Filed on Behalf of MPHJ TECHNOLOGY INVESTMENTS, INC
`By: Scott A. Horstemeyer (scott.horstemeyer@thomashorstemeyer.com)
`
`THOMAS | HORSTEMEYER, LLP
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`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
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`V.
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`MPHJ TECHNOLOGY INVESTMENTS, LLC,
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`Patent Owner
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`____________
`
`Case IPR2013-00302
`Patent 7,986,426
`____________
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`
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`SUBSTITUTE PATENT OWNER RESPONSE AND OPPOSITION TO
`PETITION PURSUANT TO 37 C.F.R. § 42.120
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`

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`Case IPR2013-00302
`Patent No. 7,986,426
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`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`
`
`
`I.
`
`II. TECHNOLOGY BACKGROUND .............................................................. 2
`
`III. APPLICABLE LEGAL PRINCIPLES ....................................................... 3
`
`A. A Person of Ordinary Skill in the Art .................................................. 3
`
`B.
`
`The Petitioner’s Burden of Proof ......................................................... 3
`
`C. Novelty under 35 U.S.C. § 102 ............................................................ 4
`
`D. Using Inherency in an allegation of invalidity under 35 U.S.C. §
`102 ........................................................................................................ 4
`
`IV. CLAIM CONSTRUCTION .......................................................................... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`“applications” ....................................................................................... 5
`
`“third-party software application” ........................................................ 6
`
`“module” .............................................................................................. 7
`
`“integration of at least one of said electronic image, electronic
`graphics and electronic document” / “integration of one or more of
`said electronic image, electronic graphics and electronic
`document” ............................................................................................ 8
`
`E.
`
`“dynamically combining” .................................................................... 8
`
`V. CLAIMS 1-11 ARE PATENTABLE OVER XNS ...................................... 9
`
`A. XNS does not anticipate the element of “implementing the
`plurality of interface protocols as a software application for
`interfacing and communicating with the plurality of external
`destinations,” as recited by claims 1-5 ............................................... 12
`
`B. XNS does not anticipate the element of “at least one memory
`storing a plurality of interface protocols for interfacing and
`communicating,” as recited by claims 1-5 ......................................... 16
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`C. XNS does not anticipate the element of “integration of one or
`more of said electronic image, electronic graphics and electronic
`document into a destination application,” as recited by claim 2 or
`“integrating electronic images into existing applications,” as
`recited by claim 11 ............................................................................. 17
`
`D. XNS does not anticipate “adding at least one of electronic
`document, data and paper processing means via a single
`programming step,” as recited by claim 4 or “adding at least one
`of electronic document and paper processing with a single
`programming step,” as recited by claim 9 .......................................... 22
`
`E.
`
`F.
`
`XNS does not anticipate a software application that includes
`modules (e.g., at least one input module, at least one output
`module, at least one process module, at least one client module,
`and at least one server module), as required by claim 5 .................... 23
`
`XNS does not anticipate a software application that includes at
`least one input module that manages “the electronic input from at
`least one third-party software application,” as recited by claim 5 ..... 25
`
`G. XNS does not anticipate a software application that includes at
`least one output module that manages “the output of the data to
`the third-party software application,” as recited by claim 5 .............. 26
`
`H. XNS does not anticipate a software application that includes at
`least one process module that applies “processing functionality to
`the data comprising the at least one of paper and electronic input
`as it is being copied,” as recited by claim 5 ....................................... 27
`
`I.
`
`J.
`
`XNS does not anticipate a software application that includes at
`least one server module “communicable with said at least one
`input, output, client, and process modules and external
`applications,” as recited by claim 5 .................................................... 29
`
`XNS does not anticipate a server module that includes a “maintain
`list of available module means for maintaining a registry
`containing a list of said input, output, and process modules that
`can be used in said computer data management system,” as recited
`by claim 6 or a “maintain list of available module means for
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`maintaining a list of input, output, and process modules,” as
`recited by claim 10 ............................................................................. 29
`
`K. XNS does not anticipate a “list being read on startup,” as recited
`by claim 6 ........................................................................................... 31
`
`L.
`
`XNS does not anticipate a server module that includes a “maintain
`complete document information means for maintaining
`information regarding a current file being copied, and saving the
`information in a document template file,” as recited by claim 6 ....... 31
`
`M. XNS does not anticipate a server module that includes “at least
`one server module application programmer interface,” as recited
`by claim 7 ........................................................................................... 32
`
`VI. CLAIMS 1-11 ARE PATENTABLE OVER SALGADO ........................33
`
`A. Dr. Melen applies the wrong standard for anticipation in declaring
`that Salgado anticipates the ’426 patent ............................................. 33
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Salgado does not anticipate “implementing the plurality of
`interface protocols as a software application for interfacing and
`communicating with the plurality of external destinations,” as
`recited by claims 1-5 .......................................................................... 35
`
`Salgado does not anticipate the element of “integration of one or
`more of said electronic image, electronic graphics and electronic
`document into a destination application,” as recited by claim 2 or
`“integrating electronic images into existing applications,” as
`recited by claim 11 ............................................................................. 37
`
`Salgado does not anticipate a software application that includes at
`least one input module that manages “the electronic input from at
`least one third-party software application,” as recited by claim 5 ..... 39
`
`Salgado does not anticipate a software application that includes at
`least one output module that manages “the output of the data to
`the third-party software application,” as recited by claim 5 .............. 40
`
`Salgado does not anticipate a software application that includes at
`least one process module that applies “processing functionality to
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`G.
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`the data comprising the at least one of paper and electronic input
`as it is being copied,” as recited by claim 5 ....................................... 40
`
`Salgado does not anticipate a server module that includes a
`“maintain list of available module means for maintaining a
`registry containing a list of said input, output, and process
`modules that can be used in said computer data management
`system,” as recited by claim 6 or a “maintain list of available
`module means for maintaining a list of input, output, and process
`modules,” as recited by claim 10 ....................................................... 41
`
`H.
`
`Salgado does not anticipate the element of “a capacity for adding
`at least one of electronic document and paper processing with a
`single programming step,” as recited by claim 9 ............................... 42
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`VII. CONCLUSION ............................................................................................43
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`
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`TABLE OF AUTHORITIES
`
`CASES
`Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 ...................................... 5
`Garmin Int’l., Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (P.T.A.B. 2013) . 4
`In re Aoyama, 656 F.3d 1293 .................................................................................... 5
`In re Oelrich, 666 F.2d 578 ....................................................................................... 5
`In re Robertson, 169 F.3d 743 ................................................................................... 5
`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 ...................................... 4, 10, 34
`See Ex Parte Givens, Appeal 2009-003414 ............................................................... 7
`Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364 ................................... 5
`
`STATUTES
`35 U.S.C.. § 102 ......................................................................................................... 4
`37 C.F.R. § 42.120 ..................................................................................................... 1
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`LIST OF EXHIBITS
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`MPHJ Ex. No.
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`Document Description
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`MPHJ Ex 2001 Declaration of Steven G. Hill
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`MPHJ Ex 2002 Declaration of Glenn Weadock
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`MPHJ Ex 2003 Deposition Transcript of Dr. Roger Melen
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`MPHJ Ex 2004
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`SJ5 Product Manual
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`MPHJ Ex 2005 API Definition
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`MPHJ Ex 2006
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`Prism 4.1
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`MPHJ Ex 2007
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`Exploding the Computer Myth
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`MPHJ Ex 2008 Dictionary of Computing
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`MPHJ Ex 2009 Newton’s Telecom Dictionary
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`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.120, Patent Owner MPHJ Technology
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`Case IPR2013-00302
`Patent No. 7,986,426
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`Investments, LLC, Inc., (hereafter “MPHJ”) hereby respectfully submits this
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`Substitute Response and Opposition to the Petition filed by Ricoh Americas
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`Corporation and Xerox Corporation (hereinafter “Ricoh”) for inter partes review
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`of claims 1-11 of U.S. Patent No. 7,986,426 (“the ‘426 patent”). This Substitute
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`Response and Opposition to the Petition is submitted in accordance with the
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`discussion of the teleconference call of March 7, 2014 held with the Patent Trial
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`and Appeal Board (“Board”). This Substitute Response and Opposition to the
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`Petition is submitted to correct minor paragraph citations to the Weadock
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`Declaration, which was filed as Ex. 2002. No other changes to the originally filed
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`Response and Opposition to the Petition are made through the submission of this
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`paper. Patent Owner respectfully requests that the Board” issue a final written
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`decision in favor of the Patent Owner on all Grounds as Petitioner fails to meet the
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`requirements of Chapter 31 of Title 35 of the United States Code.
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`
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`The Board granted the Petition to only the following grounds1:
`
`1. Claims 1-11 for anticipation by XNS (Ex. 1002); and
`
`
`1 No other grounds of unpatentability set forth in the Petition are authorized by the Board for the inter partes review
`as to claims 1-11 of the ’426 patent. (p. 36 of Board’s Decision Institution of Inter Partes Review [Paper 8])
`
`1
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`

`2. Claims 1-11 for anticipation by Salgado (U.S. Patent No. 5,872,569, Ex.
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`Case IPR2013-00302
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`1005)
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`
`
`II. TECHNOLOGY BACKGROUND
`The ‘426 patent is directed to a single software solution, referred to as a
`
`
`
`
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`virtual copier. While printers, fax machines, and scanners were in use in business
`
`environments, an extensible software solution that provides integration for
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`destination devices and destination applications did not exist at the time of
`
`invention.
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`
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`In some embodiments, the virtual copier disclosed in the ‘426 patent
`
`provides a standalone modular application that enables a user to scan (copy) paper
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`from a device to a third-party application, and to print (copy) the reference of an
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`image document from a third-party application to a printing device. (The ‘426
`
`patent/Ex. 1001 at 8:62-67). Specifically, unlike conventional copiers, the virtual
`
`copier includes a unique subsystem that can communicate with the other modules
`
`as well as third-party applications. (Id. at 8:44-48).
`
`
`
`An advantage over prior art systems is that the modular design of the virtual
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`copier allows the virtual copier to be independently extended, offering much
`
`greater flexibility than conventional copiers. (Id. at 47:56-59). For example, the
`
`virtual copier of the ’426 patent may support extensions that understand each third-
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`party application. (Id. at 49:6-10). This is accomplished through the Input and
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`Output Modules. (Id.). Additionally, there may be Client, Server, and even
`
`Process Modules that remain independent across third-party applications. (Id.). To
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`support outputting to a third-party application, an Output Module may be
`
`developed that is dedicated to that third-party application. (Id.) Likewise, an Input
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`Module is developed that is dedicated to a third-party application in order to
`
`support reading images from that application. (Id.).
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`
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`
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`
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`III. APPLICABLE LEGAL PRINCIPLES
`A Person of Ordinary Skill in the Art
`
`A.
`
`A person of ordinary skill in the art (POSITA) around the time of invention
`
`would have at least a Bachelor of Science degree in computer science or software
`
`engineering or a Bachelor of Science degree in a technical field requiring computer
`
`science or software engineering courses, as well as two to four years of experience
`
`designing, writing, or implementing high level software application products.
`
`(Weadock Decl./Ex. 2002 at ¶ 15).
`
`
`
`
`
`
`
`B.
`
`The Petitioner’s Burden of Proof
`Petitioner in this inter partes review has the burden of proving, by a
`
`preponderance of the evidence, that claims 1-11 of the ’426 patent are unpatentable
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`under 35 U.S.C. § 102 in view of the asserted prior art. See Garmin Int’l., Inc. v.
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`Case IPR2013-00302
`Patent No. 7,986,426
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`Cuozzo Speed Techs. LLC, IPR2012-00001 (P.T.A.B. 2013).
`
`
`
`
`
`C.
`
`Novelty under 35 U.S.C. § 102
`
`For a reference to anticipate a claim under 35 U.S.C. § 102, there must be
`
`precise correspondence between the elements of the claim and the teachings of the
`
`reference. The Federal Circuit established that in order to anticipate under 35
`
`U.S.C. § 102, the prior art reference must not only disclose all elements of the
`
`claim within the four corners of the document, but must also disclose those
`
`elements arranged as in the claim. Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d
`
`1359, 1369 (Fed. Cir. 2008) (citations and footnote omitted).
`
`
`
`
`
`D.
`
`Using Inherency in an allegation of invalidity under 35
`U.S.C. § 102
`
`The Doctrine of Inherency may be used to support an allegation that a
`
`particular reference anticipates a claimed invention. "[A]nticipation by inherent
`
`disclosure is appropriate only when the reference discloses prior art that must
`
`necessarily include the unstated limitation . . . ." Transclean Corp. v. Bridgewood
`
`Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). However, inherency may not
`
`be established by probabilities or possibilities. Cont'l Can Co. USA, Inc. v.
`
`Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666
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`4
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`F.2d 578, 581 (CCPA 1981)). The mere fact that a certain thing may result from a
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`Patent No. 7,986,426
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`given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745
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`(Fed. Cir. 1999). In this respect, inherency requires that the missing descriptive
`
`material is “necessarily present,” not merely probably or possibly present, in the
`
`prior art. (Id.).
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`
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`
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`IV. CLAIM CONSTRUCTION
`Although the Board is to give claims their broadest reasonable construction,
`
`this construction is made with reference to the disclosures in the specification and
`
`the prosecution history. See In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)
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`(reviewing specification and prosecution history to determine the broadest
`
`reasonable construction). The Decision to Institute Inter Partes Review [Paper 8]
`
`adopted constructions for various terms in the ’426 patent. For purposes of these
`
`proceedings, where the broadest reasonable construction is applied, Patent Owner
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`generally does not take issue with the Board except in the follow instances.
`
`A.
`
`“applications”
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`
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`The Board has construed “applications” to be so broad as to “not preclude
`
`software that resides in printers.” (See [Paper 8] at p. 14). The Board explains its
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`rationale by concluding that the specification of the ’426 patent broadly blur[s] any
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`distinction between a device and a device having a software application.” (Id.).
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`Patent Owner submits that one of ordinary skill would understand that some
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`devices have firmware instead of being loaded with a software application. (See
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`Weadock Decl/ Ex. 2002 ¶ 18-19). While firmware is made up of software, it is
`
`not the same thing as a software application. Nowhere in the specification of the
`
`‘426 patent is “application” or “software application” used in the context of device
`
`firmware. Thus, the Board’s construction of “application” seems to cover every
`
`kind of software (e.g., firmware, an operating system) instead of just software
`
`applications. In this respect, the Board seems to construe the term “software”
`
`while ignoring the “application.” term. To clarify this point of potential confusion,
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`Patent Owner proposes the following construction:
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`“application” - a discrete software program executable on an
`operating system for the purpose of accomplishing a task.
`Patent Owner submits that this term is the broadest reasonable interpretation in
`
`light of the specification. (See Weadock Decl/ Ex. 2002 ¶ 22).
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`
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`B.
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`“third-party software application”
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`The Board has applied the same construction to “application” and “third-
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`party software application.” This construction ignores the language of “third-
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`party.” Patent Owner respectfully submits that this is improper because under the
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`broadest reasonable interpretation standard, weight must be given to all terms in
`
`the claim language. See Ex Parte Givens, Appeal 2009-003414, p. 3 (BPAI,
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`August 6, 2009). Accordingly, Patent Owner submits the following claim
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`Patent No. 7,986,426
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`construction:
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`“third-party software application” - a software application that is
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`provided to the end user by a different manufacturer.
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`C.
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`“module”
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`The Board’s construction of the term “module” includes the limitation that
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`“modules may include other modules and may overlap in functionality” ([Paper 8]
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`at pp.16-17). Patent Owner respectfully submits that this is not the broadest
`
`reasonable interpretation in light of the specification. The Specifications provides
`
`no support for one module that includes another, or that overlaps with another
`
`module. (See Weadock Decl/ Ex. 2002 ¶ 27). Moreover, it was well known in the
`
`art that modular software design is in contrast with monolithic software design,
`
`such that not all software is modular. Accordingly, Patent Owner submits the
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`following claim construction:
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`“module” - a logically separable part of the software application of
`
`the data management system that can function in a plug-and-play
`
`manner within a Virtual Copier.
`
` Patent Owner submits that this term is the broadest reasonable interpretation in
`
`light of the specification. (See Weadock Decl/ Ex. 2002 ¶ 30).
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`In addition to the terms construed by the Board, Patent Owner proposes
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`Patent No. 7,986,426
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`
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`construing the following terms:
`
`D.
`
`“integration of at least one of said electronic image,
`electronic graphics and electronic document” / “integration
`of one or more of said electronic image, electronic graphics
`and electronic document”
`
`
`
`Patent Owner proposes to construe this term to mean “importing a copied or
`
`scanned document.” In the context of the claims, integrating into a destination
`
`application means importing a copied or scanned document into a currently
`
`executing software program. The specification provides many examples that
`
`support this construction. For example, the specification is directed to, “adding
`
`support for electronic paper directly into the existing business applications,”
`
`“copying paper directly into the existing accounting system,” and, “integrating
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`paper with existing business applications.” (The ’426 patent/Ex. 1001 at 70:12-17;
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`69:66-70:1; 46:15-18). Patent Owner submits that this term is the broadest
`
`reasonable interpretation in light of the specification. (See Weadock Decl/ Ex.
`
`2002 ¶ 36)
`
`E.
`
`“dynamically combining”
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`
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`Patent Owner proposes to construe this term to mean “routing an input to an
`
`output on the fly, responsive to receiving an input instruction.” The concept of
`
`“dynamic” means on-the-fly. The specification states that for example, the virtual
`
`copier is, “dynamically creating a custom virtual copier, with a complete
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`understanding of how paper flows from the source to its destination.” (The ’426
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`patent/ Ex. 1001 at 48:37-40). Patent Owner submits that this term is the broadest
`
`reasonable interpretation in light of the specification. (See Weadock Decl/ Ex.
`
`2002 ¶ 35)
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`
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`V. CLAIMS 1-11 ARE PATENTABLE OVER XNS
`
`A.
`
`Dr. Melen applies the wrong standard for anticipation in
`declaring that XNS anticipates the ’426 patent
`
`To allege anticipation by a prior art reference, the reference must not only
`
`disclose all elements of the claim within the four corners of the document, but must
`
`also disclose those elements arranged as in the claim. Net MoneyIN, Inc. v.
`
`Verisign, Inc., 545 F.3d at 1369. In regard to Dr. Melen’s anticipation allegation,
`
`there are instances in the record that demonstrate Dr. Melen’s reliance on
`
`references other than XNS. In this respect, Dr. Melen has ventured far beyond the
`
`four corners of XNS when asserting that XNS anticipates the ’426 patent.
`
`
`
`Specifically, Dr. Melen admits that his invalidity opinion of at least claim 6
`
`is based on material not disclosed in XNS. See the following deposition transcript
`
`excerpt:
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`Q. And what -- what in the XNS manual was the most convincing
`description you could find of one server module that had all
`four of those, as you described it, basic algorithms?
`DR. VARUGHESE: Objection to the form of the question.
`BY MR. HILL:
`Q. You can answer if you understand the question.
`A.
`I did not look in detail to the XNS map -- manual for the
`answers to those questions but my industry experience as to
`what the capability of the XNS system are.
`Q. You -- you're relying on your industry experience as to the
`capability of the XNS system in practical application is?
`It -- and -- and, in specific, the ability to maintain a list and to
`maintain input and output process mod -- modules and -- such
`as described in Claim 6.
`Q. When you say you relied on your industry experience, what do
`you mean by your industry experience with XNS?
`I -- I've seen Xerox doc -- document systems running XNS in
`the early '9- - '90s.
`Q. Okay. And did you look in the XNS manual to see whether or
`not all of these four functions that are recited in Claim 6 were
`described as being formed -- being performed in a single server
`module?
`A. No.
`Q. Okay. Was that because of a comfort level that you felt having
`actually worked with the XNS system?
`Right.
`
`A.
`
`A.
`
`A.
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`A.
`
`Q. Okay. And based on your experience working with the XNS
`system -- and what years did you work with the XNS system,
`by the way?
`I evaluate -- evaluated it and saw it demonstrate -- demonstrated
`roughly 1992, '3, some -- something like that.
`Q. Okay. You understand the reference that we're -- the reference
`that's -- that's at issue in the proceedings before the Patent
`Office is the 1985 dated manual, correct?
`That -- that -- that's the – the description of -- of the XNS, yes.
`A.
`Q. Did you have experience working with the XNS prior to 1992?
`A. No.
`Q. Okay. So you don't know one way or the other as to whether or
`not, in 1985, there was a single server module in XNS that
`performed the four functions of Claim 6; is that correct?
`DR. VARUGHESE: Objection to the form of the question and
`mischaracterizes the witness' testimony.
`THE WITNESS: I don't know.
`BY MR. HILL:
`Q. You don't know?
`A.
`Right.
`
`
`(Melen Depo. Trans./Ex. 2003 at pp. 113-116). As noted above, Dr. Melen admits
`
`that he does not rely on the XNS reference at issue in this proceeding. For at least
`
`these reasons, Dr. Melen has applied the wrong standard for anticipation in
`
`declaring that XNS anticipates the ’426 patent because Dr. Melen has not even
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`considered the reference at issue. Accordingly, his opinion regarding anticipation
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`Case IPR2013-00302
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`should be given little to no weight.
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`B.
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`XNS does not anticipate the element of “implementing the
`plurality of interface protocols as a software application for
`interfacing and communicating with the plurality of
`external destinations,” as recited by claims 1-5
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`The claims 1-5 are directed to a “software application” such that “a
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`plurality of protocols” are implemented as a software application. By alleging
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`that XNS discloses this limitation, the Petition identifies various protocols such as
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`transmission protocols and applications protocols that correspond to application
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`functions. ([Paper 1] at p. 16). The Petition refers to “mailing, printing, filing, and
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`gateway access” as protocols “implemented in hardware/software” as to provide
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`the “XNS application services.” (Id.).
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`According to XNS, transmission protocols relate to “the kind of transmission
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`medium” such as local area communication network (LAN). (See XNS Part 1/Ex.
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`1002 at p. 21). In this respect, transmission protocols are used “without disturbing
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`the protocols in higher layers.” (Id.). Due to the fact that one of ordinary skill in
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`the art would understand that a higher layer encompasses the application layer, it is
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`clear that the transmission protocols are not implemented as “a software
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`application” as required by the claims. In fact, XNS is designed such that the
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`transmission protocols do not interfere with the application layer. (See id.). In this
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`respect, Petitioner’s reliance on a general recitation of the term “protocols” is
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`insufficient to demonstrate “implementing the plurality of interface protocols as a
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`software application.”
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`As stated above, Petitioner’s invalidity allegation is based on XNS’s
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`disclosure of “application protocols.” According to Petitioner’s expert, Dr. Melen,
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`“XNS explains that application protocols are implemented in hardware/software.”
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`(See Melen Decl./Ex. 1008 at p. 32). Specifically, Dr. Melen relies on FIG. 2-4 of
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`XNS, which depicts an application layer that includes a filing protocol, a printing
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`protocol, and a mail transport protocol. XNS states that these protocols may be
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`implemented in “hardware/software.” (XNS Part 1/Ex. 1002 at p. 16). However,
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`XNS fails to specify which protocols are implemented in hardware and which are
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`implemented in software. (See Weadock Decl./Ex. 2002 at ¶ 104).
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`Moreover, FIG. 2-4 provides an architecture of an entire network system for
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`Xerox Network Systems. According to XNS it is “necessary for network elements
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`to work together” in order to implement the XNS architecture. (XNS Part 1/Ex.
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`1002 at p. 4). XNS also provides a series of specifications for the common
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`functions that must be agreed upon by the network community. (Id.). In this
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`respect, the services depicted in FIG. 2-4 “are typically collections of software
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`acting according to the rules of the architecture and its protocols, to achieve the
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`desired purpose.” (Id. at p. 18). Petitioner ultimately relies on an entire distributed
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`network architecture made up of collections of software when alleging that XNS
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`teaches “implementing a plurality of protocols.” However, in doing so, Petitioner
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`fails to establish, by a preponderance of the evidence, that XNS discloses “a
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`software application” that implements “a plurality of protocols for interfacing and
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`communicating,” when XNS discloses implementing application protocols in
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`hardware or software using collections of software. Patent Owner submits that an
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`architecture that includes distributed software running on different machines does
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`not necessarily disclose “a plurality of protocols implemented as a software
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`application.” Moreover, the distributed software that appears to access XNS
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`services to implement XNS protocols is not the same thing as implementing the
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`protocols as one software application.
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`
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`Petitioner cites XNS, which states that “a directly-connected device is
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`expected to implement all the layers of XNS appropriate to its function, which
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`would include at least all the layers upward through Courier.” ([Paper 1] at p .16
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`citing Ex. 1002 at p. 18). However, the mere fact that a device implements the
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`layers identified in the OSI layer model of FIG. 2-4 is insufficient to show a
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`“software application” much less “a software application implementing a plurality
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`of protocols for interfacing and communicating.” For example, the “directly-
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`connected device” may implement protocols using hardware instead of software.
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`Petitioner also relies on XNS’s disclosure of a “Courier,” which is a “middle
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`layer in the XNS architecture” according to Dr. Melen. XNS specifies that the
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`“Courier” is an XNS protocol that permits “the initiation and control of remote
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`processes, including the transfer of information and control parameters associated
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`with such processes.” (XNS Part 2/Ex. 1002 at p. 157). Thus, while “Courier” is a
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`protocol that facilitates the transfer of information, “Courier” is not implemented
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`as a software application. With reference to FIG. B-1 of Ex. 1002, Courier is
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`excluded from the application support environment. Moreover, “Courier” alone
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`does not show a “plurality of protocols.”
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`Finally, Dr. Melen, who Petitioner relies upon, has taken an unreasonably
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`broad interpretation of “software application” in order to argue that the system
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`architecture of XNS is a software application. The following is an excerpt of Dr.
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`Melen’s deposition transcript:
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`
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`Q. Well, I understand -- I understand that, but XNS is not a
`software application, is it?
`It's not?
`A.
`Q. Are you contending that XNS is a software application?
`A.
`It includes software --
`Q.
`Fair enough.
`A.
`-- so yes.
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`
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`Q. My PC includes software, but I wouldn't describe my PC as a,
`quote, software application, would you?
`I might.
`A.
`Q. You would? Okay. Fair enough.
`(Melen Dep. Trans./Ex. 2003 at p. 140-41). As demonstrated above, Dr. Melen
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`indicates that his understanding of “a software application” is so broad as to equate
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`to even a system of hardware and software components, including numerous
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`applications, such as a PC. Accordingly, his opinion regarding at least this claim
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`element should be given little to no weight.
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`C.
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`XNS does not anticipate the element of “at least one
`memory storing a plurality of interface protocols for
`