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 OPPOSITION TO PATENT OWNER’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`
`
`
`
`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 OPPOSITION TO PATENT OWNER’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`
`
`
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`TABLE OF CONTENTS
`
`Page
`
`
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`LEGAL STANDARDS ................................................................................... 1
`
`III. DISCUSSION .................................................................................................. 2
`
`A.
`
`RGB Was Not Reasonably Diligent In Seeking Evidence ................... 2
`
`B.
`
`RGB Fails to Meet the “Interests of Justice” Standard ......................... 4
`
`1. McClung Is An Unnamed Co-inventor ....................................... 4
`
`2. McClung’s Testimony Does Not Cure All Defects .................... 4
`
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`
`
`i
`
`
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`TABLE OF AUTHORITIES
`
`Page
`
`
`
`Cases
`
`Coleman v. Dines,
`754 F.2d 353 (1985) ............................................................................................... 5
`
`Gould v. Schawlow,
`363 F.2d 908 (CCPA 1966) .................................................................................... 5
`
`Hahn v. Wong,
` 892 F.2d 1028 (Fed. Cir. 1989) ............................................................................. 1
`
`Huston v. Ladner,
`973 F.2d 1564 (Fed. Circ. 1992) ............................................................................ 1
`
`Illumina, Inc. v Columbia Univ.,
`IPR2013-00011, Paper 87 at 5 ...........................................................................2, 4
`
`Naber v. Cricchi,
`567 F.2d 382 (CCPA 1977) .................................................................................... 5
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`Prior to the Trial Argument, RGB did not obtain testimony or introduce
`
`documents involving Marc McClung (“Late Submission”), even those it possessed
`
`for years. ’062 Trial, Paper 76, 25:1-6. ABB could not provide McClung’s recent
`
`testimony due to the terms of the Litigation PO. (Auvil Decl., ¶ 42). Moreover,
`
`consideration of the Late Submission without contrary evidence showing that
`
`McClung is an unnamed co-inventor unfairly prejudices ABB.
`
`II. LEGAL STANDARDS
`
`Under Rule 123(b), the proponent “must show why the supplemental
`
`information reasonably could not have been obtained earlier, and that consideration
`
`of the supplemental information would be in the interests-of-justice.”
`
`The “interests-of-justice” standard is higher than “good cause.” 77 Fed.
`
`Reg. 48622. Misunderstanding of the law on corroboration does not qualify as
`
`“good cause.” Hahn v. Wong, 892 F.2d 1028, 1034 (Fed. Cir. 1989); see also
`
`Huston v. Ladner, 973 F.2d 1564 (Fed. Circ. 1992) (stating that “attorney
`
`negligence” is not “good cause” and affirming that “good cause” requires proof
`
`that late submitted declaration could not have been obtained and presented earlier).
`
`“The testimony of someone who is not a witness in this trial and who has not
`
`testified or been subject to cross-examination in the context of this trial is of
`
`insufficient value to warrant its late submission.” Illumina, Inc. v Columbia Univ.,
`
`ABB’s Opposition to RGB’s Motion to Submit Supplemental Information Page 1
`
`
`
`IPR2013-00011, Paper 87 at 5 (denying late submission); see also Paper 125 at 3.
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`III. DISCUSSION
`
`A. RGB Was Not Reasonably Diligent In Seeking Evidence
`
`The Board ordered RGB to show that it could not have reasonably obtained
`
`(at an earlier time) the evidence proffered in the Late Submission. However, RGB
`
`essentially concedes its failure to obtain any testimony from Marc McClung
`
`between April 18, 2013 (’062 Institution Decision) and March 2014 (deposition of
`
`McClung by ABB), even though McClung has been known and readily available to
`
`RGB throughout 2013. Ex. 2019, 14:23 – 15:1:
`
`JUDGE GIANNETTI: So you've been aware of this Compumotor
`
`thing for some time. Is that right?
`
`MR. MEYER: We have been aware of the Compumotor issue...yes.
`
`
`
`First, McClung was identified as being relevant to the validity of the claims
`
`as least as early as April 15, 2013 in ABB’s First Amended Answer and
`
`Counterclaims, Litigation Dkt. 138. (Auvil Decl., ¶ 3-8, 39-41; also ’062 Trial,
`
`Ex. 1025, submitted May 2013 (“McClung brought up several key suggestions that
`
`were integrated…”)). ABB asserted that McClung is an unnamed inventor on at
`
`least the ’236 and ’557 Patents based upon documents bearing RGB’s production
`
`numbers in the Litigation. (Id.) RGB insisted that these documents were
`
`confidential under the Litigation Protective Order (Id.), preventing ABB from
`
`bringing this issue to the Board as the undersigned does not have access to these
`
`ABB’s Opposition to RGB’s Motion to Submit Supplemental Information Page 2
`
`
`
`documents. (Id. at ¶ 9-12). On March 21, 2014, the Court denied RGB’s motion to
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`strike the counterclaims making the following information public:
`
`See Docket No. 138 at 27 (“RGB is asserting rights to both RGB’s
`
`Real-Time Mode and Compumotor’s Code-Generating Mode in all of
`
`the claims in each of the patents in the suit.”); id. at 99 (“McClung’s
`
`concept of ‘allow[ing] the user or programmer to specify where the
`
`resultant code should go’ was incorporated into claims 8, 9, 11, 23,
`
`24, 26, 38, 39, 41, 53, 54, and 56 of the ’557 [P]atent, and in claims 8
`
`and 9 of the ’236 [P]atent.”) (Ex. 1143, p. 4).
`
`
`
`Second, RGB’s attorneys do not explain why no effort was made to locate or
`
`contact McClung during 2013. Yet, Google readily provides McClung’s current
`
`employment and contact information in seconds (Ex. 1144, ¶ 5 “Dragnet”; also
`
`Alex Decl., ¶ 3-5), and this same page existed in January 2013 (Ex. 1145).
`
`Third, RGB does not allege that McClung was hostile or unavailable (Alex
`
`Decl., ¶ 6-12), nor did RGB ask the Board for compelled discovery of his
`
`testimony at Scheduling Conferences in May/June (or anytime thereafter). Rather,
`
`RGB made a strategic decision to impede discovery involving McClung (Auvil
`
`Decl., ¶ 9-30), perhaps fearing that he would assert co-inventorship. Using the
`
`Litigation PO as sword and shield, RGB still hides documents and testimony
`
`demonstrating that McClung contributed materially to the claims, refusing to allow
`
`critical documents to be released to the undersigned. (Auvil Decl., ¶ 31-38)
`
`Ultimately, RGB presented a damning reason for not pursuing McClung
`
`ABB’s Opposition to RGB’s Motion to Submit Supplemental Information Page 3
`
`
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`earlier: “we didn’t know what this witness was going to say…” (Ex. 2019 at 12:1-
`
`3.) Wouldn’t a reasonably diligent attorney have phoned McClung and asked him?
`
`B. RGB Fails to Meet the “Interests of Justice” Standard
`
`
`
`First, RGB was not “fully diligent” as required. 77 Fed. Reg. 48622.
`
`Second, McClung’s testimony outside this Trial falls squarely within Illumina.
`
`Third, RGB’s Late Submission unfairly prejudices ABB, as explained below.
`
`1. McClung Is An Unnamed Co-inventor
`
`The testimony of a co-inventor is not “independent corroboration.” (ABB
`
`Reply at 2). McClung’s status as an inventor cannot be fairly addressed at this
`
`stage. Had RGB pursued McClung as an “independent” source and timely
`
`presented this in it Response(s), the undersigned would have been entitled to
`
`RGB’s inconsistent documents for ABB’s Reply. Had RGB timely provided all
`
`inconsistent evidence, ABB’s Reply could have focused on McClung’s status
`
`and/or other shortcomings in the WOSA/XMC documents. The Board should not
`
`consider the Late Submission apart from contrary evidence that RGB shields with
`
`the Litigation PO. (Auvil Decl., ¶ 31-38).
`
`Critically, the weight to be given to McClung cannot be fairly decided solely
`
`on his testimony. For example, McClung may not think he is an inventor, but he
`
`has no understanding of the law on inventorship. (Ex. 2021, 167:1-2).
`
`2. McClung’s Testimony Does Not Cure All Defects
`
`RGB’s Late Submission does not overcome other defects in proof.
`
`ABB’s Opposition to RGB’s Motion to Submit Supplemental Information Page 4
`
`
`
`First, RGB relies on two WOSA/XMC documents (the “Design” and
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`“Analysis” documents). McClung gave no testimony that he received or reviewed
`
`both documents, leaving the date of the latter uncorroborated.
`
`Second, possession of every claim element has not been demonstrated as
`
`required by Coleman v. Dines, 754 F.2d 353 (1985). See ABB’s Reply(s) at 1-2.
`
`
`
`Third, McClung does not corroborate diligence in reduction to practice.
`
`Conception and diligence are evaluated separately. Gould v. Schawlow, 363 F.2d
`
`908, 911-918 (CCPA 1966); Even if McClung were deemed a non-inventor (after
`
`a full and fair examination of contrary evidence still withheld by RGB), his
`
`testimony does not bolster Brown’s time records. See Naber v. Cricchi, 567 F.2d
`
`382 (CCPA 1977).
`
`IV. CONCLUSION
`
`The Board should deny RGB’s motion and expunge the Late Submission.
`
`
`
`Dated: March 26, 2014
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod. Reg. No. 46,921
`rick.mcleod@klarquist.com
`Klarquist Sparkman LLP
`121 S.W. Salmon Street. Suite 1600
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`ABB’s Opposition to RGB’s Motion to Submit Supplemental Information Page 5
`
`
`
`Case IPR2013-00062/ Case IPR2013-00282
`Patent 6,516,236 B1
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of ABB’s Opposition to
`
`Patent Owner’s Motion to Submit Supplemental Information was served on
`
`counsel of record for the ’236 Patent Owner:
`
`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
`
`
`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 March 26, 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
`
`
`
`Page 1
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