Paper 15
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROCKWELL AUTOMATION, INC. AND ROCKWELL AUTOMATION
`TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.,
`Patent Owner.
`____________
`Case IPR2017-00023
`Patent 6,513,058 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROCKWELL AUTOMATION, INC. AND ROCKWELL AUTOMATION
`TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.,
`Patent Owner.
`____________
`Case IPR2017-00023
`Patent 6,513,058 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2017-00023
`Patent 6,513,058 B2
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`I. INTRODUCTION
`
`Rockwell Automation, Inc. and Rockwell Automation Technologies,
`Inc. (collectively, “Petitioner” or “Rockwell”) filed a Petition (Paper 2,
`“Pet.”) seeking inter partes review of claims 1–5 (all claims) of U.S. Patent
`No. 6,513,058 B2 (Ex. 1001, “the ’058 patent”) pursuant to 35 U.S.C.
`§§ 311–319. Automation Middleware Solutions, Inc. (“Patent Owner” or
`“AMS”) filed a Patent Owner Preliminary Response (Paper 12, “Prelim.
`Resp.”).
`
`We have authority to determine whether to institute a trial under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may be
`instituted only if “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a).
`
`We are persuaded there is not a reasonable likelihood that Petitioner
`would prevail in showing that the challenged claims are unpatentable.
`Pursuant to 35 U.S.C. § 314, we do not institute an inter partes review as to
`claims 1–5 of the ’058 patent.
`
`II. BACKGROUND
`
`A. The ’058 Patent
`
`The ’058 patent is titled “Distribution of Motion Control Commands
`Over a Network.” The patent relates generally to a system that facilitates the
`creation of hardware-independent motion control software. Ex, 1001, col. 1,
`ll. 18–21. The Abstract describes the subject matter as follows:
`
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`A system for allowing an application program to communicate
`with any one of a group of supported hardware devices
`comprising a software system operating on at least one
`workstation and a network communications protocol. The
`software system includes a control command generating
`module for generating control commands based on component
`functions of an application program, component code
`associated with the component functions, and the driver code
`associated with software drivers associated with the hardware
`devices. The network communication protocol allows the
`control commands to be communicated from the control
`command generating module to at least one of the supported
`hardware devices over the network.
`Ex. 1001, Abstract.
`
`The’058 patent describes a special protocol to facilitate
`communication with underlying motion control hardware in a manner that is
`independent of the specific communication protocols defined by supported
`motion control hardware devices. Id. at col. 4, ll. 1–8. As described in the
`’058 patent, the prior art includes a number of low-level software programs
`for directly programming individual motion control devices or for aiding in
`the development of systems containing a number of motion control devices.
`Id. at col. 2, ll. 1–9. While providing complete control over the hardware,
`these low-level programs are highly hardware-dependent. Id. The object of
`the invention is, therefore, to isolate the application programmer from the
`complexity of hardware devices in existence. Id. at col. 3, ll. 32–35.
`The ’058 patent also discusses an existing software model, referred to
`as “WOSA,” that isolates application programmers from the complexities of
`programming to different service providers by providing an application
`programming interface layer that is hardware-independent. Id. at col. 3, ll.
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`13–24. However, the patent states, “[t]he WOSA model has no relation to
`motion control devices.” Id. at col. 3, ll. 24–25.
`
`The ’058 patent discloses an application programming interface
`(“API”) consisting of “component functions” containing component code
`that associates component and driver functions. Id. at col. 7, ll. 15–25. The
`drivers in turn are associated with motion control devices. Id. at col. 7, ll.
`35–37. The drivers dictate how to generate control commands for
`controlling the associated motion control device to perform the motion
`control operations. Id. at col. 7, ll. 37–41. Thus, the user develops an
`application program comprising a sequence of component functions
`arranged to define the motion control operations necessary to control a
`motion control device in a desired manner. Id. at col. 7, ll. 53–58.
`
`Motion control operations in the patent may either be primitive
`operations or non-primitive operations. Core driver functions are associated
`with primitive operations, while extended driver functions are associated
`with non-primitive operations. Id. at col. 7, ll. 1–7. The ’058 patent states:
`“Primitive operations are operations that are necessary for motion control
`and cannot be simulated using a combination of other motion control
`operations.” Id. at col. 6, ll. 56–60.
`
`B. Related Matters
`
`The ’058 patent was previously before the Board in IPR2013-00063
`(“’063 IPR”). Pet. 3. The petition in that case was filed by another party,
`ABB. Prelim. Resp. 16. The Board entered a Final Written Decision in the
`’063 IPR on May 16, 2014. ’063 IPR, Paper 71. The Board determined that
`ABB failed to prove the claims were unpatentable. Id. at 14. The ’058
`patent was also the subject of an inter partes reexamination in which all
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`claims were confirmed. Prelim. Resp. 15–16. In addition the parties
`identify several pending civil actions in the Eastern District of Texas in
`which the ’058 patent is being asserted. Pet. 1; Paper 5.
`
`C. Illustrative Claim
`
`Claims 1, 3, and 4 are independent. Claim 1 follows:
`1. A system for allowing an application program to
`communicate with any one of a group of supported hardware
`devices, the system comprising:
`a software system operating on at least one workstation, the
`software system comprising
`
`at least one application program comprising a set of
`component functions defining a desired motion sequence, the
`desired motion sequence being comprised of primitive
`operations that are necessary to define the desired motion
`sequence and non-primitive operations that may be simulated
`using a combination of primitive operations,
`
`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 functions is associated with one of the non-
`primitive operations,
`
`component code associated with each of the component
`functions, where the component code associates at least some of
`the component functions with at least some of the driver
`functions,
`
`a set of software drivers, where each software driver is
`associated with one of the hardware devices and comprises
`driver code for implementing the driver functions, and
`
`a control command generating module for generating
`control commands based on the component functions of the
`application program, the component code associated with the
`component functions, and the driver code associated with the
`software drivers; and
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`a network communication protocol that allows the control
`commands to be communicated from the control command
`generating module on the at least one workstation to at least one
`of the supported hardware devices over a network.
`D. References
`
`Petitioner relies on the following references:
`
`1. Cashin, J., “WOSA – Windows Open Services Architecture,”
`
`Computer Tech. Research Corp. (Ex. 1008, “Cashin”)
`
`2. “ODBC 2.0 Programmer’s Reference and SDK Guide,” Microsoft
`Press, 1994 (selected excerpts) (Ex. 1020, “ODBC”).
`
`3. Allen-Bradley, “GML Programmer’s Workshop User Manual,”
`Software Version 3.4 (Ex. 1021) and “GML V3.3 Programming Manual for
`IMC-201” (Ex. 1022) (collectively, “GML”).
`
`4. “Compumotor Motion Toolbox User Guide.” Version 1.0, (Ex.
`1023, “Motion Toolbox”).
`The Petition also relies on the Declaration of William Rizzi (Ex. 1002,
`“Rizzi Decl.”) as support for the various contentions.
`
`
`E. Grounds Asserted
`
`Petitioner challenges claims 1–5 as obvious under 35 U.S.C. § 103(a)
`over the following combinations of references:
`
`1. Cashin, ODBC, and GML
`
`2. Cashin, ODBC, and Motion Toolbox
`
`III. ANALYSIS
`A. Preliminary Matter
`
`
`Patent Owner urges us to exercise our discretion to deny the petition
`under 35 U.S.C. § 325(d). Prelim. Resp. 19–35. Patent Owner argues that
`
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`Petitioner presented “the same or substantially the same art or arguments
`addressed during prior PTO proceedings” involving the ’058 patent. Id. at
`19. Patent Owner provides charts comparing the prior art arguments made
`in the Petition with similar arguments in the ’063 IPR. Id. at 28–29.
`
`Patent Owner’s arguments concerning similarities between the prior
`art relied on and Petitioner’s arguments here and in the ’063 IPR are
`compelling. However, we choose not to exercise our discretion here and
`instead address the Petition on its merits.
`
`B. Claim Construction
`Petitioner asserts that the ʼ058 patent has expired. Pet. 11. Patent
`Owner agrees. Prelim. Resp. 19. For this Decision, therefore, we proceed
`on the basis that the patent has expired. For expired patents, we apply the
`claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005). See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012).
`Furthermore, only terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. See Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`For the purposes of this Decision, we need construe only the term
`“primitive operation.” For “primitive operation,” Petitioner applies the
`following construction, which it says is proposed by Patent Owner: “motion
`control operations that cannot be simulated using a combination of other
`motion control operations.” Pet. 15. This is consistent with the specification
`(see supra) and the district court’s claim construction. Ex. 2018, 2. We,
`
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`therefore, agree with this construction and, therefore, adopt it for this
`Decision.
`
`C. Overview of Prior Art
`
`
`1. Cashin/WOSA (Ex. 1008)
`
`Cashin is a textbook describing Windows Open Services Architecture
`(WOSA). Ex. 1008, 9. According to Cashin: “The great attraction of
`WOSA to Windows software developers is that standardization of the
`interface to multiple software services enables their product to reach a wider
`audience.” Id.
`
`This is illustrated by Figure 3.1 of Cashin, reproduced at page 28 of
`the Petition:
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`Ex. 1008, 58. Figure 3.1 of Cashin depicts major elements of the WOSA
`model. Id. at 57. Using WOSA, user applications invoke specific APIs
`(application program interfaces) appropriate to the functional service being
`sought. The service providers are accessed through SPIs (service provider
`interfaces) provided for specific functions. If a functional service is replaced
`or modified, the SPIs are modified but the user applications remain stable
`and users may be unaware of changes to the functional services. Id.
`WOSA is discussed in the ’058 patent specification. See supra.
`
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`2. ODBC (Ex. 1020)
`
`
`According to the ODBC reference, “[t]he Open Database
`
`Connectivity (ODBC) interface allows applications to access data in
`database management systems (DBMS) using Structured Query Language
`(SQL) as a standard for accessing data.” Ex. 1020, 20. This interface is
`intended to promote “interoperability”, i.e., “a single application can access
`different database management systems.” Id.
`
`Petitioner describes ODBC as a “specific application[]” of WOSA’s
`architecture, and points out that ODBC is described in Cashin. Pet. 28.
`According to Petitioner, “ODBC acts as an interface between applications
`and targeted database sources and applications call functions from the
`ODBC API to access the targeted database sources.” Id.
`
`
`3. GML (Exs. 1021, 1022) and Motion Toolbox (Ex. 1023)
`
`The references are similar in several ways, and are relied on by
`Petitioner as alternatives in combination with Cashin and ODBC.
`
`Petitioner describes GML as “a graphical programming language
`developed by Allen-Bradley for use with a variety of motion controllers.”
`Pet. 30. According to Petitioner, “GML was designed so that a single
`motion control programming interface could be used to generate motion
`control programs for a number of different motion controllers.” Id. As
`Petitioner further explains:
`Allen-Bradley provided a design program called GML
`Programmer’s Workshop with which users could create, run,
`and debug GML programs. (Id., 1-4; Ex. 1022, 1-4.) Once
`installed, users could graphically build a motion control
`program using the provided set of GML graphical “blocks.”
`(Ex. 1021, 13-20.) The user would build the program by
`adding these GML blocks from the “block palette” or “library”
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`to a GML “diagram.” (Id.) The blocks could be connected to
`other blocks to create an order of operation along with inputs
`and outputs from the blocks. (Id.)
`
`Id.
`Petitioner describes Motion Toolbox as a software add-on for a
`
`process control programming system named LabVIEW. Pet. 34. As further
`explained by Petitioner: “LabVIEW was a system with a variety of
`functions and subroutines (called Virtual Instruments or VIs) with which
`engineers could build programs.” Id. Further, according to Petitioner,
`“Motion Toolbox was a collection of LabVIEW VIs that programmers could
`use in their LabVIEW programs to carry out motion operations on different
`motion controllers from the 6000 series of Compumotor motion
`controllers[.]” Id.
`
`D. Legal Standard for Obviousness
`
`A patent claim is invalid as obvious “if the differences between the
`subject matter sought to be patented and the prior art are such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103(a).
`The ultimate determination of obviousness is a question of law,
`but that determination is based on underlying factual findings. .
`. . The underlying factual findings include (1) the scope and
`content of the prior art, (2) differences between the prior art and
`the claims at issue, (3) the level of ordinary skill in the pertinent
`art, and (4) the presence of secondary considerations of
`nonobviousness such as commercial success, long felt but
`unsolved needs, failure of others, and unexpected results.
`
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)(citations and
`internal quotation marks omitted).
`
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`“To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention.
`Nuvasive, 842 F.3d at 1381. As stated in Personal Web Technologies, LLC
`v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017):
`The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), explained that,
`“because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some
`sense, is already known,” “it can be important to identify a
`reason that would have prompted a person of ordinary skill in
`the relevant field to combine the elements in the way the
`claimed new invention does.”
`Id. at 991–92 (citation omitted).
`E. Motivation to Combine Cashin and ODBC with the “Motion
`
`Control References”
`
`Petitioner addresses the motivation to combine Cashin and ODBC
`with what it terms the “motion control references” (GML and Motion
`Toolbox) at pages 35–38 of the Petition. Petitioner’s argument proceeds in
`two stages. Petitioner first asserts that a person of ordinary skill would have
`combined WOSA, described in Cashin, with ODBC. Pet. 35–38. According
`to Petitioner:
`Cashin expressly refers to and describes ODBC as an
`architecture
`that
`embodies WOSA,
`and
`the ODBC
`
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`Programmer’s Guide is a text that explains the ODBC interface
`in greater detail than Cashin. Therefore, Cashin and the ODBC
`Programmer’s Guide are closely related and the ODBC
`Programmer’s Guide merely expands on the ODBC description
`contained in Cashin.
`Pet. 36. Petitioner then argues: “It would have been obvious to combine
`Cashin and ODBC Programmer’s Guide with GML or Motion Toolbox by
`applying the WOSA design approach to the motion control programming
`technologies described in GML or Motion Toolbox.” Id. (footnote omitted).
`According to Petitioner, there is “ample evidence . . . showing companies in
`the motion control space improving their motion control products by making
`them less proprietary and more hardware independent.” Id. at 36–37.
`
`Patent Owner challenges this rationale for combining the references.
`Prelim. Resp. 35–40. Patent Owner asserts that a person of ordinary skill
`would not have combined ODBC and the motion control technology
`references (i.e., GML and Motion Toolbox) because they are “unrelated
`technologies.” Id. at 35. Because ODBC is a database component of
`WOSA, Patent Owner asserts there is no “technical reason” to look to
`ODBC to improve on motion control technology. Id. at 36. As an additional
`argument, Patent Owner asserts that even if a person of ordinary skill would
`have been motivated to combine motion control technology with a WOSA
`implementation, it is “very unlikely such a person would choose ODBC.”
`Id. at 39. Patent Owner states: “ODBC does not provide for any level of
`hardware interaction.” Id.
`
`While Petitioner presents a credible rationale for combining WOSA
`and ODBC, we are not persuaded by Petitioner’s showing that a person of
`ordinary skill would have looked to WOSA and ODBC for use in a motion
`
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`control application. According to Petitioner, there is “ample evidence” that
`companies in “the motion control space” desired to improve their products
`“by making them less proprietary and more hardware dependent.” Pet. 36–
`37. We are not convinced, however, that this helps Petitioner establish that a
`person of ordinary skill would look to Cashin or ODBC as a solution. As
`the ’058 patent specification points out, “[t]he WOSA model has no relation
`to motion control devices.” Id. at col. 3, ll. 24–25. Petitioner, thus, provides
`no persuasive evidence that a person or ordinary skill “would have
`appreciated the applicability to motion control of the well-known hardware-
`independent benefits of the WOSA software design.” Pet. 37.
`
`Petitioner argues that the inventors of the ’058 patent “merely
`combined known technologies in a predictable way.” Pet. 25–27. Petitioner
`asserts the commercial embodiment of the ’058 patent (XMC) is based on
`WOSA. Id. at 25. We are not persuaded by this argument because it is
`contrary to the principle that an inventor’s own work may not be considered
`prior art in the absence of a statutory basis. Riverwood Intern. Corp. v. R.A.
`Jones & Co., Inc., 324 F.3d 1346, 1355 (Fed. Cir. 2003).
`
`In sum, we are not convinced that Petitioner has presented a sufficient
`rationale, apart from hindsight, demonstrating that a person of ordinary skill
`would have combined Cashin/WOSA and ODBC with either of the motion
`control references.
`
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`F. Obviousness Based on Cashin, OBCD, and GML
`
`Petitioner contends that claims 1–5 would have been obvious over the
`
`combination of Cashin, ODBC, and GML. Pet. 38–68.1 Petitioner’s
`obviousness analysis relies on GML (and Motion Toolbox) to meet the
`limitations identified as “elements (c)-(e) of claim 1.” Pet. 55–60; 69–73.2
`Patent Owner challenges GML (and Motion Toolbox, as well) as failing to
`meet these “motion control limitations” of the challenged patent claims.
`Prelim. Resp. 40–50.
`
`
`Patent Owner argues both GML and Motion Toolbox are “software
`development environment programs used to develop motion control
`programs.” Thus, neither provides for interfaces to other programs, and
`neither “directly interacts with individual hardware components.” Id. at 40–
`41. More specifically, Patent Owner characterizes GML as a programming
`language. Id. at 41. Patent Owner points to language in the Petition and in
`the accompanying Rizzi Declaration to the effect that, at best, GML “could
`be used to generate motion control programs.” Id. (citing Rizzi Decl. ¶ 88)
`(emphasis omitted). We agree that this argument and testimony are
`insufficient to meet Petitioner’s burden of demonstrating that there is a
`reasonable likelihood of prevailing on this challenge. Specifically, we agree
`that merely showing that disclosing a reference “could” meet the elements of
`a claim is insufficient. Mere speculation is not a substitute for substantial
`
`
`1 The claim charts accompanying the Petition (Exs. 1028, 1029) violate our
`rule against incorporation by reference. 37 C.F.R. § 42.6(a)(3). Neverthe-
`less, we have considered them in our analysis.
`2 Substantially the same analysis applies to independent claims 3 and 4. See
`Pet. 63–67.
`
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`evidence. Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1327
`(Fed. Cir. 2009); also see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
`(Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only
`could have made but would have been motivated to make the combinations
`or modifications of prior art to arrive at the claimed invention”).
`
`Patent Owner also challenges Petitioner’s showing that certain
`specific claim elements are met by the references. Prelim. Resp. 45–52.
`Specifically, Patent Owner contends that Petitioner fails to demonstrate that
`GML teaches the “primitive operations” called for in claims 1–3. Id. at 45–
`51. We agree. For this proceeding we construed this term as “motion
`control operations that cannot be simulated using a combination of other
`motion control operations.” See supra. Petitioner’s expert has identified
`GML’s “Move Axis” command as “exemplary” of a primitive operation.
`Pet. 58; Rizzi Decl. ¶ 157. We agree with Patent Owner that this is
`insufficient. Prelim. Resp. 46–49. Petitioner’s assertion is not backed up by
`evidence. No analysis of the “Move Axis” command, demonstrating that it
`cannot be “simulated” by other operations in combination, is presented.
`Instead, Petitioner relies on the following: “GML’s motion control functions
`(including these ‘primitive operations’) would be included in the API of this
`proposed combination and could be included in ‘application programs’ to
`define a ‘desired motion sequence.’” Pet. 59 (emphasis added). Petitioner’s
`statement is at best speculative. Petitioner, therefore, does not meet the
`standard set forth by the authorities requiring “specific reasoning, based on
`evidence of record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380.
`
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`Moreover, the evidence of record introduced by Patent Owner
`
`contradicts Petitioner’s identification of Move Axis as a primitive operation.
`For example, the Allen-Bradley patent on GML submitted by Patent Owner
`(Ex. 2020) suggests that Move Axis is implemented through a combination
`of other instructions. Prelim. Resp. 47–49. We conclude that Petitioner has
`not sufficiently shown that GML teaches primitive operations.
`
`Claim 1 also calls for “a network communication protocol that allows
`the control commands to be communicated from the control command
`generating module on the at least one workstation to at least one of the
`supported devices over a network.” Claims 2–5 recite similar “networking”
`elements. Pet. 63–64. Petitioner relies on Cashin and ODBC to meet this
`limitation. Id. at 54–55. Patent Owner responds:
`None of the references that Petitioners cite demonstrates remote
`communication with hardware devices. In fact, of all WOSA
`embodiments listed, only WOSA XFS even discusses creating
`an API for hardware devices, and nowhere does it teach a
`method for communicating with those hardware devices over a
`network. Ex. 1008, at 131.
`Prelim. Resp. 51. We agree that Petitioner fails to demonstrate that Cashin
`(with or without ODBC) meets this claim element. Petitioner’s argument,
`that in Cashin “targeted hardware and/or services could be local or remote”
`(Pet. 54–55, emphasis added) is speculative. The testimony of Petitioner’s
`expert, Mr. Rizzi, does not persuade us that this element is met. Rizzi Decl.
`¶¶ 148–149. Mr. Rizzi’s testimony merely echoes the argument in the
`Petition. Neither the Petition nor the Rizzi Declaration identifies with
`sufficient particularity where the claimed networking element is described in
`Cashin or ODBC, providing instead generalized descriptions and citations to
`multiple pages in the references. Our rules require more specificity than
`
`
`
`17
`
`
`
`IPR2017-00023
`Patent 6,513,058 B2
`
`Petitioner had provided: “The petition must specify where each element of
`the claim is found in the prior art patents or printed publications relied
`upon.” 37 C.F.R. § 42.104(b)(4). We conclude that Petitioner has not
`sufficiently shown that Cashin meets the “networking” limitation.
`
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on this challenge to
`claims 1–5 based on the combination of Cashin, ODBC, and GML.
`G. Obviousness Based on Cashin, ODBC, and Motion Toolbox
`
`
`Petitioner’s second ground of challenge substitutes Motion Toolbox
`for GML in the combination with Cashin and ODBC. Pet. 69–74. Thus,
`much of the previous analysis applies to this ground. Like GML, Motion
`Toolbox is a development tool which “could” be used to build programs.
`Prelim. Resp. 41 (citing Rizzi Decl. ¶ 95). Thus, this ground suffers from
`the same insufficiencies as the challenge based on GML. Prelim. Resp. 41–
`42.
`As is discussed generally above, Petitioner’s demonstration of a
`
`motivation to combine these references is not persuasive. As Patent Owner
`points out, Motion Toolbox was designed as an extension of LabVIEW.
`Prelim. Resp. 44. According to Petitioner’s expert, “LabVIEW was a
`system with a variety of functions and subroutines . . . with which engineers
`could build programs.” Rizzi Decl. ¶ 95. Petitioner does not explain
`persuasively why a person of ordinary skill would have combined programs
`developed using LabVIEW with WOSA and ODBC. As Patent Owner
`points out, Petitioner’s argument does not account for the differences in the
`platforms, much less the fact that Motion Toolbox itself is not a motion
`control application. Prelim. Resp. 44.
`
`
`
`18
`
`
`
`IPR2017-00023
`Patent 6,513,058 B2
`
`Nor are we persuaded that Petitioner has demonstrated persuasively
`
`that Motion Control provides a description of primitive operations. Pet. 70–
`71. While Petitioner provides some “specific examples” of primitive
`operations in Motion Toolbox, there is no accompanying explanation or
`analysis. Petitioner’s one citation is to the Rizzi Declaration, which
`reproduces the list from the petition and, without further analysis, states: “In
`my opinion, these are ‘primitive operations’ under AMS’s proposed
`construction.” Rizzi Decl. ¶ 178. We give this unsupported testimony little
`weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
`the underlying facts or data on which the opinion is based is entitled to little
`or no weight.”).
`
`In addition, for the same reasons discussed with respect to the GML
`challenge, Petitioner fails to demonstrate persuasively that the “networking”
`limitation is met by these references. See supra.
`
`For the foregoing reasons, we determine Petitioner has failed to
`demonstrate a reasonable likelihood of prevailing on this challenge based on
`Cashin, ODBC, and Motion Toolbox.
`
`IV. ORDER
`
`It is, therefore,
`ORDERED that the Petition is denied and no inter partes review is
`
`instituted.
`
`19
`
`
`
`
`
`
`
`
`
`20
`
`
`
`
`
`PETITIONER:
`Jeffrey N. Costakos
`Nikhil Pradhan
`FOLEY & LARDNER LLP
`jcostakos@foley.com
`npradhan@foley.com
`
`PATENT OWNER:
`Douglas R. Wilson
`HEIM PAYNE & CHORUSH LLP
`dwilson@hpcllp.com
`
`Terry A. Saad
`Justin B. Kimble
`Nicholas Kliewer
`BRAGALONE CONROY PC
`tsaad@bcpc-law.com
`jkimble-ipr@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`
`
`
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