Paper No. 12
`
`Trials@uspto.gov
`571.272.7822 Entered: April 21, 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 IPR2017-00049
`Patent 8,073,557 B2
`____________
`
`
`
`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 21, 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 IPR2017-00049
`Patent 8,073,557 B2
`____________
`
`
`
`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
`
`
`
`
`
`
`
`IPR2017-00049
`Patent 8,073,557 B2
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`
`I. INTRODUCTION
`Rockwell Automation, Inc. and Rockwell Automation Technologies,
`Inc. (“Petitioner”) filed a Petition (Paper 1 (“Pet.”)) pursuant to 35 U.S.C.
`§§ 311–19 to institute an inter partes review of claims 16, 19–24, and 27–29
`(“the challenged claims”) of U.S. Patent No. 8,073,557 (Ex. 1001 (“the ’557
`patent”)). Pet. 1. Automation Middleware Solutions, Inc. (“Patent
`Owner”)1 filed a Preliminary Response (Paper 10, “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 ’557 patent is asserted five cases pending
`in the Eastern District of Texas: Automation Middleware Solutions, Inc. v.
`Rockwell Automation, Inc., 2:15-cv-01269; Automation Middleware
`Solutions, Inc. v. Invensys Systems, Inc., 2:15-cv-00898; Automation
`Middleware Solutions, Inc. v. Emerson Electric Company, 2:15-cv-01266;
`Automation Middleware Solutions, Inc. v. Yaskawa America, Inc., 2:15-cv-
`01771; and Automation Middleware Solutions, Inc. v. Kollmorgen
`Corporation, 2:15-cv-01539. Pet. 1. Patent Owner advises us of another
`two related matters pending in the Eastern District of Texas: Automation
`Middleware Solutions, Inc. v. Mitsubishi Electric Corp., et al., 2:15-CV-
`
`
`1 Wi-LAN Technologies Inc. and Wi-LAN Inc. are also identified by Patent
`Owner as real parties-in-interest. Paper 9, 2.
`
`2
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`01982 and Automation Middleware Solutions, Inc. v. Yokogawa Electric
`Corporation, et al., 2:15-cv-899. Paper 4, 2. We are further advised that
`Petitioner has filed two petitions for inter partes review of two other patents
`of Patent Owner, IPR2017-00023 challenging US Patent No. 6,513,048 (“the
`’023 IPR”) and IPR2017-00048 (“the ’048 IPR”)2 challenging US Patent
`No. 6,516,236 (the “’236 patent).3 Pet. 2, Paper 4, 2.
`B. The ’557 Patent (Ex. 1001)
`The ’557 patent describes “interface software that facilitates the
`creation of hardware independent motion control software” for moving
`objects. Ex. 1001, col. 1, ll. 49–52. In particular, the patent describes a
`high-level motion control application programming interface (“API”) made
`of functions that are correlated with driver functions associated with
`controlling a mechanical system that generates movement based on a control
`signal. See generally id. at col. 1, l. 61–col. 2, l. 33; col. 3, l. 66–col. 4, l. 41.
`The invention isolates the application program from the complexity of
`hardware devices and “[t]he user 24 thus need know nothing about the
`hardware specific command language or communication protocol associated
`with each of these devices.” Id. at col. 7, ll. 46–48.
`As described in the ’557 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. 2, ll. 33–42. While
`
`
`2 We declined to institute trial on the ’023 and ’048 IPRs. ’023 IPR, Paper
`15, ’048 IPR, Paper 13.
`3 The ’557 patent is a continuation-in-part of the ’236 patent. Ex. 1001,
`(63).
`
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`providing complete control over the hardware, these low-level programs are
`highly hardware-dependent. Id. The ’557 patent 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. 27–37. However, the patent states,
`“[t]he WOSA model has no relation to motion control devices.” Id. at col. 3,
`ll. 36–37.
`In describing the invention, the ’557 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. Ex. 1001,
`col. 4, ll. 29–60. The component functions support both core driver
`functions and extended driver functions. Id. at col. 4, ll. 61–67. Component
`functions can emulate extended driver functions not supported by a
`particular device by using a combination of core driver functions. Id. at col.
`5, ll. 18–59.
`“Core driver functions are associated with primitive operations, while
`extended driver functions are associated with non-primitive operations.” Ex.
`1001, col. 8, ll. 33–36. “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. 8, ll. 18–21. “Non-primitive
`
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`operations are motion control operations that do not meet the definition of a
`[sic] primitive operations.” Id. at col. 8, ll. 24–26.
`C. Illustrative Claim
`Of the challenged claims 16, 19–24, and 27–29, claim 16 is the only
`independent claim. Claims 19–24 and 27–29 depend directly or indirectly
`from claim 16. Claim 16 follows:
`16. A motion control system, comprising:
`
`
`an application program comprising at least one call to at
`least one component function;
`
` plurality of motion control devices, where
`a plurality of unique controller
`languages are
`associated with the plurality of motion control
`devices,
`
`
`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
`
` a
`
`
`
` a
`
` mechanical system capable of causing a motion
`control operation based on electrical signals
`generated by the controller,
`
`
`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
`
`
`each software driver exposes a service provider
`interface defining a set of driver functions, where
`
`
`
`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,
`
`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
`
`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 motion
`controller language associated with at least one of
`the software drivers, and
`
`
`at least one selected software driver is associated
`with at least one selected motion controller;
`
`
`
`
`
`
`
`a motion component comprising component code,
`where
`the motion component exposes an
`
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`
`application programming interface comprising a set
`of component functions, where
`
`
`
`each component function is implemented by
`component code, and
`
`
`at least the component code is independent of the
`plurality of motion controller languages, and
`
`
`the component code associates at least one of the
`component functions with at least one of the
`driver functions; wherein
`
`
`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.
`
`Ex. 1001, col. 50, l. 43–col. 51, l. 35.
`
`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) and Allen-Bradley, “GML V3.3
`Programming Manual,” June 17, 1993 (Ex. 1022) (collectively “GML”).
`
`7
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`4. Kraig Brockschmidt, “Inside OLE 2,” Microsoft Press, 1994 (Ex.
`
`1030, “Brockschmidt”).
`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
`1. Petitioner challenges claims 16, 19–22, and 27–28 as obvious
`under 35 U.S.C. § 103(a) over Cashin, ODBC, and GML; and
`2. Petitioner challenges claims 23, 24, and 29 as obvious
`under 35 U.S.C. § 103(a) over Cashin, ODBC, Brockschmidt, and GML.
`
`
`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. 20–34. Patent Owner argues that
`Petitioner presented “the same or substantially the same art or arguments
`addressed during prior PTO proceedings” involving the ’557 patent. Id. at
`20. Specifically, Patent Owner argues that another petitioner in another inter
`partes review, ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00074 (the “’074
`IPR”),4 alleged certain claims of the ’557 patent were “invalidated” by
`WOSA XFS, either alone or in combination with other references. Id. at 23
`(citing ’074 IPR Petition, Ex. 2012). Cashin was also cited in the ’074 IPR
`but was not relied on there. Id. Patent Owner provides charts comparing the
`
`
`4 The ’074 IPR concluded in a final written decision determining that the
`claims challenged there had not been shown to be unpatentable. ’074 IPR,
`Paper 80.
`
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`prior art arguments made in the Petition with similar arguments in the ’074
`IPR. Id. at 29–30.
`
`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 ʼ557 patent has expired. Pet. 11. Patent
`Owner agrees. Prelim. Resp. 19. 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
`motion control operations.” Pet. 14–15 (citing Ex. 10065; Rizzi Decl. ¶ 50).
`This is consistent with the specification (see I.B. above) and the District
`
`
`5 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”).
`
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`Court’s preliminary claim construction. See Ex. 2016,6 2. We, therefore,
`agree with this construction and, 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:
`
`
`
`
`6 Preliminary Claim Constructions in the District Court.
`
`10
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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 ’557 patent specification. See I.B. above.
`
`
`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. 27.
`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 27–28.
`
`3. GML (Exs. 1021, 1022)
`
`Petitioner describes GML as “a graphical programming language
`
`developed by Allen-Bradley for use with a variety of motion controllers.”
`Pet. 33 (citing Ex. 1021, 1–3, 11–12). According to Petitioner, “GML was
`designed so that a single motion control programming interface could be
`
`11
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`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
`blocks could be connected to other blocks to create an order of
`operation along with inputs and outputs from the blocks. (Id.)
`Id. at 33–34.
`
`
`
` 4. Brockschmidt (Ex. 1030)
`Brockschmidt, according to Petitioner, describes “Microsoft’s object
`linking and embedding protocol (“OLE”) [] a well-known software
`programming approach developed in the early 1990s.” Pet. 29. OLE has
`many of the API functions of Windows version 1’s operating system. Ex.
`1030, 5. OLE “presents as system objects a number of key operating system
`features such as memory allocation, file management, and data transfer.” Id.
`Petitioner asserts that “OLE uses function tables (or function pointer
`tables) as an interface to member functions of an object.” Pet. 30 (citing Ex.
`1030, 8–9). Figure 1-2 of Brockschmidt is reproduced below.
`
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`Brockschmidt Figure 1-2 “show[s] each function table as a circle (or jack)
`connected to the object.” Ex. 1030, 9.
`Brockschmidt also explains that OLE used streams as a basic tool for
`data transfer:
`A stream object is the conceptual equivalent of a single disk file
`as we understand disk files today. Streams are the basic file-
`system component in which data lives, and each stream itself has
`access rights and a single seek pointer. Streams … can contain
`any internal structure you desire.
`
`Ex. 1030, 13.
`
`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 . .
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`. . 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).
`“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, ODBC, Brockschmidt, and GML
`Petitioner addresses the motivation to combine Cashin, ODBC,
`
`Brockschmidt, and GML at pages 37–40 of the Petition. Petitioner’s
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`argument proceeds in three stages. Petitioner first asserts that a person of
`ordinary skill would have combined WOSA, described in Cashin, with
`ODBC. Pet. 37–38. According to Petitioner:
`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. 37–38. Second, Petitioner argues Cashin expressly refers to and
`discusses OLE, as described in Brockschmidt, as part of Microsoft’s
`operating system. Pet. 38. According to Petitioner, “Brockschmidt merely
`expands on the OLE description contained in Cashin.” Id. Third, as to
`combining GML with the other three references, Petitioner alleges 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 38.
`
`Patent Owner challenges this rationale for combining the references.
`Prelim. Resp. 37–43. Patent Owner asserts that a person of ordinary skill
`would not have combined ODBC and the motion control technology
`references (i.e., GML) because they are “unrelated technologies.” Id. at 37.
`Because ODBC is a database protocol, Patent Owner asserts the person of
`ordinary skill in the art would not look to ODBC to improve on motion
`control technology. Id. at 37–38 (citing Ex. 2013,7 22–23).
`
`7 Reexam Control No. 95/000,396, Action Closing Prosecution. Even
`though this reexamination relates to the ’236 patent, Patent Owner argues its
`“logic applies here” because the Petition here and the reexamination both
`reference Windows Graphical Device Interface. Prelim. Resp. 38, n.4.
`
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`As an additional argument, Patent Owner asserts “ODBC is the
`database component of WOSA.” Prelim. Resp. 39 (citing Ex. 1008, 26).
`Thus, while “ODBC provides a great deal of database related functionality . .
`. it does not appear to provide for any hardware interaction.” Id.
`While Petitioner presents a credible rationale for combining WOSA,
`ODBC, and Brockschmidt, we are not persuaded by Petitioner’s showing
`that a person of ordinary skill would have looked to WOSA, ODBC, or
`Brockschmidt for use in a motion control application. 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.” Pet. 38. We are not
`convinced, however, that this helps Petitioner establish that a person of
`ordinary skill would look to Cashin, ODBC, or Brockschmidt as a solution.
`As the’557, patent specification points out, “[t]he WOSA model has no
`relation to motion control devices.” Ex. 1001, col. 3, ll. 36–37. 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. 39.
`Petitioner argues that the inventors of the ’557 patent “merely
`combined known technologies in a predictable way.” Pet. 24–26. Petitioner
`asserts the commercial embodiment of the ’557 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).
`
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`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, ODBC, and Brockschmidt with the
`motion control reference GML.
`
`F. Obviousness Based on Cashin, ODBC, and GML
`Petitioner contends that claims 16, 19–22, and 27–28 would have been
`
`obvious over the combination of Cashin, ODBC, and GML. Pet. 40–70.8
`Petitioner’s obviousness analysis references GML generally9 in connection
`with the limitations identified as by Petitioner as elements [16b], [16c],
`[16d], [16e], [16g], [16i], [16j], [16k], and [16m], of claim 16. See
`respectively Pet. 41, 42, 45, 48, 51, 56, 57, 60, and 63. Patent Owner argues
`GML fails to meet the “motion control limitations” of the challenged patent
`claims. Prelim. Resp. 43–52.
`
`
`Patent Owner argues GML is a “software development environment
`program used to develop motion control programs.” Prelim. Resp. 44.
`Thus, GML interfaces with other programs, and does not “directly interact[s]
`[sic] with individual hardware components.” Id. More specifically, Patent
`Owner characterizes GML as “tool for developing motion control
`programs.” Id. at 44. 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. ¶ 97).
`
`
`8 The claim chart accompanying the Petition (Ex. 1028) violates our rule
`against incorporation by reference. 37 C.F.R. § 42.6(a)(3). Nevertheless,
`we have considered it in our analysis.
`9 The only specific citation to Exhibits 1021 and 1022, which are the
`evidence of what is taught by GML, appears in the evidence and argument
`relating to element 16c. See Pet. 42–43.
`
`17
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`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. 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. 47–54.
`Specifically, Patent Owner contends that Petitioner fails to demonstrate that
`GML teaches the “primitive operations” called for in claim 16, the only
`independent claim. Id. at 47–52. 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 ’557 patents describes the “GET POSITION” and
`“MOVE RELATIVE” operations as examples of “primitive operations.”
`Pet. 52 (citing Ex. 1001, col. 6, ll. 61–6310). Petitioner then argues that
`GML “Move Axis” command is “exemplary” of a primitive operation. Id.;
`Rizzi Decl. ¶¶ 144. 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. 48.
`
`
`10 The correct cite to the ’557 patent is column 8, lines 20–21.
`
`18
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`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. 52. 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.
`
`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. 50. We conclude that Petitioner has not
`sufficiently shown that GML teaches primitive operations recited in claim 1.
`
`In addition to “primitive operations,” claim 16 also calls for
`“component functions,” “non-primitive operations,” “core driver functions,”
`and “extended driver functions.”11 Petitioner relies on Cashin and ODBC to
`meet these limitations. Pet. 40–42 (element 16b, “component functions”),
`id. at 50–53 (element 16g, “extended driver function” and “non-primitive
`
`
`11 Other than “component functions,” Petitioner alleges the construction of
`some of these elements is disputed in the District Court. Pet. 12–13; P.R. 4-
`3 Joint Claim Construction and Prehearing Statement in the District Court
`(Ex. 1004, 1–2, attached Exs. A and B-1). Patent Owner asserts that the
`construction of the disputed terms are not material “to Petitioners’ likelihood
`of success in showing that any of the challenged claims of the ’557 Patent
`would have been obvious.” Prelim. Resp. 19–20.
`
`19
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`motion operation”), id. at 53–56 (element 16h, “core driver function”); Rizzi
`Decl. ¶¶ 122–125, 140–149. Patent Owner argues that Petitioner relies
`solely on expert testimony without disclosure of the underlying facts or data
`upon which the opinion is based. Prelim. Resp. 54–58; 37 C.F.R. § 42.65.
`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 limitation 16k, which includes the
`recitation “a set of component functions,” Petitioner cites Cashin’s “Driver
`Manager” and its functionality. Pet. 58 (citing Ex. 1008, 8). Petitioner
`submits that
`Cashin and the ODBC Programmer’s Guide explain (both with
`respect to WOSA generally and with respect to the specific
`WOSA-implementations discussed) that the described software
`systems perform operations based on the API function calls that
`are initiated by application programs.
`Pet. 58–59 (citing Rizzi Decl. ¶ 154). The agreed construction from the
`District Court of “component functions” requires that they “correspond to an
`operation performed by a motion control device.” See Pet. 11–12 (citing Ex.
`1004, 1–2). Petitioner concludes that the combination of Cashin, ODBC,
`and the GML References is “analogous to the many systems that Cashin
`discloses with architectures that follow the WOSA model.” Id. at 60. Even
`assuming the combination would have been made by the person of ordinary
`skill, this assertion is both mere argument and conclusory. The argument
`
`20
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`
`and evidence are generalities and do not show how the references teach the
`“component functions” element in question. Moreover, on this issue, the
`Petition and the Rizzi Declaration are all but identical. Compare Pet. 58–60
`with Rizzi Declaration ¶¶ 153–158. Thus, we do not credit the expert
`testimony because it does add anything to the Petition.
`Our rules require more specificity than Petitioner has 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, even assuming a
`motive to combine the references is present, that Cashin meets the
`limitations recited above.
`
`For the foregoing reasons, we determine that Petitioner has not
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