First Patents Survive Inter Partes Review Fully Intact

by McDermott Will & Emery

ABB Inc. v. ROY-G-BIV Corp. -

In the past several months, decisions have been rendered in the first wave of inter partes reviews filed under the American Invents Act (AIA).  The early IPR decisions of the Patent Trial and Appeal Board (PTAB) have, in general, not been kind to patent owners, with most challenged claims being cancelled.  Now, in two related inter partes review (IPR) proceedings, the PTAB found for the patent owner on all grounds of review.  ABB Inc. v. ROY-G-BIV Corp., Cases IPR2013-00036 and IPR2013-00282, IPR2013-00074 and IPR2013-00286 (PTAB, Apr. 11, 2014) (Giannetti, APJ.).

ABB filed two separate petitions for review of each of two ROY-G-BIV owned patents.  ROY-G-BIV had earlier asserted each against ABB. The patents are both directed to essentially the same technology:  a system for facilitating the creation of hardware-independent motion control software.  The patents describe a high-level motion control application programming interface (API) made of functions that are correlated with driver functions associated with controlling a mechanical system that generates movement based on a control signal.  The object of the invention is to isolate the application programmer from the complexity of hardware devices, which often have a manufacturer-specific motion control command language and functionality that is highly hardware-dependent.

For each patent, ABB filed its second IPR petition after the Board instituted proceedings for the first petition on only one of the eight proposed grounds and on only a subset of the claims challenged. In each of the second petitions, ABB initially asserted additional multiple grounds of invalidity, but then filed a motion to limit the proceeding to obviousness grounds based on a set of prior art common with the first IPR proceeding. After institution of the related proceeding, each initial IPR included a single obviousness ground based on a set of prior art that was common with the related second IPR.  The two IPRs for each patent were then joined.

At trial, ROY-G-BIV attempted to ante-date two of the three references that were common to all grounds.  For support, the patent owner submitted testimony of its founder, who was also the chairman, chief technical officer and a named co-inventor on both patents.  Due to the lack of independent corroborating evidence regarding both conception and diligence, the Board concluded that the patent owner was unsuccessful and that the two references were properly considered prior art.

However, the patent owner also contended that various limitations of the claims, limitations common to the two patents, were not taught or suggested by the core set of prior art references that ABB relied on.  The patent owner relied on expert testimony from the author of one of the three core references, an individual who had engaged in research with and co-authored articles with the author of one of the other primary references. Even though ABB countered with the testimony from two experts, the PTAB ultimately found the testimony of the patent owner’s expert to be most persuasive and determined that key limitations were not taught or suggested by the prior art.

Practice Note:  It seems the expert testimony relied on by the patent owner that was found by the Board to be most credible was in part a consequence of the fact that the testimony was from an author of one of the petitioner’s prior art references.


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McDermott Will & Emery

McDermott Will & Emery on:

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