,
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`Decision On Request For Inter Partes Review (“Decision”). In that Decision, the
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`Board instituted a trial as to claims 1-4 and 8-10 of the ’236 patent based on only
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`one of the proposed grounds, obviousness over Gertz, Stewart, and Morrow.
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`For the reasons discussed below, in this case, we institute a trial only on one
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`ground, obviousness over Gertz, Stewart, and Morrow, and only for claims 1-25,
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`27, and 28. We do not institute a trial on claims 26, 29, 30, or 46-59.
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`3
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`Patent 8,073,557 B2
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`B. The Invention
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`
`
`
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`The technology of the ’557 patent is described in the prior Decision at
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`pages 3-5. For the purposes of this decision we adopt that prior description.
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`Claim 16 is reproduced below with emphasis added:
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`16. A motion control system, comprising:
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`an application program comprising at least one call to at least one
`component function;
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`a plurality of motion control devices, where
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`a plurality of unique controller languages are associated with the
`plurality of motion control devices,
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`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
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`a mechanical system capable of causing motion control operation
`based on electrical signals generated by the controller,
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`a set of software drivers each comprising driver code, where
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`each software driver is associated with at least one of the plurality of
`controller languages, and
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`each software driver exposes a service provider interface
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`defining a set of driver functions, where
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`the driver functions are independent of the plurality of controller
`languages,
`
`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,
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`4
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`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
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`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;
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`each component function is implemented by component code,
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`at least the component code is independent of the plurality of
`controller languages, and
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`the component code associates at least one of the component functions
`with at least one of the driver functions;
`
`wherein
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`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.
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`C. Claim Construction
`
`As a step in our analysis for determining whether to institute a trial, we
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`determine the meaning of the claims. Consistent with the statute and the
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`legislative history of the AIA, the Board will interpret claims using the broadest
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`reasonable construction. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48766 (Aug. 14, 2012); 37 CFR § 100(b). ABB submits proposed
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`interpretations for several claim terms. Pet. 10-21.
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`Patent Owner specifically addresses only the proposed interpretations of the
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`terms “primitive operations” and “core driver functions.” Prelim. Resp. 15-19.
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`Except for those two terms, and the terms “function table” and “pointer table,”
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`
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`Petitioner’s proposed interpretations do not appear unreasonable at this stage of the
`
`proceeding. Because these positions are not challenged by Patent Owner, we adopt
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`them for the purposes of this decision.
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`1. Primitive Operations
`
`Petitioner’s proposed interpretation of the claim term “primitive operation”
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`suffers from the same problem in this petition as that described in the prior
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`Decision at pages 6-9. Because the specification of the ’557 patent recites the
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`same explicit definition of the term as the ’236 patent, we adopt the analysis of the
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`prior decision for this case. Thus, for purposes of this decision, we construe the
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`claim term “primitive operation” to be an operation necessary for motion control
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`and that cannot be simulated using a combination of other motion control
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`operations.
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`2. Core Driver Functions
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`Petitioner’s proposed interpretation of the claim term “core driver functions”
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`also suffers from the same problem in this petition as described in the prior
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`Decision at pages 9-10. Again, we adopt the analysis of the prior decision for this
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`case. Thus, for purposes of this decision, we construe the claim term “core driver
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`function” to be software associated with one of the primitive operations.
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`3. Function Table and Pointer Table
`
`Petitioner asserts that the claim term “function table” is not used anywhere
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`in the ’557 patent outside the claims. Pet. 18-19. Because the claim language
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`surrounding this term is as follows: “the component code uses a function table that
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`associates at least one of the component functions with at least one of the driver
`
`functions” (see claims 29 and 46), according to Petitioner the broadest reasonable
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`interpretation of “function table” “includes any software capable of making the
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`
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`associations recited” in the claims. This interpretation is unreasonably broad and
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`reads the term “function table” out of the claim completely.
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`A “table” is a commonly used data structure that “usually consist[s] of a list
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`of entries, each entry being identified by a unique key and containing a set of
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`related values.” MICROSOFT COMPUTER DICTIONARY at 510 (5th ed. 2002).
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`Petitioner does not point to any language in the specification that indicates that this
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`plain meaning of “function table” should not be used. Thus, for purposes of this
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`decision, we construe the claim term “function table” to be a data structure
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`consisting of a list of function entries, each entry being identified by a unique key
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`and containing a set of related values.
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`Similarly, Petitioner asserts that the broadest reasonable interpretation of the
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`claim term “pointer table” includes “any data structure which associates some
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`functions with other functions. Pet. 19 (citing ’557 patent, col. 10, ll. 48-65).
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`Again, the plain and ordinary meaning of “table” is as defined above. A “pointer”
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`is “a variable that contains the memory location (address) of some data rather than
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`the data itself.” MICROSOFT COMPUTER DICTIONARY at 410 (5th ed. 2002). This is
`
`consistent with the specification: “[t]he process of determining when extended
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`driver functions need to be emulated can be optimized by providing the motion
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`control component 35 with a function pointer table that contains a pointer to each
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`of the extended functions.” ’557 patent, col. 10, ll. 48-51.
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`Thus, for purposes of this decision, we construe the claim term “pointer
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`table” to be a table with each entry being a variable that contains the memory
`
`location of some data identified by a unique key.
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`7
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`4. Motion Control Device
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`
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`Neither party explicitly addresses the interpretation of the claim term
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`“motion control device.” However, Patent Owner argues that motion control
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`devices “perform operations relating to, among other things, positioning, velocity,
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`and acceleration.” Prelim. Resp. 32. Patent Owner provides several exemplary
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`motion control functions, implying that motion control devices would not include
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`extensions related to opening and closing the shutter of an ATM machine. Id.
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`(citing ’557 patent Exhibit B). Patent Owner, however, does not point to any
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`language in the ’557 patent that restricts the broadest reasonable interpretation of
`
`the term to exclude the movement of an ATM shutter. We are not persuaded that
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`the interpretation of motion control devices should be so limited.
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`The specification explicitly states that the basic components of a motion
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`control device are “a controller and a mechanical system” where “[t]he mechanical
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`system translates signals generated by the controller into movement of an object.”
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`’557 patent, col. 1, ll. 57-60. This definition reasonably comports with the plain
`
`and ordinary meaning of a motion control device. Thus, for purposes of this
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`decision, we construe the claim term “motion control device” to include any
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`hardware device with a controller and a mechanical system that translates signals
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`generated by the controller into the movement of an object.
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`II. ANALYSIS
`
`A. Overview
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`For the reasons described below, we institute inter partes review on
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`claims 1-25, 27, and 28 only for the ground of obviousness over the combination
`
`of Gertz, Stewart, and Morrow.
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`B. Gertz
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`
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`The Gertz reference is described in the prior Decision at page 12. For the
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`purposes of this decision we adopt that prior description.
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`1. Gertz is Cumulative
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`Patent Owner argues that Gertz is the same or substantially the same as the
`
`references considered during the original prosecution, and the Inter Partes
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`Reexamination of the ’236 patent. Prelim. Resp. 28-30. As explained in the prior
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`Decision at page 13, we decline to reject the petition solely on the ground that
`
`Stewart, a reference related to the operating system upon which Gertz’s system is
`
`based, is included on an eight-page list of references on the ’236 patent
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`reexamination certificate.
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`2. Anticipation
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`Petitioner asserts that Gertz discloses each and every element of all the
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`challenged claims. Pet. 2, 17-32. Patent Owner responds that Gertz does not
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`disclose “primitive operations” or “core driver functions” as required by all the
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`claims. Prelim. Resp. 23-28. For the reasons explained in the prior decision at
`
`pages 13-15, we are not persuaded that Petitioner has shown that the operations
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`performed by the control tasks in Gertz are primitive operations. We also are not
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`persuaded that Petitioner has shown that control tasks are core driver functions that
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`are “associated with one of the primitive operations.”
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`Thus, we are not persuaded that there is a reasonable likelihood that
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`Petitioner would prevail on a challenge of anticipation over Gertz, and we
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`therefore decline to institute inter partes review based on this ground.
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`3. Obviousness over Gertz, Stewart, and Morrow
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`
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`Petitioner asserts that all the challenged claims would have been obvious
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`over the combination of Gertz, Stewart, and Morrow. Pet. 40-41. Stewart is a
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`Ph.D. dissertation describing the “design and analysis of reconfigurable real-time
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`software . . . based on modelling software modules as dynamically reconfigurable
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`port-based objects.” Stewart 11. Morrow is a paper describing a “sensorimotor
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`command layer” for integrating sensors into robot systems. Morrow Abstract. It
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`discloses “trajectory primitives” that “encapsulate[] . . . robot trajectory
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`specifications” including “movedx.” Id. at § 2.
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`Petitioner relies on Stewart as describing the provision of device drivers for
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`use with a motion control system, and Morrow for the use of motion primitives and
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`their combination to create complex trajectories. Pet. 50-51. Morrow uses
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`terminology similar to the ’557 patent, describing “trajectory primitives.” Morrow
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`§ 2. We agree with Petitioner that Morrow’s description of the implementation of
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`three trajectory primitives: movedx that “applies a Cartesian velocity over time to
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`achieve the specified Cartesian differential motion”, ldither that “implements a
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`linear sinusoidal velocity signal at the specified frequency for the specified number
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`of cycles”, and rdither that “implements a rotary sinusoidal velocity signal at the
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`specified frequency for the specified number of cycles,” implies that these
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`operations are required to operate the relevant motion control device, and that they
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`cannot be simulated using other motion control operations. Id. Thus, these three
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`trajectory primitives are equivalent to the claimed “primitive motion operations”.
`
`Morrow also describes non-primitive operations as “[c]omplex trajectories” that
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`“can be specified by combining trajectory primitives” for example “to implement
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`an ‘exploration’ of an area.” Id. These “complex trajectories” are equivalent to the
`
`claimed “non-primitive motion operations,” and further demonstrate that Morrow’s
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`trajectory primitives are indeed equivalent to the motion primitives of the ’557
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`
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`patent. Thus, Morrow’s trajectory primitives qualify as the recited primitive
`
`operations.
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`Patent Owner responds that neither Morrow nor Stewart discloses core
`
`driver functions because they rely on “port based objects,” which are not actually
`
`functions because they rely on shared memory for communication. Prelim. Resp.
`
`49-50. Patent Owner also argues that Morrow lacks driver functions and instead
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`discloses only robot-specific commands. Prelim. Resp. 49-50. This argument is
`
`not persuasive. Petitioner relies on Gertz (not Morrow or Stewart) for the
`
`disclosure of core driver functions. Gertz describes control tasks, which are
`
`functions associated with motion operations. See Gertz § 3.3. We are persuaded
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`that there is a reasonable likelihood that the combination of Morrow’s trajectory
`
`primitives and Gertz’s disclosure of functions that are associated with motion
`
`operations would have made the claimed “primitive operations” and “core driver
`
`functions” obvious to a person of ordinary skill. We also find persuasive
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`Petitioner’s reasoning that the remaining limitations of independent claim 16 and
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`dependent claims 17-25, 27, and 28 are disclosed by Gertz and Stewart. See Pet.
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`44-57.
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`Petitioner asserts that a person of ordinary skill would have combined the
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`three references in order to reduce the cost of motion control applications. Pet. 41.
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`In addition, the three references were written at the same research center at about
`
`the same time. Id. Patent Owner argues that Gertz teaches away from primitive
`
`operations because it operates at a much higher level than that of primitives.
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`Prelim. Resp. 50 (citing Gertz § 2.2). We are not persuaded by this argument.
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`First, we are not persuaded that Gertz operates at a “much higher level” than the
`
`recited primitives. Gertz describes many different levels that build upon each
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`other—some of these levels are described as low-level. See Gertz § 3.2. While, as
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`
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`discussed above, we have not been directed to language in Gertz disclosing that the
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`operations performed by control tasks are necessarily primitive operations as
`
`claimed, it does not follow that Gertz is at a “much higher level.” To support its
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`position, Patent Owner points to language in Gertz that describes prior art textual
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`languages as introducing “built-in” commands that “eliminate[] the need to
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`develop code for motion primitives.” Prelim. Resp. 22 (quoting Gertz § 2.2).
`
`However, this language in Gertz does not support Patent Owner’s contention that
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`Gertz is at a “much higher level” than motion primitives. Instead, the context of
`
`that language makes it clear that Gertz was distinguishing itself from the prior art
`
`textual languages, in that programs created with Gertz’s system are not difficult to
`
`read and are not robot-specific like the prior art. See Gertz § 2.2. Nothing in the
`
`cited section of Gertz leads to a conclusion that the system described by Gertz does
`
`not have a need to develop code for motion primitives. Thus, we are not persuaded
`
`that Gertz teaches away from using primitive operations as claimed.
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`We have reviewed Petitioner’s contentions and are persuaded that Petitioner
`
`has shown a reasonable likelihood of prevailing on the ground of obviousness over
`
`Gertz, Stewart, and Metz for claims 1-25, 27, and 28. However, the other claims
`
`include limitations that Petitioner has not shown are disclosed in the prior art. We
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`discuss those claims (26, 29, 30, and 46-59) below.
`
`First, in addition to all the limitations of independent claim 16, dependent
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`claims 26 and 56 include the further limitation that “the destination of the control
`
`commands is a file.” Petitioner relies on Gertz for this limitation.1 Pet. 56.
`
`
`1 Petitioner also points to Architect as disclosing this limitation, but Petitioner does
`not assert the combination of Gertz, Stewart, Morrow, and Architect as a ground of
`unpatentability challenge. See generally Pet. 26-44.
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`Specifically, Petitioner relies solely on the following language from Gertz as
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`
`
`disclosing the limitation: “Currently, interactive debugging is limited to checking
`
`for memory corruption by tasks, simulation of applications and jobs, clearing tasks
`
`in error, display of feedback from the RTOS, and stepping through applications
`
`using breakpoints.” Id. (quoting Gertz § 7). It is not clear, and Petitioner does not
`
`explain, how this language discloses the relevant limitation: “the destination of the
`
`control commands is a file.” Nor does Petitioner assert that a person of ordinary
`
`skill would have found the subject matter obvious based on this disclosure. Thus,
`
`Petitioner has not shown that there is a reasonable likelihood that claims 26 and 56
`
`are obvious over the combination of Gertz, Stewart, and Morrow.
`
`Similarly, claims 29, 30, and 46-59 include a limitation requiring that “the
`
`component code uses a function table that associates at least one of the component
`
`functions with at least one of the driver functions.” Petitioner relies on language
`
`from Gertz for disclosing this limitation.2 Pet. 57-58. Specifically, Petitioner
`
`states the following:
`
`Job dictionaries are similar to the task libraries presented in Section 3.2.3,
`except that the store the relevant files for jobs and targets…The jobs and
`targets within these dictionaries are parsed, and previously-stored mnemonic
`pictures are loaded in for each ‘onikon.’ (Gertz, § 3.2.7). The application
`can be saved at any time for later recall or modification. During execution,
`the task configurations associated with the jobs in the application are loaded
`into Onika and Chimera. (Gertz, § 4.3).
`
`Pet. 57. Petitioner does not explain how the quoted language describes a function
`
`table as recited in the limitation set forth above. Nor does Petitioner assert that a
`
`person of ordinary skill would have found the subject matter obvious based on this
`
`
`2 Petitioner also points to Brockschmidt as disclosing this limitation, but Petitioner
`does not assert the combination of Gertz, Stewart, Morrow, and Brockschmidt as a
`ground of unpatentability challenge. See generally Pet. 26-44.
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`disclosure. Thus, Petitioner has not shown that there is a reasonable likelihood that
`
`claims 29, 30, and 46-59 are obvious over the combination of Gertz, Stewart, and
`
`Morrow.
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`Finally, dependent claims 30 and 59 require that “the function table is a
`
`function pointer table.” For the same reasons we stated above for the function
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`table requirement, we conclude that the Petitioner also has not explained how the
`
`prior art references disclose a function pointer table. Thus, Petitioner has not
`
`shown that there is a reasonable likelihood that claims 30 and 59 are obvious over
`
`the combination of Gertz, Stewart, and Morrow.
`
`In summary, we are persuaded by Petitioner’s analysis that there is a
`
`reasonable likelihood that Petitioner will prevail on obviousness over Gertz,
`
`Stewart, and Morrow of claims 1-25, 27, and 28.
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`4. Obviousness over Gertz and Brockschmidt
`
`Petitioner asserts that all the challenged claims would have been obvious
`
`over the combination of Gertz and Brockschmidt. Pet. 41-42. Petitioner relies on
`
`Brockschmidt as providing “additional support” for the rejection of claims 29, 30,
`
`and 46-59 by describing function pointer tables. Id.
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`For the reasons articulated above, we find that Petitioner has not shown that
`
`Gertz discloses primitive operations as claimed. Because Petitioner does not point
`
`to any disclosure in Brockschmidt for this limitation, we decline to institute an
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`inter partes review on the basis that the challenged claims would have been
`
`obvious over the combination of Gertz and Brockschmidt.
`
`5. Obviousness over Gertz and Architect
`
`Petitioner asserts that all the challenged claims would have been obvious
`
`over the combination of Gertz and Architect. Pet. 43. Petitioner relies on
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`Architect as providing “additional support for at least the rejection of claims 26
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`and 56 by describing that the destination of control commands can be a file.” Id.
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`For the reasons articulated above, we find that Petitioner has not shown that
`
`Gertz discloses primitive operations as claimed. Because Petitioner does not point
`
`to any disclosure in Architect for this limitation, we decline to institute an inter
`
`partes review on the basis that the challenged claims would have been obvious
`
`over the combination of Gertz and Architect.
`
`C. WOSA/XFS
`
`WOSA/XFS is described in the prior Decision at pages 19-20. For the
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`purposes of this decision we adopt that prior description.
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`1. Whether WOSA/XFS is Cumulative
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`Patent Owner argues that WOFA/XFS is the same or substantially the same
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`as the references considered during the original prosecution, and in the Inter Partes
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`Reexamination of the ’236 patent. Prelim. Resp. 45-47. As explained in the prior
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`Decision at page 20, we decline to reject the petition here solely on the ground that
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`allegedly similar references may have been considered during the prosecution and
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`reexamination of the ’236 patent or that another reference made reference to
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`WOSA/XFS.
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`2. Anticipation
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`Petitioner asserts that WOFA/XFS discloses each and every element of all
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`the challenged claims. Pet. 2, 33-40. Patent Owner responds that WOSA/XFS
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`does not disclose “primitive operations” or “core driver functions” as required by
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`all the claims. Prelim. Resp. 33-41. For the reasons explained in the prior
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`Decision at pages 20-21, we are not persuaded that Petitioner has shown that the
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`operations performed by OPEN_SHUTTER and CLOSE_SHUTTER in
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`WOSA/XFS are primitive operations. We also are not persuaded that Petitioner
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`
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`has shown that the corresponding SPI functions are core driver functions that are
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`“associated with one of the primitive operations.”
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`Thus, we are not persuaded that there is a reasonable likelihood that
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`Petitioner would prevail on a challenge of anticipation over WOSA/XFS and we
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`decline to institute inter partes review based on this ground.
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`3. Obviousness over WOSA/XFS and Brockschmidt
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`Petitioner asserts that all the challenged claims would have been obvious
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`over a combination of WOSA/XFS and Brockschmidt. Pet. 42. Petitioner relies
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`on Brockshmidt as providing “additional support” for the rejection of claims 29,
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`30, and 46-59 by describing function tables. Id.
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`For the reasons articulated above, we find that Petitioner has not shown that
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`WOSA/XFS discloses primitive operations as claimed. Because Petitioner does
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`not point to any disclosure in Brockschmidt for this limitation, we decline to
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`institute an inter partes review on the basis that the challenged claims would have
`
`been obvious over the combination of WOSA/XFS and Brockschmidt.
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`4. Obviousness over WOSA/XFS and Architect
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`Petitioner asserts that all the challenged claims would have been obvious
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`over WOSA/XFS and Architect. Pet. 43-44. Petitioner relies on Architect as
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`providing “additional support for at least the rejection of claims 26 and 56 by
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`describing that the destination of control commands can be a file.” Id.
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`For the reasons articulated above, we find that Petitioner has not shown that
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`WOSA/XFS discloses primitive operations as claimed. Because Petitioner does
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`not point to any disclosure in Architect for this limitation, we decline to institute an
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`inter partes review on the basis that the challenged claims would have been
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`
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`obvious over the combination of WOSA/XFS and Architect.
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`5. Obviousness over Gertz, WOSA/XFS, and Wright
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`Petitioner asserts that all the challenged claims would have been obvious
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`over the combination of Gertz, WOSA/XFS, and Wright. Pet. 44. Petitioner relies
`
`on Wright as disclosing “how middleware technology can improve motion control
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`systems, providing further motivation [sic] modify WOSA (a middleware system)
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`for motion control devices (i.e., to create WOSA/XFS and/or combine it with
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`Gertz).” Id.
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`For the reasons articulated above, we find that Petitioner has not shown that
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`either Gertz or WOSA/XFS discloses primitive operations as claimed. Because
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`Petitioner does not point to any disclosure in Wright for this limitation, we decline
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`to institute an inter partes review on the basis that the challenged claims would
`
`have been obvious over the combination of Gertz, WOSA/XFS, and Wright.
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`D. Conclusion
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`ABB has demonstrated that there is a reasonable likelihood of prevailing on
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`its challenge to the patentability of the claims 1-25, 27, and 28 as obvious over
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`Gertz combined with Stewart and Morrow. ABB has not demonstrated a
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`reasonable likelihood of prevailing on any of the other asserted grounds.
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`ORDER
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`
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`It is
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`ORDERED that the Petition is granted as to claims 1-25, 27, and 28 of the
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`ʼ557 patent on the alleged ground of obviousness over Gertz, Stewart, and Morrow
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`under U.S.C. § 103;
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`FURTHER ORDERED that the Petition is denied as to claims 26, 29, 30,
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`and 46-59 of the ’557 patent;
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`
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), a trial for inter
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`partes review of the ʼ557 patent is hereby instituted, commencing on the entry date
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`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is
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`hereby given of the institution of trial;
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`
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`FURTHER ORDERED that the trial is limited to the one above-stated
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`ground of obviousness directed to claims 1-25, 27, and 28, and that no other
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`ground for any claim is authorized for trial; and
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`
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`FURTHER ORDERED that an initial conference call with the Board is
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`scheduled for 2 PM ET on May 21, 2013; the parties are directed to the Office
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012) for guidance
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`in preparing for the initial conference call, and should come prepared to discuss
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`any proposed changes to the Scheduling Order entered herewith and any motions
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`the parties anticipate filing during the trial.
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`IPR2013-00074
`Patent 8,073,557 B2
`
`For PETITIONER:
`
`Rick McLeod
`and
`John Vandenberg
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`john.vandenberg@klarquist.com
`
`For PATENT OWNER
`
`Richard Black
`and
`Joel Arb
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
`
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`Page 19 of 19
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`