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`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 REPLY BRIEF IN SUPPORT OF MOTION TO
`EXCLUDE EVIDENCE
`
`
`
`
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`RGB timely submits this reply in support of its motion to exclude arguments
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,156,236B1
`
`
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`and evidence raised for the first time in ABB’s Reply, and in opposition to ABB’s
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`Opposition to Motion to Exclude Evidence, filed January 21, 2014 (“Opp.”). The
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`rule is clear: if the Petition did not “specify where each element of the claim is
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`found” in the prior art and identify “specific portions of the evidence that support
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`the challenge,” the improperly submitted material should be excluded. See 37
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`C.F.R. 42.104(b)(4)-(5).
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`At the January 23 Hearing, ABB conceded that its Petition did not mention
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`Stewart's “cycle” function, and that it was raised for the first time in its Reply.1
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`The Petition (and Institution Decision) relied on Stewart solely for device drivers.
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`Stewart cannot now be the basis for the other critical limitations of component
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`functions, core and extended driver functions, or component code. It would be
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`highly prejudicial to consider this new theory, and it should be excluded.
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`ABB does not dispute that the portion of its Petition that was adopted by the
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`Institution Decision is the legal outer boundary of this IPR: “[t]he petition must
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`specify where each element of the claim is found in the prior art patents or printed
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`publications relied upon,” and must identify “specific portions of the evidence that
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`1 The Trial Transcript is not currently available for citation; RGB will provide any
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`necessary cites when it is made available.
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`1
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`
`
`
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`support the challenge.” See 37 C.F.R. 42.104(b)(4)-(5) (emphasis added). ABB’s
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`Trial No.: IPR2013-00062
`U.S. Patent No. 6,156,236B1
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`Reply and Declarations improperly attempt to expand the scope of this IPR by
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`adding new alleged grounds and evidence of un-patentability, including factual
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`evidence of the Onika system beyond what is described in the Gertz reference, but
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`allegedly implemented in practice such as at Sandia labs, which is well beyond
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`what a person of ordinary skill in the art (“POSITA”) would know from the
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`publications relied upon in the Petition.
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`A motion seeking to exclude belatedly disclosed or irrelevant evidence and
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`arguments addresses admissibility, not the sufficiency or credibility of evidence.
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`See, e.g., Yorkey v. Diab, 2011 WL 9558436, at *15 (Bd. Pat. App. & Interf. Jan.
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`18, 2011) (granting motion brought to exclude improper reply evidence, noting a
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`party “may not re-write its initial motion in the name of a reply”); see also Ex
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`Parte Tourapis & Boyce, Application USAN 11/631,449, 2013 WL 3323638, at *1
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`(PTAB, Feb. 7, 2013).2 First, ABB admits that “Gertz’s control tasks,
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`2 ABB wrongly claims the Board declared a bright-line rule against motions to
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`exclude new evidence raised in a reply brief in Avaya, Inc. v. Network-1 Security
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`Solutions, Inc., IPR2013-00071, Paper 75, Dec. 2, 2013. In Avaya, the Board only
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`stated that Avaya did not need to file a motion to strike in that case, because the
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`Board would consider excluding the evidence when it prepared its final written
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`2
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`
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`configurations and actions, as well as their connections (i.e., associations) within
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`Trial No.: IPR2013-00062
`U.S. Patent No. 6,156,236B1
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`Onika” were not identified in the Petition as meeting various claim limitations,
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`including driver functions, component functions, and component code. (Opp. at, p.
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`4.) These issues were raised for the first time on Reply, leaving RGB with no
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`opportunity to substantively respond and/or obtain expert testimony. This is the
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`essence of “sandbagging,” and these untimely arguments should be excluded. See,
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`e.g., Roth v. Loos & Co., No. C 08–02156 VRW, 2009 WL 2525484, at *3 (N.D.
`
`Cal. Aug. 17, 2009). ABB’s Petition was required to specify all portions from
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`Stewart upon which it was relying, regardless of the matters that RGB raised in
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`Response, and ABB offers no authority to the contrary. See 37C.F.R. 42.104(b)(4)-
`
`(5).
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`Second, ABB alleges in its Petition that “Control Tasks” in Gertz are “driver
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`functions” and Configurations are “extended driver functions.” Petition, p. 21. In a
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`dramatic shift of its position, ABB now relies on Dr. P. to argue that “cycle
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`decision. In fact, the Board expressly permitted motions to exclude: “Avaya and
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`Patent Owner each may file a single motion to exclude … identify[ing] specifically
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`each piece of evidence sought to be excluded.” id. p.4. Also, contrary to ABB’s
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`inexplicable denial, RGB timely objected to ABB’s improper Reply Evidence. See
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`Motion to Exclude at 1, Ex. 2015
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`3
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`
`
`
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`function” within a port based object is “an extended driver function.” Ex. 2014 at
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`Trial No.: IPR2013-00062
`U.S. Patent No. 6,156,236B1
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`125:19-22. ABB cannot shift gears on Reply (and the Hearing) without
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`substantially prejudicing RGB. Had ABB disclosed Dr. P.’s opinion in its Petition,
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`RGB would have argued at least that the cycle function is not a driver function
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`because it does not meet other claim limitations such as ’236 claims 2-6 and 10,
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`and/or obtained expert testimony refuting ABB’s position. [Motion to Exclude at
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`2-4.]
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`Third, ABB admitted in its Opposition (Opp. at 8-11) and at the Hearing that
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`its experts are offering facts of their personal knowledge and background of the
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`alleged operation of Onika and a demonstration of such a system at Sandia Labs.
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`But this proceeding is based upon what the alleged Gertz, Stewart and Morrow
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`publications teach to a POSITA, not upon alleged prior systems or demonstrations,
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`which are well beyond what a POSITA would know. There is no dispute that
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`ABB’s experts relied upon references other than the publications cited in ABB’s
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`Petition, including their own (unpublished and uncited) knowledge and experience,
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`and five new publications not cited in the Petition. (Opp. at p. 9.) This refusal to
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`confine their testimony to the issues before the Board infects ABB’s experts’ entire
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`analysis, and their attempts to “broaden” standard definitions are fatal to ABB’s
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`case. ABB’s approach is wholly improper, inapplicable to a POSITA, outside the
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`scope of this IPR proceeding, and should be excluded.
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`
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`4
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`
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`For the above reasons, RGB asks the Board to exclude (1) evidence and
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`Trial No.: IPR2013-00062
`U.S. Patent No. 6,156,236B1
`
`
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`arguments raised for the first time in ABB’s Reply; and (2) All of Dr. P.’s
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`testimony, and ¶¶ 18-31, 40-42 of Dr. Voyles’ Declaration.
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`
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`Respectfully submitted January 28, 2014,
`
`/Richard S. Meyer/
`RICHARD S. MEYER, Reg. 32541
`Boies, Schiller & Flexner LLP
`Tel:
`(202) 237-2727
`Email: rmeyer@BSFLLP.com
`
`
`
`
`
`/Richard T. Black/
`RICHARD T. BLACK, Reg. 40514
`Foster Pepper PLLC
`Tel:
`(206) 447-6251
`Email: blacr@foster.com
`
`
`
`/Douglas R. Wilson/
`DOUGLAS R. WILSON, Reg. 54542
`Heim, Payne & Chorush LLP
`Tel: (512) 242-3622
`Email: dwilson@hpcllp.com
`
`
`
`
`
`
`
`5
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`
`
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,156,236B1
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing document was served
`on PETITIONER by placing a copy into U.S. EXPRESS MAIL directed to the
`attorneys of record for the petitioner at the following address:
`
`Richard D. Mc Leod
`Klarquist Sparkman LLP
`One World Trade Center, #1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`
`Dated: January 28, 2014.
`
`/Richard T. Black/
`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
`
`
`Michael Jones
`Klarquist Sparkman LLP
`One World Trade Center, #1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`
`By:
`
`/Richard S. Meyer/
`RICHARD S. MEYER
`Boies, Schiller & Flexner LLP
`5301 Wisconsin Avenue NW,
`Suite 800
`Washington, DC 20015
`Tel: (202) 237-2727
`Fax: (202) 237-6131
`Email: rmeyer@BSFLLP.com
`
`Attorneys for Patent Owner,
`Roy-G-Biv Corporation
`
`/Douglas R. Wilson/
`Douglas R. Wilson
`Heim, Payne & Chorush LLP
`600 Travis, Suite 6710
`Tel: (512) 242-3622
`Fax: (713) 345-2924
`Email: dwilson@hpcllp.com
`
`
`
`
`
`
`6
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`
`
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