Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 1 of 7 PageID #: 3725
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`Exhibit 1
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`Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 2 of 7 PageID #: 3726
`B O I E S ,
` S C H I L L E R & F L E X N E R L L P
`5 3 0 1 W i s c o n s i n A v e n u e N . W . * W a s h i n g t o n , D C 2 0 0 1 5 - 2 0 1 5 * P H 2 0 2 . 2 3 7. 2 7 2 7 * F A X 2 0 2 . 2 3 7. 6 1 3 1  
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`April 26, 2013
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`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`211 W. Ferguson, Third Floor
`Tyler, TX 75702
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`Re: ROY-G-BIV Corp. v. ABB, Ltd. et al., Civil Action No. 6:11-cv-00622-00624-LED
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`Dear Chief Judge Davis:
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`In accordance with the November 27, 2012 Docket Control Order (Doc. 97) in this case,
`Plaintiff RGB opposes Defendants’ request to file a motion for summary judgment of
`indefiniteness. Defendants’ requested motion is a “not even arguably meritorious” motion that
`will “waste[] clients’ money and the Court’s limited resources.” Standing Order Regarding
`Letter Briefs at 2. Accordingly, RGB respectfully requests that it not be required to expend
`resources addressing Defendants’ proposed motion.
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`First, as set forth below, Defendants’ arguments as to “primitive operations” / “non-
`primitive operations” and “application program” are dead on arrival. The meanings of those
`terms are clear and any alleged play in those clear meanings does not come close to meeting the
`“insolubly ambiguous” standard. Second, Defendants’ supposed confusion over the meaning of
`these terms is feigned. Indeed, in their invalidity contentions, Defendants had no trouble
`alleging that the asserted prior art references teach those limitations. Further, the Defendants
`also asserted in interrogatory responses that their accused products lack “primitive” and “non-
`primitive” operations, reflecting their understanding of those terms. Third, the PTO’s
`decisions—including original prosecutions, inter partes reexaminations, and recent inter partes
`reviews—soundly rebut Defendants’ contention. Indeed, just last week, the Patent Trial and
`Appeal Board (“PTAB”) rejected ABB’s “vagueness” argument as to “primitive operations.”
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`I.
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`Defendants’ description of the legal standards for indefiniteness conspicuously omits any
`mention of the presumption of validity, the clear and convincing standard of proof, or the
`“exacting standard” with which indefiniteness defenses are evaluated. Specifically, to prove
`indefiniteness, “[a]n accused infringer must . . . demonstrate by clear and convincing evidence
`that one of ordinary skill in the art could not discern the boundaries of the claim.” Haemonetics
`Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010). This is “an exacting
`standard” (id.) through which the Federal Circuit grants “respect to the statutory presumption of
`validity” and “protect[s] the inventive contribution of patentees, even when the drafting of their
`patents has been less than ideal.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
`1347-1348 (Fed. Cir. 2005).
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`“Only claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite.”
`Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1250 (Fed. Cir. 2008). “Absolute clarity
`. . . is not necessary.” Source Search Techs., LLC v. LendingTree, LLC, 588 F.3d 1063, 1076
`(Fed. Cir. 2009). Thus, the mere fact that some “play remains in [a] construction is not enough
`WWW.BSFLLP.COM  
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`Applicable Legal Standards for Indefiniteness
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`Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 3 of 7 PageID #: 3727
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`to render the patent indefinite.” Accentra, Inc. v. Staples, Inc., 2013 U.S. App. LEXIS 225 (Fed.
`Cir. Jan. 4, 2013). “[C]lose questions of indefiniteness in litigation involving issued patents are
`properly resolved in favor of the patentee.” Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359
`F.3d 1367, 1372 (Fed. Cir. 2004).
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`II.
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`Defendants’ Arguments Fail On the Merits
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`A.
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`“Primitive” and “Non-Primitive” Operations Are Not Indefinite
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`1.
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`The Mistake in the Appendix Is Apparent
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`Defendants correctly identify a mistake in the March 15, 1995 Appendices to the RGB
`Patents. Specifically, the inventors erroneously interchanged “MovRel” and “MovAbs.” They
`categorize “MovRel” as a non-primitive operation and “MovAbs” as a primitive operation, when
`the opposite is actually true. But the inventors realized their mistake, which they corrected in
`their May 30, 1995 patent filing. Accordingly, there is no doubt that the RGB Patents correctly
`classify “MovRel” as a “primitive operation.”
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`The MovRel and MovAbs operations are well known to persons skilled in the art, who
`would not be confused by RGB’s initial mistake. The “MovRel” operation instructs a motion
`control device to move some distance “relative” to its current position and without regard to its
`absolute position in the coordinate system. This simple move command is analogous to
`instructing a person to move five feet to their right. The person need not know his or her current
`position—e.g., a longitude and latitude—to comply with the instruction. Because “MovRel” is
`necessary for motion control and cannot be simulated using other motion control operations, it is
`a primitive operation.
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`In contrast, the “MovAbs” operation instructs a motion control device to move to an
`absolute position in the coordinate system. The analogous instruction is for a person to move to
`a particular latitude and longitude. To comply, a person must first determine his or her current
`position in latitude and longitude, and then determine an appropriate “MovRel” to reach the
`desired absolute position. Thus, a “MovAbs” operation can be simulated by a “Get Position”
`operation followed by an appropriate “MovRel” operation. Because “MovAbs” can be simulated
`by these two other motion control operations, it is non-primitive. See ‘236 Patent, col. 7:27-39.
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`The relationship between “MovRel” and “MovAbs” operations is well known in the field
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`of motion control. Although the March 15, 1995 Appendices accidentally interchanged the two
`operations, the mistake was corrected in the original patent filing two months later. No person of
`skill in the art could possibly be confused.
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` 2.
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`The “Primitive Operations” “Move Relative” and “Get Position”
`Cannot Be Simulated by Other Motion Control Operations
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`Defendants incorrectly contend that “[b]y defining ‘SetAcceleration’ and ‘SetVelocity’ as
`motion control operations, RGB admits that MOVE RELATIVE is not a primitive operation
`because it can be simulated using the combination of acceleration and velocity components.”
`Ltr. at 4. Defendants are demonstrably wrong; even a cursory examination of RGB’s
`Appendices shows that not all motion control operations cause movement. For example, motion
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`Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 4 of 7 PageID #: 3728
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`control operations can relate to, among other things: “Configuration” (e.g., “Initialize”);
`“Querying Attributes” (e.g., “GetAcceleration” and “GetVelocity” and “GetPosition”); “Setting
`Attributes” (e.g., SetAcceleration and SetVelocity); and “Actions” (e.g., MovAbs). See
`Appendix B § 4.2.8. “Configuration,” “Querying Attributes,” and “Setting Attributes” are other
`motion control operations that do not cause movement. For example, the “Setting Attributes”
`motion control operations simply set parameters that will apply if and when “Actions” are
`initiated. “SetAcceleration” and “SetVelocity” will determine the acceleration and velocity if
`and when a MOVE RELATIVE operation is initiated. But, unlike MOVE RELATIVE,
`“SetAcceleration” and “SetVelocity” never initiate movement themselves. Accordingly, while
`“SetAcceleration” and “SetVelocity” are motion control operations, they cannot be used to
`simulate MOVE RELATIVE. Defendants’ contrary argument makes no sense. The PTAB
`agrees; just last week the PTAB stated that it was “not persuaded by” ABB’s argument that
`“‘move relative’ could be emulated using ‘constituent operations.’” ‘236 IPR Decision at 8.
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`Defendants’ related argument about “GET POSITION” is equally frivolous. Defendants
`argue that GET POSITION is not primitive because it “can be emulated using a combination of
`operations.” Ltr. at 4 (emphasis added). According to Defendants, “GET POSITION also
`requires constituent operations, including: (1) sending a query; (2) receiving position data in
`response to that query; and (3) reading the received position data.” Id. Again, Defendants are
`wrong; they misread the claim limitation.
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`As Defendants acknowledge, “primitive operations” are operations “which cannot be
`simulated using a combination of other motion control operations.” Ltr. at 3 (emphasis added).
`But tellingly, Defendants do not even attempt to explain how these alleged “constituent
`operations” qualify as “other motion control operations.” Indeed, the GET POSITION motion
`control operation in the RGB Patents involves “querying the system for the current position.”
`‘236 Patent at col.16:43-45. Thus, the first alleged constituent operation is not an “other motion
`control operation”; rather, it is the GET POSITION motion control operation. Further, the last
`two allegedly “constituent operations” relate to what is done after GET POSITION is called.
`Again, the PTAB agrees with RGB. Last week, the PTAB rejected ABB’s argument that,
`because “motion control operations exist in the abstract,” they “can always be further
`decomposed into increasingly lower level constituent operations.” ‘236 IPR Decision at 7.
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`Defendants’ letter brief identifies only a handful “motion control operations.” But the
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`Appendices disclose many, many more, including Initialize, Tune, GetErrorStatus, GetUnits,
`GoHome, GoZero, Reset, and ShutDown. Tellingly, Defendants have not even attempted to
`explain how any of the many exemplary “primitive operations” in the Appendices can be
`simulated from any of the “other motion control operations” disclosed in the Appendices. Their
`argument that GET POSITION and MOVE RELATIVE can be simulated from other motion
`control operation simply has no basis in fact.
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`3.
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`The Patents Provide Adequate Guidance on Which Operations Are
`“Necessary for Motion Control”
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`Defendants next argue that the “patents fail to notify the public as how GET POSITION
`or MOVE RELATIVE are ‘necessary for motion control’” because “[t]urning a spindle does not
`require a MOVE RELATIVE operation.” Ltr. at 4. According to Defendants “[i]f an operation
`is only performed in certain motion control applications by certain devices, it cannot be fairly
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`Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 5 of 7 PageID #: 3729
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`described as ‘necessary for motion control.’” Ltr. at 3. Defendants’ argument is irreconcilable
`with the clear teaching in the specification, and their own actions. In addition, the PTAB’s recent
`IPR decision expressly found that “the ‘236 Patent clearly defines a primitive operation with an
`explicit definition—an operation necessary for motion control and cannot be simulated using a
`combination of other motion control operations. ‘236 IPR Decision at 8-9. The PTAB also
`found that the specification explains how to apply the definition. Id. Although “MovRel” may
`not be employed for “turning a spindle,” that application requires other operations like
`“MoveContinuous,” which cannot be simulated using other motion control operations. This is
`why “MoveContinuous” is denominated as a primitive operation in the RGB Appendices.
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`4.
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`Defendants’ Alleged Confusion Is Feigned & Inconsistent with the
`PTO IPR Decisions
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`Defendants’ prior admissions demonstrate that their confusion over these terms is
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`feigned. First, Defendants’ Joint Invalidity Contentions (“DJICs”) reflect that they had no
`trouble whatsoever distinguishing between “primitive operations” and “non-primitive
`operations” and specifically identifying alleged examples of each in references that the
`Defendants assert are prior art. See, e.g., DJICs, Ex. B2 at 5-6 (“Infi90 DCS function codes
`embody motion control operations. . . . Some of the function codes correspond to primitive
`operations. . . . Other function codes correspond to non-primitive operations.”) (emphasis
`added); Id., Ex. N2 at 2 (“Sorensen discloses a set of motion control operations. . . . Primitive
`operations include measure_pose (p. 174), move_axis (p. 165), move_to_ele (p. 165), and
`set_signal/set_ext_signal (p. 174), for example. Non- primitive operations include move_joints
`(p. 165) and move_rel_ele (p. 166), and pulse_sig (p. 174), for example. Primitive and non-
`primitive operations are described in Appendix A, for example (using the data structures and
`definitions of Appendix C).”).
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`Second, in their interrogatory responses Defendants deny that their accused products have
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`“primitive operations” or “non-primitive operations,” further evidencing that they understand the
`meaning of those terms.
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`Third, as to “primitive” and “non-primitive” operations, Defendants’ Letter Brief
`candidly concedes that the supposed ambiguities in the meaning of primitive operations and non-
`primitive operations are “less obvious on the whole.” (Ltr. at 5). Indeed, in ABB’s recent IPR
`Petition, it did not even contend that “primitive operations” was insolubly ambiguous. As we
`discuss below, ABB asserted only that the term was “vague” and needed supplementation. The
`PTAB disagreed and readily construed the term. See Section III below.
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`B.
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`Claim 8 of the ‘543 Patent Is Not “Insolubly Ambiguous”
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`Defendants infer that the absence of an explicit antecedent basis for “application
`program” in claim 8 is fatal to validity. This is not the law. In re Skvorecz, 580 F.3d 1262,
`1268-1269 (Fed. Cir. 2009) (claim not invalid for lack of antecedent basis because “a person
`skilled in the field of the invention would understand the claim when viewed in the context of the
`specification”); Energizer Holdings v. ITC, 435 F.3d 1366, 1370-1371 (Fed. Cir. 2006).
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`Here, the face of the claim (reproduced below) resolves any ambiguity. Because claims 5,
`6 and 7 do not require an application program, a person of ordinary skill reading this claim
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`Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 6 of 7 PageID #: 3730
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`would understand that its purpose was to add a limitation requiring an application program
`comprising “a sequence of component functions, and wherein at least some of the component
`functions are associated with driver functions.” Accordingly, the person of ordinary skill would
`simply interpret claim 8 in the follow manner (underlining for additions and strikethrough for
`deletions), which implicates no change in scope or meaning of the claim:
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`The system of claim 7, further comprising an wherein the application
`8.
`program comprising comprises a sequence of component functions, and wherein
`at least some of the component functions are associated with driver functions.
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`Tellingly, this straightforward reading is precisely how Defendants interpreted the claim
`in their invalidity contentions. DJICs at Ex. N3 at 9-10 (“Sorensen discloses a system as recited
`in claim 7 [of the ‘543 Patent]. . . . Sorensen discloses that the application program comprises
`a sequence of component functions. . . .Sorensen discloses that at least some of the component
`functions are associated with driver functions.”) (emphasis added).
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`III. The PTO’s Decisions Rebut Defendants’ Arguments.
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`Late last year, defendant ABB sought inter partes reviews that challenged “primitive
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`operations” for “vagueness.” The PTAB rejected this argument last week: “We agree with the
`Patent Owner. We are not persuaded that the explicit definition of ‘primitive operation’ recited
`in both the specification and recited in the only independent claim of the ’236 patent is so vague
`as to require supplementing.” ‘236 IPR Decision at 7.
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`Moreover, none of the PTO examiners who have reviewed RGB applications have ever
`expressed any concerns about the definiteness of any limitation that Defendants now seek to
`challenge. The examiners’ collective silence is significant. They are presumed to be persons of
`skill in the art. Moreover, they are required to assess definiteness as part of the application
`review process. Manual of Patent Examining Procedures § 2163. Three of the four patents that
`the Defendants accuse of being indefinite emerged after extensive post-grant proceedings. Thus,
`the PTO has issued a clean bill of health on seven separate occasions: in the original four notices
`of allowance and then in the three reexamination certificates following reexamination. And, as
`discussed above, in the most recent inter partes reviews, the PTAB has specifically considered
`and rejected Defendants’ argument that the definition for “primitive operations” is too vague.
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`IV. Conclusion
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`Accordingly, for the reasons summarized above, RGB respectfully requests that the Court
`deny Defendants’ request to file their proposed motion for summary judgment of indefiniteness.
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`Case 6:11-cv-00622-LED Document 150-1 Filed 04/26/13 Page 7 of 7 PageID #: 3731
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`Very truly yours,
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`/s/ Richard S. Meyer
`D. Michael Underhill
`Richard S. Meyer
`BOIES SCHILLER & FLEXNER
`5301 Wisconsin Avenue, NW
`Washington, DC 20015
`202.237.2727
`202.237.6131 (Fax)
`munderhill@bsfllp.com
`rmeyer@bsfllp.com
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`/s/ Russell A. Chorush
`Russell A. Chorush
`Texas State Bar No. 24031948
`HEIM, PAYNE & CHORUSH, L.L.P.
`JP Morgan Chase Tower
`600 Travis Street, Suite 6710
`Houston, Texas 77002
`713.221.2000
`713.221.2021 (Fax)
`rchorush@hpcllp.com
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`/s/ Gregory P. Love
`Gregory P. Love
`STEVENS LOVE
`P. O. Box 3427
`Longview, Texas 75606-3427
`903.753.6760
`903.753.6761 (Fax)
`greg@stevenslove.com
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`Adam Q. Voyles
`LUBEL VOYLES, LLP
`5020 Montrose Blvd., Suite 800
`Houston, Texas 77006
`713.284-5200
`713.284-5250 (Fax)
`adam@lubelvoyles.com
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