Paper No. 13
`
`Trials@uspto.gov
`571.272.7822 Entered: April 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROCKWELL AUTOMATION, INC., ROCKWELL AUTOMATION
`TECHNOLOGIES, INC.,
`Petitioners,
`
`v.
`
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00048
`Patent 6,516,236 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
` Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822 Entered: April 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROCKWELL AUTOMATION, INC., ROCKWELL AUTOMATION
`TECHNOLOGIES, INC.,
`Petitioners,
`
`v.
`
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00048
`Patent 6,516,236 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
` Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00048
`Patent 6,516,236 B1
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`I. INTRODUCTION
`Rockwell Automation, Inc. and Rockwell Automation Technologies,
`Inc. (“Petitioner”) filed a Petition (Paper 2 (“Pet.”)) pursuant to 35 U.S.C.
`§§ 311–19 to institute an inter partes review of claims 1–3 (“the challenged
`claims”) of U.S. Patent No. 6,516,236 (Ex. 1001 (“the ’236 patent”)). Pet. 2.
`Automation Middleware Solutions, Inc. (“Patent Owner”1) filed a
`Preliminary Response (Paper 11 (“Prelim. Resp.”)).
`We have authority under 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim. See 37 C.F.R. § 42.4(a). We are
`not persuaded there is a reasonable likelihood that Petitioner would prevail
`in showing that at least one of the challenged claims is unpatentable and
`decline to institute an inter partes review of the challenged claims.
`A. Related Proceedings
`Petitioner advises us that the ’236 Patent was the subject of a previous
`inter partes review, ABB Inc. v. Roy-G-Biv Corporation, IPR2013-00062
`(PTAB) (“the ’062 IPR”)). Pet. 3. ABB was the petitioner in the ’062 IPR,
`Petitioner here was not a party to the ’062 IPR, and the ’236 patent was
`subsequently assigned to Patent Owner. Id. The Board entered a Final
`Written Decision in the ’062 IPR on April 11, 2014. ’062 IPR, Paper 84.
`The Board determined that ABB failed to prove the claims were
`unpatentable. Id. at 27–28.
`Patent Owner advises us that the ’236 patent was the subject of an
`inter partes reexamination, Control No. 95/000396, in which all claims were
`
`
`1 Wi-LAN Technologies Inc. and Wi-LAN, Inc. are also identified by Patent
`Owner as real parties-in-interest. Paper 8, 2.
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`confirmed. Prelim. Resp. 21 (citing Ex. 20132). In addition, Patent Owner
`identifies several pending civil actions in the Eastern District of Texas in
`which the ’236 patent is being asserted. Paper 8, 2.
`B. The ’236 Patent (Ex. 1001)
`The ’236 patent relates generally to a system that facilitates the
`creation of hardware-independent motion control software. Ex. 1001, col. 1,
`ll. 13–16. In particular, the patent describes a high-level motion control
`application programming interface (“API”) correlated with driver functions
`associated with controlling a mechanical system that generates movement
`based on a control signal. See generally id. at col. 1, ll. 5–49. The object of
`the invention is to isolate the application programmer from the complexity
`of hardware devices, which often have a manufacturer-specific motion
`control command language and functionality that is highly hardware-
`dependent. See generally id. at col. 3, ll. 24–42. At the same time, the API
`allows the programmer to access base motion operations of the hardware
`device. Id.
`As described in the ’236 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. Ex. 1001, col. 1, l. 55–col. 2, l. 34.
`While providing complete control over the hardware, these low-level
`programs are highly hardware-dependent. Id. The ’236 patent discusses an
`existing software model, referred to as “WOSA,” that isolates application
`programmers from the complexities of programming to different service
`
`
`2 Action Closing Prosecution and Information Disclosure Statement,
`Reexamination Control No. 95/000,396.
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`providers through an application programming interface layer that is
`hardware-independent. Id. at col. 2, ll. 55–67. However, the patent states,
`“[t]he WOSA model has no relation to motion control devices.” Id. at col. 2,
`ll. 66–67.
`In describing the invention, the ’236 patent discloses a programming
`interface consisting of “component functions” containing code that relates to
`driver functions, which in turn are associated with, or contain code for,
`implementing the motion steps on a given motion control device. Id. at col.
`3, ll. 56–66. The component functions support both core driver functions—
`those functions that must be supported by all software drivers—and
`extended driver functions—those functions that may, or may not be,
`supported by a particular software driver. Id. at col. 4, ll. 3–13. When
`feasible, component functions can emulate extended driver functions not
`supported by a particular device by using a combination of core driver
`functions. Id. at col. 4, ll. 25–44.
`“Core driver functions are associated with primitive operations, while
`extended driver functions are associated with non-primitive operations.” Ex.
`1001, col. 7, ll. 43–46. “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. 7, ll. 29–32. “Non-primitive
`operations are motion control operations that do not meet the definition of a
`[sic] primitive operations.” Id. at col. 7, ll. 34–36.
`C. Illustrative Claim
`Of the challenged claims, claim 1 is the only independent claim.
`Claims 2–3 depend directly or indirectly from claim 1. Claim 1 follows:
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` A system for generating a sequence of control commands
`1.
`for controlling a selected motion control device selected from a
`group of supported motion control devices, comprising:
`
` a
`
` set of motion control operations, where each motion control
`operation is either a primitive operation the implementation of
`which is required to operate motion control devices and cannot
`be simulated using other motion control operations or a non-
`primitive operation that does not meet the definition of a
`primitive operation;
`
` a
`
` core set of core driver functions, where each core driver
`function is associated with one of the primitive operations;
`an extended set of extended driver functions, where each
`extended driver function is associated with one of the non-
`primitive operations;
`
`
`a set of component functions;
`
`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;
`
` set of software drivers, where
`
` a
`
`
`
`each software driver is associated with one motion control
`device in the group of supported motion control devices,
`
`
`for
`software driver comprises driver code
`each
`implementing the motion control operations associated with at
`least some of the driver functions, and
`
`
`one of the software drivers in the set of software drivers is a
`selected software driver, where the selected software driver is the
`software driver associated with the selected motion control
`device;
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`an application program comprising a series of component
`functions, where the application program defines the steps for
`operating motion control devices in a desired manner; and
`
` a
`
` motion control component for generating the sequence of
`control commands for controlling the selected motion control
`device based on the component functions of the application
`program, the component code associated with the component
`functions, and the driver code associated with the selected
`software driver.
`
`Ex. 1001, col. 48, l. 11–col. 49, l. 11.
`
`
`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 (Ex. 1020, excerpts parts 1–4, “ODBC”).
`
`3. Allen-Bradley, “GML Programmer’s Workshop User Manual,”
`Software Version 3.4 (Ex. 1021, “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 Declaration” or “Rizzi Decl.”) as support for the various contentions.
`E. Grounds Asserted
`Petitioner challenges claims 1–3 as obvious under 35 U.S.C. § 103(a)
`over the following combinations of references:
`
`1. Cashin, ODBC, and GML; and
`
`2. Cashin, ODBC, and Motion Toolbox.
`
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`II. ANALYSIS
`
`A. Preliminary Matter
`
`Patent Owner urges us to exercise our discretion and deny the petition
`under 35 U.S.C. § 325(d). Prelim. Resp. 18–35. Patent Owner argues that
`Petitioner presented “the same or substantially the same art or arguments
`addressed during prior PTO proceedings” involving the ’236 patent. Id. at
`18–19. Patent Owner provides charts comparing the prior art arguments
`made in the Petition with similar arguments in the ’062 IPR. Id. at 27–28.
`
`Patent Owner’s argument is 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 ʼ236 patent has expired. Pet. 10–11. Patent
`Owner agrees. Prelim. Resp. 18. For the purposes of 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 Patent Owner proposed: “motion
`control operations that cannot be simulated using a combination of other
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`motion control operations.” Pet. 14 (citing Ex. 1006,3 14; 15; 17; 31; 38;
`Ex. 1002 ¶48). This is consistent with the specification (see I.B. above) and
`the District Court’s preliminary claim construction. Ex. 2016,4 2. We,
`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 27 of
`the Petition:
`
`
`3 Plaintiff’s P.R. 4-2 Disclosures in Automation Middleware Solutions, Inc.
`v. Invensys Systems, Inc. et al., Case No. 2:15-cv-00898-RWS (E.D. Tex.)
`(“District Court”).
`4 Preliminary Claim Constructions in the District Court.
`
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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 ’236 patent specification. See I.B. above.
`
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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. at 29.
`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 (citing Ex. 1021, 1–3, 11–12). 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” to a GML “diagram.” (Id.) The
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`blocks could be connected to other blocks to create an order of
`operation along with inputs and outputs from the blocks. (Id.)
`Id. at 30–31.
`
`Petitioner describes Motion Toolbox as a software add-on for a
`process control programming system named LabVIEW.5 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. (citing Ex. 1024, 1-1–1-2). 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.
`
`
`
`
`5 National Instruments Corporation, LabVIEW for Windows User Manual
`(August 1993 Edition).
`
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`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)(citations and
`internal quotation marks omitted).
`“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:
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`Cashin expressly refers to and describes ODBC as an
`architecture
`that
`embodies WOSA,
`and
`the ODBC
`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. at 36–37 (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 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 40. Patent Owner states: “ODBC does not provide for any level of
`hardware interaction.” Id.
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`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
`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 independent.” Pet. 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’236, patent specification points out, “[t]he WOSA model has no relation
`to motion control devices.” Id. at col. 2, ll. 66–67. 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 ’236 patent “merely
`combined known technologies in a predictable way.” Pet. 23–26. Petitioner
`asserts the commercial embodiment of the ’236 patent (XMC) is based on
`WOSA. Id. at 24. 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, ODBC, and GML
`Petitioner contends that claims 1–3 would have been obvious over the
`
`combination of Cashin, ODBC, and GML. Pet. 38–66.6 Petitioner’s
`obviousness analysis relies on GML (and Motion Toolbox) to meet the
`limitations identified as by Petitioner as elements [1b], [1c], [1f], [1j] of
`claim 1. Pet. 57–65; 68–72. Patent Owner challenges GML (and Motion
`Toolbox, as well) as failing to meet these “motion control limitations” of the
`challenged patent claims. Prelim. Resp. 41–51.
`
`
`Patent Owner argues both GML and Motion Toolbox are “software
`development environment programs used to develop motion control
`programs.” Prelim. Resp. 41. Thus, neither provides for interfaces to other
`programs, and neither “directly interacts with individual hardware
`components.” Id. 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. ¶ 86) (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 a reference “could” meet the elements of a claim is
`insufficient. Mere speculation is not a substitute for substantial 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.
`
`
`6 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.
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`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. 46–52.
`Specifically, Patent Owner contends that Petitioner fails to demonstrate that
`GML teaches the “primitive operations” called for in claims 1–3. Id. 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 II.B above. Petitioner argues the ’236 patents
`describes the “GET POSITION” and “MOVE RELATIVE” operations as
`examples of “primitive operations.” Pet. 57. (citing Ex. 1001, col. 6, ll. 61–
`63. Petitioner then cites the GML “Move Axis” command as “exemplary”
`of a primitive operation. Pet. 57–58; Rizzi Decl. ¶¶ 145–46. We agree with
`Patent Owner that this evidence is insufficient to show that GML discloses
`primitive operations. The Rizzi Declaration lacks any support for the
`conclusions reached. Prelim. Resp. 47–48. Petitioner’s assertion is,
`therefore, not backed up by persuasive evidence. No analysis of the “Move
`Axis” command, demonstrating that it cannot be “simulated” by other
`operations in combination, is presented. Without any supporting evidence,
`Petitioner concludes that “GML includes many further examples of
`‘primitive operations’”. Pet. 57. 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. 2017) suggests that Move Axis is implemented through a combination
`of other instructions. Prelim. Resp. 49–50. We conclude that Petitioner has
`not sufficiently shown that GML teaches primitive operations.
`
`In addition to “primitive operations,” claim 1 also calls for
`“component functions,” “non-primitive operations,” “core driver functions,”
`and “extended driver functions.” Petitioner relies on Cashin and ODBC to
`meet these limitations. Pet. 39–49, 55–57; Rizzi Decl. ¶¶ 103–112. Patent
`Owner responds that Petitioner relies solely on their expert to meet these
`limitations. Prelim. Resp. 52–57. We agree with Patent Owner that the
`testimony of Petitioner’s expert, Mr. Rizzi, is insufficient to support a
`finding that the limitations are shown in the references. 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 elements are described in Cashin or ODBC, providing instead
`generalized descriptions and citations to multiple pages in the references.
`For example, with respect to “a set of component functions” Petitioner
`cites to WOSA’s API and then ODBC for confirmation that “API is a
`common application interface that can be used to access database resources
`from a number of different database providers.” Pet. 60 (citing Ex. 1020, 3–
`15; Rizzi Decl. ¶ 150). This and other citations to the references do not
`show how the reference teaches the limitation in question. Moreover, on
`this issue, the Petition and the Rizzi Declaration are all but identical.
`Compare Pet. 60–62 with Rizzi Declaration ¶¶ 149–152.
`
`17
`
`
`
`IPR2017-00048
`Patent 6,516,236 B1
`
`
`Our rules require more specificity than 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
`limitations recited above.
`
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on this challenge to
`claims 1–3 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. 67–73. 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. 44–45 (citing Rizzi Decl. ¶ 93). Thus, this ground suffers
`from the same insufficiencies as the challenge based on GML. Prelim. Resp.
`44–46.
`
`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. 45. According to Petitioner’s expert, “LabVIEW was a
`system with a variety of functions and subroutines . . . with which engineers
`could build programs.” Rizzi Decl. ¶ 93. 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
`
`18
`
`
`
`IPR2017-00048
`Patent 6,516,236 B1
`
`platforms, much less the fact that Motion Toolbox itself is not a motion
`control application but rather a development tool. Prelim. Resp. 46.
`
`Nor are we persuaded that Petitioner has demonstrated persuasively
`that Motion Toolbox provides a description of primitive operations. Pet. 68–
`69. 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:
`“These are ‘primitive operations’ under AMS’s proposed construction.”
`Rizzi Decl. ¶ 160. 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 other
`limitations are met by these references. See above.
`
`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.
`
`III. ORDER
`
`It is, therefore,
`ORDERED that the Petition is denied and no inter partes review is
`
`instituted.
`
`19
`
`
`
`
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`20
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`IPR2017-00048
`Patent 6,516,236 B1
`
`PETITIONER:
`
`Jeffrey N. Costakos
`Nikhil Pradhan
`FOLEY & LARDNER LLP
`jcostakos@foley.com
`npradhan@foley.com
`
`
`
`PATENT OWNER:
`
`Douglas R. Wilson
`Terry A. Saud
`Justin B. Kimble
`dwilson@hpcllp.com
`tsaad@bcpc-law.com
`jkimble-ipr@bcpc-law.com
`
`
`
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