`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 54
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` Entered: January 28, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RICOH AMERICAS CORPORATION and XEROX CORPORATION,
`Petitioner,
`
`v.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2013-00302
`Patent 7,986,426 B1
`_______________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`

`

`IPR2013-00302
`Patent 7,986,426 B1
`
`
`I. BACKGROUND
`In a Final Written Decision, we determined, by a preponderance of evidence,
`that Petitioner had shown that claims 1–5 and 7–11 of U.S. Patent No. 7,986,426
`B1 were unpatentable, but had not shown that claim 6 was unpatentable. Paper 52.
`In its Rehearing Request, Petitioner requests the Board to withdraw “the finding
`that claim 6 of U.S. Patent No. 7,986,426 B1 (Ex. 1001 “’426 Patent”) is not
`unpatentable over Salgado (Ex. 1005).” Paper 53, 1 (“Req. Reh’g.”). For the
`reasons that follow, we deny the requested relief.
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`§ 42.71(d), which provides, in relevant part, the following:
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the
`decision. The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, opposition,
`or a reply.
`
`
`II. DISCUSSION
`Petitioner has not shown that we overlooked or misapprehended a previously
`addressed matter that warrants the requested relief. Petitioner’s contention reduces
`to the assertion that Petitioner showed by a preponderance of evidence in its
`Petition that Salgado discloses the startup limitation recited in claim 6.
`Petitioner contends that the Board interpreted the term “startup” too
`narrowly in reliance on Patent Owner’s argument: “[Patent Owner’s] argument
`implies that the term ‘startup’ applies to a specific system or component, which –
`under the BRI – it does not.” Req. Reh’g 8–9. According to this contention,
`Petitioner “respectfully request[s] that the Board reconsider the scope of the
`‘startup’ limitation, and find that it encompasses reading a list upon startup of a
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`process that uses items on the list – which is expressly disclosed by Salgado.”
`Reh’g. Req. 10.
`Notwithstanding the contentions, the Petition does not construe the term
`“startup” explicitly. Under 37 C.F.R. § 42.104(b) (3) & (4), the Petition must
`“identify . . . (3) [h]ow the challenged claim is to be construed. . . . [and] (4)
`“[h]ow the construed claim is unpatentable under the statutory grounds specified . .
`. . The Petition must specify where each element of the claim is found in the prior
`art patents or printed publications relied upon.”
`Claim 6 recites “wherein the server module includes . . . a list of said input,
`output, client, process and server modules that can be used in said data
`management system, said list being read on startup.” Claim 6 depends from claim
`5, which recites a “data management system” that includes “at least one processor”
`that “implement[s]” a “software application” that includes “at least one” server
`module. In other words, claim 6 logically and implicitly requires “said list [of said
`modules as recited in claim 5] being read on startup” to refer to the startup of a
`module, processor, or system, in claim 5 that either accesses or contains the list:
`i.e., either the server module, at least one processor, or the management system.
`Such a reading is consistent with the ’302 Patent Specification. See, e.g., Ex. 1001,
`col. 72, ll. 46–47 (“The Server Modules read[] this list on startup . . . .”); col. 16, ll.
`55–61 (implying either startup of the server module or management system).
`In other words, in claims 5 and 6, the “server module” is part of the recited
`software application. Therefore, the recited startup implies invoking the software
`server module, which reads the list upon such an invocation, or the recited startup
`implies powering up the management system or the processor that employs the
`software server module that reads the list upon power up. See claims 5 and 6.
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`
`Petitioner maintains that it “cit[ed] to the claim chart for element 10.2a-b” to
`address the “startup” limitation. See Reh’g Req. 10, 10–12 (purporting to read
`claim 6 on Salgado, citing Pet. 38, 40). However, claim 10 elements “10.2a-b” do
`not recite a startup limitation, as the Final Written Decision finds and determines.
`See Paper 52, 49. Petitioner also explains that “[t]he Petition relied on Salgado at
`column 16, lines 58–67 to address the ‘startup’ limitation.” Reh’g Req. 10 (citing
`Pet. 38, 40). That is not correct. The column 16 citation appears on page 40,
`which not only includes another citation to column 14, but specifically addresses
`elements of claim 10, which does not recite a startup limitation, as noted above.
`Petitioner also notes, in the Rehearing Request, that the cited column 16
`passage refers to Figure 8 in Salgado, and argues as follows: “the very first step of
`Fig. 8, teaches ‘provide client with metaphor elements.’” Reh’g Req. 10.
`Petitioner then explains that “[t]hus, in the very first step of the process in FIG. 8
`of Salgado – i.e., on ‘startup’ of the process to build a document workflow –
`metaphor elements are read from a list, which meets the ‘startup’ limitation of
`claim 6.” Id. at 11. Petitioner also relies on the Board’s finding that Salgado’s
`common file includes a list. See id. at 11–12.
`However, Petitioner fails to point the Board to where its Petition discusses
`Figure 8. Pages 38 and 40 of the Petition do not refer to Figure 8, and do not
`discuss a “first step” or “startup.” Instead, Petitioner presents this explanation for
`the first time in its Rehearing Request. In light of the issue Patent Owner presents
`with respect to claim 6 as discussed further below, the Petition does not provide a
`discernable explanation regarding the startup limitation that satisfies the ultimate
`burden of showing unpatentability. Page 40 of the Petition quotes a passage in
`Salgado about metaphor elements that the Petition maps to claim 10 elements
`10.2a-b. Petitioner does not point to where its Petition explains clearly that
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`IPR2013-00302
`Patent 7,986,426 B1
`
`providing a client with metaphor elements relates to reading Salgado’s common
`file on startup of anything, let alone startup of a server module, or a processor or
`management system implementing the module. In summary, Petitioner fails to
`point the Board to where the Petition asserts that “startup” in claim 6 corresponds
`to employing the first step of the process in Figure 8. Petitioner effectively
`requests the Board to fill in the gaps to satisfy its required final burden of proof
`regarding claim 6, because we made initial findings and instituted trial on claim 6
`based on a lesser burden at the institution stage.
`Assuming for the sake of argument that it would be proper for the Board to
`consider the new explanation by Petitioner, Petitioner fails to show persuasively
`how reading a list at a first step in the flow diagram of Figure 8 constitutes reading
`a list at startup as required by claim 6. Figure 8, step 170, does not represent a first
`step of a process. Rather, Figure 8 constitutes a part of a process that begins
`according to Figure 7 at a prior step 146. See Ex. 1004, Fig. 7, col. 14, ll.10–11
`(Figures “7–11 [represent] a technique for implementing a metaphorical job
`ticket/control system.”)
`Therefore, even if the flow diagram of Figure 8 somehow relates to the
`software server module of claim 6, and even if providing metaphor elements from
`a common file constitutes reading a list of the required modules recited in claim 6,
`it is possible, if not probable, that the sub-process represented by Figure 8 was
`invoked (i.e., started-up) prior to implementing step 170 of the process, i.e., even if
`step 170 represents a first step of the sub-process represented by Figure 8.
`According to Salgado, “[i]n one embodiment [that Petitioner appears to rely upon],
`the user is provided with a selection from a plurality of metaphor elements. These
`may be provided by way of a common file which is accessible to users across the
`network.” Ex. 1004, col. 16, ll. 64–67. Hence, even if the common file is read at
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`step 170, step 170 may represent a step that provides a client with a selection to
`read the common file. Reading the common file via such a selection would,
`therefore, occur after the startup of the sub-process of Figure 8. Also, even if step
`170 represents the first step of a sub-process, that step does not necessarily occur at
`the startup of that sub-process. Petitioner fails to explain how a first step
`necessarily occurs at a startup of any process. Moreover, in Salgado, the overall
`process represented by Figures 7–11 may have included a startup of the sub-
`process represented by Figure 8––i.e., prior to implementing step 170.
`On this record, Petitioner fails to show, by a preponderance of evidence, that
`step 170 of Figure 8 necessarily represents a startup of a process that reads on a
`startup of a software server module, processor, or management system, as recited
`in claim 6. In addition, Petitioner’s overly-broad construction assumes, without
`adequate support, that a listed first step of Salgado’s sub-process of Figure 8
`necessarily occurs at a startup of that Figure 8 sub-process or the overall process of
`Figures 7–11. In any event, a possibility of startup of the sub-process of Figure 8
`before step 170 results in reading the common file (which may contain the list of
`recited modules) precludes a finding of anticipation based on a preponderance of
`evidence.
`In a related argument, Petitioner also asserts that the Board improperly
`reconsidered its position that Salgado anticipates claim 6 for purposes of instituting
`trial. See Reh’g. Req. 1–3, 6–7, 13. Petitioner also maintains that Patent Owner
`failed to make a specific argument regarding Salgado and the “startup” limitation.
`See id. at 6–8, 13. Petitioner acknowledges that Patent Owner made a specific
`argument regarding XNS and the same startup limitation in claim 6, and a more
`general argument about Salgado and the recited list in claim 6. See id. at 6–7.
`Notwithstanding Petitioner’s assertions, therefore, Patent Owner provided fair
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`notice after Institution that the startup limitation of claim 6 became an issue.
`Petitioner’s burden shifts during the trial from a “reasonable likelihood” threshold
`at the Institution Decision stage, 35 U.S. C. § 314(a), to a “preponderance of the
`evidence” standard to support a Final Written Decision in its favor, see 35 U.S.C.
`§ 316(e).
`In other words, Patent Owner fairly raised at least a claim construction and
`patentability issue regarding the claim 6 “startup” limitation in its Patent Owner
`Response. Petitioner failed to respond to the argument in its Reply. Therefore,
`Petitioner failed to establish how Salgado discloses the “startup” limitation by a
`preponderance of the evidence. By waiting until the Rehearing Request to explain
`purportedly how Salgado discloses the “startup” limitation under its newly
`articulated reliance on Figure 8 of Salgado, and not responding, in its Reply to
`Patent Owner’s implicit construction set forth the Patent Owner Response,
`Petitioner failed to satisfy its burden under 35 U.S. C. § 316(e).
`In essence, Petitioner argues that Patent Owner’s implicit claim construction
`argument only applies to an analysis of XNS and claim 6. As indicated, we find
`that Patent Owner’s argument fairly raised the issue of the patentability of claim 6
`premised on reading the list on startup. See id. Therefore, in effect, Petitioner
`requests the Board to apply Patent Owner’s claim construction only to XNS
`regarding the startup limitation, and then ignore whether Salgado discloses the
`same limitation under Patent Owner’s construction. As discussed above, a close
`inspection of the Petition for an explanation of the startup limitation in response to
`Patent Owner’s implicit claim construction argument shows that the Petition fails
`to address the limitation that satisfies Petitioner’s final burden of showing
`anticipation by Salgado.
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`
`Petitioner also argues that it was “deprived of the opportunity to show that
`. . . claim 6 [would have been] obvious in light of Salgado’s teachings.” Reh’g.
`Req. 13–14. To the contrary, the Board did not deprive Petitioner of adequately
`filing its Petition in any manner, including an obviousness showing involving
`Salgado. Petitioner fails to point out where the Petition explains how Salgado
`renders claim 6 obvious. Something that was not in the Petition could not have
`been overlooked or misapprehended.
`Petitioner also generally contends that “Petitioners and Petitioners’ expert
`explained [that certain references] have technical strengths over the references
`asserted in the other grounds.” Reh’g Req. 2. For example, Petitioner asserts that
`“the Petition stated that ‘Ohkubo is not merely cumulative and is particularly
`relevant for describing how networked machines can interact in a manner that is
`transparent to an end user.’” Reh’g Req. 5 (quoting Pet. 24). Petitioner also urges
`that it quoted Ohkubo to address the startup limitation, and the Board improperly
`deprived Petitioner of “review of other highly relevant grounds,” because the
`Board deemed grounds based on Ohkubo (and other grounds) to be redundant to
`the Salgado and XNS grounds. See Reh’g Req. 13.
`To the contrary, Petitioner was not deprived of an opportunity to explain in
`its Petition why Ohkubu is a better reference with respect to the “startup”
`limitation. Notwithstanding the citations to Ohkubo, it is not clear how describing
`“transparent” interactions between “networked machines,” which Petitioner
`discusses as relevant to an asserted lack of redundancy, relates to the startup
`limitation at issue. See Reh’g Req. 5. Even if Petitioner somehow implied that
`Ohkubo was superior in terms of the startup limitation, that limitation is not recited
`in isolation as explained above––the Petition does not specify clearly how
`Ohkubu’s “scanner table,” as cited in the Petition, corresponds to the recited list of
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`modules that must be read on startup according to claim 6. See Reh’g Req. 13
`(citing Pet. 29, 31, 52; Ex. 1004, col. 3:32–35).
`Toward that end, Petitioner characterizes claim 6 as “including the
`limitations of independent claim 5, . . . a lengthy and convoluted claim with over
`500 words and many limitations.” Id. at 1. Petitioner also explains that it
`advanced seven different grounds of rejection, and the Board instituted on two of
`the listed grounds. Id. at 3–4. Given Petitioner’s characterization and the breadth
`of the challenges, it is not clear how the Board could have been expected to predict
`a trial issue and weigh relative strengths and weaknesses among seven different
`grounds regarding the “said list being read on startup” limitation without adequate
`guidance by Petitioner. Accordingly, Petitioner does not show that the Board
`overlooked an adequate comparison of the relative strengths and weaknesses of the
`references in a relevant manner.
`Similarly, Petitioner’s obviousness allegations fail to point out how
`Petitioner addresses the startup limitation of claim 6 with a requisite showing. The
`obviousness contentions do not specifically address claim 6. See Pet. 52–59. For
`example, the Petition acknowledges with respect to claim 5, from which claim 6
`depends, that Ohkubo “may not explicitly disclose” the recited modules. Pet. 53.
`Therefore, it is not clear how Ohkubo discloses or renders obvious a list of
`modules that are not disclosed explicitly, let alone reading the recited list on
`startup. The Petition fails to apprise the Board as to how Ohkubo or any other
`reference has relevant strength relative to XNS and Salgado regarding the startup
`limitation.
`Based on the foregoing discussion, the Rehearing Request fails to show an
`overlooked or misapprehended previously addressed matter.
`
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`IPR2013-00302
`Patent 7,986,426 B1
`
`
` III. CONCLUSION
`Based on the foregoing discussion, we deny Patent Owner’s request to
`modify our claim construction and withdraw our finding that Petitioner failed to
`meet the burden of showing that Salgado anticipates claim 6.
`IV. ORDER
`For the reasons given, it is ORDERED that the Patent Owner’s Rehearing
`Request is denied.
`For Petitioner:
`
`Michael Specht
`Jason Eisenberg
`H. Keeto Sabharwal
`Dennies Varughese
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`mspecht-PTAB@skgf.com
`jasone-PTAB@skgf.com
`keetos-PTAB@skgf.com
`dvarughe-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`
`
`For Patent Owner:
`
`Vivek Ganti
`N. Andrew Crain
`Scott Horstemeyer
`Steven G. Hill
`THOMAS | HORSTEMEYER, LLP
`vg@hkw-law.com
`andrew.crain@thomashorstemeyer.com
`scott.horstemeyer@thomashorstemeyer.com
`sgh@hkw-law.com
`
`
`
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