Filed on Behalf of MPHJ TECHNOLOGY INVESTMENTS, INC
`By: Scott A. Horstemeyer (scott.horstemeyer@thomashorstemeyer.com)
`
`THOMAS | HORSTEMEYER, LLP
`
`400 Interstate North Parkway, SE
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`Suite 1500
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`Atlanta, Georgia 30339
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`Tel: (770) 933-9500
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`Fax: (770) 951-0933
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`
`RICOH AMERICAS CORPORATION AND XEROX CORPORATION,
`
`Petitioners
`
`V.
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`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2013-00302
`Patent 7,986,426
`____________
`
`
`
`
`MOTION TO AMEND UNDER 37 C.F.R. § 42.121
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`By: Scott A. Horstemeyer (scott.horstemeyer@thomashorstemeyer.com)
`
`THOMAS | HORSTEMEYER, LLP
`
`400 Interstate North Parkway, SE
`
`Suite 1500
`
`Atlanta, Georgia 30339
`
`Tel: (770) 933-9500
`
`Fax: (770) 951-0933
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RICOH AMERICAS CORPORATION AND XEROX CORPORATION,
`
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2013-00302
`Patent 7,986,426
`____________
`
`
`
`
`MOTION TO AMEND UNDER 37 C.F.R. § 42.121
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`I.
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`SUMMARY OF MOTION TO AMEND
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`This motion to amend is submitted in accordance with 37 C.F.R. § 42.121.
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`
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`As required 37 C.F.R. § 42.121(a), Patent Owner has conferred with the Board
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`during the initial conference call held on Dec. 17, 2013 with regard to filing this
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`motion. (See [Paper 10] at p. 2). In the event that claim 1 of U.S. Patent No.
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`7,986,426 (the ’426 patent) is found unpatentable, Patent Owner moves for claim
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`12, presented herein, to be substituted for claim 1. One claim, claim 12, is
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`proposed as a substitute for original claim 1. Accordingly, this motion satisfies the
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`general presumption that “only one substitute claim would be needed to replace
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`each challenged claim.” 37 C.F.R. § 42.121(a)(3). Support for claim 12 from “the
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`original disclosure of the patent” is provided below. See 37 C.F.R. § 42.121(b)(1)-
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`(2).
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`
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`II. CLAIM LISTING
`The proposed substitute claim 12 is shown in markup form as compared to
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`the original claim 1.
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`12. (Proposed substitute for claim 1) A computer data
`management system including at least one of an electronic image,
`graphics and document management system comprising (a) at least
`one scanner, digital copier or other multifunction peripheral, (b) an
`electronic filing system in communication with said scanner, digital
`copier or other multifunction peripheral for receiving and storing at
`1
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`
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`least one of said electronic image, electronic graphics and electronic
`document; and (c) at least one of printer service and facsimile service
`in communication with said electronic filing system via local area
`network or wide area network for outputting at least one of said
`electronic image, electronic graphics and electronic document as a
`printed hardcopy or printed fax, said computer data management
`system being capable of transmitting at least one of an electronic
`image, electronic graphics and electronic document to a plurality of
`external destinations including one or more of external devices and
`applications responsively connectable to at least one of locally and via
`Internet, comprising:
`said at least one scanner, digital copier or other multifunction
`peripheral capable of rendering at least one of said electronic image,
`electronic graphics and electronic document from a paper hardcopy;
`at least one memory storing a plurality of interface protocols for
`interfacing and communicating;
`at least one processor responsively connectable to said at least
`one memory, and implementing the plurality of interface protocols as
`a software application for interfacing and communicating with the
`plurality of external destinations including the one or more of the
`external devices and applications,
`wherein said software application for interfacing and
`communicating includes:
`at least an input software module comprising a scanner
`software module;
`a plurality of output software modules, each output
`software module managing writing at least one electronic image,
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`
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`2
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`
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`electronic graphics and electronic document to a respective third party
`software application;
`a process software module applying imaging and non-
`imaging processes to said at least one electronic image, electronic
`graphics and electronic document as it is being copied;
`a client software module presenting a user with said user
`interface, including target contact information relating to at least one
`of said plurality of external destinations and performing an operation
`when said user presses GO; and
`a server software module which is in communication
`with said input, output, process and client modules, and also in
`communication via one or more of said plurality of interface protocols
`with a plurality of third party software applications, including
`commercially available third party software applications;
`wherein after said user selects an external destination from said
`user interface and presses GO to invoke an automated GO process, the
`computer data management system includes integration of at least one
`of said electronic image, electronic graphics and electronic document
`using software so that said electronic image, electronic graphics and
`electronic document gets automatically and seamlessly replicated and
`transmitted to at least one of said plurality of external destinations;
`wherein once said user presses GO, said input software module,
`said process software module, and at least one of said plurality of
`output software modules are sequentially initiated, resulting in at least
`one of said electronic image, electronic graphics and electronic
`document being automatically inserted into at least one third party
`software application, without the need of further manipulation of said
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`
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`3
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`
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`computer data management system or said third party software
`application by any person including said user;
`wherein after at least one of said electronic image, electronic
`graphics and electronic document is automatically inserted into at
`least one third party software application, said software application for
`interfacing and communicating transmits update information, said
`update information including at least one result of the interaction of at
`least one of said electronic image, electronic graphics and electronic
`document with each of said input software module, said at least one of
`said plurality of output software modules, and said processing
`software module;
`wherein the transmittal of at least one of said electronic image,
`electronic graphics and electronic document to at least one of said
`plurality of external destinations is via the public Internet;
`wherein at least one of said plurality of external destinations is
`a commercially available third party software application;
`wherein said third party software application is loaded onto a
`general purpose computer; and
`wherein said third party application is an existing business
`application.
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`III. DISCUSSION OF PROPOSED CHANGES
`Proposed independent claim 12 includes all the elements of original
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`independent claim 1, as well as additional elements, as shown above. In particular,
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`proposed claim 12 narrows the scope by adding the element of outputting to “an
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`electronic filing system,” and “at least one of printer service and facsimile service”
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`4
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`
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`in addition to automatically inserting a document into “at least one third party
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`software application.” Substitute claim 12 also claims a software application that
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`comprises “at least an input software module,” “a plurality of output software
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`modules,” “a process software module,” and “a server software module.”
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`Substitute claim 12 is further narrower than original claim 1, as substitute claim 12
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`includes the limitation that the electronic image is transmitted over the public
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`Internet. Finally, substitute claim 12 adds the limitation of the third party software
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`application being loaded onto a general purpose computer, where the third party
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`software application is an existing business software application.
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`
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`Because substitute claim 12 includes all the elements of original claim 1,
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`substitute claim 12 satisfies the statutory requirement that the changes “may not
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`enlarge the scope of the claims of the patent.” 35 U.S.C § 316(d)(3); see also 37
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`C.F.R § 42121(a)(2)(ii). The proposed additional elements in substitute claim 12
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`find support in the original disclosure of the ’426 patent (Ex. 1001). See 37 C.F.R.
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`§§42.121(b)(1)-(2). Support for each of the proposed additional elements of
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`substitute claim 12 is provided below with reference to the ’426 patent. (See also
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`Weadock Decl. /Ex 2003 at § IV(A)).
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`
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`Support for the proposed additional element relating to “at least one scanner,
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`digital copier or other multifunction peripheral” is found in at least FIG. 28, 5:51-
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`53, 6:61, 8:9-11 of the ’426 patent. Support for the proposed additional element
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`5
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`relating to “an electronic filing system” is found in at least FIG. 28 and 6:61-64 of
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`the ’426 patent. Support for the proposed additional element of “at least one of
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`printer service and facsimile service” is found in at least FIG. 28 and 8:16-23 of
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`the ’426 patent. Support for the proposed additional element relating to rendering
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`“from a paper hardcopy” is found in at least 5:48-55 and 6:64-65 of the ’426
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`patent. Support for the proposed additional element relating to a software
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`application that includes “an input software module comprising a scanner software
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`module” is found in at least 8:8-11 of the ’426 patent. For example, the ’426
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`patent discloses an “Input Module [that] manages paper or electronic paper
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`entering VC. This module manages imaging devices to input paper through
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`scanners.” (The ’426 patent/ Ex. 1001 at 8:8-11).
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`
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`Support for the proposed additional element relating to a software
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`application that includes “a plurality of output software modules” is found in at
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`least 8:16-23 and 9:23-26 of the ’426 patent. For example, the ’426 patent
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`discloses that “[f]or each third-party application there is a unique pair of Input and
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`Output Modules that understand the third party application.” (The ’426 patent/
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`Ex. 1001 at 9:23-26 – emphasis added). Support for the proposed additional
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`element relating to a software application that includes “a process software module
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`applying imaging and non-imaging processes” is found in at least 8:24-33 of the
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`’426 patent. Support for the proposed additional element relating to a software
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`6
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`
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`application that includes “a client software module presenting a user with said user
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`interface” is found in at least 8:33-41, 48:55-63, and 79:42-51, of the ’426 patent.
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`For example, the ’426 patent is directed to a user who is “interacting with VC's
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`Client Module in order to execute a copy operation” where a “GO button is
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`pressed.” (The ’426 patent/ Ex. 1001 at 48:55-63– emphasis added). Support for
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`the proposed additional element relating to a software application that includes “a
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`server software module which is in communication with said input, output, process
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`and client modules” is found in at least 8:41-44 and 9:44-57, of the ’426 patent.
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`Support for the proposed additional element relating to the software
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`application being “commercially available,” being “loaded onto a general purpose
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`computer,” and being “an existing business application” is found in at least 68:26-
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`33, of the ’426 patent, which discloses copying into “business applications (such as
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`Microsoft Office, Microsoft Exchange, Lotus Notes.” Further support is found in
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`69:66-70:1 and 10:29-34. Support for the proposed additional element of “after
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`said user selects an external destination from said user interface and presses GO to
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`invoke an automated GO process, the computer data management system includes
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`integration” is found in at least 6:61-7:3 and 69:32-41, of the ’426 patent. For
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`example, after the user selects a “To” option and presses GO, “all translations
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`between device and applications are accomplished automatically and seamlessly.”
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`7
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`(The ’426 patent/ Ex. 1001 at 6:36-40 (describing GO as similar function to
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`pressing the Go button on a copier)).
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`Support for the proposed additional element relating to the software modules
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`being “sequentially initiated” is found in at least 72:65-73:4 of the ’426 patent.
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`Support for the proposed additional element relating to the software modules being
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`“automatically inserted into at least one third party software application, without
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`the need of further manipulation of said computer data management system or said
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`third party software application by any person including said user” is found in at
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`least 69:32-41; 6:44-46; 5:50-59; and 7:27-39 of the ’426 patent.
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`Support for the proposed additional element relating to transmitting update
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`information that includes “at least one interaction” is found in at least 72:65-73:4
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`of the ’426 patent. For example, 73:1-4 of the ’426 patent states that the “VC
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`updates its Client Module as well as the results of each Module acting” which
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`means that update information is necessarily transmitted.” One of ordinary skill in
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`the art would understand that this necessarily means that update information is
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`transmitted. Support for the proposed additional element relating to transmitting
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`“via the public Internet” is found in at least 6:36-40 and 6:61-64 of the ’426 patent.
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`8
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`
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`IV. ALLOWABILITY OF PROPOSED CLAIM 12
`Proposed claim 12 includes a number of narrowing features that are
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`
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`patentable distinct from the cited art as well as prior art known by the Patent
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`Owner. (See also Weadock Decl. /Ex 2003 at § IV(B)).
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`A.
`
`The proposed element of “an electronic filing system,” “at
`least one of printer service and facsimile service,” and “a
`third-party software application” all define over the prior
`art
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`
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`Proposed claim 12 is directed to a computer data management system that is
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`capable of sending an electronic document to all of these three elements. No other
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`prior art system discloses this capability. For example, XNS mentions a file
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`server, a print server, and a facsimile printing service. Even if these servers or
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`services disclose an electronic filing system, a printer service, and a facsimile
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`service, they do not additionally disclose “a third party software application.” In
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`this respect, a third-party software application is not an electronic filing system, a
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`printer service, or a facsimile service.
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`
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`B.
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`The proposed element of “a plurality of output software
`modules, each output software module managing writing at
`least one electronic
`image, electronic graphics and
`electronic document to a respective third party software
`application” defines over the prior art
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`For reasons stated in the Patent Owner Response and Opposition to Petition,
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`the prior art does not teach a software application that includes an output module
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`
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`9
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`
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`that manages data to a third party software application. Substitute claim 12 further
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`narrows this limitation to include a plurality of output software modules that
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`manage respective third party software applications.
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`There is no disclosure in the prior art of a modular software application that
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`teaches the limitations of substitute claim 12. While there is no prior art known to
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`Patent Owner with regard to this proposed additional element, the closest reference
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`is the SJ5 Product Manual (Ex. 2004). SJ5 discloses a “Link Bar” that includes
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`links to applications. (See SJ5/ Ex. 2004 at p. 89). According to SJ5, links that are
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`“available to the PaperPort software depend on the applications installed on your
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`computer. The PaperPort software automatically displays the link icons.” (See id.).
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`Although SJ5 discloses a plurality of applications, SJ5 does not teach a plurality of
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`output modules that write to respective third party software applications.
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`Moreover, there is no disclosure in SJ5 that suggests a modular software
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`application.
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`C.
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`The proposed element of “a client software module
`presenting a user with said user interface, including target
`contact information relating to at least one of said plurality
`of external destinations” defines over the prior art
`
`While there is no prior art known to Patent Owner with regard to this
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`proposed element, the closest reference is the GIS 150 Reference (Ex. 1003). GIS
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`150 discloses a control panel that “offers a simple means for the operator to select
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`one of five possible pre-defined destinations for the image.” (See GIS 150/ Ex.
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`
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`10
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`
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`1003 at p. 110). According to GIS 150, “[t]here can be a maximum of five
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`destinations from which to choose. The destination device can be either a file
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`server or a print server (8700/9700).” (GIS 150/ Ex. 1003 at p. 148). The location
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`of a device or a printer does not teach “target contact information.” For example,
`
`according to the ’426 patent, “contact” refers to customers. (The ’426 patent/ Ex.
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`1001 2:52-58). Under the broadest reasonable interpretation in light of the
`
`specification, “contact information” describes individuals, such as, for example,
`
`customers. Accordingly, the server destinations of GIS 150 does not disclose the
`
`“target contact information” limitation of the proposed claim element.
`
`D.
`
`The proposed element of “wherein once said user presses
`GO, said input software module, said process software
`module, and at least one of said plurality of output software
`modules are sequentially initiated” defines over the prior
`art
`
`There is no disclosure in the prior art of a modular software application that
`
`teaches the limitations of substitute claim 12. This proposed element further limits
`
`the modular design of the claimed software application such that the various
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`modules are “sequentially initiated” when a user presses GO. There are no
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`references known to Patent Owner that reads on this limitation.
`
`
`
`
`
`E.
`
`The proposed element of “said software application for
`interfacing
`and
`communicating
`transmits
`update
`information, said update information including at least one
`result of the interaction of at least one of said electronic
`
`11
`
`
`
`image, electronic graphics and electronic document with
`each of said input software module, said at least one of said
`plurality of output software modules, and said processing
`software module” defines over the prior art
`
`There is no disclosure in the prior art of a modular software application that
`
`teaches the limitations of substitute claim 12. While there is no prior art known to
`
`Patent Owner with regard to this proposed additional element, the closest art is the
`
`Salgado Reference. (Salgado/ Ex. 1005). Salgado discloses a user interface with a
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`display screen for displaying metaphor elements. (Id. at 8:3-6). Metaphor
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`elements describe the various components of a system. (Id. at 14:57-63). “[E]ach
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`device automatically informs the application server of its current status.”
`
`First, although devices send status information, Salgado’s status information
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`is not the same as the proposed “update information” because the status
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`information does not depend on any interaction. Second, Salgado’s status
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`information is intended for devices while the proposed “update information”
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`relates to each of the claimed software modules. A physical device does not
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`anticipate or render obvious a software module.
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`
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`12
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`
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`F.
`
`The proposed element of “wherein the transmittal of at least
`one of said electronic image, electronic graphics and
`electronic document to at least one of said plurality of
`external destinations is via the public Internet” defines over
`the prior art
`
`While there is no prior art known to Patent Owner with regard to this
`
`proposed additional element, the closest reference is the XNS Reference (Salgado/
`
`Ex. 1005). While XNS mentions the “internet,” The disclosure of the “lower-case
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`internet” in XNS is not enough to disclose the public, “big-I” Internet. (Weadock
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`Decl./ Ex. 2002 at ¶ 102). According to one of ordinary skill in the art, XNS’s
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`reference to “internet” refers simply to “an interconnection of networks.” (Id.).
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`The GIS 150 reference mentions an internet protocol. Specifically, GIS 150
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`states “Xerox Internet Transport Protocols (ITP) are the internet packet transport
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`protocols used uniformly across the variety of communication media, digital
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`processors, and office applications in Xerox Office Information Systems.” (GIS
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`150/ Ex. 1003 at p. 204). As noted above, GIS 150 is limited to Xerox Office
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`Information Systems rather than public networks like the public Internet.
`
`
`
`The proposed elements of “wherein at least one of said plurality of
`external destinations is a commercially available third party
`software application” and “wherein said third party application is
`an existing business application” define over the prior art
`
`This proposed element narrows the third party application to be an existing
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`business application that is commercially available. In this respect, the business
`
`
`
`13
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`
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`application must be in existence as a document is copied and “automatically
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`inserted” into the business application. The prior art discloses passively sending
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`documents to devices rather than inserting them into business applications that are
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`commercially available. For example, Salgado discloses a mail system. (Salgado/
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`Ex. 1005 at FIG. 6). However, Salgado fails to provide any description about the
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`mail system. Thus, sending a document to a mail system does not teach inserting
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`the document into an existing application (i.e., an application that is executing).
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`
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`V. CONCLUSION
`For at least the foregoing reasons, Patent Owner respectfully requests that
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`the Board grant this Motion to Amend and substitute claim 12 according to the
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`contingencies specified herein.
`
`Respectfully submitted,
`Thomas | Horstemeyer LLP
`
`
` / Scott A. Horstemeyer /
`
`
`
`Scott Horstemeyer
`Lead Counsel
`Attorney for Patent Owner
`Registration No. 34,183
`
` February 28, 2014
`
`
`Date
`
`
`
`14
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned herby certifies that a copy of the foregoing Patent Owner’s MOTION
`
`TO AMEND was served on counsel of record on February 28, 2014, and that this document was
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`filed through the Patent Review Processing System and served electronically via email.
`
`Michael D. Specht
`Jason D. Eisenberg
`H. Keeto Sabharwal (pro hac vice admittance)(Paper 19)
`Dennies Varughese
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.371.2600 (reception)
`202.371.2540 (facsimile)
`Mspecht-PTAB@skgf.com
`Jeisenbe-PTAB@skgf.com
`keetos-PTAB@skgf.com
`dvarughe-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`
`Respectfully submitted,
`Thomas | Horstemeyer LLP
`
`
` / Scott A. Horstemeyer /
`
`
`
`Scott Horstemeyer
`Lead Counsel
`Attorney for Patent Owner
`Registration No. 34,183
`
`
`
` February 28, 2014
`
`
`Date
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