`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 28
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` Entered: May 24, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`ABB, INC.
`Petitioner
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`v.
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`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00062
`Patent 6,516,236 B1
`_______________
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
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`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`SUMMARY
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`Petitioner, ABB, Inc., requests rehearing of the Board’s decision instituting
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`inter partes review of claims 1-4 and 8-10 of U.S. Patent 6,216,236 B1 (Ex. 1001)
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`(the “’236 patent”) (Paper 23 (“Decision”)) entered April 18, 2013. Paper 26
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`(“Rehearing Req.”). For the reasons that follow, Petitioner’s request for rehearing
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`is denied.
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`DISCUSSION
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`The applicable standard for a request for rehearing is abuse of discretion.
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`The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant
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`part:
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`A party dissatisfied with a decision may file a request for rehearing, without
`prior authorization from the Board. The burden of showing a decision
`should be modified lies with the party challenging the decision. The request
`must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.
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`ABB contends that rehearing should be granted because: (1) the Decision
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`adopts an erroneous interpretation of the claim term “primitive operation”; and (2)
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`the Board should have instituted review on all the challenged claims (1-10) based
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`on all grounds asserted in the petition that included the “WOSA/XFS” reference.
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`Rehearing Req. 1-2.
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`Claim Construction
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`ABB argues that in construing the claim term “primitive operation,” the
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`Board erroneously adopted an interpretation that would exclude the preferred
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`2
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`embodiment set forth in various Appendices of the ’236 patent. Rehearing Req. 1,
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`4-11. We disagree.
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`For purposes of the decision to institute, we construed the claim term
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`“primitive operation” as “an operation necessary for motion control and that cannot
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`be simulated using a combination of other motion control operations.” Decision 9.
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` As we explained, this definition is found in the specification and is recited in the
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`language of the only independent claim of the ’236 patent. Decision 7; ’236
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`patent, col. 7, ll. 28-31.
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`In the petition, ABB asserted that this definition did not adequately define
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`the term “primitive” because every operation is abstract and can be further
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`decomposed. Pet. 18-20. Thus, according to ABB, more clarification of the term
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`was needed. Id. In a footnote, ABB cryptically noted that “even the Applicant had
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`a difficult time determining whether to denominate ‘move relative’ as a ‘primitive’
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`or ‘non-primitive’ operation.” Pet. 19 (citing ’236 patent, col. 7, ll. 30-35; ’385
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`patent, Appendix A, § 3.2.10). We did not agree. Decision 7-9.
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`In its motion for rehearing, ABB attempts to supplement the argument
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`presented in its petition by asserting that such a high degree of inconsistency exists
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`in the use of the claim term “primitive operation” within the ’236 patent, that the
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`words in the specification and the claims do not carry their plain and ordinary
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`meaning or the meaning explicitly provided by the patentee. Rehearing Req. 4-7.
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`In support, ABB relies on Appendix A of the ’236 patent (which was not cited to in
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`the petition, provided to the Board in an exhibit, or published with the ’236 patent)
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`as providing the main evidence of this alleged inconsistency. Id. at 5-6. We note
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`3
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`that we could not have misapprehended or overlooked something not presented to
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`us in the initial petition. A request for rehearing is not an opportunity to
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`supplement the initial petition. Regardless, even considering the uncited appendix,
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`we are not persuaded that our Decision was incorrect.
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`The inconsistency argument raised by ABB suffers from a certain lack of
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`clarity. To the extent decipherable, it focuses on an alleged conflict between the
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`specification and two parts of Appendix A. ABB points out that immediately after
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`defining the term “primitive operations,” the specification states: “Examples of
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`primitive operations include GET POSITION and MOVE RELATIVE.” Col. 7, ll.
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`31-32. The specification later states: “The SPI for the exemplary software system
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`22 is attached hereto as Appendix A.” Col. 7, ll. 51-53.
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`Although, not made entirely clear in ABB’s brief, it appears that the parts of
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`Appendix A (Ex. 1024) that ABB relies on are §§ 3.1.8 and 3.2.10, reproduced
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`below.
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`4
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`Section 3.2.10, reproduced above, is entitled “IXMC_DrvExt_Motion
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`Interface.” Ex. 1024. The text of the section states that the interface “consists of
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`extra motion control functions that may or may not be implemented by the motion
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`control hardware.” Id. Below the text appear pseudocode representations of
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`5
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`several functions. ABB asserts that the pseudocode including “MoveRel()”
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`represents the operation “Move Relative.” Id. This, according to ABB, shows an
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`inconsistent use of the term primitive operation because “Move Relative” was
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`defined in the text of the specification as a primitive operation and thus necessary,
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`whereas the appendix characterizes it as optional, and thus “non-primitive.”
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`Rehearing Req. 4-7.
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`
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`Section 3.1.8, reproduced above, is entitled “IXMC_DrvCore_Motion
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`Interface.” Ex. 1024. The text of the section states that “[a]ll primitive motion
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`control functions that are absolutely necessary to solve motion control software
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`problems are placed in this interface.” Id. Below the text appear pseudocode
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`representations of several functions including “MoveContinuous.” Id. ABB
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`asserts that “MoveContinuous” represents “Move Continuous.” Rehearing Req. 6,
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`n. 3; 7-9. ABB then contends that this is inconsistent, for ABB contends that Move
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`6
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`Patent 6,216,236 B1
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`Continuous is not a primitive operation because it could be emulated by a sequence
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`of other operations. Id.
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`Finally, ABB asserts that the alleged inconsistency in Appendix A is
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`confirmed by the following pseudocode in the ’236 patent:
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`The XMC_DRVEXT_CMD enumeration defines an identifier for every
`extended command known to the XMC Driver. Even though the identifers
`exist, the driver may or may not implement the set of commands. For
`example, every extended Driver function has a corresponding
`XMC_DRVCORE_CMD identifier. This index is used to look up the string
`block for the command (if the driver implements the command). The
`definition of the enumeration is as follows.
`enum XMC_DRVEXT_CMD
`{
` XMC_DCE_MOTION_MOVEREL,
` :
`};
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`Pet. 5-6 (quoting ’236 patent, col. 46, ll. 48-60).1 However, ABB does not explain
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`how the above language supports its argument. Id. Therefore, this text does not
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`persuade us that the term “primitive operation” is not defined in the specification
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`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
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`In summary, we are not persuaded by ABB’s arguments, including those
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`regarding alleged inconsistencies, that the definition of “primitive operation” is
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`anything other than that set forth in the specification and the claims. ABB focuses
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`1 This particular text of the patent was not referred to in the petition. We also note
`that ABB left out the ellipses when eliminating the emphasized language from the
`quoted text in their brief.
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`7
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`on three examples, all in pseudocode, out of a 50-column specification and 53-page
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`appendix. The Appendix, in particular, appears to be the specification for a product
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`rather than an example of lexicography by the patentee. Even if we were to agree
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`with all of ABB’s assertions, these isolated references are not persuasive when
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`weighed against a clear definition in the specification.2
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`We are also not persuaded by ABB’s argument that “Move Relative” cannot
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`be a “primitive operation” as defined because it can be emulated by other
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`operations. Rehearing Req. 7-9. Not only was this argument not adequately
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`presented in the petition, but it is not supported by persuasive evidence. We have
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`considered ABB’s additional arguments on this issue, but do not find them
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`convincing.
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`In sum, ABB has not shown that the Board abused its discretion in
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`construing the claim term “primitive operation” as defined in the specification and
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`claims for purposes of the Decision.
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`WOSA/XFS
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`In declining to institute inter partes review of the challenged claims based
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`on any of the grounds including WOSA/XFS, the Board found that ABB had not
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`sufficiently shown that WOSA/XFS discloses the required “primitive operations.”
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`Decision 20-23. ABB requests reconsideration of that finding. Rehearing Req. 11-
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`15.
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`2 ABB has not ruled out the possibility that the alleged inconsistency is the result of
`a simple typographic error in the Appendix.
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`8
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`In the petition, ABB asserts that WOSA/XFS “provides specific examples of
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`primitive and non-primitive operations” including “DISPENSE,
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`OPEN_SHUTTER, and CLOSE_SHUTTER.” Pet. 34. ABB’s analysis explaining
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`why the OPEN and CLOSE operations qualify as primitive operations is that “the
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`DISPENSE function instructs an ATM to dispense cash, while the
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`OPEN_SHUTTER and CLOSE_SHUTTER functions instruct an ATM to open
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`and close its shutter, steps necessary for the operation of dispensing cash.” Id.
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`(citing WOSA/XFS §§ 7.3.2.2, 7.3.2.7, 7.3.2.8). The petition identified nothing in
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`WOSA/XFS that discloses either explicitly or inherently that OPEN and CLOSE
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`are primitive operations as we have construed that term. ABB’s argument on
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`rehearing does not remedy this deficiency.
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` ABB argues that “[t]he prior art is good for all that the person of ordinary
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`skill in the art would understand from reading it.” Rehearing Req. 14.
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`Nevertheless, it is still the petitioner’s burden to “specify where each element of [a
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`challenged] claim is found in the prior art patents or printed publications.” 37
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`C.F.R. § 42.104(b)(4). The petition, in this case, contained no such analysis.
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`CONCLUSION
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`ABB has not carried its burden of demonstrating that the Board’s Decision
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`misapprehended or overlooked any matters. 37 C.F.R. § 42.71(d). The Motion is
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`DENIED.
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`9
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`
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`Case IPR2013-00062
`Patent 6,216,236 B1
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`PETITIONER:
`
`Rick McLeod
`John Vandenberg
`KLARQUIST SPARKMAN LLP
`rick.mcleod@klarquist.com
`john.vandenberg@klarquist.com
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`PATENT OWNER:
`Richard Black
`Joel Arb
`FOSTER PEPPER PLLC
`blacr@foster.com
`ardjo@foster.com
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`10
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