October 30, 2013

Priority Date of Challenged Patent Sustained by Board, But IPR Trial Still Instituted on Other Grounds

By Matthew L. Cutler, Principal

Continuing its challenges of Roy-G-Biv patents, ABB was successful in getting all 5 challenged claims of another Roy-G-Biv patent into a trial for inter partes review, despite the fact that a key reference was excluded as “prior art” because the patent-in-suit was given the priority date of its parent application, in a case styled as ABB Inc. v. Roy-G-Biv Corp. (IPR2013-00063), involving U.S. Pat. No. 6,513,058.

The ‘058 patent relates 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.

The most interesting portion of the Board’s decision related to the priority date of the ‘058 patent. Patent Challenger alleged that the ‘058 patent was not entitled to the priority date of its parent application, bringing into play certain prior art references. More specifically, Patent Challenger asserted that the document to which the ‘058 patent claimed priority did not provide written description or enablement for all of the claim limitations of the ‘058 invention. After performing a detailed examination of the file history of the ’058 patent, the Board rejected Patent Challenger’s argument and confirmed that the 058 patent was entitled to its earlier priority date. The Board’s decision was based on a detailed analysis of the disclosure in the earlier filing, as well as a broad reading of that disclosure – seemingly consistent with the broad standard provided to patent claims in IPR proceedings. In the end, the Board’s decision helped Patent Owner narrow the scope of Petitioner’s challenge, by eliminating a primary reference from the Petition.

Also of note from the Board’s decision was its quick dispatch of Patent Owner’s argument that one of the primary references should be ignored because it was considered during prosecution of the ’058 patent. The Board gave that fact no weight, stating that “we decline to reject the petition solely on the ground that a reference…is included on an eight-page list of references on the ’058 patent reexamination certificate.” Order at 11.

In the end, the Board granted an IPR trial on a single challenge ground, covering all 5 challenged claims.