Quandary Peak Client ROY-G-BIV Successfully Defends Patents in Inter Partes Review (IPR)

Brad Ulrich, a software expert at Quandary Peak Research, recently provided source code review in the matter of ROY-G-BIV Corp. vs. ABB, Inc. et al., a patent infringement action relating to technology for hardware-independent motion control software. Mr. Ulrich is representing the plaintiff, ROY-G-BIV Corporation, in Civil Action No. 6:11-CV-622 being litigated in U.S. District Court for the Eastern District of Texas. Mr. Ulrich provides software consulting and expert testimony for clients involved in litigation, and has expertise in numerous software-intensive industries (such as medical devices, smartphones, and embedded controllers) and programming languages (such as C++, Java, SQL, and many others).

An inter partes review (IPR) of the patents at issue in the case recently made news by becoming the first instance in which all claims of a challenged patent have survived intact since the IPR procedure was created as part of the America Invents Act (AIA) of 2011. The ROY-G-BIV patents, which date back to 1995, are No. 6,516,236 and 8,073,557. While the nascent Patent Trial and Appeal Board (PTAB) has ruled on some 30 sets of claims to date in IPRs, this is the first time that the Board upheld the patentability of all challenged claims.

The Board determined in two related proceedings that all of the challenged claims in ROY-G-BIV’s patents should be upheld. In IPR2013-00062 and IPR2013-00282, the court ruled that the petitioner failed to prove by a preponderance of the evidence that claims 1-10 of U.S. Patent No. 6,516,236 B1 are unpatentable. In the review, the patent owner presented evidence from an expert in the field of motion control software, and Board seemed to indicate there was insufficient rebuttal testimony from the petitioner. Attorneys Richard S. Meyer of Boies, Schiller & Flexner LLP and Douglas R. Wilson of Heim, Payne & Chorush LLP represented ROY-G-BIV in the IPR proceedings.

The ROY-G-BIV patents relate generally to motion control technology, in which the operation of motorized mechanical devices is controlled by hardware-independent software. Software created by the patentee involves, among other things, the use of C++ and Component Object Model (COM) components to create hardware-independent middleware for controlling robotics and other industrial processes.

Quandary Peak Research

Based in Los Angeles, Quandary Peak Research provides software litigation consulting and expert witness services. We rapidly analyze large code bases, design documents, performance and usage statistics, and other data to answer technical questions about the structure and behavior of software systems.