IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 6:11-CV-00622-LED
`
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`ROY-G-BIV Corporation,
`
`Plaintiff,
`
`v.
`
`ABB, Ltd., ABB, Inc.,
`MEADWESTVACO TEXAS, LP and
`MEADWESTVACO CORPORATION
`
`Defendants.
`- - - - - - - - - - - - - -
`PLAINTIFF ROY-G-BIV CORPORATION'S
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 3-1
`
`)
`
`Pursuant to Rule 3-1 of the Rules of Practice for Patent Cases Before the Eastern
`
`District of Texas ("the Patent Rules" or "P.R."), ROY-G-BIV Corporation ("Plaintiff")
`
`hereby submits
`
`its Disclosure of Asserted Claims and Preliminary Infringement
`
`Contentions, including the claim charts attached as Exhibits A-D. This disclosure is made
`
`solely for the purpose of this action.
`
`Discovery in this matter is at a very early stage and is ongoing. The Defendants
`
`have not yet produced any documents and things, any computer source code, or provided
`
`any deposition testimony or other discovery in this action. RGB' s investigation regarding
`
`these and other potential grounds of infringement is ongoing. This patent rule disclosure is
`
`based upon information that RGB has been able to obtain publicly, together with RGB's
`
`current good faith beliefs regarding each accused apparatus, product, device, process,
`
`method,
`
`act, or other
`
`instrumentality (generally referred to herein as
`
`"Accused
`
`Page 1 of 8
`
`RA v. AMS
`Ex. 1015
`
`
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 6:11-CV-00622-LED
`
`)))) ) )
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`)))) ) )
`
`ROY-G-BIV Corporation,
`
`Plaintiff,
`
`v.
`
`ABB, Ltd., ABB, Inc.,
`MEADWESTVACO TEXAS, LP and
`MEADWESTVACO CORPORATION
`
`Defendants.
`- - - - - - - - - - - - - -
`PLAINTIFF ROY-G-BIV CORPORATION'S
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 3-1
`
`)
`
`Pursuant to Rule 3-1 of the Rules of Practice for Patent Cases Before the Eastern
`
`District of Texas ("the Patent Rules" or "P.R."), ROY-G-BIV Corporation ("Plaintiff")
`
`hereby submits
`
`its Disclosure of Asserted Claims and Preliminary Infringement
`
`Contentions, including the claim charts attached as Exhibits A-D. This disclosure is made
`
`solely for the purpose of this action.
`
`Discovery in this matter is at a very early stage and is ongoing. The Defendants
`
`have not yet produced any documents and things, any computer source code, or provided
`
`any deposition testimony or other discovery in this action. RGB' s investigation regarding
`
`these and other potential grounds of infringement is ongoing. This patent rule disclosure is
`
`based upon information that RGB has been able to obtain publicly, together with RGB's
`
`current good faith beliefs regarding each accused apparatus, product, device, process,
`
`method,
`
`act, or other
`
`instrumentality (generally referred to herein as
`
`"Accused
`
`Page 1 of 8
`
`RA v. AMS
`Ex. 1015
`
`
`
`Instrumentalities" and as further defined below) of which the Plaintiff is aware, and is
`
`given without prejudice to RGB's rights to obtain leave, as necessary, to supplement or
`
`amend its disclosure as additional facts are ascertained, analyses is made, research is
`
`completed and/or claims are construed, especially the review of Defendants' confidential
`
`information including source code, documents, and deposition testimony. For example, the
`
`figures shown in the accompanying claim charts,
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`including but not
`
`limited to those
`
`depicting the location of and identifying the presence of claim elements in the Accused
`
`Instrumentalities, are illustrative and may change after review of Defendants' confidential
`
`information including source code and related infonnation.
`
`Accordingly, Plaintiff
`
`explicitly reserves the right to amend and/or supplement the accompanying claim charts
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`regarding direct and/or
`
`indirect
`
`infringement, as well as literal
`
`infringement and/or
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`infringement under the doctrine of equivalents based upon evidence uncovered in this
`
`litigation.
`
`These disclosures also are based at least in part upon RGB's present understanding
`
`of the meaning and scope of the asserted claims of the patents-in-suit in the absence of
`
`claim construction proceedings for all the patents-in-suit or discovery in this matter. Any
`
`references in the accompanying claim charts to prior claim constructions refer to the
`
`Markman Order issued in ROY-G-BIV Corp. v. FANUC Ltd. et af., Case No. 2:07-cv(cid:173)
`
`00418-DF in which certain terms ofthe 236 and '058 patents were construed by the Court,
`
`and are provided merely for the convenience of the parties and are not to be construed as
`
`admissions or a waiver of other claim constructions that RGB may propose during the
`
`Markman phase of this case. RGB reserves the right to seek leave to supplement or amend
`
`2
`
`Page 2 of 8
`
`RA v. AMS
`Ex. 1015
`
`
`
`these disclosures if its understanding of the claim terms change, including if the Court
`
`construes them.
`
`1.
`
`Pursuant
`
`to P.R. 3-1(a), Plaintiff asserts that
`
`the Defendants currently
`
`infringe and/or have infringed at least the following claims:
`
`(a)
`
`Defendants ABB, Inc. and ABB, Ltd (collectively "ABB") currently
`
`infringe and/or have infringed (either individually, jointly, or jointly in concert with their
`
`customers such as Meadwestvaco Texas, LP and Meadwestvaco Corporation (collectively,
`
`"Meadwestvaco"), or by inducing and/or contributing to infringement by customers such as
`
`Meadwestvaco): (i) claims 1-5 of United States Patent No. 6,513,058 ("the '058 Patent");
`
`(ii) claims 1-10 of United States Patent No. 6,516,236 ("the '236 Patent); and (iii) claims
`
`16-30 and 46-59 of United States Patent No. 8,073,557 ("the' 557 Patent").
`
`(b)
`
`Defendant Meadwestvaco currently infringes and/or has infringed
`
`(either individually, jointly, or jointly in concert with ABB): (i) claims 1-5 of the '058
`
`Patent; (ii) claims 1-10 of the '236 Patent; and (iii) claims 16-30 and 46-59 of the '557
`
`Patent.
`
`2.
`
`Pursuant to P.R. 3-1(e): (1) the asserted claims of the '058 Patent, claims 1-
`
`9 of the '236 Patent, and the asserted claims of the' 557 Patent are each entitled to the
`
`benefit of the May 30, 1995 filing date of United States Application Serial No. 08/454,736,
`
`which issued as United States Patent No. 5,691,897; and (2) claim 10 of the '236 Patent is
`
`entitled to the benefit of the May 30, 1996 filing date of United States Patent Application
`
`Serial No 08/656,421, which issued as United States Patent No. 5,867,385.
`
`3.
`
`Pursuant to P.R. 3-1(f), Plaintiff's XMC software, when used alone or in
`
`combination with third party hardware, such as third-party motion control devices,
`
`3
`
`Page 3 of 8
`
`RA v. AMS
`Ex. 1015
`
`
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`computers, and other objects incorporates or reflects each of the asserted claims of the
`
`'058, '236 and '557 Patents.
`
`4.
`
`Pursuant
`
`to P.R 3-1 (b)-(d),
`
`the claim charts attached as Exhibits A-D
`
`identify which of the Accused Instrumentalities infringe each asserted claim, as well as
`
`where each limitation of the claim is literally found in the Accused Instrumentalities. To
`
`the extent that any of the limitations in claims 7-10 of the '236 patent are governed by 35
`
`U.S.C. § 112(6), Plaintiffs expects that ABB's source code or other confidential
`
`information will be required to identity the structure (i.e., software code) that performs
`
`the claimed function in the Accused Instrumentalities. Based upon its review and analysis
`
`of publicly available documents, Plaintiff asse11s the claims are literally infringed. To the
`
`extent Defendants successfully argue that any of the limitations are not literally present in
`
`the Accused Instrumentalities,
`
`the chat1s identify illustrative support
`
`for where the
`
`equivalent feature is found lmder the doctrine of equivalents pursuant to the function-way(cid:173)
`
`result and/or insubstantial differences tests.
`
`5.
`
`As used herein and in the accompanying exhibits, the following terms have
`
`the following meanings:
`
`(a)
`
`The teilli "Accused Instrumentalities" means Industrial System
`
`800xA Systems, as defined further below.
`
`(i)
`
`The term "Industrial System 800xA Systems" means
`
`systems incorporating an Industrial System 800xA Server, an Industrial System 800xA
`
`Application Program, a plurality of Industrial System 800xA Drivers, and (depending upon
`
`the claim at issue) Industrial System 800xA Hardware, as further defined below.
`
`4
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`Page 4 of 8
`
`RA v. AMS
`Ex. 1015
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`
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`(A)
`
`The telm "Industrial System 800xA" Server means
`
`the software marketed by ABB as the "Connectivity Server" and/or the "Real Time
`
`Database" and any software implementing the same or similar functionality to that
`
`disclosed for Industrial System 800xA Servers in Exhibits A-D;
`
`(B)
`
`The term "Industrial System 800xA Application
`
`Program" means any application program that comprises hardware independent function
`
`calls exposed by any Industrial System 800xA Server, which on information and belief
`
`includes but is not necessarily limited to Industrial IT System 800xA Operations, System
`
`800xA Smart Client, System 800xA Engineering Tools, Panel 800, Compact HMI 800, the
`
`Aspect Server, and all application programs based upon the Industrial System 800xA
`
`Systems including but not limited to those application programs offered in the various
`
`industries
`
`and
`
`submarkets
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`listed
`
`on ABB's website
`
`at
`
`the
`
`following
`
`links:
`
`http://www.abb.com/product/seitp334/l02b314866674ccdc12572bb003Iea42.aspx.
`
`(C)
`
`The term "Industrial System 800xA Drivers" means
`
`any drivers that expose functions corresponding to function calls made by any Industrial
`
`System 800xA Server, which on information and belief includes but is not necessarily
`
`limited to Industrial System 800xA OPC Servers or other architecturally equivalent
`
`interfaces that communicate with Industrial System 800xA Hardware, as further defined
`
`below; and
`
`(D)
`
`The term "Industrial System 800xA Hardware"
`
`means any motion control device hardware corresponding to any Industrial System 800xA
`
`Driver, which on information and belief includes but is not necessarily limited to the
`
`5
`
`Page 5 of 8
`
`RA v. AMS
`Ex. 1015
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`
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`AC800M, AC500, ACS800, and IRC5, and any controllers and motion control devices for
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`which an OPC Server or equivalent architectural interface exists.
`
`6
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`Page 6 of 8
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`RA v. AMS
`Ex. 1015
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`
`
`Dated: September 14,2012
`
`illiam A. Isaacson
`D. Michael Underhill
`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER LLP
`5301 Wisconsin Avenue, NW
`Washington, DC 20015
`Telephone: 202.237.2727
`Fax: 202.237.6131
`E-mail: wisaacson@BSFLLP.com
`E-mail: munderhill@BSFLLP.com
`E-mail: rmeyer@BSFLLP.com
`
`Lance Lubel
`Lead Attomey
`Texas State Bar No. 12651125
`Adam Voyles
`Lubel Voyles LLP
`5020 Montrose Blvd., 8th Floor
`Houston, Texas 77006
`Tel: (713) 284-5200
`E-mail: lance@lubelvoyles.com
`E-mail: adam(a).lubelvoyles.com
`
`Gregory P. Love
`Texas Bar No. 24013060
`STEVENS LOVE
`P. O. Box 3427
`Longview, Texas 75606-3427
`903.753.6760
`903.753.6761 (Fax)
`E-mail: greg@stevenslove.com
`
`Russell A. Chorush
`Texas State Bar No. 24031948
`HElM, PAYNE & CHORUSH, L.L.P.
`JP Morgan Chase Tower
`600 Travis Street, Suite 6710
`Houston, Texas 77002
`Telephone: (713) 221-2000
`Fax: (713) 221-2021
`E-mail: rchorush@hpcIlp.com
`
`Attorneys
`Corporation
`
`for
`
`Plaintiff
`
`ROY-G-BIV
`
`7
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`Page 7 of 8
`
`RA v. AMS
`Ex. 1015
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 14,2012, counsel of record for the parties are being
`
`served a copy of the foregoing document via E-mail:
`
`Michael E. Jones
`Allen F. Gardner
`POTTER MINTON
`A Professional Corporation
`liON. College Ave., Suite 500
`Tyler, Texas 75702
`
`Steven M. Auvil
`BENESCH FRIEDLANDER
`COPLAN & ARONOFF LLP
`200 Public Square, Suite 2300
`Cleveland, Ohio 44114-2378
`
`Page 8 of 8
`
`RA v. AMS
`Ex. 1015
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