Roy-G-Biv Corporation

Historic Win Under America Invents Act Upholds Three Patents In Inter Partes Review

Three Roy-G-Biv Corporation patents confirmed in separate America Invents Act (AIA) inter partes review decisions before the Patent Trial and Appeals Board (PTAB).

Roy-G-Biv helps manufacturers connect, monitor and manage any machine tool across the factory. A small Washington state based company, Roy-G-Biv helps manufacturers achieve and sustain world-class performance through the universal integration of critical CNC and motion-controlled machines with various plant systems.

To protect its innovative approach to factory integration and management, it has assembled a worldwide patent portfolio which revolutionized development, management, and oversight of motion control applications in many industries. Roy-G-Biv successfully asserted some of these patents against several infringers, resulting in favorable settlements from major manufacturers of industrial robots and CNC machinery.

In 2011, Roy-G-Biv challenged Honeywell, Siemens, and multinational engineering company ABB, Inc. as infringing certain key Roy-G-Biv patents on connecting disparate industrial robots and motion controlled machinery. In response, ABB petitioned for an AIA inter partes review of the patents. ABB asserted that Roy-G-Biv’s patents were anticipated and obvious, and asked the PTAB to cancel all the challenged claims as unpatentable.

THE RULING

Instead, the PTAB ruled that ABB failed to show that any of the 39 claims challenged in the three patents were unpatentable. The patents confirmed are U.S. 8,073,557; U.S. 6,513,058; and U.S. 6,516,236.

AN UNPRECEDENTED AND STILL RARE DECISION

These three decisions by the PTAB were the first, second, and fourth time any patent had all claims survive an inter partes review through a final decision. In fact, when these three decisions were issued, the PTAB had issued 49 previous final written decisions in AIA inter partes review and covered business method patent review. In nearly every one of those 49 decisions none of the claims survived. Of the very few where any aspect of the challenged patent remained, only a very few claims survived PTAB review.

Roy-G-Biv’s extraordinary result remains an outlier even now. The PTAB has only rarely allowed all challenged claims and has a patent kill rate higher than any federal district court. It has rapidly become the preferred forum for accused infringers to invalidate claims.

No wonder that former acting USPTO Director Terry Rea directly referred to the ABB v. Roy-G-Biv Decisions as “historic” and a “glory moment” for patent owners facing inter partes review.*

As of January 15, 2015, PTAB had received more than 20,000 claims in 617 Inter Partes review petitions and 643 claims were found patentable by PTAB. Of those 643 claims, 44 were included in the three Roy-G-Biv cases.

THE PATENTS

The patents-in-suit are U.S. Patent Numbers 8,073,557, 6,513,058 and 6,516,236.

The patents collectively describe an industrial automation system for motion control, including a software application, capable of controlling multiple components and devices.

THE TEAM

Roy-G-Biv was represented by Foster Pepper as lead inter partes review counsel, as well as co-counsel Boies Schiller & Flexner LLP and Heim Payne & Chorush LLP.

Foster Pepper was pleased to be a part of this unprecedented and rare feat and to represent Roy-G-Biv in successfully defending its patents.

 

*  See Terry Rea, Practising Law Institute presentation, “The First 18 Months of Post-Grant Challenges at the Patent Trial and Appeal Board (PTAB)”, from USPTO Post-Grant Patent Trials 2014 (April 29, 2014) (transcript available here)