`
`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
`___________________
`
`DECLARATION BY RICHARD T. BLACK
`IN SUPPORT OF PATENT OWNER’S
`MOTION TO SUBMIT SUPPLEMENTAL EVIDENCE
`
`
`
`
`
`
`
`1. My name is Richard T. Black. I have personal knowledge of the facts
`
`contained in this Declaration, am of legal age, and am otherwise competent to
`
`testify.
`
`2.
`
`I am lead counsel for Patent Owner in this proceeding, Roy-G-Biv
`
`Corporation. Both of my backup counsel also represent Plaintiff Roy-G-Biv.
`
`Corporation (RGB) in the co-pending District Court Litigation, Roy-G-Biv
`
`Corporation v. ABB, Inc., et al. Case No. 6:11-cv-00622, (E.D. Tex.) (the
`
`Litigation), in which RGB alleges infringement of the same RGB patents at issue
`
`in IPR2013-00062, 00063, and 00074, i.e., U.S. Patent Nos. 6,516,236; 6,513,058;
`
`and 8,073,557 (Patents-in-Suit).
`
`3.
`
`Upon information and belief, ABB subpoenaed Parker-Hannifin
`
`Corporation (Parker) for documents from Compumotor on or about February 8,
`
`2013 (See ABB Subpoena to Parker-Hannifin, Exhibit 2020-1). Upon information
`
`and belief, Parker produced responsive documents to ABB and RGB on or about
`
`March 8, 2013. Upon information and belief, prior to this time, RGB produced
`
`numerous documents to ABB concerning RGB’s dealings with Compumotor in the
`
`1994 timeframe. Upon information and belief, some but not all the Parker
`
`produced documents were previously produced to ABB by RGB. Upon
`
`information and belief, on or about April 15, 2013, ABB filed under seal and
`
`served on RGB
`
`its First Amended Answer, Affirmative Defenses, and
`
`
`
`1
`
`
`
`
`
`Counterclaims alleging, inter alia, that the Patents-in-Suit incorporate ideas
`
`conceived by Compumotor, including Marc McClung.
`
`4.
`
`Upon information and belief, on or about September 18, 2013, ABB
`
`served Supplemental Initial Disclosures disclosing Stuart Goodnick and Marc
`
`McClung, both Compumotor employees during the relevant time period, as
`
`persons having knowledge of relevant facts concerning the conception of the
`
`subject matter disclosed in the Patents in Suit and knowledge concerning the
`
`design, development, manufacture, operation, marketing and/or sales of one or
`
`more prior art Parker systems, including Motion Toolbox and Motion Architect.
`
`(See ABB’s First Supplemental Initial Disclosures, See Exhibit 2020-2.) Id. at p. 5.
`
`5.
`
`On or about January 23, 2014 at the Trial in the proceedings IPR2013-
`
`00062 and IPR2013-00074, Mr. McLeod, lead counsel for ABB, asserted with
`
`regard to the July 24, 1994 Design Specification and Analysis Specification that
`
`RGB attached as Exhibit 2010-1 and 2, that there was, “no evidence that they were
`
`communicated to another person at a specific date and a specific form with specific
`
`information in them.” (See Oral Hearing Transcript in IPR2013-00062, Paper 76,
`
`page 16:25-17:2). He also stated with respect to the “need for independent third-
`
`party corroboration” that “[t]hey have none. They’ve admitted they have none. It’s
`
`simply not there.” Id. at page 68, 13-18. The above Design Specification exhibit
`
`was also introduced at Mr. McClung’s deposition as Exhibit 5 and was referred to
`
`
`
`2
`
`
`
`
`
`therein as the 2nd RGB Spec. (See Exhibit 2020-5). At the February 27, 2014 Trial
`
`in IPR2013-00063, it became apparent that the Board might view as necessary
`
`evidence of completely
`
`independent,
`
`third party corroboration of RGB’s
`
`conception evidence.
`
`6.
`
`ABB noticed Marc McClung’s Deposition on or about February 28,
`
`2014, the day after the IPR final hearing in IPR2013-00063. ABB took his
`
`deposition on or about March 14, 2014 (See Notice of Deposition, Exhibit 2020-3),
`
`after RGB had cancelled claims in proposed IPR2013-00122 and it had therefore
`
`been terminated by the Board.
`
`7.
`
`At his deposition, Mr. McClung testified that ABB and certain
`
`Compumotor employees had been working together regarding the co-pending
`
`litigation for some time. (Ex. 2021, McClung Transcript at 204:20-207:1)
`
`8.
`
`ABB counsel took both direct and redirect examination of this witness
`
`at his deposition on a variety of topics, including independent corroboration of
`
`RGB’s conception evidence. Upon information and belief, ABB has had access to
`
`the RGB-produced Compumotor documents and the Parker-produced Compumotor
`
`documents and elicited much of the corroborating testimony itself. After RGB’s
`
`counsel asked questions of Mr. McClung, ABB’s counsel asked questions on re-
`
`direct of McClung and had the opportunity during its re-direct to ask further
`
`
`
`3
`
`
`
`questions on proof of corroboration. (Exhibit 2021, McClung Transcript at 214:3—
`
`218:25.)
`
`9.
`
`Upon information and belief, RGB attempted to expedite delivery, but
`
`the final deposition transcript of Mr. McClung’s deposition was not available until
`
`March 21, 2014. (See Mark McClung Transcript, Exhibit 2021). On that same day,
`
`RGB sought a conference call with the Board.
`
`10.
`
`I
`
`further declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true, and further that
`
`these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code, and that such willful false statements may jeopardize the validity of the
`
`application or any patent issued thereon.
`
`Executed this 24th day of March, 2014 at Seattle, Washington.
`
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`
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`
`Richard T. Black
`
`
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