Inter Partes Review – Final Hearing
`ABB, Corp. v. ROY-G-BIV Corp.
`Case IPR2013-00062 (U.S. Patent No. 6,516,236B1)
`Case IPR2013-00074 (U.S. Patent No. 8,073,557B2)
`
`Before the Honorable Thomas L. Giannetti, Bryan F. Moore,
`and Jennifer S. Bisk, Administrative Patent Judges
`
`Counsel for Patent Owner ROY-G-BIV CORPORATION:
`
`Foster Pepper PLLC
`Richard T. Black
`
`Boies, Schiller & Flexner LLP
`Richard S. Meyer
`
`
`Heim, Payne & Chorush LLP
`Russell A. Chorush
`Douglas R. Wilson
`
`1
`
`
`ABB, Corp. v. ROY-G-BIV Corp.
`Case IPR2013-00062 (U.S. Patent No. 6,516,236B1)
`Case IPR2013-00074 (U.S. Patent No. 8,073,557B2)
`
`Before the Honorable Thomas L. Giannetti, Bryan F. Moore,
`and Jennifer S. Bisk, Administrative Patent Judges
`
`Counsel for Patent Owner ROY-G-BIV CORPORATION:
`
`Foster Pepper PLLC
`Richard T. Black
`
`Boies, Schiller & Flexner LLP
`Richard S. Meyer
`
`
`Heim, Payne & Chorush LLP
`Russell A. Chorush
`Douglas R. Wilson
`
`1
`
`
`
`Diligence Periods Required for Antedating Gertz & Morrow
`
`Gertz
`
`RGB Conception Gertz Thesis Publication
`
`RGB Constructive Reduction to Practice
`Priority Appl. No. 08/454,736 Filed
`
`7/24/1994
`
`11/22/1994
`
`5/30/1995
`
`R e a s o n a b l e D i l i g e n c e
`
`Morrow
`
`RGB Constructive Reduction to Practice
`Priority Appl. No. 08/454,736 Filed
`RGB Conception Morrow Thesis Publication
`
`7/24/1994
`
`1/1/1995
`
`5/30/1995
`
`R e a s o n a b l e D i l i g e n c e
`
`2
`
`
`
`RGB Patents at Issue
`
`’236 Patent
`
`’557 Patent
`
`3
`
`
`
`RGB Patents: Motion Control Systems
`
`Applications
`
`Component Function A
`
`
`
`Component Function B Component Function B
`
`Component Function C
`
`Application Program
`
`Application Program Interface (API)
`
`Middleware
`(Motion Control
`Component)
`
`Component Code
`Associating Component
`Functions With Driver
`Functions
`
`Component Function A
`
`
`
`Component Function B Component Function B
`
`Component Function C
`
`Driver Function X
`
`Driver Function Y
`
`
`
`Driver Function Z Driver Function Z
`
`Drivers
`
`Service
`Provider
`Interfaces
` (SPI)
`
`SPI – Driver 1
`
`SPI – Driver 2
`
`SPI – Driver 3
`
`Driver
`Function X
`Driver
`Code
`
`Driver
`Function Y
`Driver
`Code
`
`
`Driver Driver
`
`Function Z Function Z
`
`Driver Driver
`
`Code Code
`
`Driver
`Function X
`Driver
`Code
`
`Driver
`Function Y
`Driver
`Code
`
`Driver
`Function Z
`Driver
`Code
`
`Driver
`Function X
`Driver
`Code
`
`Driver
`Function Y
`Driver
`Code
`
`Driver
`Function Z
`Driver
`Code
`
`Stream 1
`
`Stream 2
`
`Stream 3
`
`Motion Control Device 1
`
`Motion Control Device 2
`
`Motion Control Device 3
`
`W3872-005-r03.pptx Page 27
`
`4
`
`
`
`Dr. Papanikolopoulos’ Description of the RGB Software Framework
`
`“The ’236 patent generally describes a software framework
`for motion control devices/systems. The patent alleges that
`the framework could potentially enable users to write
`software for motion control devices without having to write
`low-level code. The framework includes an Application
`Programming Interface (API) and a Service Provider Interface
`(SPI). The API includes component functions while the SPI
`includes driver functions. The driver functions are classified as
`core and extended ones.”
`
`
`Papanikolopoulos ‘236 Declaration (Ex.1132) ¶ 23
`Papanikolopoulos ‘557 Declaration (Ex.1132) ¶ 23-24 (equivalent language)
`
`5
`
`
`
`Cited References For the Independent Claims with
`Asserted Dates
`
`1.
`
`Primary Reference: Nov. 1994 Gertz Ph.D. Thesis (“Gertz”)
`
`Secondary Reference: Apr. 1994 Stewart Ph.D. Thesis
`2.
`(“Stewart”)
`
`3.
`
`Secondary Reference: Jan. 1995 Morrow Article (“Morrow”)
`
`
`
`6
`
`
`
`Petitioner ABB Bears the Burden In These Proceedings
`
`“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) (emphasis added)
`
`
`
`RGB Has Raised Six Reasons Why Petitioner’s IPRs Fail
`
`RGB Has Sworn Behind 2 of the 3 References, Gertz and
`1.
`Morrow
`2.
`Claims Limitations Not Taught By the Alleged Prior Art
`2(a) “Component Functions”
`
`2(b) “Component Code”
`
`2(c) “Core Driver Functions”
`
`2(d) “Extended Driver Functions”
`
`3.
`
`
`The Alleged Prior Art Cannot Reasonably Be Combined
`
`8
`
`
`
`1. RGB Has Sworn Behind Gertz and Morrow
`
`•
`
`• Gertz Was Published in November 22, 1994 and Is Asserted to
`Be Prior Art Under 35 U.S.C. § 102(a)
`RGB’s Evidence Establishes Conception No Later than July 24,
`1994
` Patent Owner’s Response at 8-10
` Brown Declaration (Ex. 2010) ¶15
`RGB’s Evidence Establishes Constructive RTP in May 30, 1995
` Patent Owner’s Response at 10
` Brown Declaration (Ex. 2010) ¶¶ 16-18
`RGB’s Evidence Establishes Diligence During the Critical Period
` Patent Owner’s Response at 10-12
` Brown Declaration (Ex. 2010) ¶¶ 19-21
`
`•
`
`•
`
`9
`
`
`
`Conception
`RGB’s Evidence Maps Each Claim Limitation to 07-94 XMC Design Specs
`
`Brown Declaration
`
`July 1, 1994 XMC
`Design Specification
`
`July 15, 1994 XMC
`Design Specification
`
`Exhibit 2010
`¶15 (Pages 11-74)
`
`Exhibit 2010-1
`
`Exhibit 2010-2
`
`10
`
`
`
`Constructive Reduction to Practice
`RGB’s Evidence Maps Each Claim Limitation to the 5-95 Priority Filing
`
`Brown Declaration
`
`Priority Application
`
`RGB Patents
`
`Exhibit 2010
`¶¶ 16-18 (Pages 74-121)
`
`Exhibit 2010-5
`
`Exhibit 1001
`
`11
`
`
`
`Diligence
`RGB’s Evidence Details Diligence During Critical Period (11/94-5/95)
`
`Brown Declaration
`
`Time Logs
`
`XMC Project Log
`
`Exhibit 2010
`¶¶ 19-21 (Pages 122-136)
`
`Exhibits 2010-3, 4, 6
`
`ABB Exhibit 1128
`
`12
`
`
`
`RGB’s Diligence Evidence
`
`Time Logs
`
`Exhibits 2010-3, 4, 6
`
`• Detailed time logs during each work
`week during critical period (November
`20, 1994 through May 30, 1995)
`• Approximately 1,453 hours,
`approximately 1,049 of which were
`spent on work related to the XMC project
`• Equates to over 40 hours per week
`dedicated to work on the invention
`• Shows substantial and continuous activity
`towards reduction to practice (without any
`significant gaps)
`
`
`Brown Decl. (Ex. 2010) ¶¶6, 7, 8, 20, 21
`
`
`
`Diligence Periods Required for Antedating Gertz & Morrow
`
`Gertz
`
`RGB Conception Gertz Thesis Publication
`
`RGB Constructive Reduction to Practice
`Priority Appl. No. 08/454,736 Filed
`
`7/24/1994
`
`11/22/1994
`
`5/30/1995
`
`R e a s o n a b l e D i l i g e n c e
`
`Morrow
`
`RGB Constructive Reduction to Practice
`Priority Appl. No. 08/454,736 Filed
`RGB Conception Morrow Thesis Publication
`
`7/24/1994
`
`1/1/1995
`
`5/30/1995
`
`R e a s o n a b l e D i l i g e n c e
`
`14
`
`
`
`ABB’s Diligence Evidence
`
`XMC Project Log
`
`• ABB’s Exhibit 1128
`• Shows over 800 hours of work on
`developing the XMC embodiment of
`the invention during shorter time period
`
`• Consistent with the analysis in Mr.
`Brown’s declarations.
`
`Brown Dep. (Exhibit 1129) at 204:19-205:2
`
`ABB Exhibit 1128
`
`
`
`The Legal Standard for Corroboration
`
`“Sufficiency of corroboration is determined by using a
`‘rule of reason’ analysis, under which all pertinent
`evidence is examined when determining the credibility
`of an inventor's testimony.”
`
`
`In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011)
`
`
`16
`
`
`
`The Legal Standard for Corroboration
`
`“Corroborating evidence may take many forms. Reliable
`evidence of corroboration preferably 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 quotations and citations omitted) (emphasis added)
`
`17
`
`
`
`The Legal Standard for Corroboration
`
`“Each corroboration case must be decided on its own facts
`with a view to deciding whether the evidence as a whole is
`persuasive. . . . Documentary or physical evidence that is
`made contemporaneously with the inventive process provides
`the most reliable proof that the inventor's testimony has been
`corroborated.”
`
`
`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350-1351 (Fed. Cir. 2001)
`(internal citations omitted) (emphasis added)
`
`18
`
`
`
`The Legal Standard for Corroboration
`
`“[W]e do not impose an impossible standard of
`‘independence’ on corroborative evidence by requiring
`that every point . . . be corroborated by evidence
`having a source totally independent of the witness.”
`
`Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1346–47 (Fed. Cir. 2013)
`(internal quotations omitted)
`
`19
`
`
`
`The Legal Standard for Corroboration
`
`“[I]t is not necessary to produce an actual over-the-
`shoulder observer. Rather, sufficient circumstantial
`evidence of an independent nature can satisfy the
`corroboration requirement.”
`
`
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir. 2006)
`
`
`20
`
`
`
`The Legal Standard for Corroboration
`
`[D]iligence and its corroboration may be shown by a variety
`of activities, as precedent illustrates. . . .The basic inquiry is
`whether, on all of the evidence, there was reasonably
`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 an actual or constructive reduction to practice.
`
`
`Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006) (emphasis added)
`
`
`
`The Priority Application Appendices Were Filed in the PTO in 1995
`
`Exhibit 1024 at 31
`
`
`
`Corroboration Evidence – The Priority Application Appendices
`
`“[T]he 236 Patent identifies Appendix A as the ‘exemplary software
`system,’ and therefore an interpretation that excludes this
`embodiment is unsupportable.”
`
`
`ABB’s Motion for Reconsideration at 2
`
`
`“The ’236 Patent references several appendices as the exemplary
`software implementing the claimed invention, including Appendix A.”
`
`
`ABB’s Motion for Reconsideration at 4
`
`
`“The undersigned has attached a copy of what was submitted as
`Appendix A in the ’236 Patent as Exhibit 1024.”
`
`
`ABB’s Motion for Reconsideration at 5 n.2
`
`
`
`Corroboration Evidence – XMC History Submitted by ABB
`
`“The first draft was completed on
`April 12, 1994. . . . [T]he second
`draft contained a more detailed
`description of the overall
`software model. . . . On May 19,
`1994, Stuart Goodnick of
`Compumotor signed an NDA
`specifying that ROY-G-BIV could
`use all suggestions made by
`Compumotor without risk of
`loosing [sic] any ownership rights
`in the project.”
`
`
`ABB Exhibit 1025 at 1
`
`
`
`Corroboration Evidence – Document Cross References
`
`July 1, 1994 XMC
`Design Specification
`
`Exhibit 2010-1
`
`“This 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 Hannifin, dated May 19,
`1994.”
`
`
`Exhibit 2010-1 at 2
`
`
`
`2. Petitioner’s Obviousness Theory Fails on the Merits
`(Irrespective of Whether Gertz and Morrow Are Prior Art)
`
`Even if Gertz and Morrow are prior art, the
`combination does not teach:
`
`(2a) “component functions”
`
`(2b) “extended driver functions”
`
`(2c)
`“core driver functions”
`
`(2d) “component code”
`
`
`
`26
`
`
`
`The Retained Experts (All Graduate Students of Prof. Khosla)
`
`Patent Owner RGB
`
`
`Dr. Dave Stewart (Patent Owner’s Response)
`
`
`Petitioner ABB
`
`
`Dr. Richard Voyles (Petitioner’s Reply)
`Dr. Nicolai Papanikolopoulos (Petitioner’s Reply)
`
`27
`
`
`
`ABB’s Position: Dr. Stewart’s Declaration Is “Unreliable”
`
`ABB’s Reply
`
`“Dr. Stewart’s Declaration Is Unreliable”
`
`ABB Reply at 10
`
`28
`
`
`
`ABB’s Expert’s Opinion of Dr. Stewart
`
`Q. Do you believe that you’re more familiar with the
`
`Stewart reference than Dr. Stewart is?
`A. Absolutely not.
`
`Voyles Deposition at 28:8-10
`
`
`In your opinion, is Dr. Stewart an intelligent man?
`Q.
`A. Absolutely.
`In your opinion, is Dr. Stewart a reliable computer
`Q.
`
`scientist?
`A.
`Yeah.
`
`Voyles Deposition at 38:5-10 (emphasis added)
`
`29
`
`
`
`ABB’s Expert’s Opinion of Dr. Stewart
`
`Q. Do you hold Dr. Stewart in high regard?
`A.
`Yes, in certain areas of expertise.
`Q. Which certain areas of expertise do you hold
`
`him in high regard for?
`A.
`I hold him in high regard as a software engineer.
`
`
`Voyles Deposition at 38:16-21
`
`30
`
`
`
`ABB’s Expert’s Opinion of Dr. Stewart
`
`Q.
`
`
`A.
`
`
`You’ve submitted multiple letters of recommendations
`for Dave Stewart in the past; is that correct?
`
`This is my recollection.
`
`Papanikolopoulos Deposition at 62:20-23
`
`
`Q. When you wrote nice things about Dr. Stewart in the
`
`letters of recommendation that you submitted, were
`
`you being truthful?
`
`A.
`
`Yes.
`
`Papanikolopoulos Deposition at 68:1-5
`
`31
`
`
`
`Petitioner’s Prior Art Theories
`
`Claim Limitation
`
`Feature in Cited References
`
`Component Functions
`
`Gertz’s “Actions”
`
`Core Driver Functions
`
`Original Petition -- Gertz’s “Control Tasks”
`
`Reply Brief -- Stewart’s “Cycle Function”
`
`Extended Driver Functions
`
` Gertz’s “Configurations”
`
`
`Papanikolopoulos’s Dep. – “Stewart’s Cycle
`Function”
`
`Component Code
`
`???
`
`32
`
`
`
`Legal Standard for Reference Teachings
`
`“Obviousness is a legal question based on underlying
`factual determinations including: (1) the scope and
`content of the prior art, including what that prior art
`teaches explicitly and inherently; (2) the level of ordinary
`skill in the prior art; (3) the differences between the
`claimed invention and the prior art; and (4) objective
`evidence of nonobviousness.”
`
`In re Zurko, 258 F.3d 1379, 1383-1384 (Fed. Cir. 2001) (emphasis added)
`
`33
`
`
`
`Legal Standard for Inherency
`
` An inherent limitation is one that is necessarily present;
`invalidation based on inherency is not established by
`“probabilities or possibilities.” Scaltech, Inc. v. Retec/
`Tetra, LLC., 178 F.3d 1378, 1384, (Fed. Cir. 1999)
`
`34
`
`
`
`Legal Standard for Inherency
`
`“Inherency can be established when prior art necessarily
`functions in accordance with, or includes, the claimed
`limitations. . . . The mere fact that a certain thing may
`result from a given set of circumstances is not sufficient.”
`
`Bettcher Indus. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011)
`(internal quotations omitted) (emphasis added)
`
`35
`
`
`
`“Function” Is Defined as “Code that Can Be Invoked
`(Executed) Within a Program”
`
`“function”: “A general term for a
`subroutine”
`
`“subroutine”: “A common term for
`routine, likely to be used in
`reference to shorter, general,
`frequently called routines.”
`
`“routine”: “Any section of code that
`can be invoked (executed) within a
`program.”
`
`
`MS Computer Dictionary (Ex. 2016) at 212,
`415, 452
`36
`
`
`
`“Function” Is Defined as “Code that Can Be Invoked
`(Executed) Within a Program”
`
`“code”: “program instructions”
`
`“instruction”: “an action statement in
`any computer language most often
`in machine or assembly language”
`
`“statement”: “the smallest
`executable entity within a
`programming language”
`
`MS Computer Dictionary (Ex. 2016) at 36, 254,
`449
`
`
`
`37
`
`
`
`Petitioner Cites Dr. Voyles’ Declaration for the Meaning
`of the Term “Function”
`
`ABB’s Reply
`
`“Rather, ‘function’ broadly encompasses
`‘in-line’ functions, constructs in scripting
`languages, interpreted languages, and
`also visual programming constructs,
`regardless of how the program is
`stored or executed.”
`
`
`Reply at 9-10 (citing Voyles Declaration ¶¶ 39, 42-46)
`
`
`
`
`38
`
`
`
`Dr. Voyles Testifies that “Function” Is Similar to
`“Subroutine”
`
`Q: What is the relationship between a function and a
`
`subroutine?
`
`A:
`
`
`
`
`
`
`In the broad sense they're very similar. The C language in
`particular, for historical reasons, used the term "function"
`rather than "subroutine." And so I think most computer
`scientists at a general level would say those are
`essentially -- those are similar concepts.
`
`Voyles Deposition at 55:7-16 (emphasis added)
`
`
`39
`
`
`
`Dr. Papanikolopoulos’s Interpretation of “Function”
`
`Q.
`
`
`A.
`
`Do you agree that the proper definition of the term
`function is a general term for a subroutine?
`
` No.
`
`Papanikolopoulos Dep. (Ex. 2014) at 119:20-24 (objection omitted)
`
`40
`
`
`
`Dr. Papanikolopoulos’s Interpretation of “Code”
`
`Do you agree that code means program instructions?
`
`Q.
`
`A. With the assumptions I gave you earlier, I disagree.
`
`
`Papanikolopoulos Dep. (Ex. 2014) at 37:3-7 (emphasis added and objection omitted)
`
`41
`
`
`
`Dr. Papanikolopoulos’s Own Meanings for Claim Terms
`
`If you were trying to find the meaning of a term
`in the 1994 to 1995 time frame, would you
`consult a dictionary published around that time?
`
`Q.
`
`
`
`A. Not really because computer science, at that
`
`point was often confused with various other
`
`disciplines, so I will lose [sic] my own judgment
`
`and experience.
`
`
`Papanikolopoulos Deposition at 181:2-9
`
`42
`
`
`
`Dr. Voyles Testifies that the Meaning of “Code” Has
`Changed Over Time
`
`Q. Okay. Then has the definition of code, as that
`
`term would be understood by persons of skill in
`
`the art, changed over time?
`
`A.
`
`
`
`I think so, yes.
`
`Voyles Deposition at 100:6-9
`
`43
`
`
`
`Dr. Stewart Identified Four Limitations Missing From the
`References Cited By Petitioner
`
`“Although various claim limitations in the Patents are not
`disclosed or taught by the References, I will focus on
`four in particular that are all located in all the
`independent claims at issue in these IPR’s (e.g., claim 1):
`(1) component function; (2) core driver function; (3)
`extended driver function; and (4) component code.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 29
`
`44
`
`
`
`Dr. Voyles’ Task Was to Identify Disagreements with Dr. Stewart
`
`Q.
`
`
`
`
`
`A.
`
`
`So one of your objectives in your retention in this
`matter was to review Dr. Stewart’s declarations,
`identify any disagreements that you had with
`respect to his declarations and then give your
`response in your declarations; correct?
`
`That was part of my understanding.
`
`Voyles Deposition (Ex. 2013) at 57:20-58:3
`
`45
`
`
`
`Dr. Voyles’ Task Was to Identify Disagreements with Dr. Stewart
`
`So as edited by you, is Exhibit 2020 an accurate
`summary of the different disputes you have with
`Dr. Stewart in this case?
`
`Q:
`
`
`
`A: As represented in the declaration?
`
`Q. Correct.
`
`A.
`
`
`Yes.
`
`Voyles Deposition (Ex. 2013) at 138:16-24
`
`46
`
`
`
`Dr. Voyles Does Not Challenge Dr. Stewart’s Key Opinions
`
`47
`
`
`
`Gertz’s “Actions” Are Not “Component Functions”
`
`“[T]he ‘actions’ of Gertz are equivalent to the ‘component functions’
`of the ’236 Patent.”
`
`
`Original Petition at 22 (emphasis added)
`
`
`“Applications in Onika comprise ‘actions,’ which are equivalent to
`‘component functions’ of the ’236 Patent.”
`
`
`Original Petition at 23 (emphasis added)
`
`
`“Actions” of Gertz are equivalent to “component functions.”
`
`
`Original Petition at 52 (emphasis added)
`
`
`48
`
`
`
`Gertz’s “Actions” Are Not “Component Functions”
`
`“’[A]ctions’ are not ‘functions.’”
`
`
`Stewart Declaration (Ex. 2011) ¶ 26
`
`
`Gertz’s Actions are represented by configuration files that abstract a
`grouping of control tasks within the Chimera system. . . . To a person
`of ordinary skill in the art, these configuration files are clearly not
`“functions” in the sense of that term in software engineering or in the
`Patents, and they do not contain executable code. . . . Because
`Gertz’s actions consist only of configuration information, they cannot
`be viewed as a “hardware independent function that corresponds to
`a motion control operation.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 40
`
`49
`
`
`
`Gertz’s “Actions” Are Not “Component Functions”
`
`Q.
`
`
`A.
`
`
`
`
`Do you specifically refer to “actions” anywhere
`in your declaration submitted in this case?
`
`Let me read through the declaration. . . . No. I
`find no specific references to actions in the Onika
`context.
`
`Voyles Deposition (Ex. 2013) at 142:19-25
`
`50
`
`
`
`Gertz’s “Actions” Are Not “Component Functions”
`
`I’m simply asking where the term “component functions”
`appears in your declaration. Please confirm for me that it
`appears only in paragraph 23 of your ‘236 declaration.
`
`As you stated, nowhere else.
`
`The term “component function” appears only in
`paragraph 24 of the Papanikolopoulos ‘557 declaration,
`correct?
`
`Yes.
`
`Papanikolopoulos Deposition (Ex. 2014) at 112:15-113:15
`
`51
`
`Q.
`
`
`
`A.
`
` * * *
`
` *
`
`
`Q.
`
`
`
`A.
`
`
`
`
`Gertz’s “Actions” Are Not “Component Functions”
`
`Q.
`
`
`
`
`A.
`
`
`The best example that you’ve located in the
`Gertz reference of explicitly teaching that an
`action is a “function” is Figure 1 on page 42 of
`198 in the Gertz thesis, correct?
`
`Yes. . . .
`
`Papanikolopoulos Deposition at (Ex. 2014) 121:15-20
`
`
`52
`
`
`
`Ger’rz’s “Actions” Are Not “Component Functions”
`Gertz’s “Actions” Are Not “Component Functions”
`
`PILD. Dimtfllim
`
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`53
`53
`
`
`
`Gertz’s “Configurations” Are Not “Extended Driver Functions”
`
`“Neither Configurations nor Control Tasks are ‘driver
`functions.’ . . . As I explained above, Configurations
`are merely configuration information and are not
`executable. They cannot be ‘functions.’”
`
`
`Stewart Declaration (Ex. 2011) ¶ 41
`
`54
`
`
`
`Gertz’s “Configurations” Are Not “Extended Driver Functions”
`
`So, yes, configurations such as you're referring to
`A.
`were clearly text, and there was another -- the
`
`application file was a text file. I don't remember
`
`what the Onicon files were. They may have been
`
`text. Yeah, they were text too. So but those were
`
`not software per se.
`
`Q. What do you mean by "They were not software
`
`per se"?
`I would -- what I mean by that is they don't
`A.
`
`implement a formal language.
`Voyles Deposition (Ex. 2013) at 69:6-15 (emphasis added)
`
`55
`
`
`
`Gertz’s “Configurations” Are Not “Extended Driver Functions”
`
`Q. My question is can you identify for me any
`
`configurations in Onika, as you sit here today,
`
`that were not text files?
`
`A. Configurations in Onika, no. My understanding is
`
`configurations in Onika were all specified as text
`
`files.
`
`
`Voyles Deposition (Ex. 2013) at 68:18-23.
`
`56
`
`
`
`Gertz’s “Configurations” Are Not “Extended Driver Functions”
`
`Q.
`
`
`A.
`
`
`
`
`
`But the configurations generated by Onika . . .
`are not themselves executable code; correct?
`
`. . . . Yes. The configuration files are not -- yeah,
`they're not machine language. So they're not
`executable in the same way that a C file -- C
`source file is not an executable, correct.
`
`Voyles Deposition (Ex. 2013) at 86:7-16
`
`57
`
`
`
`Gertz’s “Control Tasks” Are Not “Core Driver Functions”
`
`“The Petitions assert that ‘control tasks’ are ‘core driver
`functions.’ . . . The control tasks consist of a combination of a
`finite state machine, port communication operations,
`synchronization events, and calls to the functions of the
`control module at very specific times. . . . [C]ontrol tasks are
`not ‘functions’ as used in the Patents, and the functions
`contained within a control task are not ‘associated with one of
`the primitive operations’ and cannot be “core driver functions”
`as required by the claims.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 37 (emphasis added)
`
`58
`
`
`
`Gertz’s “Control Tasks” Are Not “Core Driver Functions”
`
`“[C]ontrol tasks are not simply ‘functions’, and the
`functions contained within a control task are not
`‘associated with one of the primitive operations’ and
`cannot be ‘core driver functions’ as required by the
`claims.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 42
`
`59
`
`
`
`Gertz’s “Control Tasks” Are Not “Core Driver Functions”
`
`“Stewart’s port-based objects encapsulate both the
`data that the object represents and the functions that
`manipulate the data.”
`
`
`Papanikolopoulos Declaration (Ex. 1132) ¶ 49 (emphasis added)
`
`60
`
`
`
`Gertz’s “Control Tasks” Are Not “Core Driver Functions”
`
`Q. What is the relationship between a port based
`
`object and a control task?
`
`A.
`
`
`
`The port based object -- so a control task is the
`embodiment of a port based object. . . .
`
`Voyles Deposition (Ex. 2013) at 129:17-20
`
`61
`
`
`
`Petitioner’s Theories for “Core Driver Functions”
`
`“Gertz’s control tasks are core driver functions because
`they help implement primitive operations”
`
`
`Original Petition at 21
`
`
`“[T]he ‘cycle’ method is the function that executes the task
`represented by the PBO. . . . As such the PBOs taught by
`Gertz and Stewart provide the ‘driver function’ limitation of
`the claims. The ‘cycle’ function for any given PBO
`corresponds to executing the task represented by the
`PBO.”
`
`
`Reply at 12 (emphasis added)
`
`62
`
`
`
`Petitioner’s Theories for “Core Driver Functions”
`
`Do you contend that the cycle function in the
`Q.
`Stewart reference meets any of the claim
`
`limitations in the RGB patents?
`
`Yes.
`A.
`Q. Which claim limitation in the RGB patents do you
`
`contend is satisfied by the cycle function in the
`
`Stewart reference?
`A.
`So we have core driver functions, extended
`
`driver functions, so I will categorize this as an
`
`extended driver function.
`Papanikolopoulos Deposition (Ex. 2014) at 127:7-17 (emphasis added)
`
`63
`
`
`
`Prejudice from Petitioner’s Changed Theories
`
`16. A motion control system, comprising: . . . a set of software
`drivers each comprising driver code, where each software driver is
`associated with at least one of the plurality of controller languages,
`and each software driver exposes a service provider interface defining
`a set of driver functions. . . .
`
`
`‘557 Patent, Claim 16
`
`64
`
`
`
`Prejudice from Petitioner’s Shifting Theories
`
`Q.
`
`
`A.
`
`
`So one of the functions that is internal to the
`port-based object is the cycle function, correct?
`
`Yes.
`
`Papanikolopoulos Deposition (Ex. 2014) at 125:19-22
`
`65
`
`
`
`Prejudice from Petitioner’s Changed Theories
`
`“A port-based object, which we also call a control module,
`is defined as an object, but also has various ports for real-
`time communication. As with any standard object, each
`module has a state and is characterized by its methods.
`The internals of the object are hidden from other objects.”
`
`
`Stewart Reference (Ex. 1004) at 40 (emphasis added)
`
`66
`
`
`
`Gertz Does Not Teach “Component Code”
`
`“[B]y describing that the control tasks and configurations
`(‘driver functions’) are connected to the actions (‘component
`functions’), Gertz discloses that Onika contains the claimed
`component code.”
`
`
`Original Petition at 23
`
`
`
`
`67
`
`
`
`Gertz Does Not Teach “Component Code”
`
`“As explained above, the ‘actions’ in the Gertz Reference are not
`‘component functions’ and the ‘configurations’ and “tasks’ are not
`driver functions. However, even if they were, there is no ‘code’ in
`Onika relating ‘actions’ to ‘configurations’ and ‘control tasks.’ As I
`explained above, Onika only produces configuration information.
`The configuration information cannot be characterized as
`‘software code.’ Therefore, the Gertz Reference does not disclose
`component code as required by the claims.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 44
`
`68
`
`
`
`3. Gertz Cannot Be Combined With Morrow
`
`“Gertz and Morrow both worked with my Chimera system. However,
`neither of them would have worked with each other. Not only would
`it not have been obvious, it would not even make sense.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 45
`
`
`“The two references provide unrelated solutions to unrelated
`problems. I disagree with the Petitions that a person of ordinary skill
`would have any reason or motivation to combine these references.”
`
`
`Stewart Declaration (Ex. 2011) ¶ 46
`
`69
`
`
`
`Morrow Did Not Combine His Work With Gertz’s
`
`A.
`
`
`Q.
`A.
`Q.
`A.
`Q.
`
`A.
`
`. . . . I state in [paragraph] 40, “I specifically encourage[d]
`Dan Morrow to work with Matt Gertz. Additionally, I urge
`Dan Morrow to use Onika in his research.”
`But Dr. Morrow didn't take that advice, did he?
`Using Onika?
`Correct.
`Correct.
`Instead, he developed a completely separate software
`that you have referred to as "agent level"; correct?
`Yes.
`
`Voyles Deposition (Ex. 2013) at 91:10-21
`
`
`70
`
`
`
`Morrow Did Not Combine His Work With Gertz’s
`
`Q.
`
`
`A.
`
`
`
`Q.
`
`
`A.
`
`
`[D]id you recommend to Dr. Morrow that he implement his
`work using Gertz's code for Onika?
`
`Yes. I suggested he could use parts of or potentially all
`of Onika as a basis for his enhancements since many of
`the infrastructural requirements were similar.
`
`But Dr. Morrow declined to implement your suggestion;
`correct?
`
`Yes, that's correct.
`
`Voyles Deposition (Ex. 2013) at 93:18-24
`
`71
`
`
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