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`blacr@foster.com
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`Registration No.: 40514
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`ABB, INC.
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`Petitioner
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`v.
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`ROY-G-BIV CORPORATION
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`Patent Owner
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`_____________________________
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`Trial No.: IPR2013-00062
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`U.S. Patent No. 6,516,236B1
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`MOTION CONTROL SYSTEMS
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`_____________________________
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`PATENT OWNER ROY-G-BIV CORPORATION’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURSUANT TO 37 CFR § 42.123
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`In accordance with the Board’s instruction during the March 21, 2014
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`conference, RGB respectfully requests admission of the Deposition Transcript and
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`Exhibits of Mark McClung, and the Motion for Observations on Examination of
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`Marc McClung (“Observations”) under 37 CFR § 42.123(b) and/or 37 CFR §§
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`42.11 and 42.51(b)(1)(iii). Entry of evidence under Rule 42.123(b) requires that 1)
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`the information could not reasonably have been obtained earlier and 2) admission
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`of the evidence would be in the interests of justice. Both prongs are met here.
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`The McClung deposition evidence could not reasonably have been
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`submitted earlier. First, the deposition was taken by ABB not RGB, in the co-
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`pending litigation and not until March 14, 2014. Declaration of Richard T. Black,
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`March 24, 2013 (Ex. 2020) at ¶ 6. The final transcript did not exist until March 21,
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`2014. Id. Further, the McClung testimony confirms that ABB has been working
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`with Compumotor for some time in an attempt to obtain invalidating evidence.
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`Given that ABB issued the McClung deposition notice the day after the February
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`27, 2014 final IPR hearing, ABB no doubt strategically delayed the deposition to
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`prevent the independent corroboration testimony from coming to the Board’s
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`attention and contradict ABB’s previous inconsistent statements at the Trial that
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`there simply is no evidence of independent corroboration. Ex. 2020 at ¶5.
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`Second, RGB did not seek to depose McClung itself because, as the Board
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`knows, RGB contends that independent corroboration of conception is not required
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`1
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`under the facts of this case where the documents themselves establish exactly what
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`was conceived and when, and there is ample circumstantial evidence of
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`corroboration from other contemporaneous documents, 1995 PTO filings, etc., that
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`rule out fabrication. See, e.g., Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d
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`1333, 1346–47 (Fed. Cir. 2013). (“[W]e do not impose an impossible standard of
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`independence on corroborative evidence by requiring that every point . . . be
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`corroborated by evidence having a source totally independent of the witness. . . .
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`Reliable evidence of corroboration preferably comes in the form of records made
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`contemporaneously with the inventive process.”) (internal quotations omitted).
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`But, after learning that the Board viewed independent corroboration by a third
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`party as necessary at the February 27, 2014 hearing, and in light of the inconsistent
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`statements made by ABB, RGB had no choice but to bring such evidence to the
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`Board’s attention, which it did on March 21, 2014, the day of the final transcript.
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`If the Board considers “independent corroboration” to be required in this
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`case, admission of the McClung deposition testimony is clearly “in the interests of
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`justice.” First, Mr. McClung’s testimony provides independent corroboration of the
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`key conception evidence, i.e., the 7/24/1994 RGB Design Spec., McClung Ex. 5,
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`Ex 2010-1 (2nd RGB Spec.). Indeed, at the March 21 conference, ABB did not
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`dispute this point. By August 25, 1994, both Mr. McClung and Mr. Goodnick had
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`read the 2nd RGB Spec. under the May 19, 1994 NDA referred to on page 2 of the
`2
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`Spec. See Observations ¶¶ 5, 6, McClung Exs. 5, 14-15, Ex. 2021-5. Mr. McClung
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`confirmed the existence, contents, and authenticity of the 2nd RGB Spec in the
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`August – September 1994 timeframe. See Observation 1 (McClung identified
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`McClung Ex. 5 as follows: “This is the second draft of the WOSA/XMC MCAPI .
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`. . and MCSPI Design Specification”); Observation 2 (McClung Ex 6, entitled
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`“Roy-G-Biv Spec. 2.0 Meeting Minutes, September 8, 1994 3:30 a.m.” details a
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`meeting and questions on the 2nd RGB Spec brought up by Compumotor
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`employees); Observations 3-4 (McClung “recognized” McClung Exs. 7-10 as
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`Emails dated 9/19/1994 and later giving his detailed feedback on the 2nd RGB
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`Spec.) Indeed, at page 132 line 2 to page 132, line 17 in response to the question
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`by ABB counsel “[a]gain, this is feedback you provided after reviewing the spec
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`2?”, Mr. McClung testified: “Exactly.”
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`This evidence, by ABB’s own witness, meets even the most exacting
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`corroboration standard for Dave Brown’s declaration exhibits with third party
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`evidence. Moreover, the McClung testimony and exhibits directly contradict
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`ABB’s argument at the 1/23 Hearing that there is no evidence of independent
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`corroboration and satisfy the Board’s requests for independent corroboration. Ex.
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`2020 at ¶5. It would be a miscarriage of justice for the Board to ignore this
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`information now, as ABB’s own deposition established clear corroboration of
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`conception.
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`3
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`Second, there is no prejudice to ABB. ABB arranged for and took the
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`McClung deposition. ABB elicited the vast majority of the corroboration evidence
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`itself. See Observations 1-4. The deposition also shows ABB has been working
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`with Compumotor, Goodnick, and McClung for months. See Black Decl. ¶¶ 3-4, 7.
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`ABB itself has had access to the Compumotor documents and elicited much of the
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`corroborating testimony, and then had the opportunity during its re-direct of
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`McClung to ask further questions on corroboration. Id. at 8. ABB’s alleged
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`prejudice is premised entirely on issues outside the scope of IPR.
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`Third, the corroboration evidence is not futile. Despite ABB’s argument,
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`there is more than sufficient corroboration of diligence due to the contemporaneous
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`records submitted by RGB and ABB including inventor time logs and the XMC
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`project log. The law is clear that corroboration of diligence is viewed under a
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`looser standard than conception. Brown v. Barbacid, 436 F.3d 1376, 1382 (Fed.
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`Cir. 2006). Lastly, McClung debunked ABB’s claims of prejudice due to
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`inventorship or derivation. See Exhibit 2021, on page 168, line 17 - page 169, line
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`6 (Mr. McClung did not claim to participate in drafting or contribute to any of the
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`concepts in the 1st RGB XMC Draft Ex. 12); id. at page 198, line 13 – page 200,
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`line 8 (McClung did not invent concepts of either allowing a user or programmer
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`to specify “the destination for control commands” or “where the resultant code for
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`a motion control device should go,” as ABB alleges in litigation).
`4
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`Finally, in the interests of justice, the Board has inherent authority to ensure
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`accurate statements are made in its trials. It therefore should also consider the
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`McClung evidence under the duty of candor rules, §§ 11.303, 42.11, and
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`inconsistent position rules, § 42.51(b)(1)(iii), as the new evidence is inconsistent
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`with arguments made by ABB counsel that no independent corroboration exists.
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`ABB itself has a duty to bring this evidence to the attention of the Board under
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`§§ 11.303 and 42.11 (duty of candor and good faith). Cf. Ball Corp. v. Xidex
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`Corp., 967 F.2d 1440, 1447 (10th Cir. 1992) (duty of candor in inter partes
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`reexamination applies to both the requester and the patent defender, and includes
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`an obligation to correct misrepresentations to the PTO). RGB does not know when
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`ABB first learned of this corroboration evidence inconsistent with ABB’s position.
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`But, ABB certainly now knows that a position it advanced just a few weeks ago is
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`false. There is in fact independent corroborating evidence. Any effort by ABB to
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`conceal that fact from the Board and the record in this case now would be a
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`misrepresentation of fact by omission. For these reasons, RGB requests the Board
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`consider this new evidence.
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`Dated: March 24, 2014. Respectfully submitted by:
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`/Richard S. Meyer/
`/Richard T. Black/
`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
`5
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`/Douglas R. Wilson/
`DOUGLAS R. WILSON, 54542
`Heim, Payne & Chorush LLP
`(512) 242-3622,
`dwilson@hpcllp.com
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies 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:
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`Richard D. Mc Leod
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
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`By:
`Dated: March 24, 2014
`/Richard S. Meyer/
`/Richard T. Black/
`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
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`
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`Michael Jones
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
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`
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`/Douglas R. Wilson/
`DOUGLAS R. WILSON, 54542
`Heim, Payne & Chorush LLP
`(512) 242-3622,
`dwilson@hpcllp.com
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`Attorneys for Patent Owner,
`Roy-G-Biv Corporation
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`1
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