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The ABB, Inc. v. ROY-G-BIV Corp. series of Inter-Partes Review (IPR) proceedings are the first such proceedings where the Patent Trial and Appeal Board (PTAB) has held that all of the challenged claims are patentable.  In the related IPR proceedings, cases IPR 2013-00036, IPR2013-00282, IPR2013-00074, IPR2013-00063 and IPR2013-00286, the patents 8,073,557, 6,513,058 and 6,516,236 owned by ROY-G-BIV Corp. were challenged by ABB, Inc.

The patents at issue all concern similar technology, and relate to systems that facilitate the creation of hardware-independent motion control software.  Specifically, the patents describe a high-level motion control application programming interface (i.e. API) made of functions that are correlated with drive functions associated with controlling a mechanical device that generates movement based on  a control signal.

In each of these IPRs, the Patent Owner relied on the testimony of the author of one of the prior art references to support the Patent Owner’s contention that the prior art did not disclose certain features and as such the patents were not obvious over 35 U.S.C. § 103.  The  Board gave significant weight to the testimony of Patent Owner’s expert  because the Petitioner did not provide sufficient evidence to rebut his testimony, and both of Petitioner’s experts admitted that Patent Owner’s expert was an “intelligent and a reliable computer scientist.”

IPR2013-00062 & IPR2013-00282

In the Final Written Decision (Paper 84), the Board held that the Petitioner did not meet its burden to prove by a preponderance of the evidence that claims 1-10  of the ’236 patent are unpatentable.  The petitioner relied on a variety of prior art references, including Ph.D. dissertations from Dr. Gertz, Dr. Stewart and Dr. Morrow, all contemporaries of the inventor of the ’236 patent.

Antedating the Prior Art References

The Patent Owner, attempted to antedate Gertz and Morrow by providing declaration testimony of ROY-G-BIV’s chairman, chief technical officer, and co-inventor of the ’236 patent.  The Patent Owner provided draft specification documents, and time logs allegedly demonstrating that the ’236 patent was conceived prior to the earliest publication date for the references.

The Board remarked that the oral testimony of an inventor, standing alone, is insufficient to prove conception. The Board stated that corroborating evidence is required for the testimony of the Patent Owner, and that it must be independent of the inventor.  In rejecting Patent Owner’s attempt to antedate the prior art, the Board cited Price v. Symsek 988 F.2d 1187 (Fed. Cir. 1993), stating that (1) delay between event and trial, and (2) the interest of the corroborating witness are factors to determine the inventor’s credibility and whether the testimony has been corroborated adequately.  Because Patent Owner did not provide sufficient corroborating testimony, and given the time delay from the event in question, the Board held that the testimony presented by the Patent Owner was insufficient.(See Paper No. 84, pgs.  9-13).

Claim Construction – Patent Owner uses Author of Prior Art as Expert Witness

The Board only analyzed the terms ‘component function,’ and ‘component code’ because it held that these terms are determinative.  The Patent Owner presented testimony of Dr. Stewart, author of the Stewart prior art reference, that certain elements in the patent claims are not present in the prior art relied on by the petitioner.  Dr. Stewart concluded that the prior art references lacked four elements recited in the patent claims: (1) component function, (2) core driver function, (3) extended driver function and (4) component code.  (See Paper 84, Page 19).

The Board remarked that the testimony of the Petitioner’s experts, Dr. Voyles and Dr. Papanikolopoulos were deficient because their testimony, “never directly addressed the issue of whether the Gertz reference’s ‘actions’ are component functions,” and that their analysis was neither “persuasive or consistent with the patent specification.”  (See Paper 84 at pg. 20).  It appears that one reason why the expert testimony of the Patent Owner’s witness was found to be credible by the Board is because the expert witness authored of one of the Petitioner’s cited prior art references.  Furthermore, the Board stated that it gives significant weight to the testimony of Dr. Stewart because, first, the Petitioner did not provide sufficient evidence to rebut his testimony, and second, on cross examination, both Dr. Voyles and Dr. Papanikolopoulos admitted that Dr. Stewart was “intelligent and a reliable computer scientist,” and Dr. Papanikolopoulos had even written “multiple letters of recommendation ” for Dr. Stewart.  (See Paper No. 84, pg. 22).

Obviousness

The Board also held that the Petitioner did not explain persuasively why information regarding an arrangement of control tasks defines, “an action carried out by a program or routine,” as required by a component function.  Furthermore, the Board stated that Petitioner did not cite to anything in Gertz, or the testimony of the expert witnesses to explain why the configuration files in Gertz define “an action carried out by a routine.”  (Paper 84, pg. 23). With respect to ‘component code,’ the Board held that the Petitioner did not point to any specific teaching of Gertz as teaching the claimed component code.  The Board also remarked that the Petitioner’s expert testimony does not support Petitioner’s arguments and does not rebut Dr. Stewart’s testimony.  (See Paper 84, pgs. 24-25).

IPR2013-00074 & IPR2013-00286

In the Final Written Decision (Paper 80), the Board held that the Petitioner did not meet its burden to prove by a preponderance of the evidence that claims 16-25, 27 and 28 of the ’557 patent are unpatentable.   Because the technology of the ’557 patent is identical to that described in the ’062 decision, the Board’s decisions relies on it and the analysis therein.

Motion to Exclude

Patent Owner filed a motion seeking to exclude arguments made in the Petitioner’s Reply (Mot. 8) and portions of the Petitioner’s Expert Testimony.  The Patent Owner alleged that Petitioner’s expert, Dr. Papanikolopoulos advanced a new position on driver functions  The Board commented that the Patent Owner’s motion to exclude evidence was not the proper vehicle for resolution of a dispute regarding reply arguments and evidence exceeding the proper scope of reply. The Board noted that Patent Owner did not identify where in the record an objection was originally made,  as required by 37 C.F.R. § 42.64(c).  Furthermore, the Board stated that if an issue regarding whether a reply argument or evidence in support of a reply exceeds the scope, the parties should contact the board to discuss the issue. (See Paper No. 80, pg. 13).

IPR2013-00063

In the Final Written Decision (Paper 71), the Board held that the Petitioner did not meet its burden to prove by a preponderance of the evidence that claims 1-5 of the ’058 patent are unpatentable.   Because the technology of the ’058 patent is identical to that described in the ’062 decision, the Board’s decisions relies on the ’062 decision and the analysis therein.

The Board discussed the priority date of the ’058 patent in relation to two prior art references, namely, Gertz and Morrow.  The Patent Owner argued that the ’058 was conceived prior to the earliest date of publication for Gertz and Morrow. Just as it had found in the ’062 decision, the Board held that there was insufficient evidence from the Patent Owner to establish the invention date as prior to the publication date of Gertz and Morrow. (See Paper No. 71 pgs. 6-8).

At the final hearing, the Patent Owner challenged the January 1, 1995 publication date of the Morrow reference, directing the Board to a footnote in the Patent Owner’s Response stating stated that the Petitioner had not established a date of publication for Morrow. (Footnote 2, Patent Owner’s Response).  The Board noted that the Patent Owner’s challenge to Morrow was not timely.  Patent Owner should have provided a timely objection to the admissibility of the Morrow within ten days of the institution of trial, and then move to exclude the reference.  (See Paper No. 71 pg. 8).  Therefore, a Patent Owner seeking to dispute the publication date of a cited prior art reference, must timely make an objection on the record and a motion to exclude.