ATTORNEY-CLIENT PRIVILEGED
`
`blacr@foster.com
`
`Registration No.: 40514
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`ABB, INC.
`
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`
`Patent Owner
`
`_____________________________
`
`Trial No.: IPR2013-00062
`
`U.S. Patent No. 6,516,236B1
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`MOTION CONTROL SYSTEMS
`
`_____________________________
`
`Patent Owner ROY-G-BIV CORPORATION’S
`
`RESPONSE UNDER 37 CFR § 42.120
`
`
`
`blacr@foster.com
`
`Registration No.: 40514
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`ABB, INC.
`
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`
`Patent Owner
`
`_____________________________
`
`Trial No.: IPR2013-00062
`
`U.S. Patent No. 6,516,236B1
`
`MOTION CONTROL SYSTEMS
`
`_____________________________
`
`Patent Owner ROY-G-BIV CORPORATION’S
`
`RESPONSE UNDER 37 CFR § 42.120
`
`
`
`Patent Owner Response
`
`IPR 2013-00062
`
`Table of Contents
`
`A.
`
`Statement of Material Facts in Dispute............................................... iii
`
`II.
`
`Introduction......................................................................................................1
`
`A.
`
`B.
`
`C.
`
`Statement of Relief Requested ..............................................................1
`
`Summary of Patent Owner’s Argument................................................1
`
`Technology Background and the Inventors’ Solution ..........................4
`
`III. Gertz and Morrow Are Not Prior Art ..............................................................5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
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`Priority Date for Gertz and Morrow......................................................6
`
`The Brown Declaration .........................................................................6
`
`The Conception Date of the Invention Claimed in the ’236
`Patent. ....................................................................................................8
`
`The Inventors Constructively Reduced to Practice the
`Inventions Claimed in the ’236 Patent by May 30, 1995....................10
`
`The Inventors Exercised Reasonable Diligence to Reduce to
`Practice the Invention Claimed in the ’236 Patent..............................10
`
`The Claims of the ’236 Patent Are Entitled to an Invention Date
`Before Gertz and Morrow. ..................................................................12
`
`IV. Broadest Reasonable Interpretation of Key Claim Terms.............................13
`
`A.
`
`B.
`
`C.
`
`D.
`
`“Primitive Operations”........................................................................17
`
`“Core Driver Functions .......................................................................18
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`“Component Functions”......................................................................19
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`“Component Code” .............................................................................19
`
`i
`
`
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`Patent Owner Response
`
`IPR 2013-00062
`
`V.
`
`Even if Gertz and Morrow Were Prior Art, the Proposed Combination
`Does Not Teach All Limitations of the Claims.............................................20
`
`A.
`
`B.
`
`Legal Standards ...................................................................................20
`
`Summary of the Decision Instituting Inter Partes Review..................21
`
`VI. Key Limitations in Claim 1 of the ’236 Patent Missing from the
`References......................................................................................................23
`
`A.
`
`B.
`
`C.
`
`The References Fail to Disclose “Component Functions,”
`“Driver Functions,” “Core Driver Functions,” and “Component
`Code”...................................................................................................24
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`The References Do Not Teach “Component Functions”....................26
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`The References Do Not Teach “Driver Functions” ............................27
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`D. Gertz Does Not Teach “Core Driver Functions” ................................27
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`E.
`
`F.
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`The References Do Not Teach “Component Code” ...........................28
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`Gertz Does Not Teach “Primitive Operations”...................................29
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`VII. Even If Gertz and Morrow Were Prior Art and Even If They Taught
`“Functions” and “Component Code,” They Cannot Be Combined as
`Suggested in the Petition ...............................................................................30
`
`A.
`
`B.
`
`The Evidence in the Petition is Legally Deficient ..............................30
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`There Is No Obvious Way to Combine Gertz and Morrow................31
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`VIII. CONCLUSION..............................................................................................32
`
`
`
`ii
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`
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`Patent Owner Response
`
`IPR 2013-00062
`
`
`A.
`
`Statement of Material Facts in Dispute
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`Petitioner did not submit statements of material facts in its petitions for inter
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`partes review. Accordingly, no response is due pursuant to 37 C.F.R. §42.23(a),
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`and no facts are admitted.
`
`
`
`iii
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`
`
`
`
`II.
`
`Introduction
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`Patent Owner ROY-G-BIV Corporation (hereafter “Patent Owner”) hereby
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`respectfully submits this Patent Owner Response. This filing is timely under
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`35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.120 because it was filed by July 18,
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`2013.
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`“In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. § 316(e). The Petition’s proposition of unpatentability
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`fails to meet that burden with respect to any of the claims of U.S. Patent No.
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`6,516,236 (“the ’236 Patent”).
`
`A.
`
`Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 316, Patent Owner respectfully requests that the
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`Board find that originally issued and previously re-examined claims 1-4 and 8-10
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`of the ’236 Patent are not invalid and, specifically, that the claims are patentable in
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`view of the sole proposed ground of unpatentability under consideration.
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`B.
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`Summary of Patent Owner’s Argument
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`No proposed ground of unpatentability is premised on anticipation. Instead,
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`the sole ground of unpatentability for claims 1-4 and 8-10 is premised on
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`obviousness based upon the combination of three different references: (a) M.W.
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`1
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`
`
`
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`Gertz, A Visual Programming Environment for Real-Time Control Systems (“the
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`Gertz Reference” or “Gertz”); (b) D.B. Stewart, Real-Time Software Design and
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`Analysis of Reconfigurable Multi-Sensor Based Systems (“the Stewart Reference”
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`or “Stewart”); and (c) J. Dan Morrow, Vision and Force Driven Sensorimotor
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`Primitives for Robotic Assembly Skills (“the Morrow Reference” or “Morrow”)
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`(collectively, “the References”). This proposed ground of unpatentability fails for
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`three independent reasons.
`
`First, two of the three cited references are not even prior art to the claims of
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`the ’236 Patent. As shown in the Declaration of David W. Brown Under 37 CFR
`
`§ 42.53 Concerning U.S. Patent No. 6,516,236, attached hereto as Exhibit 2010
`
`(“the Brown Declaration”) filed herewith, the inventors conceived of the invention
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`recited in claims 1-4 and 8-10 of the ’236 Patent before the publication date of
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`Gertz and Morrow, and used reasonable diligence to reduce the invention to
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`practice constructively by the filing of U.S. Patent Application No. 08/454,736,
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`which is the earliest priority application of the ’236 Patent and which is referred to
`
`herein (and in the Brown Declaration) as the “Priority Application.” Accordingly,
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`the Gertz and Morrow references are not prior art under § 102(a) as to independent
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`claim 1 or its dependent claims 2-4 and 8-10. Accordingly, the sole ground of
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`2
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`
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`
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`unpatentability—which requires that all three references be prior art—necessarily
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`fails.
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`Second, and even assuming Gertz and Morrow were prior art and could have
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`been combined with Stewart as alleged by the Petitioner, the proposed combination
`
`of these references nonetheless fails to teach each and every limitation as recited
`
`by the respective claims of the ’236 Patent. In particular, and as set forth in the
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`Declaration of David W. Stewart under 37 CFR § 42.53 Concerning U.S. Patent
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`No. 6,516,236 (“the Stewart Declaration” or “Stewart Decl.”) filed herewith, the
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`primary reference cited in the Petition (i.e., Gertz) lacks at least the following
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`limitations present in each of the claims of the ’236 Patent: (1) “primitive
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`operations”; (2) “core driver functions”; (3) “driver functions”; (4) “component
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`functions”; and (5) “component code.” Even if Morrow teaches “primitive
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`operations,” neither Stewart nor Morrow (the secondary references relied on in the
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`Petition) teaches or suggests the other missing claim limitations.
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`Third, the three alleged prior art references could not have been combined as
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`alleged by the Petitioner. At the outset, the Petitioner does not articulate any
`
`reasoning, including the rational underpinning, for the proposed combination
`
`necessary to support a legal conclusion of obviousness under current legal
`
`3
`
`
`
`
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`precedent and PTO guidelines. Instead, the Petitioner’s proposed obviousness
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`ground is based solely on “mere conclusory statements” (KSR, 550 U.S. at 418
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`(quoting Kahn, 441 F.3d at 988)) and fails to present any cogent reasoning as to
`
`why a person of ordinary skill in the art would have or even could have modified
`
`or combined the cited documents in the manner recited by the claims of the ’236
`
`Patent. These types of allegations fail to provide the specificity required by
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`37 C.F.R. ¶ 42.104(b)(5) and for this additional reason the sole ground of
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`unpatentability should be rejected.
`
`For the foregoing reasons, the Petition’s sole ground for unpatentability,
`
`which relies upon the proposed combination of Gertz, Stewart and Morrow, is
`
`legally deficient. See 37 C.F.R. § 42.104(b)(5); KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`C. Technology Background and the Inventors’ Solution
`A detailed description of the technology background and the inventors’
`
`solution was provided in the Patent Owner’s Preliminary Response filed on
`
`February 26, 2013. (Preliminary Response at 5-12). In brief, the ’236 Patent
`
`teaches a three-tier software system in which: (1) the application program calls a
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`component function, which “corresponds to a motion control operation,” on a
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`middleware layer known as the “motion control component”; (2) the component
`
`4
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`
`
`
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`code in the motion control component associates at least some component
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`functions with driver functions; and (3) the driver function(s) are called on the
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`driver, resulting in the driver code in the driver issuing one or more appropriate
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`control command(s) to the selected motion control device to achieve the motion
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`control operation requested by the application program.
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`The claimed component functions and driver functions that enable
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`communication between the application program, motion control component and
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`drivers are important. These claimed functions produce numerous advantages,
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`including enabling application programs to be designed irrespective of the motion
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`control devices they operate, and facilitating interoperability and standardization.
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`’236 Patent at 3:27-42. These claimed functions, and the component code that
`
`associates them, are absent from the References.
`
`III. Gertz and Morrow Are Not Prior Art
`Gertz and Morrow are not prior art to the claims of the ’236 Patent under
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`35 U.S.C. § 102(a) because the inventors conceived of their invention prior to the
`
`publication date of those references, and exercised reasonable diligence during the
`
`legally relevant period (i.e., from a time just prior to their earliest publication date
`
`until the invention was constructively reduced to practice through the filing of the
`
`Priority Application), as established by the Brown Declaration. The Brown
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`5
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`
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`Declaration and its corroborating evidence clearly establish that Gertz and Morrow
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`are not prior art, and the Petition should be dismissed on this basis alone.
`
`A.
`
`Priority Date for Gertz and Morrow
`
`Gertz is dated November 22, 1994, and Morrow is dated January 1, 1995.
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`The Petition certainly identifies no basis on which those references could be
`
`entitled to a publication date earlier than November 22, 1994. Therefore, to
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`antedate both references, the Patent Owner need only show conception prior to
`
`November 22, 1994 and reasonable diligence from November 21, 1994 until the
`
`reduction to practice – i.e. the constructive reduction to practice evidenced by the
`
`filing of the Priority Application on March 30, 1995. Under “[35 U.S.C. ] 102(a), a
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`document is prior art only when published before the invention date” of the claims
`
`of an issued patent. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir.
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`1996). In determining the date of invention, courts have looked to 35 U.S.C.
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`102(g) for the “basic rule for determining priority.” Id. Under 102(g), priority of
`
`invention goes to the party that was “the first to conceive the invention” and which
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`“exercised reasonable diligence in later reducing that invention to practice.” Id.
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`(citations omitted).
`
`B.
`
`The Brown Declaration
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`Pursuant to 37 C.F.R. § 42.53, Patent Owner submits the Brown Declaration
`
`6
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`
`
`
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`to establish an invention date that precedes the effective dates of the Gertz and
`
`Morrow references. The Brown Declaration clearly demonstrates conception of the
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`claimed invention in the ’236 Patent no later than July 24 1994, well before the
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`publication dates of both Gertz and Morrow. (Brown Decl. ¶¶6, 8, 10, 12) The
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`Brown Declaration also clearly demonstrates reasonable diligence in reducing the
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`claimed invention to practice from November 21, 1994 (i.e., just prior to the
`
`earliest possible effective date of Gertz and Morrow) through constructive
`
`reduction to practice on May 30, 1995 (i.e., the filing date of the Priority
`
`Application (Brown Decl. ¶¶6, 20, 21) Although the Patent Owner relies on a
`
`constructive reduction to practice, RGB’s activities furthering an actual reduction
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`to practice are also relevant when determining diligence in reducing the invention
`
`to practice. See Scott v. Koyama, 281 F. 3d 1243, 1248-49 (Fed. Cir. 2002 )
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`(“[E]fforts toward actual reduction to practice are relevant to diligence until
`
`constructive reduction to practice.”). Because the inventors conceived of the
`
`claimed invention before November 21, 1994 and exercised reasonable diligence
`
`during the legally relevant period, neither Gertz nor Morrow are prior art and
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`cannot be considered as prior art in an obviousness combination under 35 U.S.C. ¶
`
`103(a).
`
`7
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`
`
`
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`C. The Conception Date of the Invention Claimed in the ’236 Patent.
`Dave Brown and Jay Clark conceived of the invention recited in the ’236
`
`Patent no later than July 24, 1994. As shown in the Brown Declaration, by that
`
`time the inventors had developed the key conceptual aspects of the “XMC
`
`Project,” which resulted in RGB’s commercial software embodiment of the ’236
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`Patent. (Brown Decl. ¶10, 12, 15-16.) By July 24, 1994 the inventors had already
`
`prepared two specifications for the XMC Project: (1) a Design Specification; and
`
`(2) an Analysis Specification. (See Brown Declaration, Exhibits 2010-1 and 2010-
`
`2.) As shown in the Brown Declaration, the Design and Analysis Specifications
`
`describe a software system and process that embodies all the limitations of claims
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`1-4 and 8-10 of the ’236 Patent, thereby establishing conception of the relevant
`
`claims no later than July 24, 1994, and certainly well before November 21, 1994.
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`(Brown Decl. ¶¶ 15-16.)
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`Specifically, the Brown Declaration maps the corroborative evidence in the
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`July 1994 Design and Analysis Specifications to claims 1-4 and 8-10 of the ’236
`
`Patent, identifies representative facts in each of those Specifications, and
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`demonstrates that all of the relevant claim limitations are supported by the
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`Specifications, alone or in combination with the declaratory statements in the
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`Brown Declaration. In addition
`
`to
`
`the July 1994 Design and Analysis
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`8
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`
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`
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`Specifications, the Brown Declaration provides other evidence that further
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`corroborates the conception date, including Dave Brown’s relevant time logs. This
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`corroborative evidence also shows that the conception date for the inventions
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`claimed in the ’236 Patent precedes November 22, 1994, the earliest possible
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`effective date for the Gertz and Morrow1 references.
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`Moreover, the Design and Analysis Specifications demonstrate that by at
`
`least July 24, 1994, the invention was definite, permanent, and complete in the
`
`inventors’ minds such that only ordinary skill was required reduce the invention to
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`practice thereafter. (Brown Decl.); see also Burroughs Wellcome Co. v. Barr Labs.,
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`Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). This is further demonstrated by the
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`constructive reduction to practice that occurred less than a year later, which was
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`done in conjunction with work on the actual reduction to practice. (Brown Decl.
`
`¶¶20, 21)
`
`
`1 Morrow is even later, dated February 1995, well after the inventors’ conception
`date.
`
`9
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`
`
`
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`D. The Inventors Constructively Reduced to Practice the Inventions
`Claimed in the ’236 Patent by May 30, 1995.
`
`The Brown Declaration also establishes that the Priority Application was a
`
`constructive reduction to practice of claims 1-4 and 8-10 of the ’236 Patent by
`
`proving that each limitation of claims 1-4 and 8-10 of the ’236 Patent is supported
`
`in the Priority Application, which was filed on May 30, 1995. (Brown Decl. ¶¶ 6,
`
`8, 16-17. ) The Brown Declaration maps the Priority Application’s teachings to
`
`claims 1-4 and 8-10 of the ’236 Patent, identifies the facts in the Priority
`
`Application relied upon by Patent Owner, and demonstrates that all of the claim
`
`limitations are supported by the Priority Application. (Id. ¶¶ 6, 8, 16-17¶)
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`Accordingly, claims 1-4 and 8-10 of the ’236 Patent were constructively reduced to
`
`practice on May 30, 1995, when the Priority Application was filed. Solvay S.A. v.
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`Honeywell Int’l, Inc., 622 F.3d 1367, 1376 (Fed. Cir. 2010) (“[C]onstructive
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`reduction to practice occurs when a patent application on the claimed invention is
`
`filed.”). See also Frazer v. Schlegel, 498 F.3d 1283, 1288 (Fed. Cir. 2007).
`
`E.
`
`The Inventors Exercised Reasonable Diligence to Reduce to Practice the
`Invention Claimed in the ’236 Patent.
`
`The Brown Declaration includes detailed time logs and a summary of the
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`work performed towards actually reducing to practice and constructively reducing
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`to practice the invention claimed in the ’236 Patent during each work week from
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`10
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`
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`November 20, 1994 through May 30, 1995. (Brown Decl. ¶¶ 6, 7, 8, 20, 21¶.) The
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`activities relied upon to establish reasonable diligence during the relevant period
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`were undertaken by RGB, including co-inventor Dave Brown, who had primary
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`responsibility for technical development and patenting of the XMC software
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`project. (Id. ¶ 11, 20-21.)
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`During this time period, which is slightly greater than six months, Mr.
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`Brown worked a total of approximately 1,453 hours, and approximately 1,049 of
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`these hours were spent on work related to the XMC project. (Id. ¶20.) Percentage
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`wise, he spent about 72% of his time on work related to the XMC project. (Id. ¶
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`20.) On a week-by-week basis, the 1,049 hours equate to approximately 38 hours
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`per week, and the 1,453 total hours equate to approximately 53 hours per week.
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`(Id. ¶ 20.) The summary of Mr. Brown’s major activities on the XMC Project on a
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`weekly basis and the time logs attached to his Declaration show substantial and
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`continuous activity towards reduction to practice (without any significant gaps).
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`“Diligence can be shown by evidence of activity aimed at reducing the invention to
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`practice, either actually or constructively, and/or by legally adequate excuses for
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`inactivity.” Bai et al. v. Burlingham, Senior Party, 2004 WL 4981702, at *21
`
`(BPAI Feb, 19, 2004). The level of activity in this case far exceeds that required
`
`11
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`
`
`
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`to show reasonable diligence through the entire critical period. See Monsanto Co.
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`v Mycogen Plant Sci., Inc., 261 F. 3d 1356, 1369 (Fed, Cir. 2001); cf. In re Meyer
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`Mfg. Corp., 411 F. App’x 316, 319 (Fed. Cir. 2010) (finding no reasonable
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`diligence due to “an unexplained gap of just over two months”).
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`Mr. Brown worked nearly every day on the invention, devoting substantial
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`effort to reducing it to practice beyond that required under well-established case
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`law. See Griffith v. Kanamaru, 816 F.2d 624, 626, 2 USPQ2d 1361, 1362 (Fed.
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`Cir. 1987 (observing that courts have found that inventors exercised due diligence
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`even where (unlike Brown here) the inventor delayed substantially (up to three
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`weeks) in reducing the invention to practice) (citing Reed v. Tornqvist, 436 F.2d
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`501, 168 USPQ 462 (CCPA 1971) and citing Courson v. O'Connor, 227 F. 890,
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`894 (7th Cir. 1915) (“exercise of reasonable diligence . . . does not require an
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`inventor to devote his entire time thereto, or to abandon his ordinary means of
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`livelihood”)) . Accordingly, there is no doubt that reasonable diligence during the
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`relevant time period exists.
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`F.
`
`The Claims of the ’236 Patent Are Entitled to an Invention Date Before
`Gertz and Morrow.
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`The Brown Declaration, along with the corroborative evidence included in
`
`the exhibits thereto, show that the inventors conceived of the invention claimed in
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`12
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`
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`claims 1-4 and 8-10 of the ’236 Patent—and very clearly possessed the “basic
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`invention” or the “heart of the invention”—well before November 21, 1994 and
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`then diligently worked to actually and constructively reduce the claimed invention
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`to practice until the filing date of the Priority Application on May 30, 1995. See Ex
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`Parte Reexamination Control No. 90/007,997 for U.S. Patent No. 6,513,042
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`Test.com citing In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974).
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`Because the invention date of the ’236 Patent predates each of Gertz and
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`Morrow, those two references are not prior art under § 102(a) or § 103(a), and the
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`proposed ground of rejection, which relies on all three references qualifying as
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`prior art including Gertz and Morrow, fails. However, as explained further below,
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`even if these references qualified as prior art—and they clearly do not—they do
`
`not teach all of the limitations of the claims, and they would not have been obvious
`
`to combine, for the reasons detailed below.
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`IV. Broadest Reasonable Interpretation of Key Claim Terms
`Claim 1 of the ’236 Patent is the only independent claim and recites “driver
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`functions” (including “core driver functions” and “extended driver functions”),
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`“component functions,” and “component code [that] associates at least some of the
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`component functions with at least some of the driver functions,” which are inter-
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`related as set forth in the claim reproduced below:
`
`13
`
`
`
`1. A system for generating a sequence of control commands 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;
`
` set of component functions;
`
` a
`
`
`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
`
`14
`
`
`
`
`
`
`each software driver is associated with one motion control
`device in the group of supported motion control devices,
`
`each software driver comprises driver code for 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;
`
`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.
`
`
`
`
`’236 Patent Claim 1 (emphasis added).
`
`15
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`
`
`
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`As set forth in claim 1, the inventors conceived and developed a unique
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`software architecture in which an application program, an intermediate software
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`layer (the “motion control component”) and a set of controller-specific software
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`drivers work together to create hardware dependent control commands that can be
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`understood by a selected motion control device based upon hardware independent
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`“component functions” invoked by the application program. When an application
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`program invokes component functions corresponding to particular motion control
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`operations, the software system generates appropriate control command(s) to
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`achieve those motion control operations on the selected motion control device.
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`As described in the ‘236 Patent specification, the application program (the
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`upper software layer) invokes the component functions on the motion control
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`component (the intermediate software layer), which comprises component code.
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`The component code in the motion control component associates “component
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`functions” with corresponding “driver functions” in the different software drivers
`
`(the lower software layer). The software drivers, in turn, include hardware
`
`dependent driver code corresponding to the different driver functions for
`
`generating the appropriate control commands.
`
`16
`
`
`
`
`
`Patent Owner has submitted in this proceeding the Joint Claim Construction
`
`Statement (“JCCS”) setting forth its proposed claim constructions that was filed in
`
`the concurrent district court litigation. Exhibit 2009. Nothing herein, or in the
`
`attached Brown and Stewart Declarations, should be interpreted to derogate or
`
`deviate from those previously proposed constructions.
`
`A.
`
`“Primitive Operations”
`
`The Board has already (twice) correctly determined that a primitive
`
`operation is “an operation necessary for motion control and that cannot be
`
`simulated using a combination of other motion control operations.” Institution
`
`Decision (“I.D.”) at 7-8, R.D. at 3. Therefore, the Patent Owner will not repeat the
`
`arguments of record in support of that correct conclusion here. See Patent Owner’s
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`Preliminary Response at 2.
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`Moreover, the Petitioner’s position for an alternative construction of this
`
`term is inconsistent with the position it took in the concurrent litigation.
`
`Specifically, the Petitioner urged the Board that “primitive operation” includes “an
`
`abstract motion control operation corresponding to a driver function which is not
`
`represented as the combination of other driver functions.” Petition at 19. However,
`
`in the concurrent litigation, the Petitioner agreed with Patent Owner and this Board
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`that “primitive operation” means “motion control operations, such as GET
`
`17
`
`
`
`
`
`POSITION and MOVE RELATIVE, necessary for motion control, which cannot
`
`be simulated using a combination of other motion control operations.” Exhibit
`
`2009 at A (Agreed construction (JCCS)) (emphasis added). The Petitioner cannot
`
`have it both ways.
`
`B.
`
`“Core Driver Functions
`
`Similarly, the Board has already construed core driver functions to be
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`“software associated with one of the primitive operations.” I.D. at 9-10, Rehearing
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`Decision (“R.D.”) at 9. Patent Owner agrees that an association exists between
`
`“core driver functions” and “primitive operations.” Presumably, the Board did not
`
`intend to eliminate the requirement that a “core driver function” be a software
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`“function.” After all, the term “function” appears in the claim term itself.
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`Moreover, although the Patent Owner and Petitioner disagree regarding the precise
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`construction of the term “core driver function,” they both agree that a “core driver
`
`function” is a “function.” Exhibit 2009 at B. In any event, the Patent Owner will
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`not repeat the arguments of record in support of its construction. (Patent Owner’s
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`Preliminary Response at 16.) The recognition that a “core driver function” is a
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`“function” is extremely important because the cited references teach “port-based
`
`objects,” which are not themselves “functions.”
`
`18
`
`
`
`
`
`C.
`
`“Component Functions”
`
`In the concurrent litigation, both parties have agreed that a “component
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`function” is “a hardware independent function that corresponds to a motion control
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`operation.” Exhibit 2009 at A (emphasis added). Here, the Petitioner urges a
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`different construction for component function than it has advanced in litigation:
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`“BRI: Hardware-independent functions that are capable of defining a motion
`
`sequence.” Petition at 22. Nevertheless, Petitioner does concede that a “component
`
`function” must be a “function.” Again, this recognition is important because, as
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`will be explained further below, the “actions” in the Gertz reference alleged to be
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`“component functions” are in fact not even “functions.” Indeed, none of the
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`references relied on by the Petitioner teaches “component functions” as disclosed
`
`and claimed in the ’236 Patent.
`
`D.
`
`“Component Code”
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`In the ’236 Patent, “component code” is located in the “motion control
`
`component” and creates a relationship between component functions and driver
`
`functions. Claim 1 of the ’236 Patent (the sole independent claim in the patent)
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`recites that “the component code associates at least some of the component
`
`functions with at least some of the driver functions.” Ex. 2 at 48:29-32. Id. at 7:56-
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`8:3; 8:35-38 and 9:27-33. Consistent with this, the Petition proposes: “BRI: By the
`
`19
`
`
`
`
`
`plain meaning of the claim language, component code is computer code which
`
`associates at least some of the component functions with at least some of the driver
`
`functions.” Petition, page 22. A fortiori, if the cited references fail to teach
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`“component functions” and “driver functions,” they fail to teach code that
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`associates those functions. Moreover, as explained further below, there is no
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`“code” in Gertz that associates the alleged component functions (i.e., actions) with
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`the alleged driver functions (i.e., configurations and control tasks). Accordingly,
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`even if actions, configurations and control tasks were “functions” (and they are
`
`not), there is no “code” that associates them.
`
`V. Even if Gertz and Morrow Were Prior Art, the Proposed Combination
`Does Not Teach All Limitations of the Claims
`A. Legal Standards
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. § 316(e). Strict insistence on this burden is especially
`
`appropriate in this case, because the ’236 Patent was not only carefully examined
`
`before grant, but unusually thoroughly scrutinized in inter partes reexamination,
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`and already examined in view of Stewart’s Chimera system at issue in this case.
`
`20
`
`
`
`
`
`B.
`
`Summary of the Decision Instituting Inter Partes Review
`
`The original Petition asserted that Gertz anticipated the claims of the ’236
`
`Patent. In its preliminary response, Patent Owner pointed out that Gertz failed to
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`teach two limitations—i.e., “primitive operations” and “core driver functions”—
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`that appear directly or by dependency in each of the claims of the ’236 Patent. In
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`its decision instituting inter partes review, the Board agreed:
`
`While “perform forward kinematics” appears to be an operation
`related to motion control, we agree with Patent Owner that Petitioner
`has not pointed to persuasive evidence that this operation (or any
`other operation performed by a control task) is required for motion
`control and cannot be simulated from other motion control operations
`as required by all the challenged claims. . . . Because we are not
`persuaded that Petitioner sufficiently has shown that th
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