April 14 -- The Patent Trial and Appeal Board issued its first America
Invents Act-based post-grant opposition decisions after instituting trial that
were completely in favor of the patent owner.
The board has denied 101 of
the 1024 inter partes and covered business method review petitions filed, so
this is hardly the first of its decisions favoring patentees. However, when it
has granted a petition, instituted trial and then ultimately published a final
written decision, the PTAB has cancelled all but 10 of the hundreds of claims
challenged in over 30 patents.
Roy-G-Biv Corp. holds a family of patents (including U.S.
Patent Nos. 6,513,058; 6,516,236; 6,941,543; and 8,073,557) related to motion
control systems used in robotics, with “interface software that facilitates the
creation of hardware independent motion control software,” all emanating from a
1995 patent application.
Roy-G-Biv sued ABB Inc. for patent
infringement in the U.S. District Court for the Eastern District of Texas. No.
6:11-CV-622. ABB then filed six petitions for inter partes review in total.
Roy-G-Biv agreed to cancel the '543 patent claims, resolving IPR2014-00122.
Trial was instituted in IPR2013-00063, related to the '058 patent, and is still
The instant case relates to two IPRs each attacking all
claims of the '236 and '557 patents. In each case, the PTAB instituted trial
after the first IPR, but not on all claims challenged. ABB consequently filed
the follow-up IPRs and trial proceeded against all claims of the two
The PTAB's two decisions were based on the same evidence.
ABB's proffered prior
art--dissertations and other non-patent publications--was from work performed by
computer scientists and software engineers working in a lab at Carnegie Mellon
University, all predating the 1995 patent application.
Roy-G-Biv produced an expert declaration from one of the lab members who was a
co-author of one of the prior art references. The expert testified that his
dissertation and other prior art attributed to his colleagues did not reflect
development at the time of all the limitations claimed in the Roy-G-Biv patents.
The PTAB ruled that “this testimony is persuasive insofar as it relates to
deficiencies in the prior art relied on by Petitioner.”
with expert declarations from two other scientists from the same lab. However,
as to each expert, the board said, “We are not persuaded by [the expert's]
rebuttal testimony that [Roy-G-Biv's expert's] testimony on these issues should
not be credited.”
Administrative Patent Judge Thomas L. Giannetti wrote
the board's opinion, which was joined by Judges Jennifer S. Bisk and Jeremy M.
Klarquist Sparkman LLP represented ABB. Foster Pepper PLLC
Text is available at http://pub.bna.com/ptcj/IPR2013-00062final.pdf and http://pub.bna.com/ptcj/IPR2013-00074final.pdf.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
contact the editor responsible for this story: Naresh Sritharan at firstname.lastname@example.org
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