39 for 44: Previously Considered Art Survives Again in Grant of Two Inter Partes Review Trials

The Board furthered its early reputation of providing thorough decisions regarding the institution of inter partes review trials, by digging into dependent claims of the challenged patents and allowing certain claims to survive in two cases styled ABB, Inc. v. Roy-G-Biv Corporation (IPR2013-00062 and IPR2013-00074), involving US Patent Nos. 6,516,236 and 8,073,557. The Board granted trial on 7 of 10 challenged claims for the ‘236 patent and 12 of 29 challenged claims for the ‘557 patent.

The patents relate generally to a system that facilitates the creation of hardware-independent motion control software. In particular, the patents describe a high-level motion control application programming interface (“API”) made up of functions that are correlated with driver functions associated with controlling a mechanical system that generates movement based on a control signal.

Patent Owner specifically addressed proposed interpretations of the terms “primitive operations” and “core driver functions.” Because Patent Challenger’s proposed interpretations for the other patent terms did not appear unreasonable, the Board adopted them “at this stage of the proceeding.” We emphasize this point because it reinforces other decisions by the Board that suggest that a Patent Owner can address claim construction issues again after an IPR trial has been initiated.  As to the term “primitive operations” the Board found that Patent Challenger’s proposed definition was overly and did not comport with an explicit definition provided in the specification.

The Board used a similar analysis in adopting the specification definition of “core driver functions,” against Patent Challenger’s argument that the term was too vague. Patent Challenger’s position “ignores the explicit definition in the claim language itself.”  As should be expected, the intrinsic evidence controlled regarding this claim construction issue.

Having addressed the claim construction issues, the Board turned to Patent Owner’s argument that a prior art reference was cumulative because it was considered during the original prosecution and Inter Partes Reexamination of the ‘236 patent. The Board rejected the argument: “While we are cognizant of the burden on the Patent Owner and the Office to rehear the same or substantially the same prior art or arguments that were considered by the Office in a prior proceeding, we decline to reject the petition solely on the ground that Stewart, a reference related to the operating system upon which Gertz’s system is based, is a member of an eight-page list of references on the ‘236 reexamination certificate.” IPR2013-00062 Order at 13.

Despite that minor victory, Patent Challenger’s anticipation arguments were then rejected because they failed to show that operations performed by control tasks in Gertz were “primitive operations,” as that term was defined by the Board, above. With regard to the grounds based on obviousness, the Board was not persuaded by the Patent Owner’s arguments that the Gertz reference taught away from using primitive operations. The Board did, however, find that limitations in dependent claims 5-7 were not disclosed by the proposed combination of references, preventing a finding of obviousness.  Specifically, the Board found Patent Challenger’s argument that the prior art disclosed the limitation contained in these claims to be lacking.  It is interesting to note that, in a footnote, the Board mentioned that although Patent Challenger asserted the limitations were disclosed by another reference, Patent Challenger did not assert a combination that included that reference as a ground of unpatentability. IPR2013-00062 Order at 17.

After completing its analysis, the Board granted trial on some, but not all of the challenged patent claims of both the ‘236 and the ‘557 patents. The Board’s claim construction analyses, which were based on the definitions disclosed in the specification (rejecting an argument that such definitions were vague) doomed some of Patent Challenger’s anticipation and obviousness challenges.