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
`
`____________
`
`Trial No. IPR2013-00062 (joined with IPR2013-00282)
`Patent 6,516,236 B1
`
`____________
`
`ABB’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`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
`
`____________
`
`Trial No. IPR2013-00062 (joined with IPR2013-00282)
`Patent 6,516,236 B1
`
`____________
`
`ABB’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
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`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`DR. STEWART’S LACK OF EXPERTISE (PP. 1-3) ................................... 1
`
`III. DR. VOYLES DISPUTED STEWART’S RELIABILITY (P. 2) .................. 3
`
`IV. STEWART’S “SOFTWARE EXPERTISE” .................................................. 4
`
`V. DR. VOYLE’S DISPUTES DR. STEWART’S OPINIONS .......................... 4
`
`VI. DR. VOYLES COMPONENT FUNCTIONS ................................................ 5
`
`VII. DR. PAPANIKOLOPOLOUS IDENTIFIED
`“COMPONENT FUNCTIONS” IN GERTZ .................................................. 6
`
`VIII. DEFINITION OF FUNCTION ....................................................................... 6
`
`IX. CLAIM TERMS .............................................................................................. 8
`
`A.
`
`“Core Driver Function” ......................................................................... 8
`
`B.
`
`C.
`
`“Cycle” Function ................................................................................... 8
`
`“Extended Driver Function” .................................................................. 9
`
`D.
`
`“Component Code” .............................................................................10
`
`X. DR. PAPANIKOLOPOLOUS DID NOT MAP
`PUBLICATIONS OUTSIDE THE CITED REFERENCES ........................11
`
`XI. RGB’S ASSERTION OF PERSONAL
`KNOWLEDGE OUTSIDE THE REFERENCES ........................................11
`
`XII. RGB’S “ADDITIONAL OBSERVATIONS” ..............................................12
`
`
`
`
`
`i
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`Case IPR2013-00062
`Case IPR2013-00282
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`
`
`
`I.
`
`INTRODUCTION
`
`ABB timely submits this Reply to Patent Owner’s Amended Motion for
`
`Observations on Cross Examination (Paper #67).
`
`RGB’s motion for observations does not present observations in “concise
`
`statement[s] of the relevance of identified testimony to an identified argument or
`
`portion of an exhibit” and is an improper attempt “to raise new issues, re-argue
`
`issues, or pursue objections,” by linking portions of testimony into argument.
`
`Thus, the Board should refuse entry of RGB’s observations. ABB will
`
`nevertheless respond briefly RGB’s topics.
`
`II. DR. STEWART’S LACK OF EXPERTISE (PP. 1-3)
`
`In Exhibit 1130, at paragraph 15, Dr. Voyles testified that “…David Stewart
`
`was insulated from the primary research into advanced manipulators that was the
`
`focus of the bulk of the work in the lab. By this, I mean he did not have a
`
`background in kinematics, robotic sensors, or visual servoing nor was he
`
`considered a user of robotic manipulators.”
`
`In Exhibit 2013, at 38:20-25, Dr. Voyles testified that “I hold him in high
`
`regard as a software engineer. As a specialist in embedded systems. He
`
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`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 1
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`acknowledges his own weaknesses in motion control and robotics. Those are not
`
`his specialties. And frequently did so at the time we were in the lab together.”
`
`In Exhibit 1104, 85:24 – 86:1, Dr. Stewart testified that “I would not
`
`consider myself an expert in kinematic theory.”
`
`In Exhibit 2014, Dr. Papanikolopoulos testified:
`
`“I was disappointed because David, even in his work at Maryland, he
`
`tried to do stuff that he was not familiar with…” (58:3-6)
`
`“What I mean is actually [Stewart] didn't get tenure at Maryland…he
`
`didn't stay in academia.” (59:16-18)
`
`“And again, my negative comments are mainly about the pieces of
`
`work I have seen after '92, and especially when you see a very bright
`
`individual.” (61:2-5)
`
`“So I told him, for example the pinball project is not a project of
`
`academic interest. It's more like a hobby. And then I will get some
`
`presentations where he will try in papers where he will start dropping
`
`the quality in order to get out papers…” (64:2-8)
`
`“So I have to look at the facts and what is written and make an
`
`assessment. This is exactly why when I read this declaration where
`
`[Stewart] seems actually not even to recall his own thesis, or he makes
`
`statements about Onika or he makes statements about there is no way
`
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 2
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`Case IPR2013-00062
`Case IPR2013-00282
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`that Morrow and Gertz will have worked together or the work of one -
`
`- but this is not CMU was about.” (66:2-10)
`
`“And this is the point I'm trying to make that I don't recognize this
`
`person. He's not the person I knew.” (66:14-16; see also Ex. 1014,
`
`66:24 – 67:2).
`
`This testimony is relevant to RGB’s assertion that Dr. Stewart is held in high
`
`regard.
`
`III. DR. VOYLES DISPUTED STEWART’S RELIABILITY (P. 2)
`
`In Exhibit 1104, at 14:1-14, Dr. Stewart was asked “Now, after you were
`
`engaged in this case, have you gone back and read through your thesis in its
`
`entirety?” and responded “Define what you mean by read...I did scan through, you
`
`know, section by section, to refresh my mind.”
`
`In Exhibit 2013, at 29:7-10, Dr. Voyles testified that “I believe based on [Dr.
`
`Stewart’s] declaration that there are elements that though he authored many years
`
`ago, he may have forgotten or lost relevance that I have to it.”
`
`This testimony is also relevant to the weight that should be afforded Dr.
`
`Stewart’s opinions in this proceeding.
`
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`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 3
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`
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`IV. STEWART’S “SOFTWARE EXPERTISE”
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`Case IPR2013-00062
`Case IPR2013-00282
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`In Exhibit 2011 at paragraph 27, Dr. Stewart testified that “Onika is not an
`
`execution environment but rather only a ‘visual programming environment.’”
`
`In Exhibit 1104 at 45:24-46:20, Dr. Stewart was asked, “Let's turn to [Gertz]
`
`page 115, Section 5.9, ‘Execution of Applications.’ It states, ‘Onika executes
`
`applications in a non-blocking fashion, allowing the user to fully monitor and
`
`control the outcome of applications.’ Do you still maintain that Onika was only a
`
`visual programming environment?” Dr. Stewart responded “I would -- in order to
`
`change that opinion, I would need significantly more research into this.”
`
`In Exhibit 1132, paragraph 55, Dr. Papanikolopoulos testified that “Dr.
`
`Stewart inaccurately characterized Onika as ‘only’ a visual programming
`
`environment based on simple configuration files, ignoring the many portions of the
`
`Gertz thesis that describe not only these capabilities of the program, but also actual
`
`demonstrations performed at Sandia National Laboratory and CMU along with
`
`user testing.”
`
`This testimony is relevant to the weight that should be afforded Dr.
`
`Stewart’s opinions.
`
`V. DR. VOYLE’S DISPUTES DR. STEWART’S OPINIONS
`
`In Exhibit 2017, ¶¶ 4-5, Dr. Voyles identified fundamental disagreements
`
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`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`with Dr. Stewart applicable to “functions” and “code” recited in the claims at issue.
`
`(See also, Ex. 1130, ¶¶ 22, 39, and 42-44).
`
`Dr. Voyles further testified that “By ‘complete list’ -- there may be
`
`disagreements that I didn't list or that aren't contained in this declaration, but we
`
`are limiting ourselves to this declaration.” Ex. 2013, 59:2-5.
`
`This is relevant to RGB’s observation, as RGB did not ask if Dr. Voyles
`
`disputed other portions of Stewart’s testimony.
`
`VI. DR. VOYLES COMPONENT FUNCTIONS
`
`In Ex. 1130, at paragraph 37, Dr. Voyles refers to Actions in the Onika
`
`context. In Exhibit 2017, at paragraphs 4-5, Dr. Voyles identifies fundamental
`
`disagreements with Dr. Stewart whether Onika produces “programs” or “software
`
`code.” (See also, Ex. 1130, ¶¶ 22, 39, and 42-44).
`
`Dr. Voyles further testified that “By ‘complete list’ -- there may be
`
`disagreements that I didn't list or that aren't contained in this declaration, but we
`
`are limiting ourselves to this declaration.” Ex. 2013, 59:2-5.
`
`This is relevant to RGB’s observation, which states: “Dr. Voyles testified, ‘I
`
`find no specific references to actions in the Onika context’ in his own declaration.”
`
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
`
`
`Page 5
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`
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`VII. DR. PAPANIKOLOPOLOUS IDENTIFIED “COMPONENT
`FUNCTIONS” IN GERTZ
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`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
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`
`In Ex. 1132, at paragraphs 47- 51, 56, 61, and 90-92, Dr. Papanikolopoulos
`
`testified regarding fundamental disagreements with Dr. Stewart.
`
`In Ex. 2014, 156:16-10; 157:11-13, Dr. Papanikolopolous testified that
`
`Onika created programs.
`
`In Ex. 2014, 120:5 – 122:2; 163:4 - 167:14, Dr. Papanikolopolous testified
`
`that Gertz disclosed “component functions.”
`
`This is relevant to RGB’s observation, which states: “…Dr.
`
`Papanikolopoulos does not challenge Dr. Stewart’s opinions in paragraphs 26 and
`
`40 of his Declaration [Exhibit 2011] that Gertz’s actions are not ‘functions,’ and
`
`therefore cannot be ‘component functions.’”
`
`VIII. DEFINITION OF FUNCTION
`
`Dr. Voyles’s testimony, Ex. 1130 ¶¶ 39, 42-46, is relevant to “function.”
`
`In Ex. 2013, 59:2-5, Dr. Voyles testified that “By ‘complete list’ -- there
`
`may be disagreements that I didn't list or that aren't contained in this declaration,
`
`but we are limiting ourselves to this declaration.”
`
`In Exhibit 1104, at 85:3-11, Dr. Stewart was asked “In your thesis, you list a
`
`number of motion control algorithms, calculating Jacobian, different type of
`
`trajectory generators. Are you an expert in those subjects?” Dr. Stewart responded
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 6
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`“As I have already explained, those are examples that are used in my thesis and
`
`those I would consider -- the application level of which I believe I am a person of
`
`ordinary skill in understanding those types of -- those types of functions or
`
`tasks.” (Emphasis added).
`
`In Exhibit 2014, at 115:8-24, Dr. Papanikolopoulos was asked “So I'm
`
`asking show me -- show me where it says an action is a function…I don't even see
`
`the word function at all,” and answered “But do we want to go and explain to you
`
`what a programming language means? Programming language is functions and all
`
`these are was basically corresponding to functions. I mean unless we want to have
`
`a new definition of a programming language. I mean if you look at LISP, if you
`
`look at Visual Basic, if you look at C, when we're talking about the programming
`
`language, a language is made of functions. That's why we have imperative
`
`programming, and we have functional programming.”
`
`In Ex. 2014, 156:16-10; 157:11-13, Dr. Papanikolopolous testified that
`
`Onika created programs.
`
`In Ex. 2014, 120:5 – 122:2; 163:4 - 167:14, Dr. Papanikolopolous testified
`
`that Gertz disclosed “component functions.”
`
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`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 7
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`In Exhibit 2014, at 132:15-17, Dr. Papanikolopoulos testified that “One --
`
`one thing is for sure. They are more than 80 definitions of programming you're
`
`going to find…”
`
`In Exhibit 1002, Gertz states: “We now describe our visual programming
`
`environment (VPE), Onika, from the user’s viewpoint. In this chapter, we present
`
`the various interfaces presented to the user, and show that the language is
`
`“complete” with respect to conventional textual robotic languages.”
`
`This testimony is relevant to the meaning of the term “function.”
`
`IX. CLAIM TERMS
`
`A.
`
`“Core Driver Function”
`
`In Exhibit 1132, at paragraph 61, Dr. Papanikolopoulos testified that “One
`
`with ordinary skill in the art would have understood that tasks mapped to core
`
`driver functions associated with primitive operations. (Gertz, &48).” This
`
`testimony is relevant to whether a task is a core driver function.
`
`B.
`
`“Cycle” Function
`
`RGB’s observation omits contextual material by stating:
`
`This testimony is relevant to ABB’s arguments on pages 11-12 of ABB’s
`
`reply that “the cycle function for any give port-based object (PBO)
`
`corresponds to…a ‘primitive operation’ that…has an association to a ‘core
`
`driver function
`
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`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 8
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`
`ABB’s reply actually states:
`
`The “cycle” function for any given PBO corresponds to executing the task
`
`represented by the PBO. By definition, a PBO for a “primitive operation”
`
`that sends commands to a motion control device has an association to a
`
`“core driver function.”
`
`In Exhibit 2014, at 178:21-179:9, Dr. Papanikolopoulos testified: “The cycle
`
`basically does the following. For the methods associated/functions associated with
`
`the port-based object, enables their execution at specific times. (Ex. 2014, 179:6-
`
`9). This testimony is relevant to petitioner’s position that “the ‘cycle’ method is
`
`the function that executes the task represented by the PBO.” (Reply at 12).
`
`C.
`
`“Extended Driver Function”
`
`In exhibit 2013, at 72:14-19, Dr. Voyles was asked on cross examination
`
`“The configurations generated by Onika were not software; correct?” and
`
`responded “No, I'm not -- I believe that's Stewart's assertion, and I'm disagreeing
`
`with that assertion.” This testimony is relevant to demonstrating Dr. Voyles’s
`
`disagreement with Dr. Stewart.
`
`In exhibit 2013, at 72:24-73:9, Dr. Voyles testified on cross examination,
`
`“You're asking -- now, when you say, ‘configurations,’ are you referring -- are you
`
`referring to the configuration files Stewart referred to, or are you referring to the
`
`configurations as defined by Onika?” He was then asked, “That's one and the
`
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
`
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`Page 9
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`
`
`same, isn't it?” to which he responded, “I'm not sure I would say they're one and
`
`the same.”
`
`In Exhibit 1132, at paragraph 61, Dr. Papanikolopoulos testified that “Gertz
`
`also discloses “configurations” which map to extended driver functions which are
`
`associated with non-primitive operations.”
`
`This testimony is relevant to whether a configuration is an extended driver
`
`function.
`
`D.
`
`“Component Code”
`
`In Exhibit 1104 at 38:25-39:5, Dr. Stewart was asked “Are there different
`
`definitions of code in computer science?” and answered “There could be.” He was
`
`then asked “Not could be. Are there?” and answered “To the best of my
`
`knowledge, yes, there are different definitions of code.”
`
`In Exhibit 1104 at 27:25-28:5, Dr. Stewart was asked “Is a visual
`
`programming language considered software?” and answered “It's -- I don't have the
`
`specific definition in front of me, and I believe that's a definition that, depending
`
`on who looks at it, you may get different answers. So I don't want to give a firm
`
`answer on that.”
`
`In Exhibit 2013, at 74:25-75:9, Dr. Voyles testified that “The purpose of a
`
`programming environment is to create programs. Stewart acknowledges it's a
`
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`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 10
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`programming environment yet insists that it doesn't produce a program. And the
`
`collection of what Onika produces -- and this is why I was careful to talk about
`
`particular files, because Onika produces a number of files that constitute the
`
`software code in my understanding of a programming environment that runs.”
`
`In Exhibit 2014, at 35:18-22, Dr. Papanikolopoulos testified that “Code can
`
`mean many different things from -- from a script to an object, code file, to an
`
`executable, to a set of instructions. Sometimes we call this computer code.”
`
`This testimony is relevant to the meaning of the claimed “component code.”
`
`X. DR. PAPANIKOLOPOLOUS DID NOT MAP PUBLICATIONS
`OUTSIDE THE CITED REFERENCES
`
`In any case, in Exhibit 1132, at paragraph 28, Dr. Papanikolopoulos testified
`
`that “The following is a brief exemplary discussion of the state of the art prior to
`
`May 1995.” At paragraph 34, Dr. Papanikolopoulos testified that “The list of
`
`publications that I used in this write-up is:” and listed five publications.
`
`In Exhibit 2014: 169:20 - 171:11, Dr. Papanikolopolous testified that he did
`
`not rely upon “background information” in mapping any claim element.
`
`XI. RGB’S ASSERTION OF PERSONAL KNOWLEDGE OUTSIDE THE
`REFERENCES
`
`In Exhibit 2014: 169:20 - 171:11, Dr. Papanikolopolous testified that he did
`
`not rely upon “background information” in mapping any claim element.
`
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
`
`
`Page 11
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`
`
`XII. RGB’S “ADDITIONAL OBSERVATIONS”
`
`Case IPR2013-00062
`Case IPR2013-00282
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`
`
`RGB submitted excerpts of the exhibit that excluded the copyright page for
`
`the Microsoft Computer dictionary, 3rd ed. as Exh. 2016. This was marked Ex.
`
`2025 at deposition where Dr. Papanikolopolous testified that the Microsoft
`
`dictionary was published in 1997. (Ex. 1014, 140:12-16; 180:12-181:20 excerpts
`
`below)
`
`Q. Okay. Let's take a look at Exhibit 2025. It was published in 1997, looking
`
`at the second page, correct?
`
`A. Um-huh. Yes.
`
`…
`
`Q: If you were trying to decide which dictionary would have a more
`
`authoritative definition, would you look to an ACM dictionary or the
`
`Microsoft computer dictionary?
`
`A: I will look at a dictionary that has no commercial interest or an open
`
`source organization that has no commercial interest.
`
`
`
`Dated: January 21, 2014
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`rick.mcleod@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
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`Page 12
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`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Cross Examination
`
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`Page 13
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`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of ABB’s Response to Patent
`
`Owner’s Motion for Observations on Cross Examination was served on counsel
`
`RICHARD S. MEYER
`BOIES, SCHILLER & FLEXNER LLP
`5301 WISCONSIN AVENUE NW
`SUITE 800
`WASHINGTON, DC 20015
`TEL: (202) 237-2727
`FAX: (202) 237-6131
`RMEYER@BSFLLP.COM
`
`
`of record for ’236 Patent Owner:
`
`RICHARD T. BLACK
`FOSTER PEPPER PLLC
`1111 THIRD AVENUE, SUITE 3400
`SEATTLE, WA 98101-3299
`TEL: (206) 447-6251
`FAX: (206) 749-2062
`BLACR@FOSTER.COM
`
`
`DOUGLAS R. WILSON
`HEIM, PAYNE & CHORUSH LLP
`600 TRAVIS, SUITE 6710
`HOUSTON, TX 77002
`TEL: (512) 242-3622
`FAX: (713) 345-2924
`DWILSON@HPCLLP.COM
`
`
`via EXPRESS MAIL, on January 21, 2014.
`
`By /Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`rick.mcleod@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
`
`CERTIFICATE OF SERVICE
`
`
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