Trials@uspto.gov Paper No. 14
`571-272-7822 Date Entered: Aug 9, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ABB INC.
`Petitioner,
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00282
`Patent 6,516,236 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and JENNIFER S.
`BISK, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
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`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`

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`Case IPR2013-00282
`Patent 6,516,236 B1
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`INTRODUCTION
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`I.
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`A.
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`Background
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`ABB Inc. (Petitioner) requests inter partes review of claims 5-7 of US
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`Patent 6,516,236 B1 (the ’236 patent) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1
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`(Pet.). Patent Owner has waived its right to file a Preliminary Response. Paper 13.
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`We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a) which provides as follows:
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`THRESHOLD – The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.
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`Petitioner separately has moved that this proceeding be joined with
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`IPR2013-00062. Paper 4. In a separate decision entered today, we grant ABB’s
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`motion and join this proceeding with IPR2013-00062. To facilitate joinder,
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`Petitioner moved to limit the petition (Paper 10) to the following grounds of
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`obviousness (see Asserted Challenges and References, infra):
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`1.
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`Claims 5 and 6 based on the combination of Gertz, Stewart, Morrow,
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`DDAG, and Brockschmidt;
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`2.
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`Claim 7 based on the combination of Gertz, Stewart, Morrow, DDAG,
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`and HP86.
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`The Board granted the motion. Paper 11. As a result, the Petition now is limited
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`to grounds of unpatentability that are based primarily on prior art that the Board
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`relied upon in instituting inter partes review in ABB, Inc. v. ROY-G-BIV
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`Corporation, Case IPR2013-00062.
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`2
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`Case IPR2013-00282
`Patent 6,516,236 B1
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` For the reasons discussed below, we institute inter partes review of claims
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`5-7 on each of the proposed grounds — obviousness over the combination of
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`Gertz, Stewart, Morrow, DDAG, and Brockschmidt, and obviousness over the
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`combination of Gertz, Stewart, Morrow, DDAG, and HP86.
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`B. Asserted Challenges and References
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`ABB contends that the challenged claims are unpatentable under 35 U.S.C.
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`§ 103 based on the following prior art references:
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`1.
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`Gertz, Matthew W., A Visual Programming Environment for Real-
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`Time Control Systems. Ph.D. dissertation, Carnegie Mellon University, Nov. 22,
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`1994 (Ex. 1008) (“Gertz”);
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`2.
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`Stewart, David B., Real-Time Software Design and Analysis of
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`Reconfigurable Multi-Sensor Based Systems. Ph.D. dissertation, Carnegie Mellon
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`University, April 1, 1994 (Ex. 1012) (“Stewart”);
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`3. Morrow, J. Dan; Nelson, Bradley J.; and Khosla, Pradeep, “Vision
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`and Force Driven Sensorimotor Primitives for Robotic Assembly Skills,”
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`Proceedings of the 1995 IEEE/RSJ Int. Conf. on Intelligent Robots and Systems,
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`234-240, January 1, 1995 (Ex. 1013) (“Morrow”);
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`4. Microsoft Corp., MS Windows 3.1 Device Driver Adaption Guide,
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`Chs. 1-2, 4, 10-12 (Microsoft Press 1991) (Ex. 1010) (“DDAG”);
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`5.
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`Brockschmidt, Kraig, Inside OLE 2 (Microsoft Press Programming
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`Series 1994) (Ex. 1011) (“Brockschmidt”);
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`6.
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`Hewlett Packard Co., Interface and Programming Manual, HP 7550
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`Graphics Plotter (3rd ed. 1986) (Ex. 1019) (“HP86”).
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`C.
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`Related Proceedings
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`The ’236 patent is involved in concurrent district court litigation. On
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`November 15, 2011, ROY-G-BIV filed an infringement complaint against ABB.
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`3
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`Case IPR2013-00282
`Patent 6,516,236 B1
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`ROY-G-BIV v. ABB et al., No. 11-cv-00622 (E.D. Tex.). That proceeding has not
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`been stayed. Id. The ’236 patent also was involved in prior litigation, dismissed
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`with prejudice on November 20, 2009. ROY-G-BIV Corp. v. Fanuc Ltd. et al, No.
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`2:07-cv-00418 (E.D. Tex.).
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`D.
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`The Invention
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`The technology of the ’236 patent is described in the decision (Paper 23) in
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`IPR2013-00062 instituting inter partes review (the “IPR2013-00062 Decision”) at
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`pages 3-5. For the purposes of this decision, we adopt that prior description.
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`Claims 5-7, at issue in this petition, are reproduced below.
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`5. A system as recited in claim 4, further comprising:
`an extended function pointer table that maps the non-supported
`extended driver functions to the combination of core driver functions
`employed to emulate the non-supported extended functions; and
` the motion control component generates the control commands
`further based on the contents of the extended function pointer table.
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`6. A system as recited in claim 5, in which the extended
`function pointer table contains pointers for both supported and non-
`supported extended driver functions, where
` the pointers for the supported extended driver functions point
`to driver code for implementing the supported extended driver
`functions and
` the pointers for the non-supported extended driver functions
`point to the combination of core driver functions that emulate the non-
`supported extended functions.
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`7. A system as recited in claim 1, further comprising:
`means for determining a driver unit system employed by the
`software drivers; and
`means for converting an application unit system employed by
`the application program into the driver unit system.
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`4
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`Case IPR2013-00282
`Patent 6,516,236 B1
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`Claim Construction
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`E.
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`As a step in our analysis for determining whether to institute a trial, we
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`determine the meaning of the claims. Consistent with the statute and the
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`legislative history of the Leahy-Smith America Invents Act (AIA), the Board will
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`interpret claims using the broadest reasonable construction in light of the
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`specification. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
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`(Aug. 14, 2012); 37 CFR § 42.100(b). ABB submits proposed interpretations for
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`several claim terms. Pet. 17-32.
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`We adopt, for the purpose of this decision, the claim constructions presented
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`in the IPR2013-00062 Decision at 6-11.
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`II. ANALYSIS
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`A. Overview
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`For the reasons described below, we institute an inter partes review of
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`claims 5 and 6 of the ʼ236 patent on the ground of obviousness over the
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`combination of Gertz, Stewart, Morrow, DDAG, and Brockschmidt, and of claim 7
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`on the ground of obviousness over the combination of Gertz, Stewart, Morrow,
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`DDAG, and HP86.
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`B. Gertz, Stewart, and Morrow
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`The Gertz reference (Ex. 1008) is described in the IPR2013-00062 Decision
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`at page 12. The Stewart (Ex. 1012) and Morrow (Ex. 1013) references are
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`described in the the IPR2013-00062 Decision at page 15. For the purposes of this
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`decision we adopt those prior descriptions.
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`1.
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`Obviousness over Gertz, Stewart, Morrow, DDAG, and Brockschmidt
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`Petitioner asserts that claims 5 and 6 would have been obvious over the
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`combination of Gertz, Stewart, Morrow, DDAG, and Brockschmidt. Pet. 29-34.
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`DDAG (Ex. 1010) is a manual describing Windows 3.1 device drivers and their
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`5
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`Patent 6,516,236 B1
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`operation. DDAG describes that GDI can simulate the capability of a function
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`when a driver does not contain a particular function by combining functions.
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`DDAG 24. Brockschmidt (Ex. 1011) is a paper describing OLE 2.0. It describes
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`the use of function pointer tables (an “array of function pointers”) by an object.
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`Brockschmidt 29.
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`Dependent claims 5 and 6 include the limitations of independent claim 1 and
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`dependent claims 2-4 from which they depend. As to those limitations contained
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`in claims 1-4, we incorporate the analysis supporting the institution of IPR2013-
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`00062 on claims 1-4 insofar as it relates to Gertz, Stewart, and Morrow at pages
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`15-18 of the IPR2013-00062 Decision. We address below, therefore, only those
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`limitations recited specifically in claims 5 and 6.
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`Dependent claims 5 and 6 include limitations to “an extended function
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`pointer table that maps the non-supported extended driver functions to the
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`combination of core driver functions employed to emulate the non-supported
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`extended function” and “the motion control component generates the control
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`commands further based on the contents of the extended function pointer table.”
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`Petitioner relies on DDAG as describing the recited unsupported extended
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`driver functions and their simulation by combining basic functions. Pet. 34.
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`DDAG discusses expressly the simulation of non-supported extended functions
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`using basic functions. DDAG 27. DDAG states “GDI simulates output that the
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`driver does not support by combining scan lines and polylines.” Id. We agree,
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`therefore, that DDAG teaches simulation of unsupported extended driver functions
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`by combining basic functions. Pet. 34.
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`Petitioner asserts that a person of ordinary skill would have combined Gertz
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`and DDAG in order to address creating middleware to allow a variety of
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`applications to interact with a variety of devices. Pet. 26. Petitioner further asserts
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`that the combination would have involved the application of known techniques
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`(simulation of complex functions) to prior art (Gertz) yielding predictable results.
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Gertz describes creation
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`of code for use with a variety of robotic manipulation devices. Gertz, §§ 1.1 and
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`1.2. Gertz also describes the use of device drivers to translate commands into
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`device specific languages. Id. at § 6.3.2, n.1. DDAG discusses the simulation of
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`unsupported driver functions by combining basic functions. DDAG 27. We agree,
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`therefore, that Petitioner presents sufficient evidence that one with ordinary skill in
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`the art would have had adequate reason to incorporate a known technique for
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`simulating complex driver functions into the device drivers of Gertz in order to
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`allow Gertz to translate commands which may not be supported in a specific
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`device driver language in order to be able to interact with a variety of devices. Pet.
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`26.
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`Petitioner relies on Brockschmidt as describing the extended driver function
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`pointer table. Pet. 34. Brockschmidt describes tables with a pointer to each one of
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`a plurality of functions. Brockschmidt 29. Brockschmidt also describes a so-
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`called “interface” (code which calls a function), that can be mapped to a pointer in
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`the table. Id. We agree, therefore, that Brockschmidt’s description of the
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`implementation of “pointers to instantiated function tables for each supported
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`interface” (id.) suggests a function pointer table that could be used to map a non-
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`supported driver function to a table containing a combination of basic functions.
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`Pet. 34.
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`Petitioner asserts that a person of ordinary skill would have combined Gertz
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`and Brockschmidt in order to address the interactions of functions in
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`interconnected software systems. Pet. 26. Petitioner further asserts that the
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`combination would have been the application of known techniques (use of function
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`7
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`tables) to prior art (Gertz) yielding predictable results. Id. As noted above, Gertz
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`describes the use of device drivers to translate commands into device specific
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`languages. Gertz, § 6.3.2, n.1. Brockschmidt suggests a function pointer table
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`which could be used with driver functions. Brockschmidt 29. We agree, therefore,
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`that Petitioner presents sufficient evidence that one with ordinary skill in the art
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`would have had adequate reason to incorporate a known technique for the use of
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`function pointer tables into the device drivers of Gertz in order to allow Gertz to
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`implement complex commands, which are simulated using basic commands in
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`order to be able to interact with a variety of devices. Pet. 26.
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`For the reasons stated above, Petitioner has shown that, based on the record
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`presented, there is a reasonable likelihood that Petitioner will prevail on its
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`assertion that claims 5 and 6 are obvious over the combination of Gertz, Stewart,
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`Morrow, DDAG, and Brockschmidt.
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`2.
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`Obviousness over Gertz, Stewart, Morrow, DDAG, and HP86
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`Petitioner asserts that claims 7 would have been obvious over the
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`combination of Gertz, Stewart, Morrow, DDAG, and HP86 (Ex. 1019). Pet. 35.
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`As mentioned above, DDAG is a manual describing Windows 3.1 device drivers
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`and their operation. DDAG also describes how to determine device driver
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`capabilities, including units of measurement, and methods of unit conversion for
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`both display and printer devices. DDAG 19, 20, 24-26, 73-75. HP86 is a manual
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`describing control and programming of a 2-axis graphics plotter in which stepper
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`motors can be controlled independently to a 0.025 mm resolution (the “plotter
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`unit”). HP86 34. It discloses how to obtain plotter coordinate settings (PLOTTER
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`IS command) and a conversion algorithm for converting from an arbitrary unit of
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`measurement used in the application programmer to “plotter units.” HP86 426-
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`427.
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`Patent 6,516,236 B1
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`Dependent claim 7 includes the limitations of independent claim 1 from
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`which it depends. As to those limitations contained in claim 1, we incorporate the
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`analysis supporting the institution of IPR2013-00062 on claim 1 insofar as it
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`relates to Gertz, Stewart, and Morrow at pages 15-18 of Decision in IPR2013-
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`00062. We address below, therefore, only the limitations recited specifically in
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`claim 7.
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`Dependent claim 7 includes the limitations “means for determining a driver
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`unit system employed by the software drivers” and “means for converting an
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`application unit system employed by the application program into the driver unit
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`system.”
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`Petitioner relies on DDAG as describing means for determining a driver unit
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`system employed by the software drivers. Pet. 35. DDAG describes the use of
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`information from the GDIINFO structure within a display driver to determine,
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`among other things, units of measure used by the display driver. DDAG 19.
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`Specifically, DDAG states “display driver[s have] a GDIINFO structure that
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`specifies the display’s capabilities and characteristics.” Id. DDAG also states that
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`the “device-dimension information [in the GDIINFO structure] specifies the
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`maximum width and height of the screen in both millimeters and device units.” Id.
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`In other words, the GDIINFO structure is used to determine the device units, i.e.,
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`units of measure used by the device. We agree, therefore, that DDAG describes
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`means for determining a driver unit system employed by the software drivers. Pet.
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`35.
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`Petitioner further asserts that the combination of Gertz and DDAG would
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`have involved the application of known techniques (determining the unit of
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`measure used by a device driver) to prior art (Gertz), yielding predictable results.
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`Pet. 35. Gertz explains that the interfaces it provides are reconfigurable to meet
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`Patent 6,516,236 B1
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`individual user needs, including by adjusting the “types of unit measurements
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`used.” Gertz, § 5.7. DDAG describes the use of the GDIINFO structure in the
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`device driver to determine the unit of measure used by the device driver. DDAG
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`19. We agree, therefore, that using the DDAG structure to determine what type of
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`unit of measurement should be used by Gertz to reconfigure the interfaces Gertz
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`provides amounts to no more than “the predictable use of prior art elements
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`according to their established functions.” KSR, 550 U.S. at 417.
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`Petitioner relies on HP86 as describing a means for converting an
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`application unit system employed by the application program into the driver unit
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`system. Pet. 35. HP86 describes converting from an arbitrary unit of measure
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`defined by a user to unit of measure defined for a plotter device. HP86 426-427.
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`We agree, therefore, that HP86’s description of converting “user units” to “plotter
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`units” teaches a means for converting an application unit system employed by the
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`application program into the driver unit system. Pet. 35.
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`Petitioner asserts that the combination of HP86 and Gertz would have been
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`the application of known techniques (implementation of unit systems) to prior art
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`(Gertz), yielding predictable results. Pet. 35. As noted above, Gertz explains that
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`the interfaces it provides are reconfigurable to meet individual user needs,
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`including by adjusting the “types of unit measurements used.” Gertz, § 5.7. Also,
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`as noted above, HP86 discusses converting from an arbitrary unit of measure
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`defined by a user to unit of measure used by a device driver. HP86 426-427. We
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`agree, therefore, that using HP86’s conversion method to reconfigure the interfaces
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`Gertz provides amounts to nothing more than a combination of known prior art
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`technologies used in their ordinary and predictable manner. KSR, 550 U.S. at 417.
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`For the reasons stated above, Petitioner has shown that, based on the record
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`presented, there is a reasonable likelihood that Petitioner will prevail on its
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`Patent 6,516,236 B1
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`assertion that claim 7 is obvious over the combination of Gertz, Stewart, Morrow,
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`DDAG, and HP86.
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`C.
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`Conclusion
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`ABB has demonstrated that there is a reasonable likelihood of prevailing on
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`its challenge to the patentability of claims 5 and 6 as obvious over Gertz, Stewart,
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`Morrow, DDAG, and Brockschmidt, and claim 7 as obvious over Gertz, Stewart,
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`Morrow, DDAG, and HP86.
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`III. ORDER
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`It is
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`ORDERED that the Petition is granted as to claims 5 and 6 of the
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`ʼ236 patent on the ground of obviousness over Gertz, Stewart, Morrow, DDAG,
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`and Brockschmidt under U.S.C. § 103, and as to claim 7 of the ʼ236 patent on the
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`ground of obviousness over Gertz, Stewart, Morrow, DDAG, and HP86;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), a trial
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`for inter partes review of the ʼ236 patent is hereby instituted, commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
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`notice is hereby given of the institution of trial; and
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`FURTHER ORDERED that the trial is limited to the above-stated
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`grounds of obviousness directed to claims 5-7, and that no other ground for any
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`claim is authorized for trial.
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`Case IPR2013-00282
`Patent 6,516,236 B1
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`PETITIONER:
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`
`Rick McLeod
`Michael Jones
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`michael.jones@klarquist.com
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`PATENT OWNER
`
`Richard Black
`Joel Ard
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
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`12
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