Commissioner for Patents
`United States Patent and Trademark Office
`P.0. Box 1-150
`fllexandfifl. VA 223- 1 3-1 *1-50
`
`.
`
`\wvw.I.IS|:|t0—Q0v
`
` United States Patent and Trademark Office
`
`2
`CENTI'L'I.:. FII" ' ' 22.‘ ''.‘'*w [E)I‘.'
`
`(For Requester)
`
`(For Patent Owner) '
`
`William_ J. Zychlewicz
`Armstrong, Teasdale LLP
`7700 Forsyth Boulevard
`Suite 1800
`
`St. Louis, MO 63105
`
`Shacht Law Office, Inc.
`Roy-G-BIV Corporation
`Suite 202
`2801 Meridian Street
`
`Bellingham, WA 98226
`
`Black Lowe & Graham, PLLC
`701 Fifth Avenue
`Suite 4800
`
`Seattle, WA 98104
`
`In re Brown et al
`
`Inter panes Reexamination Proceeding
`Control No: 95i'000,396
`
`Filing Date: September 23, 2008
`For: U.S. Patent No; 6,516,236
`
`This decision addresses:
`
`1
`
`(Courtesy Copy)
`
`.
`
`2
`:
`
`:
`'
`
`DECISION
`ON
`
`PETITION
`
`0 The patent owner petition under 37 CFR 1.182, filed on September -28, 2010, entitled
`“Petition Requesting Termination of the Reexamination Proceedings"(the September 28,
`2010 patent owner petition);
`
`I The patent owner paper, filed on October 8, 2010, entitled “Patent Owner's Request to
`Withdraw Its Petition Filed on September 28, 2010” (the October 8, 2010 request to
`withdraw the September 28, 2010 petition);
`
`«I The sua sponte analysis by the Office whether to terminate the present proceeding; and
`
`0 The power of attorney filed by the patent owner on January 27, 2009 (the January 27,
`2009 power of attorney).
`
`The September 28, 2010 patent owner petition, the October 8, 2010 request to withdraw the
`September 28, 2010 petition, the January 27, 2009 power of attorney, and the record as a whole,
`are before the Office of Patent Legal Administration (OPLA) for consideration.
`
`Page 1 of 34
`Page 1 of 34
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`RA V AMS
`
`

`

`Ree.rumI'noIt'on Control‘ No. 95/000,396
`
`2
`
`SUMMARY
`
`The October 8, 2010 patent owner request to withdraw the September 28, 2010 petition is
`granted—in-part, to the extent that the September 28, 2010 patent owner petition is withdrawn,
`and will not be considered. The September 28, 2010 patent owner petition, however, will not
`be expunged from the record, and will remain in the file. The patent owner’s request for
`refund is dismissed.
`
`Offfice records fail to show that, under the present facts and circumstances, termination of the
`present proceeding is mandated by 35 U.S.C. 31 ?'(b). Accordingly, the present proceeding E
`not be terminated, and prosecution will continue in due course.
`
`The January 27, 2009 power of attorney is ineffective.
`
`STATUTES, REGULATIONS, AND PATENT EXAMINING PROCEDURES
`
`35 U.S.C. 317(b) provides:
`
`FINAL DECISION. —— Once a final decision has been entered against a party in a civil action
`arising in whole or in part under section 1338 oftitle 28, that the party has not sustained its
`burden of proving the invalidity of any patent claim in suit or if a final decision in an inter
`partes reexamination proceeding instituted by a third-party requester is favorable to the
`patentability of any original or proposed amended or new claim of the patent, then neither that
`party nor its privies may thereafter request an inter partes reexamination of any such patent
`claim on the basis of issues which thatparty or its privies raised or could have raised in such
`civil action or inter partes reexamination proceeding, and an inter partes reexamination
`requested by that party or its privies on the basis of such issues may not thereafter be
`maintained by the Office, notwithstanding any other provision of this chapter. This subsection
`does not prevent the assertion of invalidity based on newly discovered prior art unavailable to
`the third-party requester and the Patent and Trademark Office at the time of the inter partes
`reexamination proceedings.
`
`3'? CFR 1.907(1)) provides:
`
`Once a final decision has been entered against a party in a civil action arising in whole or in
`part under 28 U.S.C. 1338 that the party has not sustained its burden ofproving invalidity of
`any patent claim-in-suit, then neither that party nor its privies may thereafter request inter
`partes reexamination of any such patent claim on the basis of issues which that party, or its
`privies, raised or could have raised in such civil action, and an inter partes reexamination
`requested by that party, or its privies, on the basis of such issues may not thereafter be
`maintained by the Ofiice.
`
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`RA V AMS
`
`

`

`Reexamination Control No. 95/000,396
`
`3
`
`DECISION
`
`I. The September 28, 2010 Patent Owner Petition is Withdrawn, and the October 8, 2010
`Patent Owner Request Is Granted-In-Part
`
`The patent owner requests, in its October 8, 2010 paper, that the September 28, 2010 petition to
`terminate the present proceeding be withdrawn. The Office, via this decision, has sua sponte
`detennined not to terminate the present proceeding for the reasons discussed inflra.
`Consequently, there is no reason why patent owner's October 8, 2010 request to withdraw its
`September 28, 2010 petition should not be granted. Accordingly, the September 28, 2010 patent
`owner petition is withdrawn, and will not be considered.
`
`The patent owner, however, has also _requested, in its October 8, 2010 paper, that the September
`28, 2010 petition be expunged from the record. Such a request must be filed as a petition under
`37 CFR 1.183, and must be accompanied by a showing of the extraordinary circumstances, such
`that justice requires expungement of the September 28, 2010 petition, as well as the $400
`petition fee. The patent owner, however, has not filed a petition under 37 CFR 1.183, and has
`not provided -any showing of extraordinary circumstances. For these reasons, the September 28,
`2010 patent owner petition, although it is withdrawn, will not be expunged from the record, and
`will remain in the tile. The September 28, 2010 patent owner petition, however, will not be
`considered.
`
`The patent owner has also requested, in its October 8, 2010 paper, a refund of the petition fee for
`the September 28, 2010 petition. A request for a refund, however, must be filed separately
`pursuant to 37 CFR 1.4(c), which provides:
`
`Since different matters may be considered by different branches or sections of the United
`States Patent and Trademark Office, each distinct subject, inquiry or order must be contained
`in a separate paper to avoid confusion and delay in answering papers dealing with different
`subjects.
`
`Furthennore, the patent owner is reminded of the provisions of 37 CFR 1.26(a), which provide,
`in pertinent part:
`
`. A change of purpose after the payment of a fee, such as when a party desires to withdraw
`.
`.
`a patent filing for which the fee was paid .
`.
`. will not entitle a party to a refund of such fee.
`
`The patent owner, in its October 8, 2010 paper, requests a refund of the fee for the petition, the
`withdrawal of which is also requested by the patent owner in the same paper. Pursuant to 37
`CFR 126(3), however, a party who wishes to withdraw a paper, i.e., a filing, for which the fee
`was paid, is not entitled to a refund of such fee. For these reasons, patent owner’s October 8,
`2010 request for refund is dismissed.
`
`Accordingly, the October 8, 2010 patent owner request is granted-in-part, to the extent that
`the September 28, 2010 patent owner petition is withdrawn, and will not be considered. The
`September 28, 2010 patent owner petition, however, will not be expunged from the record, and
`will remain in the tile. The patent owner's request for refund is dismissed.
`
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`RA V AMS
`
`

`

`Reeranrfnorion Control No. 952’000,396
`
`'
`
`4
`
`II. Sua Sporrre Analysis Whether the Proceeding Will Not Be Terminated
`
`The September 28, 2010 patent owner petition has drawn the Office’s attention to the issue of
`whether the present proceeding should be terminated under 35 U.S.C. 3 l '?(b), in view of two
`orders by the United States District Court, Eastern District of Texas Marshall Division (the
`district court’s orders), dismissing, with prejudice, all claims and counterclaims in suit, and
`directing that the parties shall bear their own costs. See ROY-G-BI V Corporation v. FA.-VUC Ltd.
`et ai, Case No. 2:0?-CV-418-DF (E.D. Texas, November 20, 2009).
`
`The district court’s two orders, however, also grant “the parties’ Joint Motions to Vacate the
`Conrt’s October 19, 2009 Order” (D. E. 204 and D.E. 23, respectively). “Reopen the Case, and
`then Dismiss the Case with Prejudice”. To date, however, the Office has not received copies of
`the parties’ joint motions to vacate, and of the court’s October 19, 2009 order. These copies are
`necessary to determine whether the court, or the parties, intended the dismissal to resolve the
`issue of invalidity of at least one claim of the patent under reexamination.
`
`The first sentence of 35 U.S.C. 3 l7(b) provides, in pertinent part (emphasis added):
`
`Once a final decision has been entered against a party in a civil action arising in whole or in
`part under section 1338 of title 28, that the party has not sustained its burden of proving the
`invalidity of any patent claim in suit .
`.
`. then .
`.
`. an inter partes reexamination requested by
`that party or its privies on the basis of .
`.
`. issues [which that party or its pt'i_vies raised or could
`have raised in such civil action] may not thereafter be maintained by the Office .
`.
`.
`
`The Office analyzes whether a reexamination proceeding must be tenninated pursuant to 35
`U.S.C. 31'/'(b) by determining:
`
`1. Whether the third party requester was a party to the litigation;
`2. Whether the decision is final, i.e., after all appeals;
`3. Whether the court decided that the requesterfparty had not sustained its burden of
`proving the invalidity of any claim in suit of the patent under reexamination; and
`4. Whether the issue(s) raised in the reexamination proceeding are the same issue(s) that
`were raised or could have been raised by the requester in the civil action.
`
`The Third Party Requester Was a Party to the Lirigatiorr
`
`The patent owner has provided copies of two orders by the United States District Court for the
`Eastern District of Texas, Marshall Division (district court) on November 20, 2009, between the
`patent ownerlplaintiff, ROY-G-BIV, and requesterlco-defendant GE Fanuc Intelligent Platforms,
`Inc., the real party in interest in the present reexamination proceeding. I Thus, the third party
`requester was a party in the litigation.
`'
`
`t See Exhibit 2, attached to the present petition.
`
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`RA V AMS
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`

`

`Reexamination Control No. 95/000,396
`
`5
`
`The Decision is Final
`
`In ROY-G-B1’ V Corporation v. FANUC Ltd. et at, Case No. 2:07-CV-418-DF (E.D. Texas,
`November 20, 2009), the- district court ordered that “Plaintiff ROY-G-BIV Corporations claims
`are DISMISSED WITH PREJUDICE and Defendants .
`.
`. GE Fanuc [ntelli gent Platforms, Inc.’s
`counterclaims are DISMISSED WITH PREIUDICE .
`. .” , and that each party should bear its
`own attorney’s fees and costs.
`
`In view of the specific facts and circumstances of the present case, the November 20, 2009
`district court judgment is order to be a final decision within the meaning of the statute.
`
`There Is No Decision That Requester/Co—defendant Did Not Sustain Its Burden ofProving the
`Invalidity ofAny Patent Claim in Suit
`
`Office records fail to reveal any evidence that the issue of invalidity of at least one claim of the
`patent under reexamination was resolved by the eourt’s decision. The present record only
`includes copies ofthe district court’s dismissal with prejudice. While such a dismissal will bar a
`subsequent suit, it does not itself "establish any facts to which the doctrine of col lateral estoppel
`can be applied in a later litigation on a different claim." Wright & Miller, Federal’ Practice and
`Procedure, § 2373 (2008). There is no language in the court’s orders that suggest that the
`parties, or the court, intended the dismissal to resolve the invalidity issue. Thus, there is nothing
`in the documents of record that amounts to a decision that the requesterfparty did not sustain its
`burden of proving the invalidity of any patent claim in suit, as required by 35 U.S.C. 317(b).
`Instead, the action appears to have been dismissed without there ever being an assessment of
`whether the party sustained its burden, and without the parties agreeing, through a stipulated
`judgment or otherwise, that the burden of proving invalidity had not been met.
`
`For the reasons given above, there is no evidence of a final decision by a federal court that the
`requesterfco-defendant in R01’-G-B1 V Corporation did not sustain its burden of proving
`invalidity of any claim in suit of the patent under reexamination. Thus, Office records fail to
`show that, under the present facts and circumstances, termination of the present proceeding is
`mandated by 35 U.S.C. 317(b).
`
`The Office Need Not Address Whether Issues Raised in the Reexamination Proceeding Are
`Identical to Those Raised or Could Have Been Raised in Litigation
`
`Because there is no evidence of record of a final decision by a federal court that the requesterfco-
`defendant in ROY-G-BIV Corporation did not sustain its burden of proving invalidity of any
`claim in suit of the patent under reexamination as required by statute, the Office need not address
`whether the issues raised in the reexamination proceeding are identical to those which were
`raised or could have been raised in the earlier litigation.
`
`Accordingly, the present- proceeding will not be terminated, and prosecution will continue in
`due course‘:
`
`2 The Office notes that the patent owner, in its September 28, 2010 petition, calls attention to reexamination control
`no. 95/000,186, in which the Office granted a petition to terminate the reexamination proceeding. In 95/000,186,
`
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`RA V AMS
`
`

`

`Reexamination Control No. 95/000,396
`
`6
`
`III. The January 27, 2009 Power of Attorney by the Patent Owner is Ineffective
`
`The ofticial correspondence address for the patent owner in a reexamination proceeding is the
`correspondence address which is recorded in the patenrfite. See 3? CFR l.33(c) and MPEP
`2622. Office records fail to reveal that a change of correspondence address was received in the
`patent file, i.e., the file for application no. l0.’021,669.
`In the present case, the official
`correspondence address of record for the patent owner as recorded in the patent file appears in
`the caption of this decision.
`
`A courtesy copy of this decision will be mailed to the correspondence address indicated on the
`January 27, 2009 power of attorney by the patent owner. In the absence of a proper submission
`of a change of correspondence address for the patent owner in the patent file, application no.
`10f021,669, however, all future correspondence in this reexamination proceeding will be mailed
`ONLY to the official correspondence address of record for the patent owner, as it appears in the
`caption of this decision.
`
`CONCLUSION
`
`0 The October 8, 2010 patent owner request to withdraw the September 28, 2010 petition is
`granted-in-part, to the extent that the September 28, 2010 patent owner petition is
`withdrawn, and will not be considered.
`
`0 The September 28, 2010 patent owner petition will not be expunged from the record, and
`will remain in the file.
`
`- The patent owner’s request for refiind is dismissed.
`
`I The present proceeding will not be terminated, and prosecution will continue in due
`course.
`
`
`
`however, the court’s consent judgment expressly stated that the requesterldefendant "agrees that [the patent under
`reexamination is] “valid and enforceable“. Thus, the court’s consent judgment in 9Si'000,l 86 essentially states that
`the requesterfcodefendant did not sustain its burden of proving the invalidity of the claims in suit. In the present
`case, the court's order does not contain such a statement. The patent owner also calls attention to reexamination
`control no. 95;‘000,27-4, in which guidance was expressly provided for filing a petition to terminate a reexamination
`proceeding, i.e., that the showing must be adequate to establish whether the third party requester has not sustained
`its burden of proving the invalidity of any patent claim in suit (see page 7 of the October 8, 2008 “Decision
`Dismissing Petition to Sever Proceedings and Granting Partial Waiver of 3? CFR 1.955” in 95l000,2'r'4). By
`contrast, as explained supra, there is nothing in the documents of record in the present proceeding that amounts to a
`final decision by a federal court that the requesterfparty did not sustain its burden of proving the invalidity of any
`patent claim in suit, as required by 35 U.S.C. 3 l':'(b). Finally, the patent owner calls attention to reexamination
`control no. 95.’000, 163, in which the Office granted a petition to terminate the reexamination proceeding. Office
`records, however, fail to include a copy of the court’s order of dismissal in the tile of 951000,] 63. In any event, to
`whatever extent that the present decision differs from the earlier decision rendered in 95J'000,l63, Office policy
`regarding temiination of interpartes reexamination proceedings has been reevaluated in light of relevant case law,
`since the date of mailing of the earlier decision.
`
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`Exhibit 2011
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`RA V AMS
`
`

`

`Reexamination Control’ No. 95/000,396
`
`j
`
`o The January 27, 2009 power of attorney is ineffective. A courtesy copy of this decision will
`be mailed to the correspondence address indicated on the January 27, 2009 power of
`attorney.
`
`I
`
`In the absence of a proper submission of a change of correspondence address for the patent
`owner in the patent file, application no. l0f021,669, all future correspondence in this
`reexamination proceeding will be mailed ONLY to the official correspondence address of
`record for the patent owner, as it appears in the caption of this decision.
`
`I The present proceeding is being referred to the Central Reexamination Unit (CRU) for
`further consideration in due course.
`
`0 Telephone inquiries related to this decision should be directed to Cynthia L. Nessler, Senior
`Legal Advisor, (571) 272-7724, or in her absence, to the undersigned at (571) 272-7710.
`
`I Kenneth M. Schor!
`
`Kenneth M. Schor
`
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`1 -25- 1 l
`Kenpet8a"
`
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`RA V AMS
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United State: him: and Trademark Officc
`Maren: COMMISSIONER FOR PATENTS
`Po. Box I-150
`_
`_
`Alcauld-fil. Virgin]: Hill-I450
`wul-w.Lqlo.gmI'
`
`APPLICATION NO.
`
`95.|'0C|l'.|.395
`
`FILING DIQTE
`
`09333008
`
`FIRST NAMED INVENTUR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`I55 I623-6
`
`RGRX-6~li]DS
`
`I 593
`
`BLACK Lowaeomm, me
`101 FIFTH AVENUE
`
`I
`Kiss. em a
`
`-
`
`SUITE 4800
`SEATTLE, WA 93104
`
`.
`
`UNIT
`“"7
`3992
`
`MAIL DATE
`
`0I!26.I"20| I
`
`9 PER NUMBER
`"‘
`
`DELIVERY MODE
`
`PAPER
`
`Please find below andlor attached an Office communication concerning this application or proceeding.
`
`The time period for" reply, if any, is set in the attached communication.
`
`PTOL—9flA (Rev. 04:01)
`
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`Exhibit 2011
`
`RA V AMS
`
`

`

`'*
`
`_ UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`'
`
`'
`
`'
`
`'
`
`Commissioner for Parents
`United States Patents and Trademark Office
`P.0.Box I450
`Alexandria. VA 223 I 3-I450
`www.uspio.gov
`
`DO NOT USE IN PALM PRINTER ,' _.
`
`.
`
`,_
`
`._.
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date: l — 19”‘ I
`
`William J. Zychlewicz
`ARMSTRONG TEASDALE LLP
`
`7700 Forsyth Blvd., Suite 1800
`St Louis, MO 63105
`
`Transmittal of Communication to Third Party Requester
`Inter Parles Reexamination
`
`REEXAMINATION CONTROL NO. : 950903 96
`PATENT N0. : 6516236
`
`'
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3992
`
`1'
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See aiso 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-20?(l[Rcv.07-04]
`
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`RA V AMS
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`IPR2017—00048
`
`

`

`95.-'UOU,395
`
`Patent Under Reexamination
`
`5516235
`
`
`
`ERIC B. KISS
`
`3992
`
`
`
`
`Right of Appeal Notice
`(37 CFR 1.953)
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`
`
` Responsive to the communication(s) filed by:
`Patent Owner on 8 October 2010
`
`Third Party(ies} on
`
`
`-
`
`Patent owner andior third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41.20(b)(1) within one-month or thirty-days {whichever is
`longer}. See MPEP 26271. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41.20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail. FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed
`
`D will be entered
`
`I:I will not be entered‘
`
`‘Reasons for non-entry are given in the body of this notice.
`
`Claims 1-10 are subject to reexamination.
`1a.
`1b. I] Claims ? are not subject to reexamination.
`
`2. D Claims __ have been cancelled.
`
`3.
`
`IE Claims i are confirmed. [Unamended patent claims].
`
`4. E] Claims _: are patentable. [Amended or new claims].
`
`5.
`
`I:l Claims __ are rejected.
`
`l:] Claims j are objected to.
`6.
`CI are not acceptable.
`[:I are acceptable.
`7. CI The drawings fiied on ______
`8. D The drawing correction request filed on _ is [__-I approved. E! disapproved.
`9. C] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`
`|:I been received.
`10. CI Other_
`
`CI not been received.
`
`I] been filed in Applicationicontrol No. _.
`
`Attachments
`
`
`
`1. El Notice of References Cited by Examiner, PTO-892
`2.
`Information Disclosure Citation, PTOISBIOB
`3.Ij
`
`
`
`US. Patent and Trademark Office
`PTOL-2066 (ca-cs)
`
`Right of Appeal Notice tar CFR 1.953)
`
`Part of Paper No. 20110119
`
`Page 10 of 34
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`RA v AMS
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`Exhibit 201 1
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`RA V AMS
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`IPR2017—OOO48
`
`

`

`Applicationfcontrol Number: 953000396
`An Unit: 3992
`
`Page 2
`
`RIGHT OF APPEAL NOTICE
`
`An Action Closing Prosecution (ACP), rejecting claims 1-10 of U.S. Pat. 6,516,236, was
`
`mailed September 22, 2010. The patent owner filed written comments on October 8, 2010. No
`
`comments from the third party requester have been received.
`
`Page 11 of 34
`Page 11 of 34
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`IPR2017—00048
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`AMS
`AMS
`Exhibit 2011
`RA v AMS
`IPR2017-00048
`
`Exhibit 2011
`
`RA V AMS
`
`

`

`Application!Control Number: 95t'000,396
`Art Unit: 3992
`
`Page 3
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`1.
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`INFORMATION DISCLOSURE STATEMENT
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`Regarding IDS submissions, MPEP 2656 recites the following: "Where patents,
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`publications, and other such items of information are submitted by a party (patent owner or
`
`requester) in compliance with the requirements of the rules, the requisite degree of consideration
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`to be given to such information will be normally limited by the degree to which the party filing
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`the information citation has explained the content and relevance of the information."
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`The initials ofthe examiner placed adjacent to the citations on the PTO—l449 or
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`PTOISBIOSA and 083 or its equivalent mean that the information has been considered by the
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`examiner to the extent noted above.
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`The IDSs filed October 6 and November 10, 2010, and January 18, 201 1, have been
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`given due consideration. However, that which are not either prior art patents or prior art printed
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`publications have been crossed out so as not to appear reprinted on the reexamination certificate.
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`Additionally, no copy has been received of the Popovic reference (721 pages) cited in the
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`October 6, 2010, IDS.
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`II.
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`SUMMARY OF THE ACTION CLOSING PROSECUTION
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`In the Action Closing Prosecution (ACP), the examiner withdrew the following
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`previously-adopted rejections:
`
`
`
`llfij
`
`IO
`
`
`
`1, and Ability 2
`Sorensen, Abilit
`
`Sorensen,Abilit 1,Abilit 2, and SOSAS
`
`[HO
`
`
`
`
`
`
`Page 12 of 34
`Page 12 of 34
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`AMS
`AMS
`Exhibit 2011
`RA v AMS
`IPR2017-00048
`
`Exhibit 2011
`
`RA V AMS
`
`IPR2017—00048
`
`

`

`Application/Control Number: 95f000,396
`Art Unit: 3992
`
`Page 4
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`1-4,7.and10
`103
`5,6, 8,and9
`T ~103
`
`
`
`Petzold and King
`Windows NT
`
`_
`
`As a result of withdrawing the above rejections, claims 4-7 were confirmed as patentable.
`
`The reasons for withdrawing the rejections anclfor indicating patentability are contained in the
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`ACP. (ACP, 9r‘22I2010, pp. 12-22 and 24.)
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`The examiner maintained the rejection of claims 1-3 and 8-10 under 35 USC. § 102(b)
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`as being anticipated by Sorensen. (ACP at I3-I6 and 23.)
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`III.
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`SCOPE OF RECONSIDERATION
`
`A.
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`Arguments and Evidence Considered
`
`In addition to the arguments and evidence considered in the ACP, (see ACP at 7), the
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`examiner has considered the patent owners comments in response to the ACP, filed October 3,
`
`2010, and has reweighed the evidence in view ofthe newly presented comments. To the extent
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`that the patent owner’s comments cite the declarations of Richard A. Mathias, Richard J. Malina,
`
`and Nosa Omoigui, only the redacted versions ofthese declarations, filed February I9, 2010,
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`have been considered.
`
`B.
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`Arguments and Evidence E Considered
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`The arguments and evidence indicated as “not considered" in the ACP, (see ACP at 7-8),
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`have not been considered in this action. Likewise, as indicated in the ACP, (see id. at 8), the
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`patent owner‘s characterization of the conclusions reached in_a different reexamination
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`proceeding have not been considered.
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`Page 13 of 34
`Page 13 of 34
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`AMS
`
`Exhibit 201 1
`
`RAV AMS
`
`AMS
`Exhibit 2011
`RA v AMS
`IPR2017-00048
`
`IPR2017—OOO48
`
`

`

`ApplicationJ'Control Number: 95i‘000,396
`Art Unit: 3992
`
`Page 5
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`IV.
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`RESPONSE TO ARGUMENTS
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`A.
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`Claim Construction
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`During reexamination, claims are given the broadest reasonable interpretation consistent
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`with the specification and limitations in the specification are not read into the claims.
`
`In re
`
`Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)).
`
`It would be error to apply the same mode of claim
`
`interpretation that is used by courts in litigation. In re Am. Acad. of.S'ct'. Tech. Ctr., 367 F.3d
`
`1359, 1369 (Fed. Cir. 2004).
`
`In reexamination, the PTO is n_ot bound by a Markman Order
`
`issued in an earlier litigation to which the PTO was not a party.
`
`In re Texas Holdings Corp, 498
`
`F.3d 1290, 1297 (Fed. Cir. 2007) (holding that issue preclusion did not apply, even when the
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`District Court issued an order of dismissal with prejudice following a pre—trial settlement
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`between the parties).
`
`The patent owner's claim construction arguments, (Comments after ACP at 4-8), have
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`been considered _and are persuasive. Under the broadest reasonable interpretation consistent with
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`the specification, the examiner interprets “component function”, “component code”, “driver
`
`function", and “driver code” as follows:
`
`“component functions"
`
`Hardware independent functions that correspond to operations performed on or by
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`a motion control device and are associated with at least some ofthe driver
`
`functions.
`
`“component code”
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`Code that associates component functions with driver functions
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`Page 14 of 34
`Page 14 of 34
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`IPR2017—00048
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`AMS
`AMS
`Exhibit 2011
`RA v AMS
`IPR2017-00048
`
`Exhibit 2011
`
`RA V AMS
`
`

`

`ApplicationfControl Number: 9S!000,396
`Art Unit: 3992
`
`“driver functions”
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`Page 6
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`Hardware independent functions that are associated with motion control
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`operations
`
`“driver code”
`
`Hardware dependent code that dictates how to generate control commands for
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`controlling the motion control device associated therewith to perform the motion
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`control operations associated with at least some of the driver functions.
`
`B.
`
`Claims 1-3 and 8-10 in view of Sorensen
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`Upon consideration of the patent .owner’s arguments, the examiner agrees that there are
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`significant technical differences between the claimed invention and the system disclosed by
`
`Sorensen. Specifically, the examiner agrees with the patent owner’s arguments in subsections i
`
`through vii on pages 16-23 of the Comments after ACP, finding that Sorensen fails to disclose
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`the "component functions”, “component code“, “driver functions”, and “driver code", arranged
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`as in each ofclairns 1-3 and 8-10 ofthe ’236 patent.
`
`The rejection of claims 1-3 and 8-10 under 35 U.S.C. § 102(b) as anticipated by
`
`Sorensen is withdrawn.
`
`v.
`
`CONFIRMED CLAIMS
`
`All of the previously-adopted rejections have now been withdrawn. Claims 1-10 are
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`confirmed for the reasons stated above and in the ACP, (ACP at 12-22 and 24).
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`Page 15 of 34
`Page 15 of 34
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`IPR2017—00048
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`AMS
`AMS
`Exhibit 2011
`RA v AMS
`IPR2017-00048
`
`Exhibit 2011
`
`RA V AMS
`
`

`

`ApplicationfControl Number: 951000.396
`Art Unit: 3992
`
`Page 7
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`VI.
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`CONCLUSION
`
`This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 26?4. The
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`decision in this Office action as to the patentability or unpatentability of any original patent
`
`claim, any proposed amended claim and any new claim in this proceeding is a FINAL
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`DECISION.
`
`No amendment can be made in response to the Right of Appeal Notice in an inter parres
`
`reexamination. 3? CFR l.953(c). Further, no affidavit or other evidence can be submitted in an
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`inter panes reexamination proceeding after the right of appeal notice, except as provided in 37
`
`CFR 1.981 or as permitted by 37 CFR 4! .?7(b)(l). 3‘? CFR 1.1 l6(t).
`
`Each party has a thirty-day or one-month time period, whichever is longer, to file a
`
`notice of appeal. The patent owner may appeal to the Board of Patent Appeals and lnterferences
`
`with respect to any decision adverse to the patentability of any original or proposed amended or
`
`new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR
`
`4l.20(b)(1). The third party requester may appeal to the Board of Patent Appeals and
`
`lnterferences with respect to any decision favorable to the patentability of any original or
`
`proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set
`
`forth in 37 CFR 41 .20(b}(1).
`
`In addition, a patent owner who has not filed a notice of appeal may file a notice of cross
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`appeal within fourteen days of service of a third party requester’s timely filed notice of appeal
`
`and pay the fee set forth in 37 CFR 4| .20(b)(l). A third party requester who has not filed a
`
`notice of appeal may file a notice of cross appeal within fourteen days of service of a patent
`
`owner's timely filed notice of appeal and pay the fee set forth in 3'? CFR 41 .20(b)(l).
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`Page 16 of 34
`Page 16 of 34
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`IPR2017—00048
`
`AMS
`AMS
`Exhibit 2011
`RA v AMS
`IPR2017-00048
`
`Exhibit 2011
`
`RA V AMS
`
`

`

`ApplicationJ'Contro| Number: 95r’000,396
`Art Unit: 3992
`
`Page 8
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`Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by
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`the patent owner (for a patent owner appeal) or the third party requester (for a third party
`
`requester appeal), or their duly authorized attorney or agent.
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`Any party that does not file a timely notice of appeal or a timely notice of cross appeal
`
`will lose the right to appeal from any decision adverse to that party, but will not lose the right to
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`file a