Final Written Decision Upholding Patentability of Challenged Claims IPR2013-00063

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Takeaway: If a patent owner disputes the date of publication of a piece of prior art, it must serve an objection on the petitioner within ten business days of institution of trial and then file a subsequent motion to exclude at the proper time. Noting the dispute in a footnote of the patent owner response is not enough to preserve such an objection.

In its Final Written Decision, the Board found that Petitioner had not met its burden to prove by a preponderance of the evidence that claims 1-5 of the ’058 Patent are unpatentable. The Board had instituted trial on those claims on a single ground:  obviousness over the combination of Gertz, Stewart, and Morrow.  The Board relied on its analysis in its Final Decision of IPR2013-00062 (“062 Decision”) in this Decision.  The Board also dismissed Patent Owner’s Motion to Exclude and Motion to Submit Supplemental Information.

The ’058 Patent, just like the ’236 Patent in the 062 Decision, relates to a system that facilitates the creation of hardware-independent motion control software. Particularly, the patent describes a high-level motion control application programming interface (“API”) made of functions that are correlated with drive functions associated with controlling a mechanical system that generates movement based on a control signal.

The Board began by discussing the priority date of the ’058 Patent in relation to the dates of Gertz and Morrow. Patent Owner contended that the claimed invention of the ’058 Patent was conceived prior to November 22, 1994, the earliest dates of publication alleged for Gertz and Morrow, and reduced to practice on May 30, 1995, the filing date of the priority application.  Patent Owner further contended that the inventors were reasonably diligent from November 21, 1994 to the date of reduction to practice; therefore, neither Gertz nor Morrow qualifies as prior art.  Patent Owner relied on the declaration of its founder, chairman, and chief technical officer to support its allegations regarding invention, just as it did in the related proceedings.  The Board found here, just as it did in its 062 Decision, that Patent Owner’s evidence is insufficient to establish an invention date prior to the publication date of Gertz and Morrow.  The Board also rejected the additional cases and arguments presented by Patent Owner in this proceeding, including reliance on a non-precedential Board decision from 1953, more recent Federal Circuit decisions, and a number of district court decisions, which the Board found were all distinguishable from the instant proceeding.

The Board then turned to Patent Owner’s challenge of the January 1, 1995 publication date of Morrow. The Board noted that Patent Owner stated this argument at the final hearing and had not moved to exclude Morrow, but Patent Owner directed the Board to a footnote concerning Morrow in its Patent Owner Response.  The Board concluded that Patent Owner’s challenge to Morrow was untimely because while the footnote stated that Petitioner had not established the date of publication for Morrow, Patent Owner did not state an objection to the admissibility of the reference, which should have been served within ten business days of institution of trial.  Further, Patent Owner never moved to exclude Morrow.  The Board then noted that it is Petitioner’s burden to prove the publication date, but because of the Board’s disposition of the proceeding, the Board did not reach the issues of whether the record is sufficient to satisfy the burden.

The Board next turned to claim construction, stating that the Board will interpret the claims using the broadest reasonable construction in light of the specification of the patent. The Board only chose to construe the terms “component function” and “component code” because those terms are determinative for the reasons discussed in the 062 Decision.  The Board then interpreted both consistent with the 062 Decision, noting how the ’058 Patent specification supports those constructions.

Turning then to the obviousness challenge, as in the 062 Decision, the Board gave significant weight to the testimony of Patent Owner’s expert, stating that the actions in Gertz are not the same as the claimed component functions and that Gertz does not describe any code that associates component functions with driver functions, as claimed. Petitioner did not provide sufficient evidence to rebut this testimony.  The Board then stated that for the same reasons as outlined in the 062 Decision, Gertz did not disclose the component function and component code features of the claims, as argued by Petitioner.

The Board then addressed the Motion to Exclude, where Patent Owner sought to exclude certain “new” arguments made in Petitioner’s Reply and portions of Petitioner’s expert testimony. The Board dismissed the Motion because it did not rely upon those arguments or evidence in its decision.  The Board further noted that a motion to exclude is not the proper vehicle for resolution of a dispute regarding the scope of the reply because a motion to exclude “must identify the objections in the record.”  If an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the proper scope, the parties should contact the Board to discuss the issue.

The Board then addressed Patent Owner’s Motion to Submit Supplemental Information, a declaration that Patent Owner claimed provided independent corroboration of conception. The Board stated that for the reasons discussed in the 062 Decision, the motion was moot and was therefore dismissed.

ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00063
Paper 71: Final Written Decision
Dated: May 16, 2014
Patent 6,513,058 B2
Before: Thomas L. Giannetti, Jennifer S. Bisk, and Jeremy M. Plenzler
Written by: Giannetti
Related Proceedings: IPR2013-00062; IPR2013-00074; ROY-G-BIV Corp. v. ABB, Ltd. et al, 6:11-cv-00622-LED (E.D. Tex.)