ABB, INC.v.ROY-G-BIV CORPORATION

Patent Trials and Appeals Board

May 16, 2014

09795777 - (D) (P.T.A.B. May. 16, 2014)

Trials@uspto.gov Paper 71
Tel: 571-272-7822 Entered: May 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

ABB, INC.
Petitioner

v.

ROY-G-BIV CORPORATION
Patent Owner
____________

Cases IPR2013-00063
Patent 6,513,058 B2
____________

Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
A. Background
This case is one of a series of inter partes reviews (IPRs) initiated by
ABB, Inc. (“Petitioner”), challenging various patents owned by ROY-G-BIV
Corp. (“Patent Owner”). In that connection, the Board has issued two final
decisions in related proceedings: IPR2013-00062 (Paper 84, “the ’062
Decision”) and IPR2013-00074 (Paper 80). In addition, there is a related
district court litigation between the parties in the Eastern District of Texas,
captioned ROY-G-BIV Corporation v. ABB, Ltd. et al., 6:11-cv-00622-LED
(E.D. Tex.).
In this proceeding, Petitioner requested an inter partes review of
claims 1-5 of U.S. Patent No. 6,513,058 B2 (Ex. 1001, “the ’058 patent”).
1

Patent Owner filed a Preliminary Response. Paper 22. The Board granted
the Petition and instituted trial for claims 1-5. Paper 24. Although several
grounds were proposed by Petitioner, the Board instituted trial on a single
ground: obviousness over the combination of the Gertz, Stewart, and
Morrow references discussed below.
During trial, Patent Owner filed a Response (“PO Resp.”) addressing
the obviousness challenge, accompanied by an expert declaration from
David B. Stewart, Ph.D. (Ex. 2013), author of the Stewart thesis relied upon
by Petitioner. Paper 27. Petitioner filed a Reply (“Pet. Reply”) and, for the
first time in this proceeding, presented expert testimony, namely,

1
Initially Patent Owner filed an incorrect petition. Paper 4. A corrected
petition (“Pet.”) was submitted as Exhibit 1032 to Petitioner’s motion to
correct (Paper 8), which motion was granted by the Board. Paper 21. The
references in this decision are to the corrected petition, Ex. 1032 (“Pet.”).
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declarations from Richard Voyles, Ph.D. (Ex. 1130), and Nikolaos
Papanikolopoulos, Ph.D. (Ex. 1132). Paper 38.
Petitioner’s experts, Drs. Voyles and Papanikolopoulos, worked in the
same laboratory at Carnegie Mellon University as Dr. Stewart, and were
presented by Petitioner to rebut Dr. Stewart’s expert testimony. Patent
Owner also has filed a Motion to Exclude Evidence (Paper 45) and a Motion
to Submit Supplemental Information (Paper 63). An oral hearing was held
on February 27, 2014. A transcript of the hearing is included in the record
as Paper 70 (“Transcript”). This Final Decision will refer to the Final
Decision in IPR2013-00062 (“the ʼ062 Decision”) and will, in places, rely
on the Board’s analysis therein.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons
discussed below, we determine that Petitioner has not met its burden to
prove by a preponderance of the evidence that claims 1-5 of the ʼ058 patent
are unpatentable.
B. The ’058 Patent
The technology of the ʼ058 patent is the same as that described in our
ʼ062 Decision at pages 3-4. The patent at issue there, U.S. Patent 6,516,236
(“the ’236 patent”), is related to the ʼ058 patent.
2
For the purposes of this
Decision, therefore, we rely upon that prior description in the ’062 Decision.

2
The ’236 patent is a continuation of U.S. Patent Application No.
09/191,181 (now abandoned). The ’058 patent is a continuation-in-part of
the same application.
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C. Illustrative Claim
Claim 1 is reproduced below, with emphasis added:
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. The Prior Art References Relied On By Petitioner
The following table identifies the Gertz, Stewart, and Morrow
references referred to above:
Gertz
Matthew Wayne Gertz, A Visual
Programming Environment for Real-Time
Control Systems (Ph.D. dissertation, Carnegie
Mellon University)
Nov.
22,
1994
Ex.
1002
Stewart
David Bernard Stewart, Real-Time Software
Design and Analysis of Reconfigurable Multi-
Sensor Based Systems (Ph.D. dissertation,
Carnegie Mellon University)
Apr.
1,
1994
Ex.
1004
Morrow
J. Dan Morrow, Bradley J. Nelson, & Pradeep
Khosla, Vision and Force Driven
Sensorimotor Primitives for Robotic Assembly
Skills, INST. FOR SOFTWARE RES., paper 574
Jan. 1,
1995
Ex.
1005
II. DISCUSSION
A. Antedating Gertz and Morrow
1. Background
As in IPR2013-00062 and IPR2013-00074, Patent Owner contends
that the claimed invention of the ’058 patent was conceived prior to
November 22, 1994, before the earliest date of publication alleged for Gertz
and Morrow, and constructively reduced to practice on May 30, 1995, the
filing date of the “priority application” (serial no. 08/454,736) that led to the
ʼ058 patent. PO Resp. 6-12. Patent Owner further contends that the
inventors were reasonably diligent from November 21, 1994, to the date of
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the constructive reduction to practice. Id. at 12-14. Patent Owner contends
that, as a consequence, neither Gertz nor Morrow qualifies as prior art. Id. at
14. See 35 U.S.C. § 102(g) (2011); Mahurkar v. C.R. Bard, Inc., 79 F.3d
1572, 1576 (Fed. Cir. 1996) (“Thus, under section 102(a), a document is
prior art only when published before the invention date.”).
In support, Patent Owner relies here on the same declaration
testimony of its founder, chairman, and chief technical officer, David W.
Brown, and accompanying evidence that was relied on in IPR2013-00062
and IPR2013-00074. See Exs. 2012 through 2012-6.
2. Discussion
For the reasons discussed in the ’062 Decision, we determine that the
testimony and documents offered by Patent Owner are not sufficient to
establish that the invention date of claims 1-5 is prior to the publication date
of Gertz and Morrow. Mr. Brown’s testimony is not sufficient as evidence
of diligence and his own time records are inadequate as corroboration. ʼ062
Decision 9-13.
The additional cases and arguments presented here by Patent Owner
(Paper 54 (“PO Surreply”), 2-4) do not convince us otherwise. For example,
Ex Parte Hook, 102 USPQ 130 (BPAI 1953), a non-precedential Board
decision, concludes that the Examiner erred in holding that the averments
made by the affiant in a Rule 131 affidavit must be corroborated. The case
does not address the issue for which it is cited by Patent Owner, namely,
whether independent corroboration is required “in court.” PO Surreply 2. In
fact, Hook acknowledges that a different rule applies in litigation,
distinguishing a decision relied on by the Examiner requiring corroboration
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of inventor testimony because “this ruling was made in reference to
testimony before the Court.” Hook, 102 USPQ at 131. Lazare Kaplan Int’l
v. Photoscribe Techs., Inc., 628 F.3d. 1399 (Fed. Cir. 2010), also is
distinguishable. In that case, there was independent evidence corroborating
the testimony of the inventor (Gresser), including confirming testimony
from Lazare’s senior vice president, as well as a video and photograph
illustrating Gresser’s machine in operation. Id. at 1375. In Adenta GmbH v.
OrthoArm, Inc., 501 F.3d 1364 (Fed. Cir. 2007), unlike here, corroboration
was provided by: “a number of statements made by different witnesses, all
corroborating each other, accompanied by various supportive and consistent
documents. The testimony of the witnesses together with the documentary
evidence provided a coherent and convincing story.” Id. at 1371.
Patent Owner relies also on a number of district court decisions. We
find these unpersuasive. For instance, in Ritter v. Rohm & Haas Co.,
271 F.Supp. 313 (S.D.N.Y 1967), a pre-Federal Circuit decision, the district
court acknowledged that a split of authority on the requirement for
independent corroboration existed before the Federal Circuit was formed:
“We have found no case in [the Second Circuit] expressly dealing with the
nature of the corroborative evidence required. Decisions elsewhere are
split.” Id. at 320. The district court in Ritter, however, did not have the
benefit of the Federal Circuit’s later guidance in such cases as Mahurkar,
and, therefore, reached a different conclusion on the need for independent
corroboration that is not reflective of the law as it stands today. Sperry
Prods., Inc. v. Aluminum Co. of Am., 171 F. Supp. 901 (N.D. Ohio 1959), is
likewise a pre-Federal Circuit district court decision, and therefore is not
persuasive authority today. Finally, in Purdue Pharma L.P. v. Boehringer
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Ingelheim GmbH, 98 F.Supp.2d 362 (S.D.N.Y 2000), the district court relied
on the declaration of Robert F. Kaiko to support a finding of reduction to
practice of the ʼ331 patent in suit. Id. at 385. Kaiko was not a named
inventor of the ʼ331 patent; in fact, the district court denied patent owner
Purdue’s motion to amend the patent to include Kaiko as an inventor on that
patent. Id. at 384. Therefore, Kaiko’s testimony was not inventor testimony
requiring independent corroboration under Mahurkar.
3. Morrow Publication Date
At the final hearing, Patent Owner challenged the January 1, 1995,
date of Morrow, asserting that Petitioner had not met its burden of proof that
the reference was published on that date. Transcript 24-28. But Patent
Owner acknowledged that it has not moved to exclude Morrow. Id. at 25.
Instead, Patent Owner directed the Board to a footnote concerning Morrow
in its Patent Owner Response. Id. at 26.
We have reviewed the record, including the cited footnote, and
conclude that Patent Owner’s challenge to Morrow is untimely. Patent
Owner waited until final hearing to make this argument. The footnote cited
by Patent Owner merely states that “Petitioner has not established the 1-1-
1995 date on page 1 of Morrow is the publication date of reference.” PO
Resp., 9 n.2. It does not state an objection to the admissibility of the
reference. Morrow was cited and discussed in the Petition (Ex. 1032, 20).
Under our rules, an objection to such evidence must be served within ten
business days of the institution of trial. 37 C.F.R. § 42.64(b)(1).
Furthermore, Patent Owner never followed up with a motion to exclude,
waiting instead until the final hearing to raise the issue again. See 37 C.F.R.
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§ 42.64(c) (“A motion to exclude evidence must be filed to preserve any
objection.”)
We recognize, as Patent Owner contends, that the burden of proving
that Morrow is a prior art publication falls on Petitioner. On the other hand,
a final hearing is not the place to advance a new theory of the case. Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)
(“No new evidence or arguments may be presented in the oral argument.”)
In light of our disposition of this proceeding, however, we do not need to
reach the issues of whether the record evidence is sufficient to satisfy that
burden, or whether a footnote reference amounts to a waiver of Patent
Owner’s challenge to Morrow as a prior art publication. See SmithKline
Beecham v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (arguments
raised in footnotes are waived). We are mindful, however, of the fact that
Patent Owner did not challenge the January 1, 1995, publication date of
Morrow in either IPR2013-00062 or IPR2013-00074.
B. Claim Construction
Consistent with the statute and the legislative history of the Leahy-
Smith America Invents Act, the Board will interpret claims of an unexpired
patent using the broadest reasonable construction in light of the specification
of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Claims are to be given their
broadest reasonable interpretation consistent with the specification, reading
the claim in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
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For purposes of this Decision, we construe only the terms “component
function” and “component code” because these terms are determinative, for
the same reasons as explained in the ’062 Decision.
1. “component function”
The parties present the same opposing views on the construction of
this term as those discussed in the ’062 Decision at page 14. See PO Resp.
19; Pet. Reply 8. For the reasons set forth in the ’062 Decision at pages 14-
15, we conclude that the broadest reasonable interpretation of the term
“component function” requires an action carried out by a program or routine,
regardless of whether the action is defined by executable code. This is
consistent with the Specification of the ’058 patent, which explains that
“[t]he application program 26 comprises a sequence of component functions
arranged to define the motion control operations necessary to control a
motion control device to move an object in a desired manner.” Ex. 1001,
col. 7, ll. 54-58.
2. “component code”
The parties have the same disagreement on the construction of this
term as that discussed in the ’062 Decision at page 15. See PO Resp. 20;
Pet. Reply 8. For the reasons discussed in the ’062 Decision at pages 15-16,
we determine that the term “component code” requires program instructions.
This is consistent with the Specification of the ’058 patent, which explains
that “the software system designer writes component code that associates at
least some of the component functions with at least some of the driver
functions.” Ex. 1001, col. 7, ll. 17-20.
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C. Summary of Expert Testimony
As in IPR2013-00062, three experts—Drs. Stewart, Voyles, and
Papanikolopoulos—testified in this case. Their declarations here are similar
to those submitted in IPR2013-00062 which are discussed in the ’062
Decision at pages 16-21. As the issues raised here relative to the component
function and component code limitations are the same, we rely on that
analysis for the purposes of this Decision.
D. Obviousness Based on Gertz, Stewart, and Morrow
Petitioner challenges claims 1-5 as being unpatentable under
35 U.S.C. § 103(a) based on the combination of Gertz, Stewart, and
Morrow. Claim 2 depends from claim 1. Claims 3 and 4 are independent.
Claim 5 depends from claim 4. All five claims contain the “component
function” and “component code” limitations.
As discussed in the ’062 Decision, we give significant weight to the
testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are
not the same as the claimed component functions and that Gertz does not
describe any code (i.e., the claimed component code) that associates
component functions with driver functions, as claimed. ʼ062 Decision 22-
25. Petitioner does not provide sufficient evidence to rebut this testimony.
Thus, as described below, we are not persuaded that Petitioner has
established, by a preponderance of the evidence, that the combination of
Gertz, Stewart, and Morrow renders claims 1-5 unpatentable under 35
U.S.C. § 103(a).
Similar to Petitioner’s challenge to the patentability of claim 1 in
IPR2013-00062, Petitioner’s challenge here relies on Gertz for the claimed
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component function and component code features. Pet. 26, 30-31;
Pet. Reply 11-13. Stewart and Morrow are relied upon for additional
features of the claims. Because Petitioner’s challenge fails with respect to
the component function and component code features of the claims, we do
not need to address issues regarding Stewart and Morrow. Therefore, the
discussion below focuses on Gertz.
1. “component function”
The contentions presented on this claim feature are similar to those in
IPR2013-00062. Petitioner relies on Gertz’s “actions” to meet this claim
limitation. Pet. 26; Transcript 17:21-24. Patent Owner contends that
Gertz’s “actions” are not component functions. PO Resp. 19, 27 (citing
Stewart’s Declaration, Ex. 2013 ¶ 40).
For the reasons set forth in the ’062 Decision, we agree with Patent
Owner and determine that Petitioner has not persuasively explained why
information regarding the arrangement of control tasks defines an “action
carried out by a program or routine,” as required by a component function.
ʼ062 Decision 23. Thus, Petitioner has not established, by a preponderance
of the evidence, that Gertz teaches the claimed component functions.
2. “component code”
The contentions presented on this claim feature are similar to those in
IPR2013-00062. Petitioner relies on Gertz as disclosing this feature. Pet.
30-31. Again, Petitioner does not point to any specific element or feature
disclosed in Gertz as teaching the claimed component code and, instead,
explains that “ordinary artisans would recognize . . . that the configuration
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files that [Gertz] creates comprise software code that binds various
components together into a programming sequence (including Turing
equivalents) that have been the basis of computer programming for over a
century.” Pet. Reply 11. Patent Owner responds that Gertz’s configuration
files do not connect the control tasks and configurations to actions using
code. PO Resp. 29-30 (citing Stewart’s Declaration, Ex. 2013 ¶ 44).
For the reasons set forth in the ’062 Decision, we agree with Patent
Owner and determine that Petitioner has not persuasively explained why the
configuration information in Gertz includes an “action statement in a
computer language.” ʼ062 Decision 24-25. Thus, Petitioner has not
established, by a preponderance of the evidence, that Gertz teaches or
suggests the claimed component code.
E. Motion to Exclude
Patent Owner seeks to exclude certain “new” arguments made in
Petitioner’s Reply (Paper 45 at 2) and portions of Petitioner’s expert
testimony (Id. at 9). For example, Patent Owner alleges that the arguments
related to Gertz teaching the claimed core driver function as a result of the
cycle function in the method of a port-based object raises a new argument
(id. at 2), and that testimony of Petitioner’s expert, Dr. Papanikolopoulos,
advances a new position on driver functions (id. at 12-13). Because we have
not relied upon these arguments, they do not affect our decision. The issues
raised in Patent Owner’s Motion to Exclude are moot, and the Motion is,
therefore, dismissed.
Although we ultimately do not rely on these arguments for our
decision, we note that a motion to exclude evidence normally is not the
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proper vehicle for resolution of a dispute regarding reply arguments and
evidence exceeding the proper scope of a reply. A motion to exclude “must
identify the objections in the record.” 37 C.F.R. §42.64(c). In the Motion,
Patent Owner does not identify where in the record an objection originally
was made. If an issue arises regarding whether a reply argument or evidence
in support of a reply exceeds the scope of a proper reply, the parties should
contact the Board to discuss the issue.
F. Motion to Submit Supplemental Information
Patent Owner sought to file supplemental information (the McClung
deposition) that, in Patent Owner’s view, provides independent
corroboration of conception. Paper 63. An identical motion was filed in
IPR2013-00062 (Paper78). As Petitioner points out in opposing the motion,
the proffered materials do not corroborate diligence and, therefore, do not
overcome the defect in the proof on that issue. Paper 69, 5. For the reasons
discussed in the ʼ062 Decision, the motion is moot and is therefore
dismissed. ʼ062 Decision 12-13.

III. CONCLUSION
We conclude that Petitioner has failed to meet its burden of proof, by
a preponderance of the evidence, that claims 1-5 of the ʼ058 patent are
unpatentable under 35 U.S.C. § 103 as obvious over Gertz, Stewart, and
Morrow. This is a final written decision of the Board under 35 U.S.C.
§ 318(a). Parties to the proceeding seeking judicial review of the decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

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IV. ORDER
In consideration of the foregoing, it is
ORDERED that Petitioner has failed to prove by a preponderance of
the evidence that claims 1-5 of U.S. Patent No. 6,513,058 B2 are
unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude and
Motion to Submit Supplemental Information are dismissed.

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For PETITIONER:

Rick McLeod
Michael Jones
KLARQUIST SPARKMAN LLP
rick.mcleod@klarquist.com
michael.jones@klarquist.com

Steven Auvil
Squire Sanders (US) LLP
Steven.Auvil@squiresanders.com

For PATENT OWNER:

Richard Black
FOSTER PEPPER PLLC
blacr@foster.com

Richard S. Meyer
BOIES, SCHILLER & FLEXNER LLP
meyer@BSFLLP.com

Douglas R. Wilson
HEIM, PAYNE & CHORUSH LLP
dwilson@hpcllp.com