`
`Filed on behalf of ABB, Inc.
`
`By: Richard D. Mc Leod (Reg. No. 46,921)
`Rick.mcleod@klarquist.com
`Michael D. Jones (Reg. No. 41,879)
`michael.jones@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ABB, INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`
`____________
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`____________
`
`PETITIONER’S MOTION TO FILE
`SUPPLEMENTAL INFORMATION (37 C.F.R. § 42.123(a))
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`RELIEF REQUESTED ................................................................................... 1
`
`III. DISCUSSION .................................................................................................. 2
`
`A.
`
`THE MARKMAN BRIEFING IS RELEVANT TO AT
`LEAST ONE CLAIM AT ISSUE IN THIS PROCEEDING ............... 3
`
`
`
`
`
`
`
`i
`
`
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`LIST OF EXHIBITS
`
`Previously Filed
`
`1001 David W. Brown et al., U.S. Patent No. 6,516,236, “Motion Control
`Systems”, Issued February 4, 2003.
`
`1002 Gertz, M.W., A Visual Programming Environment for Real-Time Control
`Systems. Ph.D. dissertation, Carnegie Mellon University, Nov. 22, 1994
`(“Gertz”).
`
`1003 Microsoft Corporation, WOSA (Windows Open Services Architecture)
`Extensions for Financial Services, April 14, 1994 (“WOSA/XFS”).
`
`1004 Stewart, D.B., Real-Time Software Design and Analysis of Reconfigurable
`Multi-Sensor Based Systems. Ph.D. dissertation, Carnegie Mellon
`University, April 1, 1994 (“Stewart”).
`
`1005 Morrow, J. Dan; Nelson, Bradley J.; and Khosla, Pradeep, Vision and
`Force Driven Sensorimotor Primitives for Robotic Assembly Skills.
`Institute for Software Research, paper 574, January 1, 1995 (“Morrow”).
`
`1006 Microsoft Press, MS Windows 3.1 Device Driver Adaptation Guide, ©
`1991, Chs. 1-2, 4, 10-12 (“DDAG”).
`
`1007 Hall, Marty and Mayfield, James, Improving the Performance of AI
`Software: Payoffs and Pitfalls in Using Automatic Memoization.
`Proceedings of Sixth International Symposium on Artificial Intelligence,
`Monterrey, Mexico, September 1993 (“Hall”).
`
`1008 Michael Wright et al., U.S. Patent No. 5,453,933, “CNC Control System,”
`issued Sept. 26, 1995 (“Wright”).
`
`1009 David B. Stewart et al., The Chimera II Real-Time Operating System for
`Advanced Sensor-Based Control Applications. Institute for Software
`Research, paper 613, January 1, 1992 (“Chimera II”).
`
`1010 Cashin, J., WOSA: Windows Open Services Architecture, January 11,
`1994 (“Cashin”).
`
`1011 Kevin Holloway, Motion Software Heads Toward Friendlier User
`Environments, published at www.roygbiv.com/XMCreview1.htm, January
`
`ii
`
`
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`21, 1997 (“Holloway”).
`
`1012 Plaintiff Roy-G-Biv Corporation’s Opening Markman Brief, Roy-G-Biv
`Corp., v. Fanuc Ltd., et al. (E.D.Tex., Nov. 21, 2008) (CASE NO. 2:07-
`CV-0418-DF-CE) (“RGB Markman Brief”).
`
`1013 Claim Construction Order, Roy-G-Biv Corp., v. Fanuc Ltd., et al.
`(E.D.Tex., Nov. 21, 2008) (CASE NO. 2:07-CV-0418-DF-CE)
`(“Markman Order”).
`
`1014 U.S. Patent No. 5,881,230, “Method and System for Remote Automation
`of Object Oriented Applications,” issued Mar. 9, 1999 (“Christensen”).
`
`1015 U.S. Patent No. 5,691,897, “Motion Control Systems,” issued Nov. 25,
`1997 (“the ’897 Patent”).
`
`1016 U.S. Patent No. 5,867,385, “Motion Control Systems,” issued Feb. 2, 1999
`(“the 385 Patent”).
`
`1017
`
`Jacob Tal, Step by Step Design of Motion Control Systems, Chapters 9 and
`10, Galil Motion Control, Inc., 1994 (“Tal”).
`
`1018 Hewlett Packard, Matrix/Plotter Programming, HP 9831A Desktop
`Computer, 1977 (“HP77”).
`
`1019 Hewlett Packard, Interface and Programming Manual, HP 7550 Graphics
`Plotter, 3rd ed., 1986 (“HP86”).
`
`1020 Hewlett Packard, User’s Guide, HP 7550 Plus Plotter, 1990 (“HP90”)
`
`1021 Martin L. Stone et al., An Intelligent Plotter for High-Throughput,
`Unattended Operation, Hewlett-Packard Journal, April, 1985 (“HP85”)
`
`1022 Preliminary Infringement Contentions, ROY-G-BIV Corp., v. ABB, Ltd.
`et al. (E.D.Tex., Sept. 14, 2012) (CASE NO. 6:11-CV-00622-LED)
`(“RGB PIC”).
`
`1023 Preliminary Infringement Contentions, Exhibit B, ROY-G-BIV Corp., v.
`ABB, Ltd. et al. (E.D.Tex., Sept. 14, 2012) (CASE NO. 6:11-CV-00622-
`LED) (“RGB PIC, Ex. B”).
`
`1024 U.S. Patent No. 6,516,236, Appendix A.
`
`iii
`
`
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`1025 Excerpt of RGB Design Document - 3.2 Project Evolution With
`Compumotor Influence.
`
`1026 RGB’s April 26, 2013 Letter Brief to the District Court re Indefiniteness
`Dkt #150-1.
`
`
`
`Currently Filed
`
`1027 RGB Corporation’s Opening Markman Brief, Dkt #151
`
`1028 Defendants’ Joint Claim Construction Brief, Dkt #157
`
`1029 RGB Corporation’s Reply Markman Brief, Dkt #167
`
`
`
`
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`On April 18, 2013, Trial was instituted against claims 1-4 and 8-10 of the
`
`’236 Patent. Prior to May 18, 2013, the undersigned requested authorization to file
`
`supplemental information related to Markman briefing in the concurrent litigation.
`
`This issue was discussed at the Initial Scheduling Conference convened by the
`
`Board, wherein it was noted that RGB Corporation’s Reply Markman Brief was
`
`expected to be filed on May 24, 2013. RGB’s Opening Markman Briefing was
`
`filed on April 26, 2013. Accordingly, the Markman Briefing was not available to
`
`the Petitioner when the petition was filed in November 2012, or to the Board prior
`
`to the institution of Trial.
`
`On May 23, 2013, the Board authorized the filing of the instant motion to
`
`file supplemental information, specifically related to claim construction in the
`
`concurrent litigation.
`
`The district court has scheduled a Markman hearing for June 19, 2013, and
`
`the district court’s construction of claim terms is expected long before Trial in this
`
`proceeding.
`
`II. RELIEF REQUESTED
`
`ABB asks the Board to enter the following documents into the record:
`
`Exh. 1027 – RGB Corporation’s Opening Markman Brief
`
`Exh. 1028 – Defendants’ Joint Claim Construction Brief
`
`Petitioner’s Motion to File Supplemental Information
`
`Page 1
`
`
`
`Exh. 1029 – RGB Corporation’s Reply Markman Brief
`
`ABB further asks for leave to submit the district court’s Markman Order
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`(when issued) without further motion practice.
`
`
`
`III. DISCUSSION
`
`Claim construction in the course of litigation is often relevant to an
`
`administrative review of patentability. The Supreme Court has long held that a
`
`patent owner may not take advantage of a broader claim interpretation to capture
`
`an alleged infringer, while advancing a narrower interpretation to avoid
`
`invalidating prior art. Thus, the district courts apply the same construction for
`
`deciding both infringement and invalidity.
`
`Logically, the patent owner may not obtain the benefit of a narrower
`
`construction in this proceeding than it has advanced in the litigation.
`
`As a corollary, prior prosecution arguments (even if successful in the past)
`
`have little or no weight where there has been no clear disclaimer of claim scope,
`
`such as where a patent owner actively repudiates its prior prosecution argument(s)
`
`by seeking a claim interpretations that do not honor its prior arguments for
`
`patentability. See e.g., Exh. 1029, RGB’s Markman Reply Brief at 1(asserting that
`
`prosecution history disclaimers discussed in Exh. 1028, Defendants’ Joint Claim
`
`Construction Brief are non-existent).
`
`Petitioner’s Motion to File Supplemental Information
`
`Page 2
`
`
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`Additionally, RGB’s Markman briefing establishes that it regards the
`
`material in Appendix A and B as the preferred embodiment in the specification
`
`(Exh. 1029, RGB’s Reply Brief at 3-4), and not merely a “specification for a
`
`product.” (Cf. Board Decision, Paper 28 at 8.)
`
`
`
`A. THE MARKMAN BRIEFING IS RELEVANT TO AT
`LEAST ONE CLAIM AT ISSUE IN THIS PROCEEDING
`
`Trial has been instituted against claims 1-4 and 8-10. These claims include
`
`many of the claim terms at issue in the Markman Briefing.
`
`In this proceeding, the Board has construed the claim term “motion control
`
`device” to include any hardware device with a controller and a mechanical system
`
`that translates signals generated by the controller into the movement of an object.
`
`(Paper 23 at 11.)
`
`By comparison, the Patent Owner seeks an even broader construction in the
`
`litigation: “a device comprising a controller and a mechanical system.” (Ex. 1027,
`
`RGB’s Opening Markman Brief at 16).
`
`For many other claim terms, the Board has not expressly adopted a
`
`construction as yet. However, should the Board find it necessary to construe other
`
`terms during the course of this proceeding, both RGB’s proposed constructions and
`
`Petitioner’s Motion to File Supplemental Information
`
`Page 3
`
`
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`whatever constructions are ultimately adopted by the district court are relevant to
`
`the Board’s consideration.
`
`Accordingly, these documents are material to these proceedings and should
`
`be part of the record. Further, the district court’s claim construction order is likely
`
`to be material to these proceedings, and entry of this document should be pre-
`
`authorized in the interest of efficiency and avoiding further motion practice.
`
`
`
`Dated: May 30, 2013
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`Michael D. Jones (Reg. No. 41,879)
`michael.jones@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`Petitioner’s Motion to File Supplemental Information
`
`Page 4
`
`
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of this Petitioner’s Motion
`
`to File Supplemental Information was served on counsel of record for the ’236
`
`Patent owner:
`
`RICHARD T. BLACK
`JOEL B. ARB
`FOSTER PEPPER PLLC
`1111 THIRD AVENUE, SUITE 3400
`SEATTLE, WASHINGTON 98101-3299
`TEL: (206) 447-6251
`FAX: (206) 749-2062
`BLACR@FOSTER.COM
`ARDJO@FOSTER.COM
`
`
`via EXPRESS MAIL, on May 30, 2013.
`
`By /Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
