ABB Inc v. Northwestern University

1. Case Identification

• Case #: IPR2022-00296
• Patent #: 7,120,508
• Filed: December 10, 2021
• Petitioner(s): ABB Inc., Kuka AG, and Reis Robotics USA Inc.
• Patent Owner(s): Northwestern University
• Challenged Claims: 1-3, 7, 10, and 12

2. Patent Overview

• Title: Configuration System for an Intelligent Assist System
• Brief Description: The ’508 patent describes a configuration system for an "intelligent assist system" (IAS), also referred to as an "intelligent assist device" (IAD). The system uses a modular architecture of programmable components to provide motion control for a payload, assisting a human operator.

3. Grounds for Unpatentability

Ground 1: Obviousness over Backes and Peshkin - Claims 1-3, 10, and 12 are obvious over Backes in view of Peshkin.

• Prior Art Relied Upon: Backes (Patent 5,341,459) and Peshkin (a 1999 journal article titled "Cobots").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Backes, which discloses a telerobotic control system, teaches most elements of the challenged claims, including a host computer system with a graphical user interface (GUI) for inputting parameters, a remote module with a computational node, a communication link, and visual status indicators. However, Petitioner contended Backes does not explicitly disclose an "intelligent assist system" that physically interacts with a human operator. Peshkin, an article co-authored by the ’508 patent's inventors, was argued to remedy this deficiency by disclosing "cobots" (collaborative robots), a type of intelligent assist device designed for direct, safe interaction with human workers via software-defined "virtual surfaces" to guide a shared payload.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Backes with Peshkin to improve the functionality of the telerobot system for applications requiring close human-robot interaction, such as repairing a satellite in space. Petitioner asserted that because Backes and Peshkin are from the same field of industrial robotics and address related problems of robot control and human interaction, the combination would have been a natural and predictable integration of known technologies.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because both references describe known technologies with predictable behaviors, and the ’508 patent itself admits that intelligent assist systems were known in the art.

Ground 2: Obviousness over Backes, Peshkin, and The Handbook - Claim 7 is obvious over Backes in view of Peshkin and The Handbook.

• Prior Art Relied Upon: Backes (Patent 5,341,459), Peshkin (1999 journal article), and The Handbook (a 1999 textbook titled Handbook of Industrial Robotics).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Backes and Peshkin to address the additional limitations of dependent claim 7, which requires the intelligent assist system to comprise "a second module with a second computational node" and communication between the host computer and this second node via a "second communication link." Petitioner argued that The Handbook, a standard treatise on industrial robotics, explicitly teaches that a robot controller can contain multiple computational nodes (e.g., multiple servo CPUs) and that a host computer can communicate with various nodes via separate communication links, as shown in its figures illustrating robot cell control architecture.
  • Motivation to Combine: A POSITA would have been motivated to consult The Handbook for its general principles and common industry knowledge when implementing or improving the system disclosed in Backes. The Handbook was presented as a foundational reference designed to be used by engineers to solve problems in robotics, making its teachings on modular controller architecture directly applicable to the combined Backes/Peshkin system.
  • Expectation of Success: Petitioner asserted a high expectation of success, as combining the modular controller design from The Handbook with the telerobotic system of Backes was a straightforward application of well-documented principles to a known system.

• Additional Grounds: Petitioner also asserted that claims 1-3, 10, and 12 are anticipated by Backes alone under a broader claim construction of "intelligent assist system" (Ground 3), and that claim 7 is obvious over Backes and The Handbook, without Peshkin, under the same broader construction (Ground 4).

4. Key Claim Construction Positions

• Petitioner argued that the term "intelligent assist system" is a central, limiting element of the preamble of claim 1 and dedicated significant analysis to its construction.
• Narrower Construction (Petitioner's proposed construction): Based on the specification and file history, Petitioner proposed that "intelligent assist system" should be construed as "a single or multiple axis computer controlled machine with a hybrid programmable computer-human control system that interacts with a human operator to assist in moving a payload and provide human strength amplification, guiding surfaces, or both."
• Broader Construction (Patent Owner's asserted construction): Petitioner noted that in parallel litigation, the Patent Owner asserted a broader construction where an "intelligent assist system" is one that can interact with a human through semi-autonomous behavior as well as fully autonomous operation.
• Petitioner argued that its obviousness grounds render the claims unpatentable under either construction, while its anticipation ground (Ground 3) relies on the Patent Owner's broader construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate.
• Stay and Trial Date: Petitioner stated its intent to seek a stay in the parallel district court litigations (in D. Del. and N.D. Ill.) if the inter partes review (IPR) was instituted. It was emphasized that both litigations were in very early stages, with no Markman hearings or trial dates set.
• Overlap: Petitioner argued against denial by noting it had stipulated that, if the IPR is instituted, it will not pursue the same invalidity grounds in the district court proceedings. Furthermore, the prior art in the district court was expected to include a substantial number of references not at issue in the IPR, reducing the overlap.
• Other Considerations: Petitioner contended that denial would be inefficient, as the challenged claims are clearly invalid, the prior art references were never considered during prosecution, and forcing the parties through years of litigation to reach an invalidity finding would waste judicial and party resources.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-3, 7, 10, and 12 of the ’508 patent as unpatentable.