Filed on behalf of Roy-G-Biv Corporation
`
`By: Richard T. Black
`Foster Pepper PLLC
`1111 Third Avenue, Suite 3400
`Seattle, Washington 98101-3299
`Tel:
`(206) 447-6251
`Fax: (206) 749-2062
`Email:
`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
`(pursuant to Joinder with IPR2013-00282)
`U.S. Patent No. 6,516,236B1
`____________________
`
`PATENT OWNER’S SURREPLY
`ON ANTEDATE ISSUE
`
`
`
`
`
`By: Richard T. Black
`Foster Pepper PLLC
`1111 Third Avenue, Suite 3400
`Seattle, Washington 98101-3299
`Tel:
`(206) 447-6251
`Fax: (206) 749-2062
`Email:
`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
`(pursuant to Joinder with IPR2013-00282)
`U.S. Patent No. 6,516,236B1
`____________________
`
`PATENT OWNER’S SURREPLY
`ON ANTEDATE ISSUE
`
`
`
`
`
`In its Reply, Petitioner ABB, Inc. (“ABB”) fails to meet its burden of proving
`
`that both Gertz and Morrow are prior art, which alone resolves the IPR.
`
`As to corroboration, ABB applies the “impossible standard of ‘independence’
`
`on corroborative evidence” that was rejected in Ohio Willow Wood Co. v. Alps S.,
`
`LLC, 735 F.3d 1333, 1346–47 (Fed. Cir. 2013). The law does “not require that
`
`every point ... be corroborated by evidence having a source totally independent of
`
`the witness.” Whether testimony is sufficiently corroborated is evaluated under the
`
`“rule of reason.” Id. Reliable evidence of corroboration “comes in the form of
`
`records made contemporaneously with the inventive process. Circumstantial
`
`evidence of an independent nature may also corroborate.” Linear Tech. Corp. v.
`
`Impala Linear Corp., 379 F.3d 1311, 1327 (Fed. Cir. 2004) (internal citation
`
`omitted). Every corroboration case “must be decided on its own facts with a view
`
`to deciding whether the evidence as a whole is persuasive.” Id.
`
`The Brown Declaration and its contemporaneous exhibits clearly demonstrate
`
`conception of all claims1 no later than July 24, 1994, well before publication of
`
`both Gertz and Morrow. (Brown Decl., Ex. 2010, ¶¶6, 8, 10, 12.) Two key
`
`
`
` 1
`
` Contrary to ABB’s Reply, RGB addressed claims 5-7 of the ‘236 Patent.
`
`Dependent claims 5-7 are necessarily addressed in the antedating testimony and
`
`evidence provided regarding the independent claims.
`
`
`
`1
`
`
`
`
`
`corroborating documents indisputably existed and were filed in the PTO years
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236B1
`
`prior to ABB’s claim of Gertz and Morrow as alleged prior art:
`
`1. Priority Application Appendix A, filed May 30, 1995, containing an excerpt
`
`from the third draft of the XMC Motion Control Reference. The third draft
`
`references an April 15, 1994 first draft and a July 1, 1994 second draft.2
`
`2. Mr. Brown’s XMC Motion Control Component 93-94 History, filed
`
`November 6, 2008, which references an NDA between Compumotor and RGB
`
`dated May 19, 1994.”3
`
`These documents in turn reveal three other corroborating documents:
`
`1. The NDA between ROY-G-BIV and Compumotor, dated May 19, 1994.4
`
`2. First Draft of the XMC Motion Control Reference, dated April 15, 1994.5
`
`3. Second draft of the XMC Motion Control Reference (divided into two
`
`
` 2
`
` ABB Ex. 1024.
`
`3 ABB Ex. 1025
`
`4 Referenced by: (1) p. 1 of Mr. Brown’s XMC Motion Control Component 93-94
`
`History, attached by ABB as Ex. 1025; (2) p.1 of Ex. 2010-1; (3) p.1 of Ex. 2010-
`
`2.
`
`5 Referenced by: (1) p. 1 of Appendix A of Priority Application No. 08/454,736,
`
`May 30, 1995, filed by ABB as Ex. 1024; (2) Ex. 2010-1; (3) Ex. 2010-2.
`
`
`
`2
`
`
`
`
`
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236B1
`
`separate specifications in the second draft), dated July 1 and July 15, 1994.6 The
`
`second drafts reference the April 15, 1994 first draft. Both state “[t]his document
`
`is provided for discussion purposes only in strict confidence and subject to the
`
`non-disclosure agreement executed between ROY-G-BIV Corporation and
`
`Compumotor, a division of Parker Hannifan, dated May 19, 1994.”
`
`These numerous corroborating documents satisfy the rule of reason. ABB’s
`
`suggestion that Mr. Brown foresaw both this litigation and the need to antedate
`
`Gertz and Morrow, and fabricated multiple documents which cross-referenced
`
`other fabricated documents bearing the same dates is unreasonable conjecture.
`
`As to diligence, the basic inquiry is “whether, on all of the evidence, there was
`
`reasonable continuing activity to reduce the invention to practice. There is no rule
`
`requiring a specific kind of activity in determining whether the applicant was
`
`reasonably diligent in proceeding toward ... reduction to practice.” Brown v.
`
`Barbacid, 436 F.3d 1376, 1382
`
`(Fed. Cir. 2006). Evidence made
`
`contemporaneously “provides the most reliable proof that the inventor’s testimony
`
`has been corroborated.” Id. at 1350-51. “Circumstantial evidence about the
`
`inventive process, alone, may also corroborate.” Sandt Tech., Ltd. v. Resco Metal
`
`& Plastics Corp., 264 F.3d 1344, 1351 (Fed. Cir. 2001).
`
`
` 6
`
` Exs. 2010-1 & 2010-2 & referenced in Appdx. A, p.1, Ex. 1024
`
`
`
`3
`
`
`
`The Brown Declaration includes detailed time logs and a summary of the
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236B1
`
`
`
`
`work performed towards actually reducing to practice and constructively reducing
`
`to practice the claimed invention during each work week from November 20, 1994
`
`through May 30, 1995. (Brown Decl., Ex. 2010, ¶¶6, 7, 8, 20, 21). During these six
`
`months, Mr. Brown worked approximately 1,453 hours, 1,049 of which were spent
`
`on work related to the XMC project. (Id. ¶20). This equates to over 40 hours per
`
`week dedicated to work on the invention. The weekly summary of major activities
`
`on the XMC Project and the time logs show substantial and continuous activity
`
`towards reduction to practice (without any significant gaps). Moreover, the 1995
`
`XMC Project Log, which Mr. Brown had forgotten about when preparing his
`
`declaration, supports this analysis. Although prepared for a different purpose, it
`
`shows over 800 hours of work on developing the XMC invention over a shorter
`
`time period. (See ABB Ex. 1128.) Mr. Brown testified that this document was
`
`very consistent with the analysis in his declarations. (See Ex. 1129, p. 199:10-18).
`
`The exhibits to Mr. Brown’s Declaration and to ABB’s 2nd Petition for IPR
`
`corroborate Mr. Brown’s diligence. Third party documentation (such as the
`
`Compumotor NDA here) and PTO filings have been held to constitute
`
`corroboration of diligence. See, e.g., Brown v. Barbacid, 436 F.3d at 1376; In re
`
`Jolley, 308 F.3d 1317, 1328 (Fed. Cir. 2002).
`
`ABB merely nit-picks in arguing that Mr. Brown’s intensive work somehow
`4
`
`
`
`
`
`
`
`does not constitute diligence. ABB criticizes Mr. Brown for including time for
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236B1
`
`travel and for reading a book related to his invention over the holidays—“he
`
`claimed to be diligent by reading a book on Neural Networks and Fuzzy Logic
`
`between 12/23/94 and 1/3/95.” (Reply, p.6.) ABB cites Preston v. White, 97 F.2d
`
`160, 165 (CCPA 1938), for the proposition that “XMC Legal” work on “trademark
`
`issues, NDA, and licensing issues” do not constitute diligence. (Reply at 7.) But
`
`the Federal Circuit recently distinguished Preston in Scott v. Koyama, 281 F.3d
`
`1243, 1248–49 (Fed. Cir. 2002), which makes clear that these activities constitute
`
`valid evidence of attorney diligence. But even if excluded, they only constitute a
`
`tiny fraction of hundreds and hundreds of hours ABB does not dispute was spent
`
`reducing the invention to practice. (See Brown Decl., Ex. 2010, Sections 15-16;
`
`Ex.1129, pp. 197-200.) Courts have found that inventors exercised due diligence
`
`even where—unlike Mr. Brown here—the inventor delayed substantially (up to
`
`three weeks) in reducing the invention to practice. See, e.g., Griffith v. Kanamaru,
`
`816 F.2d 624, 626 (Fed. Cir. 1987).
`
`Dated: January 14, 2014. Respectfully:
`
`/Richard T. Black/
`RICHARD T. BLACK, Reg.40514
`Foster Pepper PLLC
`1111 Third Avenue Suite 3400
`Tel:
`(206) 447-6251
`Email: blacr@foster.com
`
`
`
`
`5
`
`/Richard S. Meyer/
`RICHARD S. MEYER, Reg.32541
`5301 Wisconsin Avenue NW
`Boies, Schiller & Flexner LLP
`Tel:
`(202) 237-2727
`Email: rmeyer@BSFLLP.com
`
`
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