`
`Filed on behalf of ABB, Inc.
`
`By: Richard D. Mc Leod (Reg. No. 46,921)
`Rick.mcleod@klarquist.com
`John D. Vandenberg (Reg. No. 31,312)
`john.vandenberg@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
`
`____________
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`____________
`
`MOTION FOR RECONSIDERATION OF DECISION ON INSTITUTION
`OF INTER PARTES REVIEW (37 C.F.R. § 42.108)
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STATEMENT OF RELIEF ............................................................................. 1
`
`III. ARGUMENT ................................................................................................... 2
`
`A.
`
`The Standard of Review for Rehearing is Abuse of Discretion ............ 3
`
`B.
`
`The Board Erroneously Held That
`The 236 Patent Defined “Primitive Operations” ................................... 4
`
`1.
`
`Both “Move Relative” and
`“Move Absolute” Can Be Emulated ........................................... 7
`
`2. Motion Control Systems Exist That Do Not
`Require Both “Move Relative” and “Move Absolute”............... 9
`
`3.
`
`The Construction For Primitive Operations
`Cannot Exclude The “Exemplary Software System” ...............11
`
`C. WOSA Is Directly Applicable.............................................................11
`
`IV. CONCLUSION ..............................................................................................15
`
`
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`Page
`
`Cases
`
`Merck & Co., Inc. v. Teva Pharms. USA, Inc.,
`395 F. 3d 1364 ( Fed.Cir. 2005) ............................................................................. 4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 4
`
`Renda Marine, Inc. v. U.S.,
`509 F.3d 1372 (Fed. Cir. 2007) .............................................................................. 3
`
`Research Mktg. Sys. v. Troy,
`659 F.3d 1345 (Fed. Cir. 2011) .............................................................................. 4
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ................................................................................ 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`LIST OF EXHIBITS
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`Previously Filed
`
`1001 David W. Brown et al., U.S. Patent No. 6,516,236, “Motion Control
`Systems”, Issued February 4, 2003.
`
`1002 Gertz, M.W., A Visual Programming Environment for Real-Time Control
`Systems. Ph.D. dissertation, Carnegie Mellon University, Nov. 22, 1994
`(“Gertz”).
`
`1003 Microsoft Corporation, WOSA (Windows Open Services Architecture)
`Extensions for Financial Services, April 14, 1994 (“WOSA/XFS”).
`
`1004 Stewart, D.B., Real-Time Software Design and Analysis of Reconfigurable
`Multi-Sensor Based Systems. Ph.D. dissertation, Carnegie Mellon
`University, April 1, 1994 (“Stewart”).
`
`1005 Morrow, J. Dan; Nelson, Bradley J.; and Khosla, Pradeep, Vision and
`Force Driven Sensorimotor Primitives for Robotic Assembly Skills.
`Institute for Software Research, paper 574, January 1, 1995 (“Morrow”).
`
`1006 Microsoft Press, MS Windows 3.1 Device Driver Adaptation Guide, ©
`1991, Chs. 1-2, 4, 10-12 (“DDAG”).
`
`1007 Hall, Marty and Mayfield, James, Improving the Performance of AI
`Software: Payoffs and Pitfalls in Using Automatic Memoization.
`Proceedings of Sixth International Symposium on Artificial Intelligence,
`Monterrey, Mexico, September 1993 (“Hall”).
`
`1008 Michael Wright et al., U.S. Patent No. 5,453,933, “CNC Control System,”
`issued Sept. 26, 1995 (“Wright”).
`
`1009 David B. Stewart et al., The Chimera II Real-Time Operating System for
`Advanced Sensor-Based Control Applications. Institute for Software
`Research, paper 613, January 1, 1992 (“Chimera II”).
`
`1010 Cashin, J., WOSA: Windows Open Services Architecture, January 11,
`1994 (“Cashin”).
`
`1011 Kevin Holloway, Motion Software Heads Toward Friendlier User
`Environments, published at www.roygbiv.com/XMCreview1.htm, January
`
`iii
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`21, 1997 (“Holloway”).
`
`1012 Plaintiff Roy-G-Biv Corporation’s Opening Markman Brief, Roy-G-Biv
`Corp., v. Fanuc Ltd., et al. (E.D.Tex., Nov. 21, 2008) (CASE NO. 2:07-
`CV-0418-DF-CE) (“RGB Markman Brief”).
`
`1013 Claim Construction Order, Roy-G-Biv Corp., v. Fanuc Ltd., et al.
`(E.D.Tex., Nov. 21, 2008) (CASE NO. 2:07-CV-0418-DF-CE)
`(“Markman Order”).
`
`1014 U.S. Patent No. 5,881,230, “Method and System for Remote Automation
`of Object Oriented Applications,” issued Mar. 9, 1999 (“Christensen”).
`
`1015 U.S. Patent No. 5,691,897, “Motion Control Systems,” issued Nov. 25,
`1997 (“the ’897 Patent”).
`
`1016 U.S. Patent No. 5,867,385, “Motion Control Systems,” issued Feb. 2, 1999
`(“the 385 Patent”).
`
`1017
`
`Jacob Tal, Step by Step Design of Motion Control Systems, Chapters 9 and
`10, Galil Motion Control, Inc., 1994 (“Tal”).
`
`1018 Hewlett Packard, Matrix/Plotter Programming, HP 9831A Desktop
`Computer, 1977 (“HP77”).
`
`1019 Hewlett Packard, Interface and Programming Manual, HP 7550 Graphics
`Plotter, 3rd ed., 1986 (“HP86”).
`
`1020 Hewlett Packard, User’s Guide, HP 7550 Plus Plotter, 1990 (“HP90”)
`
`1021 Martin L. Stone et al., An Intelligent Plotter for High-Throughput,
`Unattended Operation, Hewlett-Packard Journal, April, 1985 (“HP85”)
`
`1022 Preliminary Infringement Contentions, ROY-G-BIV Corp., v. ABB, Ltd.
`et al. (E.D.Tex., Sept. 14, 2012) (CASE NO. 6:11-CV-00622-LED)
`(“RGB PIC”).
`
`1023 Preliminary Infringement Contentions, Exhibit B, ROY-G-BIV Corp., v.
`ABB, Ltd. et al. (E.D.Tex., Sept. 14, 2012) (CASE NO. 6:11-CV-00622-
`LED) (“RGB PIC, Ex. B”).
`
`
`
`iv
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`Currently Filed
`
`1024 U.S. Patent No. 6,516,236, Appendix A.
`
`1025 Excerpt of RGB Design Document - 3.2 Project Evolution With
`Compumotor Influence.
`
`1026 RGB’s April 26, 2013 Letter Brief to the District Court re Indefiniteness
`Dkt #150-1.
`
`
`
`
`
`
`
`
`
`v
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`I.
`
`INTRODUCTION
`
`The “Decision on Institution of Inter Parties Review 37 C.F.R. § 42.108”
`
`(Paper 23, April 18, 2012) (“Decision”) erroneously denied the Petition as to all
`
`grounds citing WOSA as a primary reference against the ’236 patent. (Decision at
`
`23-24). The Decision also erroneously adopted a claim interpretation for
`
`“primitive operation” that would exclude the preferred embodiment set forth in
`
`various Appendices to the 236 Patent. This motion seeks reconsideration of that
`
`denial and an order including these claims and grounds in the trial.
`
`II.
`
`STATEMENT OF RELIEF
`
`First, Petitioner moves for rehearing of the Board’s decision interpreting
`
`“primitive operation.” As explained below, the ‘236 Patent “exemplary software
`
`system” would be excluded from the Board’s interpretation. Further, the primitive
`
`operations named in the “exemplary software system” exclude the so-called
`
`primitive operations listed in col. 7. This inconsistency and lack of precision
`
`precludes the patentee from acting as his own lexicographer. Thus, Petitioner
`
`requests that the Board adopt a construction consistence with ABB’s Petition.
`
`Additionally, Petitioner requests reconsideration of the Board’s denial to
`
`institute trial on the grounds citing WOSA as a primary reference, including
`
`rehearing of all bases for that denial, and moves that the Board authorize as
`
`additional grounds for trial the following grounds set forth and supported in the
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 1
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`Petition:
`
`• 2. WOSA/XFS anticipates claims 1-3 and 7-10.
`
`• 6. WOSA/XFS and DDAG render obvious claims 1-4 and 7-10.
`
`• 7. WOSA/XFS, DDAG, and Hall render obvious claims 1-10.
`
`• 8. WOSA/XFS, Gertz, and Wright render obvious claims 1-10.
`
`Accordingly, Petitioner asks that the Board institute trial against claims 5-7,
`
`in addition to claims 1-4 and 8-10.
`
`III. ARGUMENT
`
`As explained below, the Board overlooked portions of the specification that
`
`are inconsistent with the alleged definition for “primitive operations” asserted by
`
`the Patent Owner. (See generally Exhibit 1024, Appendix A to the ’236 Patent).
`
`Moreover, the 236 Patent identifies Appendix A as the “exemplary software
`
`system,” and therefore an interpretation that excludes this embodiment is
`
`unsupportable.
`
`Further, the inconsistencies between col. 7 of the 236 Patent upon which the
`
`Board based its construction makes it clear that “primitive operations” must be
`
`considered in conjunction with the interpretation of “motion control devices.” If
`
`the claim scope of “primitive operations” is driven by the scope of all primitive
`
`operations that are necessary for all motion control devices, then none of the
`
`embodiments in the 236 Patent can be within the scope of the claim. If the scope is
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 2
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`anything less than the operations needed by all possible motion control devices,
`
`then WOSA/XFS teaches the universe of operations that are available for the
`
`software system (SPI/API, driver functions, etc. that available as “motion control
`
`operations”). Even under a cursory review of the WOSA/XFS specification by a
`
`person of ordinary skill makes it clear that none of the functions listed therein can
`
`be used to emulate Open_Shutter and Close_Shutter. WOSA/XFS (from which the
`
`Applicants derived at least some portions of the “invention” as the undersigned has
`
`now learned – see Exh. 1025 discussed infra), is comparable to the Applicants’
`
`exemplary system in Appendix A. Where the Board has rejected Petitioner’s
`
`argument that any function can be decomposed into smaller functions, it is an
`
`abuse of discretion to go beyond the universe of operations disclosed in the WOSA
`
`reference to assert that an operation such as Open_Shutter might be emulated by
`
`controlling individual motors.
`
`A. The Standard of Review for Rehearing is Abuse of Discretion
`
`Under 37 C.F.R. §42.71(c), “[w]hen rehearing a decision on petition, a panel
`
`will review the decision for an abuse of discretion.” An abuse of discretion “occurs
`
`when a court misunderstands or misapplies the relevant law" or makes erroneous
`
`factual findings. Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007)
`
`(quoting PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565,
`
`1572 (Fed. Cir. 1988). “A decision based on an erroneous view of the law . . .
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 3
`
`

`

`invariably constitutes an abuse of discretion.” Atl. Research Mktg. Sys. v. Troy, 659
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`F.3d 1345, 1359 (Fed. Cir. 2011).
`
`B.
`
`The Board Erroneously Held That
`The 236 Patent Defined “Primitive Operations”
`
`The Board held that the claim term “primitive operations” had been defined
`
`by the ’236 Patent. Decision at 8-9.
`
`Claim terms are presumed to have their ordinary and customary meaning.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). The presumption
`
`can be rebutted if the patentee acts as his own lexicographer by setting forth a
`
`definition of the term clearly and unambiguously. Merck & Co., Inc. v. Teva
`
`Pharms. USA, Inc., 395 F. 3d 1364, 1370-71 ( Fed.Cir. 2005) (holding that
`
`ambiguous usage does not “clearly set out its own definition with ‘reasonable
`
`clarity, deliberateness, and precision.’” When the written description uses a claim
`
`term inconsistently (i.e., without precision), the patentee fails to rebut the
`
`presumption that claim terms carry their ordinary meaning. Moreover, a
`
`construction that excludes the preferred embodiment is rarely, if ever, correct.
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
`
`The ’236 Patent references several appendices as the exemplary software
`
`implementing the claimed invention, including Appendix A. “The SPI for the
`
`exemplary software system 22 is attached hereto as Appendix A.” (’236 Patent,
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 4
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`7:51-53.)1
`
`ABB’s Petition noted the inconsistency between the identification of
`
`“MOVE RELATIVE” as a “primitive operation” in col. 7 but as an “extended
`
`operation” in Appendix A. (Petition at 19, fn. 7.) However, it appears that the
`
`Board did not appreciate that the reference to the ’385 Patent, Appendix A should
`
`have been considered intrinsic evidence as the same material allegedly is part of
`
`the written description of both patents.2 Moreover, the classification of
`
`MoveRelative as a “non-primitive” in Appendix A is also confirmed by the ’236
`
`Patent at col. 46, beginning at line 47 (emphasis added):
`
`The XMC_DRVEXT_CMD enumeration defines an
`identifier for every extended command known to the
`XMC Driver. Even though the identifiers exist, the driver
`may or may not implement the set of commands.
`
`enum XMC_DRVEXT_CMD
`
`
`1 Patent Owner cannot avoid the implications of the “exemplary software
`system.” Indeed, it has embraced the operations listed in Appendix in a recent
`filing with the court. See Exh. 1026 attached hereto, in which RGB states that
`“motion control operations” include all of the functions identified as primitives in
`Appendix A (even those that do not directly result in motion).
`2 The Patent Office published the cited portion of Appendix A as part of the
`’385 Patent to which the 236 Patent alleges priority. Appendix A begins at col. 50
`in the ’385 Patent. The section cited by the Petition appears at cols. 81-84);
`however, the Office did not publish Appendix A (or any of the other referenced
`appendices) as part of the ’236 Patent. The appendices have been recently
`reclassified in PAIR, and are now publicly available. The undersigned has attached
`a copy of what was submitted as Appendix A in the ’236 Patent as Exhibit 1024.
`See Section 3.2.10 at pp. 47-48; also Section 3.1.8 defining the universe of
`“primitive motion control operations.”
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 5
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`{
`
`
`
`XMC_DCE_MOTION_MOVEREL
` };
`
`
`
`This and other inconsistencies between the “exemplary software system”
`
`(i.e., the preferred embodiment) and the portions of column 7 cited by the Board
`
`are readily apparent to the person having ordinary skill.3 For example, computer
`
`science students learn the concepts of relative and absolute addressing by the
`
`second year of study. As explained below, a person having ordinary skill would be
`
`able to emulate a “MOVE RELATIVE” operation using a “MOVE ABSOLUTE”
`
`operation and vice versa. Thus, neither operation meets the interpretation adopted
`
`by the Board for “primitive operation.”
`
`
`
`First, either function can be emulated by the other. As such, regardless of
`
`whether the Board considers the text of col. 7 to be the exemplary primitive
`
`operations (i.e., MOVE RELATIVE) or the list of “primitive operations” given in
`
`Appendix A, § 3.1.8 (below) to be the preferred embodiment (which includes
`
`MOVE ABSOLUTE but excludes MOVE RELATIVE), both would be excluded
`
`from the scope of the claim.
`
`
`3 For example, Appendix A, § 3.1.8 includes both MoveAbs (short for
`absolute) and Move Continuous as “primitive operations.” However, it seems
`straightforward that a continuous move could be emulated by a sequence of Move
`Absolute and/or Move Relative operations.
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 6
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`
`
`
`
`Second, given the panel’s broad interpretation of motion control device
`
`under the BRI standard, there are many types of motion control devices that do not
`
`require (or permit) controlling motion by reference to a coordinate system at all.
`
`Thus, both functions could be excluded from many possible motion control
`
`software systems.
`
`1.
`
`Both “Move Relative” and
`“Move Absolute” Can Be Emulated
`
`In direct contrast with col. 7 of the 236 Patent, Appendix A of the ‘236
`
`Patent unquestionably classifies “Move Absolute” as a primitive operation (§ 3.1.8
`
`above) while classifying “Move Relative” as an “extended operation” (§ 3.2.10).
`
`Section 3.18 expressly express states:
`
`All primitive motion control functions that are absolutely
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 7
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`necessary to solve motion control software problems are
`placed in this interface. Also, each function in this set
`should be a primitive that cannot be duplicated through a
`software algorithm built on top of other primitive
`functions.
`
`The Applicants’ inconsistent usage reflects the arbitrary identification of
`
`what it regards as “primitive operation.”
`
`Relative and absolute addressing are fundamental mathematical concepts,
`
`regardless of the coordinate system that is used. Coordinate systems have an
`
`absolute reference point, usually identified as “zero” or the “origin.” In a two-
`
`dimensional Cartesian (X, Y) coordinate system, the origin is at (0, 0).
`
`In a simplified example, assume that a widget is at position A at location (3,
`
`4) on a 2-D grid. To move the widget to position B at location (5, 5), a
`
`programming interface could provide a call to a function to move the widget by
`
`reference to the absolute coordinate system or by reference (relative) to its current
`
`position. Either function can be arbitrarily defined as a primitive (first) function,
`
`while the second can be emulated using the first.
`
`For example, a “Move Relative” operation can be emulated by calling a
`
`“Move Absolute” operation, as illustrated in pseudo-code below. For simplicity,
`
`the function parameters that direct the X-Y deltas are written directly into the
`
`pseudo-code. Similarly, a “Move Absolute” function can be emulated by calling a
`
`“Move Relative” operation.
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 8
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`MoveRelative (+2, +1)
`{
`
`X = GetCurrentAbsX(widget)
`Y = GetCurrentAbsY(widget)
`
`X = X + 2
`
`Y = Y + 1
`
`MoveAbsolute (X, Y)
`
`}
`
`
`
`MoveAbsolute (5, 5)
`{
`
`
`X = GetCurrentPositionX()
`Y = GetCurrentPositionY()
`RelX = 5 – X
`RelY = 5 – Y
`MoveRelative (RelX, RelY)
`
`}
`
`Thus, neither MoveRelative nor MoveAbsolute is “necessary” for motion control,
`
`and neither can be within the definition of primitive operation as the Board has
`
`construed it. Indeed, either function can be emulated using the other.
`
`2. Motion Control Systems Exist That Do Not
`Require Both “Move Relative” and “Move Absolute”
`
`The Board’s construction for “primitive operation” is inexorably connected
`
`to the construction for “motion control device:” any hardware device with a
`
`controller and a mechanical system that translates signals generated by the
`
`controller into the movement of an object. (Decision at 11.)4
`
`However, many devices that are within the panel’s definition of “motion
`
`control device” provide motion control without requiring the ability to control
`
`positions within a coordinate space. As such, functions that are dependent on the
`
`identification of coordinate spaces will not be necessary for a wide range of
`
`“motion control devices.”
`
`
`4 While the PTO must use BRI standard, ABB reserves the right to argue a different
`construction in litigation.
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 9
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`Electromagnetic relays, solenoids, and simple motors are just a few
`
`examples of ubiquitous devices often used systems that do not require addressable
`
`positioning information to move objects. Automated irrigation systems commonly
`
`include numerous valves and solenoids. The solenoid opens the valve when a
`
`signal is received from the controller. The controller may be a programmable
`
`microprocessor-based system that provides direct control over every solenoid via
`
`the Internet. In addition to the motion of the solenoid itself, the released water
`
`pressure may similarly cause sprinkler heads to move in various fashions. Plainly,
`
`neither MoveAbsolute nor MoveRelative is needed for such motion control
`
`operations. Security doors commonly employ an electromagnetic relay. A spring
`
`holds a latch in place that prevents the security door from being opened. A
`
`controller system receiving an authorization from a card reader (or other
`
`authentication device) sends a signal to the door. Here again, there is no need fine,
`
`coordinate system based control. The function is simply whether the latch is in an
`
`open position or closed position.
`
`The Board should keep in mind that “hardware independence” refers to a
`
`level of abstract that must be common to all devices, and “motion control devices”
`
`as construed encompasses all of the above example.
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 10
`
`

`

`3.
`
`The Construction For Primitive Operations
`Cannot Exclude The “Exemplary Software System”
`
`According to the ’236 Patent, the “set of motion control operations” is
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`
`determined by a software designer, not by reference to any specific hardware
`
`configuration, but the Patent also states that set of motion control operations must
`
`support all motion control device configurations. (col. 7, ll. 19-26).5
`
`At the very least, the “broadest reasonable interpretation” should include the
`
`exemplary software system. Accordingly, the Patentee cannot be said to have
`
`defined “primitive operations” with precision. RGB’s own preferred embodiment
`
`would not be covered by such a claim. Accordingly, the Board should adopt an
`
`interpretation consistent with the ABB’s Petition.
`
`C. WOSA Is Directly Applicable
`
`In its Decision, the Board held that Petitioner had not established that
`
`functions such as “Open_ Shutter” and “Close_Shutter” are primitive operations.
`
`(Decision at 21).6
`
`
`5 In concurrent litigation, ABB has invited the district court to declare the
`claims indefinite. It appears manifestly impossible for the scope of the claim to be
`arbitrarily determined by a person (i.e. a software designer), AND capable of
`accommodating “all motion control devices” while having only the limited set of
`functions (deemed “absolutely necessary”) in the “exemplary software system” of
`Appendix A, § 3.1.8.
`6 Here, the Board appears to have credited the RGB’s assertion that
`“Petitioner fails to show that they cannot be simulated by individually controlling
`the motors and steps of the shutter door.” (Decision at 21). The Board did not
`comment on the RGB’s other assertions, nor should it have as the claims neither
`
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 11
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`However, WOSA need not expressly state that this. Rather, there are no
`
`other constituent functions or operations defined in the WOSA/XFS specification
`
`that can emulate the motion control operation of opening and closing the shutter.
`
`In the concurrent litigation, RGB confines emulation only to the other operations
`
`that form the software system as it has been designed. See Exh. 1026 at 2. (Of
`
`course, this is disproved by the pseudo-code above.
`
`The Open_Shutter and Close_Shutter operations cannot be simulated by the
`
`other operations that are defined in the WOSA/XFS Services API, as the
`
`capabilities of the available operations are explained therein.7 Here it should be
`
`Patent Owner’s burden to identify which functions defined in the specification that
`
`can emulate Open_Shutter or Close_Shutter. Notably, the same cannot be said for
`
`the “exemplary software system” set forth in the ’236 Patent, Appendix A. Again,
`
`looking at § 3.1.8, it should be readily apparent that 1) there is at least one
`
`“primitive operation” that could potentially be emulated by another “primitive
`
`operation” (e.g., MoveContinuous could be implemented by several sequential
`
`calls to intermediate waypoints using the MoveAbsolute (MoveAbs), primitive
`
`operation); 2) there are no primitive functions for addressing individual motors;
`
`
`require the ability to control individual devices or synchronous operation. Indeed,
`there are no functions for controlling individual motors as this would violate the
`“device independence” objective of the ‘236 Patent.
`7 A simple text search of WOSA/XFS yields only a handful of references to
`the Shutter mechanism.
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 12
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`and 3) there are no distinctions between synchronous and asynchronous operations.
`
`In other words, the criticisms asserted by RGB in its Preliminary Response
`
`fall flat given its own “exemplary software system.” This sets up the dilemma that
`
`the Board must resolve as the ’236 Patent allegedly provides for “device
`
`independence” while RGB’s counterargument are directed to specific hardware
`
`configurations (i.e., whether each motor is independently controlled). “Hardware
`
`independence” means that there is an interface layer that insulates the programmer
`
`from the specific hardware configuration. For example, the “exemplary system”
`
`provides different interfaces for “stepper motors” and “servomotors.” (Exh. 1024
`
`at 43, ¶ 1). Further, it states that either one may be completely absent in any given
`
`system. (Id.) Of course, motion controls systems can exist without using stepper
`
`motors and/or servo-motors at all.
`
`An ATM shutter may be operated by a simple electromagnetic relay and
`
`latch system. In other words, no motors are required to move the object – here - the
`
`shutter. Another manufacturer may design an ATM shutter using one or more
`
`stepper motors, while yet another may use one or more servo-motors. “Hardware
`
`independence” is satisfied, if the programmer can accomplish the desired goal,
`
`opening or closing the shutter (and thus motion control) without having to write
`
`code to control whatever operative system the ATM manufacturer has used to
`
`create the device.
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 13
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`In the case of WOSA/XFS, the software designer (i.e., the consortium that
`
`designed the SPI/API) analyzed the requirements for a specific category of
`
`machines that are “hardware device[s] with a controller and a mechanical system
`
`that translates signals generated by the controller into the movement of an object.”
`
`Rather, the entire WOSA/XFS specification was presented to the Board, and
`
`yet Patent Owner did not identify any collection of operations in the WOSA/XFS
`
`specification that could be used to emulate the Open_Shutter or Close_Shutter
`
`functions. Indeed, the candidate list of “other operations” for potential emulation
`
`is exceedingly short. Specifically, § 7.3.2 Execute Commands (WOSA at 126-
`
`135), and Dispense is the only other operation that even discusses moving the
`
`shutter. While the Board asserts that ABB did not point to any specific text saying
`
`that these functions cannot be emulated, this misses the point. The prior art is good
`
`for all that the person of ordinary skill in the art would understand from reading it.
`
`The Board did not reach the issue of whether the shutter operations are core
`
`driver functions. It is not clear that any further showing is required as the Board
`
`premised this statement on whether the shutter functions were “primitive.”
`
`Nevertheless, WOSA/XFS explains that many SPI functions correspond to one or
`
`more API functions depending on whether the operation should be implemented
`
`synchronously or asynchronously. See e.g., WOSA at p. 172. WOSA further
`
`states:
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 14
`
`

`

`Case IPR2013-00062
`Patent 6,516,236 B1
`
`The SPI is kept as similar as possible to the API. Some commands are
`processed exclusively by the XFS Manager, and so are not in the SPI, and
`there are minor differences in the specific parameters passed at the two
`interface levels. WOSA at 8.
`
`
`
`Finally, and contrary to the Patent’s assertion that WOSA “has no relation to
`
`motion control,” the Applicants own documents indicate that they derived their
`
`concepts from various drafts of WOSA documents, including WOSA/XFS
`
`specification. Currently, the undersigned only has one page of the design
`
`document, and it is provided herein as Exhibit 1025.
`
`IV. CONCLUSION
`
`For the reasons given above, trial should be instituted on the above grounds,
`
`and against all claims. Further, the claim interpretation for “primitive operations”
`
`should be withdrawn in favor of ABB’s proposed construction: “an abstract
`
`motion control operation corresponding to a driver function which is not
`
`represented as the combination of other driver functions.” Petition at 19.
`
`Dated: May 2, 2013
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`John D. Vandenberg
`Registration No. 31312
`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
`
`Motion for Reconsideration of Decision on Petition for Inter Partes Review Page 15
`
`

`

`Case IPR2013-00062
`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 this Motion for
`
`Reconsideration of Decision on Institution of Inter Partes Review was served
`
`on counsel of record for the ’236 Patent owner:
`
`RICHARD T. BLACK
`JOEL B. ARB
`FOSTER PEPPER PLLC
`1111 THIRD AVENUE, SUITE 3400
`SEATTLE, WASHINGTON 98101-3299
`TEL: (206) 447-6251
`FAX: (206) 749-2062
`BLACR@FOSTER.COM
`ARDJO@FOSTER.COM
`
`
`via EXPRESS MAIL, on May 2, 2013.
`
`By /Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`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
`
`