`
`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
`U.S. Patent No. 6,516,236B1
`MOTION CONTROL SYSTEMS
`_____________________
`
`PATENT OWNER ROY-G-BIV (“RGB”)
`MOTION FOR OBSERVATIONS ON EXAMINATION
`OF MARC MCCLUNG
`
`
`
`
`
`
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236
`
`1. McClung Received the 7/24/94 XMC Spec. (Ex. 2010-1/2012-1/2013-1)
`
`In Ex. 2021, on page 124, line 15 – 126, line 5, ABB’s counsel marked Ex. 2010-1
`
`from the 0062 IPR (Ex. 2012-1 in 0063, Ex. 2013-1 in 0074), the 2nd Draft XMC
`
`Spec. as Ex. 5 and asked “And do you know what this document is?” Mr. McClung
`
`responded “This is the second draft of the WOSA/XMC MCAPI . . . and MCSPI
`
`Design Specification.” At page 125, lines 6-13, ABB’s counsel then elicited
`
`testimony from Mr. McClung that after an April 1994 meeting he received and
`
`provided feedback on the second draft. This testimony is relevant to ABB’s
`
`argument that no independent corroboration exists for RGB’s conception evidence.
`
`2.
`
`9/8/1994 Compumotor Meeting Minutes Comment on the XMC Spec.
`
`In Ex. 2021, on page 125, line 16 – page 126, line 10, after ABB’s counsel handed
`
`him Ex. 6, entitled “Roy-G-Biv Spec. 2.0 Meeting Minutes, September 8, 1994
`
`3:30 a.m.,” (Ex. 2021-6) Mr. McClung testified that “It’s most likely I attended
`
`this…I can’t recall exactly…attending the meeting, but I do…remember these
`
`questions–that were brought up.” This testimony is relevant to ABB’s argument
`
`that no independent corroboration exists for RGB’s conception evidence.
`
`3. McClung’s 9/19/1994 Email Comments on 7/24/94 XMC Spec.
`
`In Ex. 2021, on page 130, lines 1-25, after being handed an email dated 9/19/94
`
`from McClung to Brown marked as Ex. 7 by ABB’s counsel (Ex. 2021-7), Mr.
`
`
`
`1
`
`
`
`
`McClung testified, “Yes, I do recognize this.” “[I]t’s some of my feedback, you
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236
`
`know, re–regarding…this section in the spec related to something called
`
`initialization tuning. And also...I guess, the code generation aspects of that.” This
`
`testimony is relevant to ABB’s argument that no independent corroboration exists
`
`for RGB’s conception evidence.
`
`4.
`
`Additional 1994 Emails from McClung Comment on XMC Spec.
`
`In Ex. 2021, on page 131, line 2 to page 132, line 17, after being handed copies of
`
`1994 emails from McClung to Brown marked as Exhibits 8-10 by ABB’s counsel
`
`(Exhibits 2021-8-10), Mr. McClung testified that “Yes I do” recognize them, after
`
`which ABB counsel asked “Again, this is feedback you provided after reviewing
`
`the spec 2?” and Mr. McClung testified: “Exactly.” This testimony is relevant to
`
`ABB’s argument that no independent corroboration exists for RGB’s conception
`
`evidence.
`
`5.
`
`The 7/24/94 XMC Spec. was disclosed to Compumotor under NDA
`
`In Ex. 2021, on page 183, line 6 - page 184, line 7, Mr. McClung testified that the
`
`non-disclosure agreement between ROY-G-BIV Corporation and Compumotor
`
`dated 5/19/94, discussed on page two of the 7/24/94 XMC Spec., is Ex. 14 (Ex.
`
`2021-14) “judging by the dates.” This testimony is relevant to ABB’s argument
`
`that no independent corroboration exists for RGB’s conception evidence.
`
`
`
`2
`
`
`
`The Parker Log Text File (Ex. 15) Includes Comments on XMC Spec.
`
`Trial No.: IPR2013-00062
`U.S. Patent No. 6,516,236
`
`
`6.
`
`In Ex. 2021, on pages 185, line 22 - page 186, line 11, Mr. McClung identified Ex.
`
`15 (Parker prod. nos. 19-43) (Ex. 2021-15) as a file of emails and correspondence
`
`between Compumotor and RGB. On page 192, lines 5-17, Mr. McClung confirmed
`
`that “that’s correct” when asked if Parker 27 shows that by 8/25/94 “he had read
`
`[the XMC Spec].” This testimony is relevant to ABB’s argument that no
`
`independent corroboration exists for RGB’s conception evidence.
`
`7.
`
`ABB Has Been Working with Compumotor Employees
`
`In Ex. 2021, on page 201, line 21-page 207, line 1, and page 209, line 10 to page
`
`210, line 19, Mr. McClung testified that he had “two pre-interview...discussions”
`
`with attorneys from ABB, including ABB in-house attorney Robert Nupp and
`
`attorneys from Squire Sanders, and Stuart Goodnick “told me that he had been
`
`involved for some time” and “it’s been kind of like a burden for him.” This
`
`testimony is relevant to whether ABB would be prejudiced by entry of the
`
`evidence of independent corroboration from Compumotor and Mr. McClung.
`
`
`
`
`Respectfully submitted by:
`/Richard T. Black/
`/Richard S. Meyer/
`RICHARD T. BLACK, 40514 RICHARD S. MEYER, 32541
`Foster Pepper PLLC
`Boies, Schiller & Flexner LLP
`(206) 447-6251
`(202) 237-2727
`blacr@foster.com
`rmeyer@BSFLLP.com
`
`
`
`Dated: March 24, 2014
`/Douglas R. Wilson/
`DOUGLAS R. WILSON, 54542
`Heim, Payne & Chorush LLP
`(512) 242-3622,
`dwilson@hpcllp.com
`
`
`
`3
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`
`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, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`
`Dated: March 24, 2014
`
`
`
`By:
`
`/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
`Registration No.: 40514
`
`/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
`Registration No.: 32541
`
`Attorneys for Patent Owner,
`Roy-G-Biv Corporation
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
