`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ROCKWELL AUTOMATION, INC., ROCKWELL AUTOMATION
`
`TECHNOLOGIES, INC.
`
`Petitioners,
`
`v.
`
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.
`
`Patent Owner.
`
`____________
`
`
`
`Case IPR2017-00048
`
`Patent 6,516,236
`
`____________
`
`PATENT OWNER AUTOMATION MIDDLEWARE SOLUTIONS, INC.’s
`
`PRELIMINARY RESPONSE UNDER 37 CFR § 42.107
`
`
`
`
`
`

`

`I.
`
`Table of Contents
`Introduction ........................................................................................................ 1
`A. Statement of Relief Requested ...................................................................... 1
`B. Summary of Patent Owner AMS’ Argument ................................................ 2
`II. Background ........................................................................................................ 5
`A. The Technology ............................................................................................. 5
`B. The ’236 Invention ........................................................................................ 8
`C. Litigation, Reexamination, and Review History ......................................... 14
`D. Legal Standards ........................................................................................... 16
`III. Claim Construction ......................................................................................... 18
`IV. All Grounds Advanced by Petitioners Are Cumulative of Previous
`Examinations and Review ........................................................................................ 18
`A. Petitioners’ Asserted Grounds Are the Same or Substantially Similar to Art
`and Arguments Previously Raised ....................................................................... 19
`1. WOSA ...................................................................................................... 20
`2. ODBC ....................................................................................................... 24
`3. Graphical Motion Control Language ....................................................... 25
`4. Motion Toolbox ........................................................................................ 30
`B. The Board Should Exercise Its Discretion to Deny the Petition ................. 32
`C. Petitioners’ Very Brief Statements Fail to Distinguish the Prior IPR ........ 34
`V. A POSITA Would Not Have Been Motivated to Combine ODBC and Motion
`Control Technology ................................................................................................. 35
`VI. GML and Motion Toolbox Are Not Motion Control Programs .................... 41
`A. GML ............................................................................................................ 42
`B. Motion Toolbox ........................................................................................... 44
`VII. GML and Motion Toolbox Do Not Teach Primitive Operations................ 46
`A. GML ............................................................................................................ 47
`B. Motion Toolbox ........................................................................................... 51
`VIII. Petitioners’ Arguments Are Not Supported by Evidence ........................... 52
`IX. Petitioners Have Failed to Assert That Any Reference Is Prior Art .............. 57
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`i
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
`
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`X. Conclusion ....................................................................................................... 60
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`
`
`ii
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`Preliminary Response By Patent Owner
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`
`
`Table of Exhibits
`
`IPR2017-00048
`U.S. Pat. 6,516,236
`
`2002
`
`2003
`
`Exhibit
`Ex #
`2001 Affidavit in Support of Motion for Pro Hac Vice Admission of
`Christopher Limbacher
`Inter Partes Reexamination 95/000,396, Order Granting Request for Inter
`Partes Reexamination, Nov. 20, 2008
`Inter Partes Reexamination Filing Data – Sept. 30, 2016,
`https://www.uspto.gov/sites/default/files/documents/inter_parte_historical
`stats roll up.pdf
`IPR2013-00062 Exhibit 1010 – Represented to be Cashin
`IPR2013-00062 Exhibit 1003 – Represented to be WOSA XFS
`IPR2013-00062 Exhibit 1011 – Represented to be Control Engineering
`August 1995
`IPR2013-00062 Exhibit 1002 – Represented to be Gertz Thesis
`PTAB Statistics – Oct. 31, 2016,
`https://www.uspto.gov/sites/default/files/documents/aia_statistics_october
`2016.pdf
`Excerpts of the File History for U.S. Patent Application Serial No.
`10/021,449, which issued as the ’236 Patent, List of References
`Considered, Aug. 22, 2002
`2010 U.S. Patent No. 6, 516, 236 C1 Inter Partes Reexamination Certificate,
`Issued Jun. 28, 2011
`Excerpts of the File History for Inter Partes Reexamination No.
`95/000,396, Reexamination Right of Appeal Notice, Jan. 26, 2011
`Excerpts from Adrian King, Inside Windows 95
`Excerpts of the File History for Inter Partes Reexamination No.
`95/000,396, Non-Final Action, Sept. 22, 2010
`IPR2013-00062 Petition
`IPR2013-00062 Decision on Institution of IPR, April 18, 2013
`Preliminary Claim Construction in Automation Middleware Solutions,
`Inc. v. Invensys Systems, Inc., et al., No. 2-15-cv-00898-RWS (E.D. Tex.
`Dec. 6, 2016)
`2017 U.S. Patent No 5,392,207 – GML
`2018 Declaration of Douglas R. Wilson in Support of Patent Owner’s
`Preliminary Response
`
`2004
`2005
`2006
`
`2007
`2008
`
`2009
`
`2011
`
`2012
`2013
`
`2014
`2015
`2016
`
`
`
`iii
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`

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`I.
`
`Introduction
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`
`
`Patent Owner Automation Middleware Solutions, Inc. (hereafter “AMS”)
`
`respectfully submits this Preliminary Response to the Petition seeking inter partes
`
`review (“IPR”) in this matter. This filing is timely under 35 U.S.C. § 313 and 37
`
`C.F.R. § 42.107, as it is being filed within three months of the November 1, 2016
`
`mailing date of the Notice of Filing Date. See 37 C.F.R. § 42.107 (setting deadline
`
`for preliminary response at “three months after the date of a notice indicating that
`
`the request to institute an inter partes review has been granted a filing date”).
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`
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`A trial should not be instituted in this matter, because none of the references
`
`relied upon in the petition, whether considered alone or in combination, give rise to
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`a reasonable likelihood of Petitioners prevailing with respect to any claim of U.S.
`
`Patent No. 6,516,236 (the “’236 Patent”) (Exhibit 1001).
`
`A. Statement of Relief Requested
`
`
`
`Pursuant to 35 U.S.C. § 314, Patent Owner respectfully requests that the
`
`Board refuse to institute inter partes review, because Petitioners have not shown a
`
`reasonable likelihood of prevailing with respect to either of the invalidity grounds
`
`presented on any of claims 1-3 of the ’236 Patent. Additionally, Patent Owner
`
`requests that the Board deny the Petition under 35 U.S.C. § 325(d) because the
`
`grounds asserted are substantially similar to those presented in previous United
`
`States Patent Office proceedings.
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`1
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`Preliminary Response By Patent Owner
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`B. Summary of Patent Owner AMS’ Argument
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`IPR2017-00048
`U.S. Pat. 6,516,236
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`
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`Petitioners have failed to show that it is reasonably likely that claims 1-3 of
`
`the ’236 Patent would have been obvious based on Cashin and ODBC’s
`
`Programmer’s Guide, when combined with either the Graphical Motion Control
`
`Language references (“GML”) or the Motion Toolbox references. Additionally, the
`
`grounds asserted are substantially similar to those presented in previous PTO
`
`proceedings, utilizing only art that has been previously submitted to the PTO.
`
`Therefore, Patent Owner respectfully requests that the Board deny institution
`
`pursuant to 35 U.S.C. § 325(d) because the art and arguments raised are the same
`
`or substantially similar to those previously presented to the PTO, or pursuant to 35
`
`U.S.C. § 314(a) because Petitioners have failed to show a reasonable likelihood
`
`that a claim of the ’236 Patent would have been obvious on either of the two
`
`asserted grounds.
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`
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`First, the similarities between the grounds asserted here and those of the
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`previous IPR place this Petition firmly within the Board’s § 325(d) discretionary
`
`powers. WOSA, ODBC, GML, and Motion Toolbox were all submitted as
`
`evidence during the previous IPR. The previous petitioner also asserted
`
`substantially similar grounds: (1) a WOSA implementation (WOSA XFS) as
`
`invalidity grounds for the same limitations for which WOSA and ODBC are
`
`asserted here, and (2) the Gertz Thesis, which is substantially similar to both GML
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`2
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`and Motion Toolbox and was asserted for the same invalidity grounds for which
`
`those references are asserted here. Petitioners have not identified any art that was
`
`not previously submitted to the Board, nor have they submitted any arguments that
`
`are not substantially similar to those made to the Board previously. When
`
`considered in concert with the ’236 Patent’s extensive reexamination and review
`
`record, these factors weigh in favor of the Board exercising its discretionary power
`
`to deny institution on these cumulative grounds.
`
`
`
`Apart from the redundant invalidity grounds, Petitioners have failed to show
`
`that it is reasonably likely that any claim of the ’236 Patent would have been
`
`obvious in light of the submitted references. ODBC is non-analogous art, and a
`
`person of ordinary skill in the art of motion control technology would not have
`
`looked to ODBC—a database technology—when trying to improve on motion
`
`control technology. The Board rejected similar arguments in the past, and even
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`Petitioners and Petitioners’ expert were unable to put forth a cogent reason to
`
`combine ODBC with GML or Motion Toolbox; they instead contented themselves
`
`with arguing that it would have been obvious to combine ODBC with WOSA
`
`without any consideration of the context of the problem the ’236 Patent was
`
`seeking to solve. Moreover, Petitioners offered no evidence or argument that
`
`ODBC is analogous art.
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`3
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`Preliminary Response By Patent Owner
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`IPR2017-00048
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`U.S. Pat. 6,516,236
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`Next, neither GML nor Motion Toolbox are motion control programs as
`
`taught by the ’236 Patent. Instead, both are software development tools that could
`
`be used to develop motion control programs—something the patent specification
`
`differentiates from programs that directly control the hardware devices or provide
`
`interfaces for interaction with those devices. As such, not only do they fail to teach
`
`several limitations for which Petitioners rely on them, but they also prove
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`exceptionally difficult to combine with WOSA. A development tool that is used to
`
`build software does not automatically render obvious any software it could be used
`
`to build; otherwise development tools—such as Visual Studio—would render all
`
`potential software inventions invalid.
`
`
`
`Additionally, Petitioners rely on conclusory statements and unsupported
`
`expert opinions in their assertions that several limitations are satisfied. For
`
`“primitive operations,” Petitioners point to several operations in GML and Motion
`
`Toolbox and then simply declare them to be primitive operations. Petitioners’
`
`expert provides no explanation or analysis of his conclusory opinions, instead
`
`citing literature references that do not actually address whether the operations are
`
`primitive. However, Patent Owner notes at least one patent owned indirectly by the
`
`Petitioners appears to undermine their experts’ opinion on an alleged primitive
`
`operation.
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`4
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`Preliminary Response By Patent Owner
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`IPR2017-00048
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`U.S. Pat. 6,516,236
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`Petitioners’ reliance on mere conclusory statements and unsupported expert
`
`opinions is seen repeatedly throughout the Petition. Petitioners fail to show
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`evidence of limitations including “component functions,” “primitive operations,”
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`“non-primitive operations,” “core driver functions,” and “extended driver
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`functions” in the asserted art. They fail to take the basic step of even alleging,
`
`much less demonstrating, that the asserted references are printed publications that
`
`qualify as prior art as required by 35 U.S.C. § 311(b). Unless they can demonstrate
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`the propriety of the submitted references and the existence of all limitations in
`
`those references, Petitioners cannot possibly hope to prove a reasonable likelihood
`
`of success on the asserted grounds. Given Petitioners’ failure to satisfy their burden
`
`in these regards, AMS respectfully requests that the Board deny the Petition.
`
`II. Background
`
`A. The Technology
`
`Motion control often involves precise, software-driven control of the
`
`physical motions of motorized mechanical devices. These devices typically include
`
`motors, drives, and/or other moving assemblies. One representative example is
`
`precision cutting and bending equipment used to form aerospace components.
`
`There are numerous “motion control operations” performed on or by motion
`
`control devices. For example, one motion control operation is determining the
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`current position of a motor. ’236 Patent at 7:30-35 (“GET POSITION”); id. at
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`16:41-49 (“querying the system for the current position”). Based upon control
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`commands issued by the software system, a motion controller1 collects information
`
`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, “MOVE RELATIVE” and
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`“CONTOUR MOVE”). ’236 Patent at 7:31-39, 16:43-49. This is an example of a
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`“write” operation.
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`
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`
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`The ’236 specification describes an application program as a program that
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`“combin[es] large numbers of input/output (I/O) devices, including motion control
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`1 “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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`
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`6
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`devices, into a complex system used to automate a factory floor environment.”
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`’236 Patent at 2:4-15. Because not all motion controllers share a uniform computer
`
`“language” (i.e., set of control commands), historically application programs have
`
`been tailored to particular controllers on a factory floor, requiring different
`
`application programs for different motion control devices, as depicted in the
`
`schematic above. One fundamental desire of motion control industry customers has
`
`been interoperability among different motion control devices because such
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`interoperability would offer centralized monitoring and control over an entire
`
`factory operation through a common application program (or set of application
`
`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.
`
`But, in practice, the interoperability goal has been elusive. Mechanical
`
`devices typically use different controllers that understand only their own hardware-
`
`specific or vendor-specific commands. Specifically, each hardware controller
`
`understands and can communicate with only the control commands that correspond
`
`to the basic “read” and “write” functions that it performs, such as “reading” a
`
`current motor position or “writing” a desired target motor position. To solve these
`
`and other problems, the motion control industry attempted to develop standards
`
`and uniform codes requiring all hardware controllers to use the same computer
`
`
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`7
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`language and control commands. The inventors of the ’236 Patent—Dave Brown
`
`and Jay Clark—correctly recognized that a uniform standard was unlikely to be
`
`adopted by the industry. They solved the problem in a very different way.
`
`B. The ’236 Invention
`
`Inventors Brown and Clark conceived of an alternative approach that
`
`allowed for interoperability under an application program despite the different
`
`“languages” utilized by different motion controllers. Their epiphany stemmed from
`
`their recognition that, although motion controllers use different, controller-
`
`dependent control commands, they generally implement many of the same,
`
`controller independent, motion control operations (e.g., GET POSITION and
`
`MOVE RELATIVE). The inventors conceived and developed a unique software
`
`architecture in which an intermediate software layer (the “motion control
`
`component”) and a set of controller-specific software drivers work together to
`
`convert controller independent “component functions” called by the application
`
`program into controller dependent control commands that can be understood by a
`
`selected motion control device. When an application program requests a desired
`
`motion control operation, the inventors’ software system transparently converts
`
`that request into the specific control command(s) appropriate for the selected
`
`motion controller. (See schematics below).
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`8
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`Preliminary Response By Patent Owner
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`IPR2017-00048
`U.S. Pat. 6,516,236
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`
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`In one example, shown in Figure 2 of the ’236 Patent, multiple discrete
`
`software layers interact with one another. (See drawing below, which has been
`
`modified to clarify layering). The application program (the upper software layer)
`
`offers various motion control operations
`
`through hardware
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`independent
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`“component functions” that can be “called” on the motion control component (the
`
`intermediate software layer), which comprises component code. The component
`
`code in the motion control component associates “component functions” with
`
`corresponding “driver functions” in the different software drivers (the lower
`
`software layer). The software drivers, in turn, include hardware-dependent driver
`
`code corresponding to the different driver functions for generating the appropriate
`
`control commands.
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`9
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`Preliminary Response By Patent Owner
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`IPR2017-00048
`U.S. Pat. 6,516,236
`
`
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`Three-tiered software programming models were used in other fields before
`
`the ’236 invention. One example, described in detail in the background section of
`
`the ’236 Patent, is WOSA, which forms the basis of the Cashin and ODBC
`
`references relied upon in the Petition. WOSA was a software model defined by
`
`Microsoft for use in the Windows programming environment. ’236 Patent at 2:55-
`
`67. “The WOSA model has no relation to motion control.” Id. at 2:66-67. Inventors
`
`Brown and Clark recognized that the pre-existing three-tiered models like WOSA
`
`would not provide a workable solution to the interoperability problem with motion
`
`control devices. Different motion control devices support different motion control
`
`operations, depending on their complexity. For example, some motion control
`
`devices support CONTOUR MOVE—a more complex movement involving
`
`coordinated movement of two motors to form an arc—whereas others do not.
`
`Inventors Brown and Clark recognized that if the WOSA approach were
`
`implemented, an application program would be unable to call (for example) a
`10
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`CONTOUR MOVE on motion control devices that do not support this operation.
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`This would only highlight, rather than eliminate, hardware dependencies.
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`Inventors Brown and Clark conceived a novel solution to this problem. They
`
`recognized that although motion control devices do not support the exact same set
`
`of motion control operations, they do support a subset of basic motion control
`
`operations, such as GET POSITION and MOVE RELATIVE, that cannot be
`
`emulated using other motion control operations. They referred to these operations
`
`as “primitive operations.” Inventors Brown and Clark recognized that complex
`
`operations, such as CONTOUR MOVE, can be emulated on devices that do not
`
`support them directly by performing a multiplicity of primitive operations. They
`
`referred to such operations as “non-primitive operations.” Similarly, driver
`
`functions may be either core driver functions or extended driver functions. “Core
`
`driver functions are associated with primitive operations, while extended driver
`
`functions are associated with non-primitive operations.” ’236 Patent at 7:44-46.
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`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
`
`layer requests the appropriate multiplicity of primitive operations that emulate the
`
`requested non-primitive operation. Thus, from the application program’s point of
`
`view, the motion control device does support the operation, thereby enabling
`
`hardware independence. The net effect is that application programs are able to call
`
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`hardware independent component functions corresponding to motion control
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`operations without regard to whether the selected motion control device supports
`
`the operation directly and without regard to its hardware-dependent control
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`commands. In their ’236 Patent, inventors Brown and Clark rejected conventional
`
`wisdom and elegantly solved
`
`the
`
`long-standing problem of hardware
`
`incompatibility among motion control devices.
`
`Claim 1 of the ’236 Patent is reproduced below:
`
`A system for generating a sequence of control commands for
`controlling a selected motion control device selected from a group of
`supported motion control devices, comprising:
`a set of motion control operations, where each motion control
`operation is either a primitive operation the implementation of
`which is required to operate motion control devices and cannot
`be simulated using other motion control operations or a non-
`primitive operation that does not meet the definition of a
`primitive operation;
`a core set of core driver functions, where each core driver function
`is associated with one of the primitive operations;
`an extended set of extended driver functions, where each extended
`driver function is associated with one of the non-primitive
`operations;
`a set of component functions;
`
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`Preliminary Response By Patent Owner
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`IPR2017-00048
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`U.S. Pat. 6,516,236
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`component code associated with each of the component functions,
`where the component code associates at least some of the
`component functions with at least some of the driver functions;
`a set of software drivers, where
`each software driver is associated with one motion control
`device in the group of supported motion control devices,
`each software driver comprises driver code for implementing
`the motion control operations associated with at least some
`of the driver functions, and
`one of the software drivers in the set of software drivers is a
`selected software driver, where the selected software driver
`is the software driver associated with the selected motion
`control device;
`an application program comprising a series of component
`functions, where the application program defines the steps for
`operating motion control devices in a desired manner; and
`a motion control component for generating the sequence of control
`commands for controlling the selected motion control device
`based on the component functions of the application program,
`the component code associated with the component functions,
`and the driver code associated with the selected software driver.
`’236 Patent at 48:10-49:11.
`
`
`
`Claim 2 depends from claim 1, and claim 3 depends from claim 2. Claim 2
`
`recites an additional requirement that “the software drivers comprise driver code
`
`for implementing all of the core driver functions.” Id. at 49:11-13. Claim 3 further
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`13
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`requires that “the software drivers comprise driver code for implementing at least
`
`some of the extended driver functions.” Id. at 49:14-16.
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`C. Litigation, Reexamination, and Review History
`
`
`
`The ’236 Patent’s validity has been challenged repeatedly during the course
`
`of two patent infringement cases, an inter partes reexamination, and a previous
`
`inter partes review. Every claim has been upheld at every step despite exhaustive
`
`scrutiny from multiple adverse litigants as well as the United States Patent and
`
`Trademark Office (“PTO”).
`
`First, the ’236 Patent’s validity was challenged in court by defendant GE
`
`Fanuc in 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.), and
`
`later by defendants Siemens, Honeywell, ABB, and MeadWestvaco in the
`
`consolidated case ROY-G-BIV Corp. v. ABB, Ltd., et al., Case Nos. 6:11-cv-00622,
`
`-00623, -00624 (E.D. Tex.). All defendants opted to settle rather than rely on their
`
`invalidity theories at trial.
`
`Second, all ’236 Patent claims were upheld after an extensive inter partes
`
`reexamination in proceeding No. 95/000,396. The Reexamination Request
`
`proposed eleven grounds of rejection based on forty-one references, and the
`
`Examiner considered many additional references beyond those submitted. Inter
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`14
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
`
`
`Partes Reexamination 95/000,396 Order Granting Request for Inter Partes
`
`Reexamination 11/20/2008 at 4-5, attached as Exhibit 2002; Patent No. 6,516,236
`
`C1 Inter Partes Reexamination Certificate at 2-9, attached as Exhibit 2010. The
`
`reexamination certificate reflects 556 different references ultimately considered by
`
`the Examiner in addition to those considered during the original prosecution. Ex.
`
`2010, at 2-9. After thorough consideration, all grounds of rejection were
`
`withdrawn and all claims confirmed as originally granted; something which
`
`occurred in only 7% of all inter partes reexamination proceedings. ’236
`
`Reexamination Right of Appeal Notice, January 26, 2011 at 10-15, attached as
`
`Exhibit 2011; Inter Partes Reexamination Filing Data, Sept. 30, 2016 at 1,
`
`attached as Exhibit 2003.
`
`Finally, in IPR2013-00062 (the “’062 IPR”) petitioner ABB challenged
`
`claims 1-10 of the ’236 Patent. ABB submitted multiple evidentiary sources
`
`discussing what it considered to be prior art. Notably, ABB submitted WOSA and
`
`ODBC as taught by Cashin, attached as Exhibit 2004, WOSA XFS as taught by the
`
`WOSA XFS specification, attached as Exhibit 2005, an August 1995 article from
`
`Control Engineering Magazine discussing both GML and Motion Toolbox,
`
`attached as Exhibit 2006, and the Gertz Thesis, attached as Exhibit 2007. Those
`
`same WOSA, ODBC, GML, and Motion Toolbox technologies are being asserted
`
`in the instant Petition.
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`15
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`Preliminary Response By Patent Owner
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`IPR2017-00048
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`U.S. Pat. 6,516,236
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`In the ’062 IPR, ABB requested that the Board institute review on eight
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`separate invalidity grounds, with Gertz, WOSA XFS, or both asserted in all eight
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`grounds. The Board instituted on only one of the eight grounds from the ’062 IPR,2
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`and following a full trial, all claims were once again upheld; something which has
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`only occurred in 5% of IPR petitions. PTAB Statistics, Oct. 31, 2016 at 10,
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`attached as Exhibit 2008. It is this same ’236 Patent that the instant Petition seeks
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`to have reviewed yet again, utilizing substantially similar grounds based only on
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`art already addressed in past proceedings.
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`D. Legal Standards
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`An IPR is improper unless “the information presented in the petition . . .
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`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`“[T]he petitioner shall have the burden of proving a proposition of unpatentability
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`by a preponderance of the evidence.” 35 U.S.C. § 316(e). Thus, the review should
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`not be instituted unless Petitioners have shown a likelihood of success on the
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`invalidity grounds as presented in the Petition. In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364, 1380-81 (Fed. Cir. 2016) (“[T]he Board must base its decision on
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`2 The ’062 IPR proceeding was joined with IPR2013-00282 before trial. IPR2013-
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`00282 provided two additional grounds challenging claims 5-7 of the ’236 patent,
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`however claims 5-7 are not at issue in the current proceeding.
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`16
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
`
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`arguments that were advanced by a party, and to which the opposing party was
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`given a chance to respond.”).
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`“In determining whether to institute or order a proceeding . . . the Director
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`may take into account whether, and reject the petition or request because, the same
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`or substantially the same prior art or arguments previously were presented to the
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`Office.” 35 U.S.C. § 325(d) (emphasis added); see also Neil Ziegman, N.P.Z., Inc.
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`v. Stephens, IPR2015-1860, 2016 Pat. App. LEXIS 1127, at *18 (P.T.A.B. Feb. 24,
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`2016) (Paper 11) (“Under these facts, we are unpersuaded that adjudicating such a
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`dispute on an already-considered issue is an efficient use of Board resources.”); c.f.
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`Ube Maxell Co., Ltd. v. Celgard, LLC, IPR2015-01511, 2016 Pat. App. LEXIS
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`1289, at *20-23 (P.T.A.B. Jan. 7, 2016) (Paper 10) (finding that the existence of
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`multiple prior PTO proceedings “weigh[s] in favor of denying the Petition”).
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`“To satisfy its burden of proving obviousness, a petitioner cannot employ
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`mere conclusory statements. The petitioner must instead articulate specific
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`reasoning, based on evidence of record, to support the legal conclusion of
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`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. “If the
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`proposed modification or combination of the prior art would change the principle
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`of operation of the prior art invention being modified, then the teachings of the
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`references are not sufficient to render the claims prima facie obvious.” MPEP
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`§ 2143.01 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).
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`17
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`Preliminary Response By Patent Owner
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`III. Claim Construction
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`IPR2017-00048
`U.S. Pat. 6,516,236
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`Although as Petitioners note in their Petition at 10-14, the parties dispute the
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`construction of many terms in challenged claims 1-3 of the ’236 Patent, Patent
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`Owner does not believe that any of these claim construction disputes are material
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`to Petitioners’ likelihood of success in showing that any of claims 1-3 of the ’236
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`Patent would have been obvious based on the two asserted grounds presented in
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`the Petition as discussed below. However, Patent Owner notes that the district
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`court recently issued its preliminary claim constructions related to many of these
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`disputes. Automation Middleware Sol’ns, Inc. v. Invensys Sys., Inc., No. 2:15-CV-
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`00898-RWS (E.D. Tex. Dec. 6, 2016) (Preliminary Claim Constructions), attached
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`as Exhibit 2016. Because the Board analyzes the claims of expired patents, such as
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`the ’236 Patent, under the same standard as the district court, these preliminary
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`constructions are at least persuasive authority. In re CSB-Sys. Int’l, Inc., 832 F.3d
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`1335, 1340-42 (Fed. Cir. 2016). Should the Board decide to institute an IPR based
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`on the Petition, Patent Owner may present its position on one or more of these
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`claim construction issues in its Patent Owner Response.
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`IV. All Grounds Advanced by Petitioners Are Cumulative of Previous
`Examinations and Review
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`AMS respectfully requests that the Board exercise its discretion under 35
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`U.S.C. § 325(d) to deny institution because Petitioners present the same or
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`substantially the same art or arguments addressed during prior PTO proceedings,
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`18
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`IPR2017-00048
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`Preliminary Response By Patent Owner
`U.S. Pat. 6,516,236
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`including a prior IPR before the Board. See Neil Ziegman, N.P.Z., Inc.,