`
`blacr@foster.com
`Registration No.: 40514
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`ABB, INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`_____________________________
`Trial No.: IPR2013-00062
`(pursuant to Joinder with IPR2013-00282)
`U.S. Patent No. 6,516,236
`____________________________
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`PURSUANT TO 37 CFR §42.70
`
`
`
`51336821.5
`
`
`
`
`
`
`
`Patent Owner, Roy-G-Biv Corporation (“Roy-G-Biv Corporation” or
`
`“RGB”) hereby requests oral argument be held before the Board pursuant to 37
`
`CFR §42.70, on all of the instituted grounds of alleged unpatentability, and all
`
`issues briefed with respect thereto, including at least the following:
`
`
`
`
`
`I.
`
`ISSUES TO BE ARGUED
`
`1. Whether Petitioner ABB, Inc. (“ABB”) has met its burden to prove
`
`that the Gertz Reference expressly or inherently teaches that:
`
`a. An "Action" is a "function" (as necessary to meet the claim limitation
`
`"Component Function").
`
`b. A "Configuration" is a "function" (as necessary to meet the claim
`
`limitation "Extended Driver Function").
`
`c. A "Control Task" is a "function" (as necessary to meet the claim
`
`limitation "Core Driver Function").
`
`d. Anything in Gertz is "Component Code"
`
`e. The operations "read
`
`trackball data" and "perform
`
`forward
`
`kinematics" meet the claimed limitation "primitive operations"
`
`2. Whether Petitioner has met its burden to prove that a person of
`
`ordinary skill would have combined the teachings of the Gertz, Stewart and
`
`Morrow References, as alleged in the Petition.
`
`51336821.5
`
`
`
`
`
`3. Whether the Patent Owner Roy-G-Biv Corporation has met its burden
`
`of showing, under the required rule of reason analysis, that the Gertz and Morrow
`
`references do not qualify as prior art by virtue of RGB’s substantial and unrebutted
`
`showings of prior conception and reasonable diligence from at least as early as July
`
`24, 1994 through the constructive reduction to practice evidenced by the filing of
`
`Priority Application No. 08/454,736 on May 30, 1995.
`
`4. Whether RGB’s Motion to Exclude should be granted.
`
`5.
`
`6.
`
`Any additional issues raised by ABB in Oral Argument.
`
`Any additional issues subsequently raised or allowed by the Board in
`
`any future briefing or Orders.
`
`The Patent Owner requests no more than 1.5 hours per side if combined with
`
`Trial No. IPR2013-00074.
`
`
`
`
`
`
`
`51336821.5
`
`
`
`Respectfully submitted by:
`
`
`
`
`
`Dated: December 12, 2013.
`
`/Richard T. Black/
`RICHARD T. BLACK
`Foster Pepper PLLC
`1111 Third Avenue, Suite 3400
`Seattle, Washington 98101-3299
`Tel:
`(206) 447-6251
`Fax:(206) 749-2062
`Email: blacr@foster.com
`Registration No.: 40514
`
`/Richard S. Meyer/
`RICHARD S. MEYER
`Boies, Schiller & Flexner LLP
`5301 Wisconsin Avenue NW, Suite 800
`Washington, DC 20015
`Tel:
`(202) 237-2727
`Fax: (202) 237-6131
`Email: rmeyer@BSFLLP.com
`Registration No.: 32541
`
`Attorneys for Patent Owner,
`Roy-G-Biv Corporation
`
`
`
`
`
`
`51336821.5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing Request for Oral
`Argument was served on PETITIONER by placing a copy into U.S. EXPRESS
`MAIL directed to the attorneys of record for the petitioner at the following address:
`Richard D. Mc Leod
`Michael D. Jones
`Klarquist Sparkman LLP
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Portland, Oregon 97204
`
`Dated: December 12, 2013
`
`
`
`By:
`/Richard T. Black/_____
`RICHARD T. BLACK
`Foster Pepper PLLC
`1111 Third Avenue, Suite 3400
`Seattle, Washington 98101-3299
`Tel: (206) 447-6251
`Fax: (206) 749-2062
`Email:
`blacr@foster.com
`Registration No.: 40514
`
`RICHARD S. MEYER
`Boies, Schiller & Flexner LLP
`5301 Wisconsin Avenue NW, Suite 800
`Washington, DC 20015
`Tel: (202) 237-2727
`Fax: (202) 237-6131
`Email: rmeyer@BSFLLP.com
`Registration No.: 32541
`
`Attorneys for Patent Owner,
`Roy-G-Biv Corporation
`
`
`
`51336821.5
`
`
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