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 RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON EXAMINATION OF MARC MCCLUNG
`
`
`
`
`
`
`
`
`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 RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON EXAMINATION OF MARC MCCLUNG
`
`
`
`
`
`
`
`
`Case IPR2013-00062 (Joined with IPR2013-00282)
`Patent 6,516,236 B1
`I. MR. MCCLUNG IS A WITNESS IN CONCURRENT LITIGATION
`
`In Ex. 2021, on page 216, lines 19-21, Mr. McClung testified that he did not
`
`“have a dog in this fight.” On page 143, line 24 to page 144, line 1, he testified
`
`that he was not represented by counsel at the deposition. On page 167, lines 1-2,
`
`he testified that he has “no legal background.” On page 106, line 24 – page 107,
`
`line 3, he testified: “…for the second [WOSA/XMC] draft, uh, I was asked
`
`to…review the specification, uh, work with Dave, provide feedback…” This
`
`testimony is relevant to his role in the litigation and to his expertise on legal issues.
`
`II. WOSA/XMC & THE PATENTS INCLUDE MR. MCCLUNG’S IDEAS
`
`In Ex. 2021, on page 71, line 17 – page 72, line 3, Mr. McClung was asked:
`
`“…again these are sort of these core functions that Compumotor Parker came up
`
`with as part of this exercise of this distilling down the…400, 6000 [Series
`
`Controller] functions…to sort of a core [set]?” He responded: “That's correct.”
`
`In Ex. 2021, on page 122, line 6 – 124, line 4, the following exchange occurred:
`
`[Q] So again, if you look, uh, at Exhibit 4 [i.e., first draft XMC spec]
`
`under this 3.8.1 I see a heading called Actions…., and underneath it
`
`looks like a "MoveAbs" so probably move absolute? [A] Right.
`
`Right. [Q] "Jog" and then "Stop." Do you see those three? [A]
`
`That's correct, hm-m. [Q] So here again "Need kill" a VI from the
`
`Motion Toolbox that Compumotor had developed, right? [A] Hm-
`
`m. Yes. [Q] This is Compumotor feedback on Mr. Brown's
`
`specification of we need to add a kill? [A] …Yeah, so -- so at that
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Examination of Marc McClung
`
`Page 1
`
`
`
`
`
`Case IPR2013-00062 (Joined with IPR2013-00282)
`Patent 6,516,236 B1
`
`time, uh, yeah, we were -- probably had that mindset, yeah, this – this
`
`core functionality. We were probably comparing, you --you know,
`
`the -- the Motion Toolbox Guide against, you know, the [XMC]
`
`specification….And, uh, and it's pretty obvious we were. Especially
`
`when you get into my -- my feedback in – in draft -- for [XMC] draft
`
`2. It's almost like verbatim. [Q] Verbatim from the Motion
`
`Toolbox? [A] Yeah. Yeah, because it's basically the -- the titles.
`
`In Ex. 2021, on page 133, line 20 – page 135, line 19, Mr. McClung was asked
`
`about email he sent Dave Brown which included the statements:
`
`Will the here [sic] driver administrator allow the user to select more
`
`than one motion-control device? … We have a few customers who
`
`use several of our products in one application.
`
`Mr. McClung responded, in part, as follows:
`
`So I was probably thinking back to, you know, my systems
`
`experience, you know, how would you -- I was just trying to imagine
`
`how would you do this with the motion, the XMC component…
`
`In Ex. 2021, on page 142, lines 13 – 20, Mr. McClung explained an email he sent
`
`to Dave Brown:
`
`For example, in the, um -- Compucam, for example, will typically
`
`generate these, uh -- generate a program, and, uh, which can be
`
`downloaded -- uh, would generate a 6000 program, which would be
`
`downloaded to the unit using -- using motion Architect. Um, and so
`
`that's program code generation, you know…
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Examination of Marc McClung
`
`Page 2
`
`
`
`
`
`In Ex. 2021, on page 120, line 16 to page 121, line 19, Mr. McClung testified
`
`Case IPR2013-00062 (Joined with IPR2013-00282)
`Patent 6,516,236 B1
`
`regarding feedback that was provided to RGB by Compumotor:
`
`…someone who's not a software developer…they see GetPosition, but
`
`they don't see…they might be confused, like, well, whi -- which
`
`position is that… exactly…. so that is providing feedback. I think, uh,
`
`I mentioned earlier, you know…one of my goals was to…provide
`
`advice to get an API with functionality that -- that is clear and
`
`unambiguous…I think that was probably an effort at that time. You
`
`know, let's…clarify some of these things, you know, we're --we're not,
`
`uh…you know, our experience are usually for a servo, a controller…
`
`there would be two kinds of position that -- that you would want to
`
`query…So someone saw that and said, well, you know, that's vague.
`
`You know, I -- I want -- it -- it would be better to do it this way.
`
`This testimony is relevant to conception of claims at issue, whether Mr. McClung
`
`is an inventor thereof, whether he is capable of providing evidence independent of
`
`the inventors, and whether ABB would be prejudiced by the Late Submission.
`
`Dated: March 26, 2014
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/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
`
`ABB’s Response to Patent Owner’s Motion
`for Observations on Examination of Marc McClung
`
`Page 3
`
`
`
`
`
`Case IPR2013-00062 (Joined with 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 Response to Patent
`
`Owner’s Motion for Observations on Examination of Marc McClung 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
`
`
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