Takeaway:  Petitioner bears the burden of establishing, by a preponderance of the evidence, that the challenged claims are unpatentable.  If Patent Owner presents expert testimony evidencing that the challenged claims are patentable, Petitioner must provide sufficient evidence to rebut that testimony.

In its Final Written Decision, the Board upheld the patentability of all challenged claims. This result cuts against the recent trend of the Board finding most, if not all, claims involved in each post-grant trial unpatentable.

In this case, Petitioner filed both a first, and then a second, petition for inter partes review. Petitioner filed a Motion for Joinder at the time the second petition was filed, and the two proceedings were then joined, with claims 1-10 of the ‘236 patent being challenged.

The technology at issue involved hardware-independent motion control software. Petitioner relied on references to Gertz, Stewart, and Morrow in challenging the patentability of claims 1-4 and 8-10, and relied on these references taken in combination with additional references in challenging the patentability of claims 5-7.

As a first strategy, the Patent Owner attempted to overcome the aforementioned challenges by swearing behind the prior art dates of the Gertz and Morrow references. However, the Patent Owner was not able to successfully swear behind Gertz and Morrow; thus, these references were considered by the Board to be prior art under 35 U.S.C. § 102(a).

As a second strategy, the Patent Owner relied on expert testimony. Petitioner initially did not present any expert testimony. But when the Patent Owner’s Post-Institution Response presented the testimony of Dr. David Stewart, author of the Stewart reference, Petitioner then presented, with its Reply, the testimony of Drs. Richard Voyles and Nikolaos Papanikolopoulos. All three of these experts were Ph.D.s from the same university laboratory.

After considering all of the evidence, the Board gave significant weight to the testimony of Patent Owner’s expert (Dr. Stewart) that Gertz was lacking in several key respects. The Board also found that Petitioner did not provide sufficient evidence to rebut Dr. Stewart’s testimony. As a result, the Board rejected Petitioner’s attempt to discredit the testimony of Dr. Stewart through the direct testimony of Drs. Voyles and Papanikolopoulos. In the end, the Board found that Petitioner had not established, by a preponderance of the evidence, that Gertz taught the claimed subject matter.

The Board dismissed a Motion to Exclude filed by the Patent Owner which sought to exclude certain arguments made in Petitioner’s reply and sections of Petitioner’s expert testimony, as being moot. The Board indicated that if an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue, rather than filing a Motion to Exclude.

ABB Inc. v. Roy-G-Biv Corporation, IPR2013-00062 & IPR2013-00282
Paper No. 84: Final Written Decision
Dated: April 11, 2014
Patent 6,516,236 B2
Before: Thomas L. Giannetti, Jennifer S. Bisk, and Jeremy M. Plenzler
Written by: Administrative Patent Judge Giannetti