Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 1 of 39 PageID #: 4562
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`ROY-G-BIV Corporation,
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` Plaintiff,
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`v.
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`ABB, Ltd., ABB Inc., MEADWESTVACO
`TEXAS, LP and MEADWESTVACO
`CORPORATION,
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` Defendants.
`
`ROY-G-BIV Corporation,
`
` Plaintiff,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.
`MOTIVA ENTERPRISES, LLC,
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` Defendants.
`
`ROY-G-BIV Corporation,
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` Plaintiff,
`
`v.
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`SIEMENS CORP., et al.
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` Defendants.
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`
`
`
`Case No. 6:11-cv-622-LED
`LEAD CASE
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`Case No. 6:11-cv-623-LED
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`Case No. 6:11-cv-624-LED
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`DEFENDANTS’ JOINT CLAIM CONSTRUCTION BRIEF
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 2 of 39 PageID #: 4563
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`I.
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`II.
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`III.
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`IV.
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`V.
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`JUDGE FOLSOM’S PRIOR CONSTRUCTION FROM FANUC .....................................1
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`TECHNICAL BACKGROUND ..........................................................................................2
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`LEGAL PRINCIPLES OF CLAIM CONSTRUCTION .....................................................3
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`DEFENDANTS’ PROPOSED CONSTRUCTIONS AND ARGUMENT .........................3
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`A.
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`B.
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`“Motion Control” .....................................................................................................3
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`“Motion Control Operation” ....................................................................................5
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`i.
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`ii.
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`Motion control operations perform motion control .....................................6
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`“Hardware Independent” is an equivalent and easier to understand
`construction than “abstract.” ........................................................................7
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`“Non-Primitive Operations” ....................................................................................8
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`“Motion Control Device” .......................................................................................10
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`“Application Program Comprising A Set/Series Of Component
`Functions” ..............................................................................................................11
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`“Component Code” ................................................................................................15
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`“Driver Functions” .................................................................................................17
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`“Core Driver Function” / “Extended Driver Function” .........................................19
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`“Network” ..............................................................................................................22
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`Means-Plus-Function Terms ..................................................................................24
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`i.
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`“Means For Determining A Driver Unit System Employed By The
`Software Drivers” ......................................................................................25
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`ii.
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`“Means For Converting An Application Unit System Employed
`By The Application Program Into The Driver Unit System” ....................26
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`i
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 3 of 39 PageID #: 4564
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`iii.
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`iv.
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`v.
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`“Means For Generating Command Data Strings For Controlling
`The Selected Motion Control Device Based On The Command
`Format Template And The Application Program” ....................................27
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`“Means For Parsing Response Data Strings Generated By The
`Selected Motion Control Device Based On The Response Format
`Template And The Application Program” .................................................29
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`“Stream Control Means For Communicating The Control
`Commands To The Selected Destination Of Control Commands
`Based On The Transmit Stream Code Contained By The Stream
`Associated With The Selected Destination Of Control Commands” ........30
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`ii
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 4 of 39 PageID #: 4565
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Aristocrat Techs. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)..........................................................................................24, 25
`
`Blackboard, Inc. v. Desire2Learn Inc.,
`574 F.3d 1371 (Fed. Cir. 2009)..........................................................................................24, 25
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366 (Fed. Cir. 2008)..........................................................................................13, 16
`
`CSIRO v. Lenovo, Inc.,
`2012 WL 170972 (E.D. Tex. Jan. 20, 2012) ............................................................................24
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`Digital Tech. Licensing, LLC v. Cingular Wireless LLC,
`No. 2:06-cv-156, 2007 WL 2300792 (E.D. Tex. Aug. 7, 2007) ..............................................14
`
`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999)....................................................................................................3
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`Finisar Corp. v. DirecTV Grp., Inc.,
`523 F.3d 1323 (Fed. Cir. 2008)................................................................................................25
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`Function Media, LLC v. Google, Inc.,
`708 F.3d 1310 (Fed. Cir. 2013)................................................................................................25
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`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011)................................................................................................21
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`Harris Corp. v. Ericsson Inc.,
`417 F.3d 1241 (Fed. Cir. 2005)................................................................................................24
`
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004)................................................................................................15
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`Insituform Techs., Inc. v. Cat Contracting, Inc.,
`99 F.3d 1098 (Fed. Cir. 1996)..................................................................................................21
`
`Krippelz v. Ford Motor Co.,
`667 F.3d 1261 (Fed. Cir. 2012)................................................................................................11
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`Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
`324 F.3d 1038 (Fed. Cir. 2003)................................................................................................24
`
`
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`iii
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 5 of 39 PageID #: 4566
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`Neurografix v. Siemens Med. Solutions USA, Inc.,
`2011 WL 3439324 (C.D. Cal. May 5, 2011) ...........................................................................24
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`Noah Sys., Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012)................................................................................................25
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)......................................................................................3, 14, 22
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`Spectrum Int’l Inc. v. Sterilite Corp.,
`164 F.3d 1372 (Fed. Cir. 1998)..................................................................................................3
`
`Spring Window Fashions LP v. Novo Indus., L.P.,
`323 F.3d 989 (Fed. Cir. 2003)..................................................................................................14
`
`Tulip Computers, International B.V. v. Dell Computer Corp.,
`236 F. Supp. 2d 364 (D. Del. 2002) .........................................................................................22
`
`Witness Sys., Inc. v. Nice Sys., Inc.,
`No. 1:06–cv–126–TCB, 2008 WL 2047633 (N.D. Ga. May 10, 2008) ....................................4
`
`WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d 1339 (Fed. Cir. 1999)................................................................................................24
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`STATUTES
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`35 U.S.C. § 112, ¶ 6 .......................................................................................................................23
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`iv
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 6 of 39 PageID #: 4567
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`Appendix of Exhibits Cited in Defendants’ Joint Claim Construction Brief
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`Exhibit A
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`Exhibit B
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`Exhibit C
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`Exhibit D
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`Exhibit E
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`Exhibit F
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`Exhibit G
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`Exhibit H
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`Exhibit I
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`Exhibit J
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`Exhibit K
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`Exhibit L
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`Exhibit M
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`Exhibit N
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`Exhibit O
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`‘058 Patent Reexam, Patent Owner’s Comments in Response to The Action
`Closing Prosecution, October 12, 2010.
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`‘058 Patent Reexam, Response to Office Action, April 28, 2009.
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`Expert Declaration of Charles Petzold submitted to the PTO on behalf of
`ROY-G-BIV in Reexam, dated April 21, 2009.
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`‘236 Patent Reexam, Response to Office Action, April 23, 2009.
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`‘543 Patent Reexam, Patent Owner’s Comments in Response to the Actions
`Closing Prosecution, October 13, 2010.
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`‘897 Patent Reexam, Patent Owner’s Appeal Brief, July 12, 2010.
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`Expert Declaration of Jeffrey Richter submitted to the PTO on behalf of
`ROY-G-BIV in Reexam, dated April 23, 2009.
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`Patent Owner Roy-G-Biv Corporation’s Preliminary Response Under 37 CFR
`§ 42.107 to the Petition Seeking Inter Partes Review of U.S. Patent No.
`6,516,236
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`‘543 Patent Reexam, Patent Owner’s Appeal Brief, April 22, 2011.
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`Plaintiff ROY-G-BIV Corporations’ Opening Markman Brief, November 21,
`2008, ROY-G-BIV Corp. v. Fanuc, et al., Case No. 2:07-CV-0418-DF-CE
`(E.D. Tex).
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`Plaintiff ROY-G-BIV Corporations’ Reply Markman Brief, December 12,
`2008, ROY-G-BIV Corp. v. Fanuc, et al., Case No. 2:07-CV-0418-DF-CE
`(E.D. Tex).
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`Expert Declaration of Richard J. Malina submitted to the PTO on behalf of
`ROY-G-BIV in Reexam, dated April 21, 2009.
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`Expert Declaration of Richard A. Mathias submitted to the PTO on behalf of
`ROY-G-BIV in Reexam, dated April 22, 2009.
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`Expert Declaration of Andrew B. Levy submitted to the PTO on behalf of
`ROY-G-BIV in Reexam, dated April 23, 2009.
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`Expert Declaration of Steve McConnell submitted to the PTO on behalf of
`ROY-G-BIV in Reexam, dated April 2, 2009.
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`Exhibit P
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`‘897 Patent File History, Non-Final Rejection, October 2, 1996.
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`Exhibit Q
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`Exhibit R
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`‘897 Patent File History, Applicant’s Amendment and Remarks, January 6,
`1997.
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`Expert Declaration of Nosa Omoigui submitted to the PTO on behalf of ROY-
`G-BIV in Reexam, dated April 21, 2009.
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`Exhibit S
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`‘058 Patent File History, Response, July 30, 2002
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`vi
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 8 of 39 PageID #: 4569
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`I.
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`INTRODUCTION
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`The broad claim constructions proposed by Plaintiff ROY-G-BIV (“RGB”) ignore the
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`intrinsic record, and in many instances directly contradict RGB’s prior positions taken during
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`multiple Reexam proceedings on the patents in suit. That intrinsic record includes many
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`statements by RGB differentiating its claims from prior art, including supervisory robot control
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`systems and printer/plotter systems. RGB repeatedly told the PTO that these systems bear no
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`relationship to its invention or the concept of “motion control” as used in the patents.
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`By contrast, Defendants’ proposed constructions follow the law and rely on the intrinsic
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`evidence. Defendants’ proposed constructions rely on the same portions of the specification that
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`RGB itself cited to examiners during Reexam proceedings to narrow its claims around the cited
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`prior art. The intrinsic evidence from those Reexams further forms the record on which the
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`public and those of skill in the art may rely to discern the metes and bounds of an alleged
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`invention. RGB’s proposals would have this Court ignore statements in the file history and
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`expand the scope of the claims to cover the very prior art it distinguished in front of the PTO.
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`II.
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`JUDGE FOLSOM’S PRIOR CONSTRUCTION FROM FANUC
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`On April 16, 2009, Judge Folsom heard oral arguments regarding the construction of
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`terms at issue in a previous case brought in this district by RGB against Fanuc Ltd. (“Fanuc”).
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`RGB Ex. 5 (Fanuc Markman Order). Approximately one week after those oral arguments, RGB
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`filed Responses to Office Actions in Reexam proceedings for three of the four asserted patents
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`(along with a parent patent), and submitted numerous expert declarations in support of those
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`responses.1 RGB made very different arguments, and provided very different evidence regarding
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`the scope of its invention to the PTO than it did in to Judge Folsom in the Fanuc litigation. RGB
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`1 Fanuc initiated Reexams of the ‘058 patent, the ‘236 patent, and the ‘543 patent.
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`1
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`did not inform Judge Folsom of these new positions it took in front of the PTO, and Judge
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`Folsom had no opportunity to consider RGB’s Reexam positions when rendering his claim
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`construction ruling on August 25, 2009. RGB should not now be permitted to urge any claim
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`constructions that conflict with its later statements to the PTO.
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`III. TECHNICAL BACKGROUND
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`The patents in this case pertain to “motion control.” This is apparent from the title of
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`each patent, and the abstract: “[t]he present invention relates to motion control systems.” As
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`RGB explained to the PTO, motion control involves software-driven fine motor control over
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`motorized mechanical devices. Ex. A at 1. Representative applications include robots that paint
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`cars on an assembly line; precision cutting and bending equipment that forms aerospace
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`components; and robotically-controlled lasers that cut tissue in microscopic procedures. Id.
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`According to RGB, the motion control industry was vertically integrated in the early
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`1990s. Ex. B at 2. This meant that “automation suppliers and OEM (Original Equipment
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`Manufacturer) machine builders controlled, and were the exclusive providers of, almost all the
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`software products that interacted with their machines and/or machine component hardware.” Id.
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`RGB characterized its patents—in this Court and in front of the PTO—as directed to a three-tier
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`software system for motion control having “software architecture in which an intermediate
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`software layer (the ‘motion control component’) and a set of controller-specific software drivers
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`(software modules used to translate instructions) work together to convert controller independent
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`motion control operations from the application program into controller dependent control
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`commands that can be understood by a selected motion control device.” Ex. A at 2.
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`Both in the specification and during Reexam, RGB distinguished its patent claims from
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`existing three-tiered architectures in the prior art based on its specific definition of “motion
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`control,” which carries through various claim terms including “motion control operation” and
`2
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`“motion control device.” See, e.g., ‘236, 3:1-17. In addition, RGB relied on the specific tasks
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`that an “application program comprising a set (or series) of component functions” would perform
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`to distinguish the prior art. Similarly, the system disclosed in the asserted patent relies on
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`separate “component functions” and “driver functions,” and the designation of certain operations
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`as “primitive” and others as “non-primitive.”
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`IV.
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`LEGAL PRINCIPLES OF CLAIM CONSTRUCTION
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`Defendants recognize that this Court is well versed in claim construction law and thus
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`highlights only a few fundamental principles. In Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
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`Cir. 2005), the Federal Circuit explained that a term’s meaning should be decided based on the
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`patent specification and the prosecution history. Id. at 1313. It also emphasized in Phillips that
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`the specification is “highly relevant” and “the single best guide” to construe a disputed term. Id.
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`at 1315 (emphasis added) (internal citations and quotations omitted). The prosecution history is
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`also important because it “provides evidence of how the PTO and the inventor understood the
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`patent.” Id. at 1317; see also Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir.
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`1999) (“Arguments made during the prosecution of a patent application are given the same
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`weight as claim amendments”). This is true because the public has a right to rely on statements
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`made during prosecution. Spectrum Int’l Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir.
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`1998). Lastly, Philips holds that while courts may consider extrinsic evidence, it cannot be
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`relied upon to contradict the intrinsic record. Phillips, 415 F.3d at 1317-1318.
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`V.
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`DEFENDANTS’ PROPOSED CONSTRUCTIONS AND ARGUMENT
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`A.
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`“Motion Control”
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`PLAINTIFF’S PROPOSED CONSTRUCTION
`no construction needed; in the alternative,
`“controlled movement”
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`DEFENDANTS’ PROPOSED CONSTRUCTION
`control of movement of an object along a
`desired path
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`3
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`The term “motion control” appears in several proposed and disputed constructions. See
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`RGB Ex. 11, (“primitive operations” mean “operations…necessary for motion control”); see also
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`infra at 6 (“motion control operation”); 10 (“motion control device”).2 The parties disagree
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`about what “motion control” means. The patent and the Reexam histories show that “motion
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`control” involves “moving an object along a desired path,” consistent with Defendants’ proposal.
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`According to the patent, “the present invention is…for controlling a motion control
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`device to move an object along a desired path.” ‘236, 3:56-59. Thus, “motion control” involves
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`moving something (“an object”) in some predetermined way (“along a desired path”). Id., 1:18-
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`19 (“The purpose of a motion control device is to move an object in a desired manner.”)
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`RGB faults Defendants’ proposed construction because it supposedly limits “what is
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`being moved” to “an object.” RGB Br. at 7. But “an object” is exactly the term RGB used in the
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`patents and Reexams. See Ex. N, ¶32 (distinguishing prior art from RGB’s invention because
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`prior art supposedly could not be “described as ‘a method of moving an object’”). RGB also
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`argues that Defendants’ construction is “subjective” because it uses the word “desired.” RGB
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`Br. at 7. Again, “desired” is the word used by RGB in the patents, and it is not subjective
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`because, in this context, it means “desired” by the operator, i.e., predetermined.
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`RGB’s primary argument is that “motion control” does not need to be construed because
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`it is “self-explanatory.” Id. But during Reexam RGB repeatedly emphasized very specific
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`contours for what qualifies as “motion control,” urging that “motion control” requires controlling
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`the actual path of motion. In each of the following Reexam statements, RGB argued that “motion
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`control” means controlling the path of motion:
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`2 Although the noun “motion control” appears in several of the proposed constructions, RGB suggests it
`would be improper to construe the noun “motion control” because it only appears as an adjective in the
`claims. But when there is a dispute about the meaning of a phrase used in a construction, even though not
`expressly in the claims, it is necessary and not uncommon to construe that phrase. See, e.g., Witness Sys.,
`Inc. v. Nice Sys., Inc., No. 1:06–cv–126–TCB, 2008 WL 2047633, *5 (N.D. Ga. May 10, 2008).
`4
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` “‘Control’ in motion control refers to the ability of an operator to specify the
`precise confines of the motion of a specific electric motor.” Ex. M, ¶26.
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` “Motion Control encompasses the coordinated real-time control of multiple
`actuators, usually servo or stepping motors, to achieve control of linear or rotary
`directions of motion.” Ex. L, ¶15.
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` “Numerous motion control aspects” are missing from the prior art Sorensen
`reference, including “setting and measuring path acceleration, deceleration and
`velocity control.” Ex. L, ¶82.3
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` “The XMC Patents claimed a motion control invention, and…motion control
`ha[s] nothing to do whatsoever with the Windows GDI, nor with printers, nor the
`two combined.” Ex. B at 27-28 (emphasis in original). Although “motion occurs
`incidentally within a printer” in the GDI prior art, according to RGB “GDI does
`not actually instigate any motion.” Id. at 40. RGB’s invention, on the other hand,
`involves “such things as ‘moving to a specific location,’” and “such motion
`control related operations are completely absent from the GDI.” Id. at 39.
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`Thus, after distinguishing systems that included mere “controlled movement,” RGB now
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`urges a definition that conflicts with its arguments to the PTO and would encompass any system
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`with moving parts—including the robots and printer systems it distinguished. It is undisputed
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`that robots and printers (which RGB said were not “motion control”) include moving parts.
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`RGB’s differentiation of prior art based on the meaning of “motion control” necessitates that the
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`term be construed consistent with the specification of the patents.
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`B.
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`“Motion Control Operation”
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`PLAINTIFF’S PROPOSED CONSTRUCTION
`“abstract operations (such as GET POSITION,
`MOVE RELATIVE, or CONTOUR MOVE)
`performed on or by a motion control device”
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`DEFENDANTS’ PROPOSED CONSTRUCTION
`hardware-independent operations used to
`perform motion control (such as GET
`POSITION, MOVE RELATIVE, or
`CONTOUR MOVE)
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`The parties disagree on two issues: (1) whether the claimed motion control operations
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`are operations used to perform motion control (versus any operations that could be “performed
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`3 See also Ex. L, ¶ 81 (“the motion control details pertaining to the task (e.g., the speed and path
`followed from the current position and the next position) is controlled within the robotics controller”); ¶
`99 (“Robotic supervision does not involve, e.g., real-time control of actuators with position feedback”).
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`5
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`on or by a motion control device”); and (2) whether the phrase “hardware independent” is more
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`easily understood by jurors than “abstract.”
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`i. Motion control operations perform motion control
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`In its construction of “motion control operations,” the Fanuc court held that motion
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`control operations are operations “used to perform motion control.” RGB Ex. 5 at 18. RGB’s
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`refusal to accept “used to perform motion control” in its construction is another attempt to
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`divorce “motion control” from its motion control patents. RGB’s construction also contradicts
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`its previous arguments to this Court and to the PTO. The intrinsic record and RGB’s own prior
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`positions overwhelmingly support Defendants’ proposed construction.
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`In Fanuc, RGB proposed that “motion control operation” be construed as “read and/or
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`write operation(s) used to perform motion control.” RGB Ex. 5 at 15. Judge Folsom adopted
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`the latter portion of RGB’s proposal, id. at 18, citing a portion of the specification stating that
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`“the software system designer initially defines a set of motion control operations that are used to
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`perform motion control.” ’236, 7:20-22. Similarly, RGB later told the PTO that motion control
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`operations are “operations used to perform motion control.” Ex. B at 38.
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`But now RGB argues that “motion control operations” are not limited to operations used
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`for motion control. RGB Br. at 3, 9. RGB’s objection highlights the correctness of (and need
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`for) Defendants’ construction of “motion control.” While RGB argues that the combined effect
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`of Defendants’ proposals would limit “motion control operations” to operations that “control the
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`movement of an object along a desired path,” (RGB Br. at 9), that is how the specification
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`describes “motion control operations.” See ‘236, 8:26-30 (motion control operations are
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`operations used “to control a motion device to move an object in a desired manner.”).
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`To construe “motion control operation” as not requiring the performance of “motion
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`control” would potentially cover prior art systems that were previously distinguished. RGB
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 14 of 39 PageID #:
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`relied on “motion control operations” to distinguish prior art during Reexam. For instance, RGB
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`argued that operations in prior art GDI systems could not be “motion control operations” because
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`they “do not involve motion.” Ex. B at 37-39; see also Ex. O, ¶14 (GDI operations are not
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`“motion control operations” because they “do[] not cause any physical motion to occur”).
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`RGB is incorrect that its citation to Appendix A of the patents provides support for its
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`position that “motion control operations” include operations that do not control motion. RGB
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`wrongly argues that Defendants’ proposed construction excludes some of the operations in
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`Appendix A, and reads preferred embodiments out of the patent. But Defendants’ construction
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`does not require each individual operation to control motion. It requires each operation to be
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`used in the performance of motion control.
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`ii.
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` “Hardware Independent” is an equivalent and easier to understand
`construction than “abstract.”
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`RGB does not appear to disagree that the patents use the term “abstract” as a synonym for
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`“hardware independent.” See, e.g., Ex. A at 8 (“Thus, the driver functions are also hardware
`
`independent. In the parlance of the patent, driver functions are abstractions.”). In Reexam, RGB
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`equated “abstract” and “hardware independent,” and used the phrase “hardware independent” to
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`explain the patent to the PTO. See, e.g., Ex. A at 2-3. The reason RGB did so is simple: the
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`term “hardware independent” is easier to understand than “abstract.” The purpose of claim
`
`construction is, in part, to provide the Court and the jury with guidance on how to understand the
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`scope of the claims, and construing a claim by reference to a word that by definition means
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`“difficult to understand” is not helpful. As these terms are used in the patent, there is no
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`substantive difference between the two constructions, and no reason to use the less clear term.4
`
`
`4 RGB’s argument that a “MOVE CONTOUR” operation could possibly be argued as hardware
`dependent is a straw man. Indeed, RGB itself recognizes that this would be a “strained interpretation”
`that would be contrary to common usage of the phrase “hardware independent.”
`
`
`
`7
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`

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`C.
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`“Non-Primitive Operations”
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`PLAINTIFF’S PROPOSED CONSTRUCTION
`“motion control operations that do not meet the
`definition of primitive operations”
`
`DEFENDANTS’ PROPOSED CONSTRUCTION
`This term is indefinite. To the extent the Court
`construes this term, it should be construed to
`mean: motion control operation(s) that can be
`simulated using a combination of primitive
`operations
`
`
`The parties agree that non-primitive operations include operations that can be simulated
`
`using a combination of primitive operations,5 but disagree whether non-primitive motion control
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`operations may also encompass operations that are not “necessary for motion control.”
`
`RGB’s construction tries to include a concept of “not necessary for motion control”
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`different than contemplated by the patent. In the Fanuc claim construction order, Judge Folsom
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`equated “can be simulated” with “not necessary to perform motion control.” RGB Ex. 5 at 18.
`
`(“In addition to GET POSITON [sic] and MOVE RELATIVE, motion control operations may
`
`also take the form of more complicated ‘non-primitive’ operations. Because the Patent suggests
`
`that non-primitive operations can be emulated using a series of primitive operations, however,
`
`not all motion control devices need perform both primitive and non-primitive operation in order
`
`to function.”) In other words, non-primitive operations are “not necessary” because the system
`
`may use the individual primitive operations.
`
`As for the meaning of “necessary for motion control,” RGB’s brief identifies only
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`Appendix A of the patents for guidance on what is meant by “necessary for motion control.”
`
`RGB Ex. 10. Appendix A, however, provides no such guidance. RGB relies on the statement in
`
`Appendix A that certain identified extended driver functions “may or may not be implemented.”
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`RGB Ex. 10 at 17. But primitive operations also “may or may not be implemented” on a device.
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`5 Defendants’ proposal mimics the language of several claims. (‘058 cl. 1, 2: “non-primitive operations
`that may be simulated using a combination of primitive operations”; ‘557 cl. 46: “non-primitive motion
`operation that can be performed using a combination of primitive motion operations).
`
`
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`8
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 16 of 39 PageID #:
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`That phrase does not permit any distinction between “primitive” and “non-primitive,” and it does
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`not clarify what it means to be “necessary for motion control.” Because there is no principled
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`way to categorize operations as “necessary for motion control,” RGB’s attempts to explain how
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`to do so lead only to internal inconsistencies and contradictions.
`
`For instance, in the inter partes review proceedings for the ‘236 patent, RGB argued that
`
`the “CLOSE SHUTTER” and “OPEN SHUTTER” operations in the prior art were “optional” in
`
`one system, and “not supported at all” in another. Ex. H at 33-34. On that basis, RGB argued
`
`that those operations are “not necessary for motion control” and therefore were not primitive
`
`operations. But in a recent letter to this Court (Dkt. 150), RGB flip-flops.
`
`In that letter, RGB agreed that the operation “MovRel” (move relative) is not used in a
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`motion control system that turns a spindle. See Dkt. 150 at 4. If MovRel is not used in the
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`spindle system, then it cannot be “necessary for motion control” (and therefore not primitive)
`
`based on RGB’s arguments in the IPR. But the patent specifies that MovRel is a primitive
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`operation, and therefore must be necessary for motion control. ‘236, 7:33; see also RGB Ex.
`
`11. Thus, RGB designates one unsupported operation (MovRel in the spindle system) as
`
`“necessary for motion control,” while it declares another unsupported operation (SHUTTER in
`
`the prior art) as not necessary. RGB never explains this inconsistency.6 If RGB insists on its
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`construction, then Defendants maintain the terms “necessary for motion control” and “not
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`necessary for motion control” are insolubly ambiguous.
`
`
`6 RGB now contends that the inclusion of MovRel as an extended function was an error that was
`“corrected” by the patent specification. Dkt. 150. Defendants dispute this position, and identify six other
`occasions when MovRel was identified as an extended/non-primitive operation. Dkt. 154.
`
`
`
`9
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`Case 6:11-cv-00622-LED-ZJH Document 157 Filed 05/10/13 Page 17 of 39 PageID #:
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`D.
`
`“Motion Control Device”
`
`PLAINTIFF’S PROPOSED CONSTRUCTION
`“a device comprising a controller and a
`mechanical system”
`
`The parties agree that a motion control device must include a controller and a mechanical
`
`DEFENDANTS’ PROPOSED CONSTRUCTION
`a controller and mechanical system for
`performing motion control
`
`system. While necessary to define the structure of a motion control device, a controller and
`
`mechanical system are insufficient to define a “motion control device.” RGB’s proposal is yet
`
`another attempt to read “motion control” out of its patents. Absent the requirement that the
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`device is used “for performing motion control,” as proposed by Defendants, the