blacr@foster.com
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`Registration No.: 40514
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`ABB, INC.
`
`Petitioner
`
`v.
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`ROY-G-BIV CORPORATION
`
`Patent Owner
`
`_____________________________
`
`Trial No.: IPR2013-00062
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`U.S. Patent No. 6,516,236B1
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`MOTION CONTROL SYSTEMS
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`_____________________________
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`PATENT OWNER ROY-G-BIV CORPORATION’S
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`PRELIMINARY RESPONSE UNDER 37 CFR § 42.107
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`Page 1 of 54
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`Registration No.: 40514
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`
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`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
`
`U.S. Patent No. 6,516,236B1
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`MOTION CONTROL SYSTEMS
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`_____________________________
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`PATENT OWNER ROY-G-BIV CORPORATION’S
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`PRELIMINARY RESPONSE UNDER 37 CFR § 42.107
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`Page 1 of 54
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`Preliminary Response By Patent Owner
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`IPR 2012-00062
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`Table of Contents
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`I.
`
`II.
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`Introduction......................................................................................................1
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`Summary of Patent Owner’s Argument ..........................................................1
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`III. Background......................................................................................................5
`
`A.
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`B.
`
`C.
`
`D.
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`The Patent Owner..................................................................................5
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`Technology Background .......................................................................5
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`The ‘236 Patent Invention.....................................................................8
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`The ‘236 Patent’s History of Litigation and Reexamination..............12
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`IV. The Petition’s “Broadest Reasonable Interpretation” Is Unreasonable ........13
`
`A.
`
`B.
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`“Primitive Operations”........................................................................14
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`“Core Driver Functions” .....................................................................16
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`V.
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`The Petition Does Not Demonstrate a Reasonable Likelihood of
`Prevailing on the Proposed Anticipation or Obviousness Theories..............17
`
`A.
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`Legal Standards ...................................................................................17
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`B. Gertz Fails To Anticipate The ‘236 Claims (P. Gr. 1)........................19
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`1.
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`2.
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`3.
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`4.
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`A Summary of Gertz.................................................................19
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`Gertz Does Not Teach “Primitive Operations” ........................21
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`Gertz Also Fails to Disclose The Claimed Core Driver
`Functions...................................................................................24
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`Gertz Is Largely Cumulative to Art Considered By the
`Patent Office .............................................................................26
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`C. WOSA/XFS Fails To Anticipate (P. Gr. 2).........................................28
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`i
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`Preliminary Response By Patent Owner
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`1.
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`2.
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`A Summary of WOSA/XFS......................................................28
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`None of the WOSA/XFS Operations Relied Upon by the
`Petition Is a “Primitive Operation”...........................................31
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`3. WOSA/XFS Does Not Teach “Core Driver Functions”...........38
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`4. WOSA/XFS is Largely Cumulative of WOSA and GDI
`Previously Considered ..............................................................38
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`D.
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`THE SECONDARY REFERENCES LACK THE SAME
`LIMITATIONS ...................................................................................40
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`1.
`
`2.
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`3.
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`4.
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`GERTZ, STEWART & MORROW (P.Gr. 3)..........................42
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`GERTZ or WOSA/XFS & DDAG (P.Gr. 4 & 6).....................43
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`GERTZ or WOSA/XFS, DDAG & HALL (P.Gr. 5 & 7) ........47
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`GERTZ, WOSA/XFS, & WRIGHT (P.Gr. 8) ..........................48
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`VI. CONCLUSION..............................................................................................49
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`ii
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`Preliminary Response By Patent Owner
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`I.
`Patent Owner ROY-G-BIV Corporation (hereafter “Patent Owner”) hereby
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`Introduction
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`respectfully submits this Preliminary Response to the Petition seeking Inter Partes
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`review in this matter. This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107, as it is being filed within three months of the November 27, 2012 mailing
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`date of the Notice granting the Petition a filing date.
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`A trial should not be instituted in this matter as none of the references relied
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`upon in the Petition, whether considered alone or in combination, gives rise to a
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`reasonable likelihood of Petitioner prevailing with respect to any claim of U.S.
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`Patent No. 6,516,236 (the ‘236 patent).
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`II.
`Summary of Patent Owner’s Argument
`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition filed
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`under section 311 . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged . . . .” 35 U.S.C.
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`§ 314(a). As discussed below, each proposed anticipation rejection is deficient for
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`failing to set forth each and every feature arranged as recited by the respective
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`claims of the ’236 Patent. The secondary references do not teach the missing
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`features, and thus fail to establish a prima facie case of obviousness. Further, the
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`1
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`plethora of cursory obviousness rejections proposed in the Petition fail to identify
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`specific portions of the evidence that support the obviousness challenges and lack
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`articulated reasoning with a rational underpinning to support a legal conclusion of
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`obviousness. Thus, they fail to comply with Patent Office Rules and Supreme
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`Court precedent. See 37 C.F.R. § 42.104(b)(5); KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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`Each ‘236 Patent claim recites directly or by dependency two limitations that
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`are not taught by the primary or secondary references in the Petition: (1) “a
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`primitive operation the implementation of which is required to operate motion
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`control devices and cannot be simulated using other motion control operations”;
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`and (2) “a core set of core driver functions, where each core driver function is
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`associated with one of the primitive operations.” The ‘236 Patent provides an
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`express definition for “primitive operations”: “Primitive operations are operations
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`that are necessary for motion control and cannot be simulated using a combination
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`of other motion control operations.” ‘236 Patent at 7:28-31. The broadest
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`reasonable
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`interpretation of
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`these
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`terms
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`is dictated by Patent Owner’s
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`lexicography.
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`2
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`Neither primary reference (Gertz nor WOSA/XFS) teaches “primitive
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`operations” as claimed and as defined in the ‘236 Patent. Indeed, Petitioner does
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`not contend that they do. Instead, in an attempt to make these references read on
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`the claims, Petitioner ignores the patent’s lexicography and argues that a “primitive
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`operation” is “an abstract motion control operation corresponding to a driver
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`function which is not represented as the combination of other driver functions.”
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`Petition p. 19. That definition differs markedly from Patent Owner’s lexicography,
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`and the Petition never explains how the references teach “primitive operations” as
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`claimed and defined in the ‘236 Patent. Having failed to teach the claimed
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`“primitive operations,” neither primary reference can teach the related claim
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`limitation—also present in every ‘236 Patent claim—requiring “a core set of core
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`driver functions, where each core driver function is associated with one of the
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`primitive operations.”
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`Petitioner’s proposed obviousness rejections are equally unavailing. First,
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`none of the Petition’s secondary references teaches the “primitive operations” and
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`“core driver functions” absent from Gertz and WOSA/XFS. Accordingly, an
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`obviousness rejection is precluded. Second, the Petition’s proposed obviousness
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`rejections are “mere conclusory statements” (KSR, 550 U.S. at 418 (quoting Kahn,
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`3
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`441 F.3d at 988)) and fail to present any cogent reasoning as to why a person of
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`ordinary skill in the art would have modified or combined the cited documents in
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`the manner recited by the claims of the ‘236 Patent. Thus, they fail to provide the
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`specificity required by 37 C.F.R. § 42.104(b)(5).
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`Moreover, the references relied upon in the Petition are largely cumulative
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`to those already considered by the Patent Office. “In determining whether to
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`institute or order [an Inter Partes review] . . . the Director may take into account
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`whether, and reject the Petition or request because, the same or substantially the
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`same prior art or arguments previously were presented to the Office.” 35 U.S.C. §
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`325(d). Here, the ‘236 Patent has already been subjected to multiple reviews,
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`including the original prosecution as well as a lengthy, and extensive, Inter Partes
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`reexamination.1 The Patent Office already considered—and rejected—similar art
`
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`1 See ‘236 Reexamination Certificate attached as Exhibit 2001. An extensive
`amount of prior art was considered by the Patent Office during the reexamination
`proceeding due to then ongoing litigation ROY-G-BIV Corp. v. Fanuc Ltd., Fanuc
`Robotics America, Inc., GE Fanuc Automation Corporation, GE Fanuc
`Automation Americas, Inc., and GE Fanuc Intelligent Platforms, Inc., Case No.
`2:07-cv-00418-DF (E.D. Tex.).
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`4
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`and invalidity arguments.
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`III. Background
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`A. The Patent Owner
`Patent Owner ROY-G-BIV Corporation designs and sells software products
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`that enable universal connectivity for motion control applications. Its products are
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`used in the industrial automation market to control both computer numerical
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`control (CNC) and other motion control machines. The ‘236 Patent relates to a
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`specific discipline within the field of industrial automation known as “motion
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`control.” More specifically, the ‘236 Patent relates to a multi-tiered software
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`architecture employing a “middleware” layer between the application program and
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`the drivers that control motion control devices. The “middleware” layer enables:
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`(a) application programmers to write generic motion control software applications
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`without knowing the hardware dependencies (or even the identity) of the motion
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`control device that will execute the application program; and (b) motion control
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`device manufacturers’ to create machines capable of executing motion control
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`operations based on application programs that were created for other machines.
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`B.
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`Technology Background
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`Motion control often involves precise, software-driven control of the
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`physical motions of motorized mechanical devices. These devices typically include
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`motors, drives, and/or other moving assemblies. One representative example is
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`precision cutting and bending equipment used to form aerospace components.
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`There are numerous “motion control operations” performed on or by motion
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`control devices. For example, one motion control operation is determining the
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`current position of a motor. ‘236 Patent at 7:31-33 (“GET POSITION”); id. at
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`16:45 (“querying the system for the current position.”). Based upon control
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`commands issued by the software system, a motion controller2 collects information
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`relating to a mechanical device (e.g., the position of a motor) and returns this
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`information to the software system. This is an example of a “read” operation. The
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`controller may also receive from the software system control commands dictating
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`the motion control device’s future activities (e.g., instructing a particular motor to
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`move, or how or where or how much to move (‘236 Patent at 7:31-39), “MOVE
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`RELATIVE” and “CONTOUR MOVE”; id. 16:44). This is an example of a
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`“write” operation.
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`2 “The basic components of a motion control device are a controller and a
`mechanical system. The mechanical system translates signals generated by the
`controller into movement of an object.” ‘236 Patent at 1:19-22.
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`6
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`Because not all motion controllers
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`share a uniform computer “language” (i.e.,
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`set of control commands), historically
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`application programs have been tailored to
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`particular controllers on a factory floor,
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`requiring different application programs for
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`
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`different motion control devices, as depicted in the schematic to the right above.
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`One fundamental desire of motion control
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`industry customers has been
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`interoperability among different motion control devices because
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`such
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`interoperability would offer centralized monitoring and control over an entire
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`factory operation through a common application program (or set of application
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`programs). For example, an automobile manufacturing plant would prefer to use a
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`single software application program to integrate seamlessly and control a variety of
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`motion control devices made by different manufacturers.
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`But, in practice, the interoperability goal has been elusive. Mechanical
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`devices typically use different controllers that understand only their own hardware-
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`specific or vendor-specific commands. Specifically, each hardware controller
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`understands and can communicate with only the control commands that correspond
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`to the basic “read” and “write” functions that it performs, such as “reading” a
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`current motor position or “writing” a desired target motor position. To solve these
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`and other problems, the motion control industry attempted to develop standards
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`and uniform codes requiring all hardware controllers to use the same computer
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`language and control commands. The inventors of the ‘236 Patent—Dave Brown
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`and Jay Clark— correctly recognized that a uniform standard was unlikely to be
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`adopted by the industry. They solved the problem in a very different way.
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`C. The ‘236 Patent Invention
`Messrs. Brown and Clark conceived of an alternative approach that allowed
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`for interoperability under an application program despite the different “languages”
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`utilized by different motion controllers.
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`Their epiphany stemmed from
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`their
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`recognition
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`that,
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`although motion
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`controllers use different, controller-
`
`dependent
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`control
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`commands,
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`they
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`generally implement many of the same,
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`controller independent, motion control
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`operations (e.g., GET POSITION and MOVE RELATIVE). The inventors
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`conceived and developed a unique software architecture in which an intermediate
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`software layer (the “motion control component”) and a set of controller-specific
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`software drivers work together to convert controller independent “component
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`functions” called by the application program into controller dependent control
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`commands that can be understood by a selected motion control device. When an
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`application program requests a desired motion control operation, the inventors’
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`software system transparently converts that request into the specific control
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`command(s) appropriate for the selected motion controller. (See schematics
`
`above).
`
`In one example, shown in Figure 2 of the ‘236 Patent, multiple discrete
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`software layers interact with one another.
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`(See drawing to the right, which has been
`
`modified
`
`to
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`clarify
`
`layering). The
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`application program (the upper software
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`layer) offers various motion control
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`operations through hardware independent
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`“component
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`functions”
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`that can be
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`
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`“called” on the motion control component (the intermediate software layer), which
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`comprises component code. The component code in the motion control component
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`associates “component functions” with corresponding “driver functions” in the
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`different software drivers (the lower software layer). The software drivers, in turn,
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`include hardware dependent driver code corresponding to the different driver
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`functions for generating the appropriate control commands.
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`Three-tiered software programming models predated the invention of
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`Messrs. Brown and Clark. One example, described in detail in the background
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`section of the ‘236 Patent, is WOSA, which forms the basis of the WOSA/XFS
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`reference relied upon in the Petition. WOSA was a software model defined by
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`Microsoft for use in the Windows programming environment. ‘236 Patent at 2:55-
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`67. However, Messrs. Brown and Clark recognized that the pre-existing three-
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`tiered models like WOSA would not provide a workable solution to the
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`interoperability problem with motion control devices. Different motion control
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`devices support different motion control operations, depending on
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`their
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`complexity. For example, some motion control devices support CONTOUR
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`MOVE—a movement involving coordinated movement of two motors to form an
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`arc—whereas others do not. Messrs. Brown and Clark recognized that if the
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`WOSA approach were implemented, an application program would be unable to
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`call (for example) a CONTOUR MOVE on motion control devices that do not
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`support this operation. This would only highlight, rather than eliminate, hardware
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`dependencies.
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`Messrs. Brown and Clark conceived a novel solution to this problem. They
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`recognized that although motion control devices do not support the exact same set
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`of motion control operations, they do support a subset of motion control
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`operations, such as GET POSITION and MOVE RELATIVE, that are necessary
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`for motion control and cannot be emulated using other motion control operations.
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`They referred to these operations as “primitive operations.” Messrs. Brown and
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`Clark recognized that complex operations, such as CONTOUR MOVE, can be
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`emulated on devices that do not support them directly by performing a multiplicity
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`of primitive operations. The inventors referred to such operations as “non-primitive
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`operations.” When an application program requests a non-primitive operation on a
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`motion control device that does not support that operation directly, the middleware
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`layer requests the appropriate multiplicity of operations that emulate the operation.
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`Thus, from the application program’s point of view, the motion control device does
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`support the operation, thereby enabling hardware independence.
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`The net effect is that application programs are able to call hardware
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`independent component functions corresponding to motion control operations
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`without regard to whether the selected motion control device supports the
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`operation directly and without regard
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`to
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`its hardware-dependent control
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`commands. In their ‘236 Patent, Messrs. Brown and Clark rejected conventional
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`wisdom and elegantly solved
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`the
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`long-standing problem of hardware
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`incompatibility among motion control devices.
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`D. The ‘236 Patent’s History of Litigation and Reexamination
`The ‘236 Patent’s validity has been repeatedly challenged and consistently
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`upheld. First, it was challenged in court by the GE Fanuc defendants in ROY-G-
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`BIV Corp. v. Fanuc Ltd., Fanuc Robotics America, Inc., GE Fanuc Automation
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`Corporation, GE Fanuc Automation Americas, Inc., and GE Fanuc Intelligent
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`Platforms, Inc., Case No. 2:07-cv-00418-DF (E.D. Tex.) (hereinafter “the
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`Litigation”). But GE Fanuc ultimately settled, dropping its validity challenges.
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`Second, the ‘236 Patent was intensely scrutinized in an extensive Inter Partes
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`reexamination proceeding No. 95/000,396 (the “Reexamination”), which was
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`concurrent with the Litigation. The Reexamination Request proposed eleven (11)
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`grounds of rejection based on forty-one (41) references. The initial Office Action
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`adopted six (6) grounds of rejection, and rejected all claims.3 Many additional
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`references were considered by the Examiner.4
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`After thorough consideration in the Inter Partes reexamination, all grounds
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`of rejection were ultimately withdrawn, and all claims confirmed as originally
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`granted. Thus, the ‘236 Patent is one of only 41 patents (2.47%) that have had all
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`original claims confirmed in Inter Partes reexamination.5 It is this same ‘236
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`Patent that the instant Petition seeks to have reviewed yet again, on the basis of
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`substantially similar references that are certainly not more relevant than those
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`considered in reexamination.
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`IV. The Petition’s “Broadest Reasonable Interpretation” Is Unreasonable
`“[T]he PTO must give claims their broadest reasonable interpretation.” In re
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`Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). However, the broadest reasonable
`
`construction must be “consistent with the specification.” In re Am. Acad. of Sci.
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`3 See 95/000,396; Office Action dated 1/23/2009 p. 2.
`4 See Reexamination Certificate attached as Exhibit 2001.
`5 See www.uspto.gov/patents/stats//IP_quarterly_report_June_30_2012.pdf,
`showing that of 1,659 re-exams filed since the start of inter-partes re-examination,
`only 41 certificates have been issued with all claims confirmed (2.47%).
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`Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal quotation omitted); In re
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`Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Further, the broadest reasonable
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`construction must “tak[e]
`
`into account any definitions presented
`
`in
`
`the
`
`specification.” In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002).
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`A.
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`“Primitive Operations”
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`The sole independent claim 1 recites: “a primitive operation the
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`implementation of which is required to operate motion control devices and cannot
`
`be simulated using other motion control operations.” ’236 Patent at 48:15-21
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`(emphasis added). Each of the remaining ‘236 Patent claims depends from claim 1.
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`The specification explicitly defines “primitive operation”: “Primitive operations
`
`are operations that are necessary for motion control and cannot be simulated
`
`using a combination of other motion control operations.” Id. at 7:28-31
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`(emphasis added). The ‘236 Patent also teaches that “[e]xamples of primitive
`
`operations include GET POSITION and MOVE RELATIVE, which are necessary
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`for motion control and cannot be emulated using other motion control operations.”
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`Id. at 7:31-34. Given the claim language and lexicography, any reasonable
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`interpretation requires accounting for the concepts that the primitive operation of
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`claim 1 must be necessary for motion control and cannot be simulated using other
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`motion control operations.6
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`The Petition proposes that “primitive operation” be interpreted to mean “an
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`abstract motion control operation corresponding to a driver function which is not
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`represented as the combination of other driver functions.” Petition at 19. This
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`interpretation is facially unreasonable. First, the Petition’s proposed construction
`
`ignores not only the claim language surrounding “primitive operation,” but also the
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`express, lexicographic definition of “primitive operation” in the ‘236 Patent
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`specification. The proposed construction does not even purport to account for the
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`requirement that “primitive operations” are necessary for motion control. Instead,
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`the Petition would deem an operation “primitive,” even if unnecessary for motion
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`control, so long as its driver function was “not represented as the combination of
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`6 Consistent with the claim language and lexicography, the term “primitive
`operation(s)” has been construed in court to mean “motion control operation(s),
`such as GET POSITION and MOVE RELATIVE, necessary for motion control,
`which cannot be simulated using a combination of other motion control
`operations.” See Markman Opinion from the Litigation, p. 19, attached as Exhibit
`2002.
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`other driver functions” in the system. Further, the Petitioner’s proposed
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`construction does not account for the requirement that “primitive operations”
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`cannot be simulated from other motion control operations.
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`B.
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`“Core Driver Functions”
`Independent claim 1 also recites “a core set of core driver functions, where
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`each core driver function is associated with one of the primitive operations.”
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`’236 Patent at 48:22-24 (emphasis added). Thus, the claim on its face defines “core
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`driver functions” as “associated” with “primitive operations.” And,
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`the
`
`specification likewise teaches that “[c]ore driver functions are associated with
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`primitive operations.” Id. at 7:44-45. Accordingly, “core driver functions” must be
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`associated with motion control operations that are both necessary for motion
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`control and cannot be simulated using other motion control operations.
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`The Petition yet again ignores this claim language and specification
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`teaching. Instead, the Petition states:
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`[T]he [broadest reasonable interpretation] of “driver functions” is
`software that helps implement the abstract motion control operations,
`with “core” driver functions helping implement primitive operations
`and “extended” driver functions helping implement nonprimitive
`operations.
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`IPR 2012-00062
`
`Petition at 21. It goes without saying that if the Petition’s cited references fail to
`
`identify “primitive operations,” then they likewise fails to teach “core driver
`
`functions” that are “associated” with “primitive operations.”
`
`V. The Petition Does Not Demonstrate a Reasonable Likelihood of
`Prevailing on the Proposed Anticipation or Obviousness Theories
`A. Legal Standards
`A grant of Inter Partes review is improper unless the Petition “shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged . . . .” 35 U.S.C. § 314(a).
`
`To succeed on its anticipation theories, the references relied on in the
`
`Petition “must not only disclose all elements of the claim within the four corners of
`
`the document, but must also disclose those elements ‘arranged as in the claim.’”
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008)
`
`(internal citation omitted). Each anticipation rejection proposed in the Petition is
`
`deficient for failing to set forth each and every claimed feature in the ’236 Patent.
`
`Specifically, each claim has at
`
`least
`
`two
`
`limitations—explicitly or by
`
`dependency—absent
`
`from
`
`the
`
`references:
`
`(1) “a primitive operation
`
`the
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`implementation of which is required to operate motion control devices and cannot
`
`be simulated using other motion control operations” and (2) “a core set of core
`
`17
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`Page 20 of 54
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`Preliminary Response By Patent Owner
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`IPR 2012-00062
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`driver functions, where each core driver function is associated with one of the
`
`primitive operations.” Furthermore, even if these elements were present in the
`
`references, the Petition does not even attempt to explain how the various features
`
`in the references are “arranged as in the claim.”
`
`When assessing a proposed obviousness rejection, the Patent Office must
`
`make “a searching comparison of the claimed invention – including all its
`
`limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572
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`(Fed. Cir. 1995) (emphasis added). But a teaching of all limitations is not enough.
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`Rather, “there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at
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`418 (emphasis added) (quoting Kahn, 441 F.3d at 988).
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`The Petition’s proposed obviousness rejections fail to establish a prima facie
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`case of obviousness. First, like the primary references, the secondary references
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`fail to teach the “primitive operations” and “core driver functions” as recited in the
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`claims and defined in the specification. Accordingly, no combination of the
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`Petition’s references can arrive at the claimed inventions. Second, the Petition fails
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`to provide articulated reasoning with some rational underpinning to support the
`
`legal conclusion of obviousness. Instead, as was the case with the primary
`
`18
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`Page 21 of 54
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`Preliminary Response By Patent Owner
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`IPR 2012-00062
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`references, the Petition simply picks and chooses among citations in the references
`
`and then offers no more than a conclusory analogy between these citations and the
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`claimed limitations. Thus, the Petition fails to provide the specificity required by
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`37 C.F.R. § 42.104(b)(5).
`
`B. Gertz Fails To Anticipate The ‘236 Claims (P. Gr. 1)
`1.
`A Summary of Gertz
`Gertz7 discloses a visual programming environment for managing robots
`
`called Onika, where each higher-level portion of the environment is built from
`
`lower level portions. This way, the programming skills required at the lowest level
`
`to write code that interacts directly with the robots need not be repeated by each
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`user. Instead, lower level tasks—referred to as “control tasks”—are made
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`available to users as colorful icons. The users can then combine and manipulate
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`these colorful icons into patterns to cause increasingly complex robot motion.
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`There is no provision made for performing operations at levels lower than those
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`provided for in the “control tasks.”
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`7 Patent Owner addresses all the "alleged prior art" on the merits solely for
`purposes of this Preliminary Response, but reserves its rights to antedate any of the
`these references should the Petition be granted.
`
`19
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`Page 22 of 54
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`Preliminary Response By Patent Owner
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`IPR 2012-00062
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`The Petition distorts Gertz from its proper context. Gertz recognized that
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`programming robots is difficult, in part because the existing solutions required
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`extensive programming knowledge for every programmer, regardless of the task.
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`Gertz attempts to develop a system in which the lower level programming
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`(“control tasks”) is performed by users with more extensive programming
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`knowledge, and their extensive knowledge is essentially adapted into icon form to
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`be used by users with less programming knowledge. Ultimately, users combine
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`these “control tasks” into more complex “configurations.” These “configurations”
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`work because far more detailed programming knowledge is built into the icons
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`corresponding to the “control tasks.”
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`Gertz acknowledges that robot languages “introduced ‘built-in’ commands
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`to operate the robot, eliminating (for instance) the need to develop code for
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`motion primitives.” Instead, the coding in the “control tasks” in Gertz relates to
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`higher level operations like “read data from trackball” and “perform forward
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`kinematics.” Petition at 11. If the user in Gertz desires to perform a true “motion
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`primitive,” the user is out of luck. The lowest level operations that can be
`
`performed in Gertz are those corresponding to the “control tasks.”
`
`20
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`Page 23 of 54
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`Preliminary Response By Patent Owner
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`IPR 2012-00062
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`2. Gertz Does Not Teach “Primitive Operations”8
`According to the Petition, “a motion control operation performed by one of
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`Gertz’s control tasks is a “primitive operation” because it is the lowest level
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`motion operation Onika recognizes.” Petition at 20 (emphasis added). Thus, the
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`Petition does not argue that the control task operations in Gertz are truly
`
`“primitive”; rather, it only argues that they are the lowest-level non-primitive
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`operations actually supported by Onika. Indeed, Gertz is clear that true
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`“primitives” are not even provided for in Onika because it is designed to be a much
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`higher level software system that rises far above the details of primitive motion
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`operations. Gertz explains that “[t]extual robotic languages such as VAL II or AL
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`
`8 Although for reasons of space and clarity this preliminary response focuses on
`just two claim limitations, Gertz fails to teach many additional limitations. Merely
`by way of example, each ‘236 Patent claim requires “component functions.”
`Although Petitio
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