Filed on behalf of Ricoh Americas Corporation and Xerox Corporation
`By:
`Michael D. Specht (mspecht—FTAB@skgf.com)
`Jason D. Eisenberg (jasone-PTAB@skgf.com)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`1100 New York Avenue, NW
`
`Washington, DC. 20005
`Tel: (202) 371 -2600
`Fax: (202) 371-2540
`
`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-TBA
`
`Patent 7,986,426
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,986,426
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US. Patent & Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`Introduction ....................................................................................................... 1
`
`II. Overview ........................................................................................................... 1
`
`III. Mandatory Notices (37 C.F.R. § 42.8(a)(l)) ..................................................... 2
`
`IV. Grounds For Standing (37 C.F.R. § 42.104(a)) ................................................. 4
`
`V. Statement of Relief Requested .......................................................................... 4
`
`VI. Claim Construction ............................................................................................ 5
`
`VII. Identification Of Challenge (37 CPR. § 42.104(b)) ........................................ 9
`
`A. Ground 1: Claims 1-11 are anticipated under 35 U.S.C. § 102(b) by
`XNS, (with inherent features evidenced by GIS 150). ............................... 13
`
`B. Ground 2: Claims 1-11 are anticipated under 35 U.S.C. § 102(b) by
`Ohkubo ........................................................................................................ 24
`
`C. Ground 3: Claims 1—11 are anticipated under 35 U.S.C. § 102(e) by
`Salgado ........................................................................................................ 32
`
`D. Ground 4: Claims 1-11 are anticipated under 35 U.S.C. § 102(a) and (e)
`by Harkins ...................................................................................................41
`
`E. Ground 5: Claims 3, 5-9, and 11 are obvious under 35 U.S.C. § 103(a)
`over Ohkubo in View of APA...................................................................... 51
`
`1. Claim 3 .................................................................................................. 51
`
`2. Claim 5 .................................................................................................. 52
`
`F. Grounds 6: Claims 3, 5-9, and 11 are obvious under 35 U.S.C. § 103(a)
`over Salgado in View of APA...................................................................... 54
`
`1. Claim 3 .................................................................................................. 54
`
`2. Claim 5 .................................................................................................. 55
`
`G. Ground 7: Claims 1—8 are obvious under 35 U.S.C. § 103(a) over
`Harkins in View of Motoyama..................................................................... 55
`
`CONCLUSION ....................................................................................................... 60
`
`-11-
`
`

`

`TABLE {)F AUTHORITIES
`
`Case Law
`
`AllVoice Computing PLC V. Nuance Commc‘ns, Inc.,
`504 F.3d 1236 (Fed. Cir. 2007) ............................................................................. 8
`
`
`In re Am. Acad. of Sci.
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................. 5
`
`Aristocrat Techs. V. Int'l Game,
`Tech., 521 F.3d 1328 (Fed. Cir. 2008) .................................................................. 8
`
`Biotec Biologische Naturvelgpack’ungen GmbH & Co. KG V. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001) ............................................................................. 5
`
`CCS Fitness, Inc. V. Brunswick Com,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................. 5
`
`In re Bass,
`314 F.3d 575 (Fed. Cir. 2002) ............................................................................... 5
`
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ...................................................................... passim
`
`KSR V Teleflex,
`550 US. 398 (2007) ............................................................................................ 57
`
`
`Mentor I-I/S Inc. V. Med. Device Alliance Inc.,
`244 F.3d 1365 (Fed. Cir. 2001) ............................................................................. 5
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ..................................................................... 5
`
`Schering Corp. V. Geneva Pharmaceuticals,
`339 F.3d 1373 (Fed. Cir. 2003) ........................................................................... 13
`
`Statutes
`
`35 U.S.C § 112 ...................................................................................................... 7, 9
`
`35 U.S.C. § 101 ..................................................................................................... 6, 9
`
`35 U.S.C. § 102 and 103 ........................................................................................... 7
`
`-iii-
`
`

`

`35 U.S.C. § 102(a) ................................................................................................... 41
`
`35 U.S.C. § 102(b) ...................................................................................... 13, 24, 42
`
`35 U.S.C. § 102(e) ...................................................................................... 32, 41, 55
`
`35 U.S.C. § 112(t) ..................................................................................................... 8
`
`35 U.S.C. § 314(a)................................................................................................... 60
`
`Regulations
`
`37 C.F.R. § 42.104(a) ............................................................................................... 4
`
`37 C.F.R. § 4f>2.104(b) ............................................................................................... 9
`
`37 C.F.R. § 42.104(b)(4) ........................................................................................... 8
`
`37 C.F.R. § 42.6(d) .................................................................................................... 9
`
`37 C.F.R. § 42.8(b)(1) ............................................................................................... 2
`
`37 C.F.R. § 42.8(b)(2) ............................................................................................... 3
`
`37 C.F.R. § 42.8(b)(3) ............................................................................................... 3
`
`37 C.F.R. § 42.8(b)(4) ............................................................................................... 4
`
`37 CFR § 42.100(b) ................................................................................................... 5
`
`-iV-
`
`

`

`EXHIBIT LIST (37 C.F.R § 42.63(e))
`
`Exhibit
`
`
`DESCRIPTION
`
`
`RIC 1001
`U.S. Patent No. 7,986,426 to Klein
`
`RIC 1002
`Xerox Network Systems Architecture General Information
`
`Manual, April 1985 (“XNS”)
`_
`
`RIC 1003
`Xerox 150 Graphic Input Station Operator and Reference Manual,
`
`January 1985 (“GIS 150”)
`U.S. Patent No. 5,123,063 to Ohkubo (“Ohkubo”)
`RIC 1004
`I
`
`
`RIC 1005
`
`
`U.S. Patent No. 5,872,569 to Salgado ct a1. (“Salgado”)
`
`RIC 1006
`U.S. Patent No. 5,513,126 to Harkins et a1. (“Harkins”)
`
`
`
`
`
`
`RIC 1007
`U.S. Patent No. 5,818,603 to Motoyama (“Motoyama”)
`
`
`RIC 100g
`
`fieclaration of Petitioner’s Expert Dr. Roger Melen (“Melen
`Decl.”) (C/V attached as Attachment 1; Newton is Telecom
`
`Dictionary attached as Attachment 2.)
`RIC 1009
`Prosecution History of U.S. Patent Application No. 12/328,104, as
`
`obtained from PAIR (“’ 104 application”)
`
`RIC 1010
`
`Prosecution History of U.S. Patent Application No. 10/874,172, as
`obtained from PAIR C” 172 application”)
`
`
`RIC 1011
`Declaration of Michael D. Specht
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`I.
`
`Introduction
`
`Ricoh Americas Corporation
`
`and Xerox Corporation
`
`(collectively
`
`“Petitioners”) Petition for inter partes review (“Petition”), seeking cancellation of
`
`claims 1-11 (“challenged claims”) of US. Patent No. 7,986,426 (“the ’426 patent”)
`
`(RIC 1001).
`
`II.
`
`Gverview
`
`That core purpose of inter partes review, cancellation of unpatentable
`
`claims, is furthered by this Petition, as the challenged claims of the ’426 patent
`
`should never have been issued. Because Petitioner is at a minimum reasonably
`
`likely to prevail in showing unpatentability, the Petition should be granted and trial
`
`instituted on all of the challenged claims as set forth below.
`
`The ’426 patent was issued on July 26, 2011, and appears to claim priority to
`
`August 15, 1996.1 The claims of the ’426 patent claim nothing more than a well-
`
`known concept for enabling a typical PC user to add electronic paper processing to
`
`their existing business process by scanning paper from a first device and copying
`
`the image of that paper to a remotely-located second device. (RIC 1001, Abstract.)
`
`The ’426 patent also teaches the well-known concept of optionally copying paper
`
`fom a first device directly into a business application residing on a network or on
`
`1 Petitioners do not concede this is the correct effective filing date.
`
`-1-
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`the Internet, or vice versa.
`
`(Id.) The system performs basic management of
`
`software to manage paper to copy the paper in and out of devices and business
`
`applications without needing to modify the devices or applications. (Id.) None of
`
`this was new at the effective filing date, or even a decade before.
`
`At least a decade before the alleged effective date of the ’426 patent, Xerox
`
`was already publically using the disclosed and claimed technology, as evidenced
`
`by the XNS document that published in 1985. Many other companies since 1985
`
`have also utilized this simple technology, as evidence by the sample of prior art
`
`documents submitted within this Petition — Ohkubo, Salgado, Harkins, and
`
`Motoyama. Dr. Roger Melen, a technical expert in this field for 30 years following
`
`his Ph.D. from Stanford University, explains how each of these prior art documents
`
`disclose, teach, and suggest each and every claim feature.
`
`No features in the improperly allowed claims, or anywhere in the disclosure,
`
`will overcome the overwhelming evidence of anticipation and obviousness
`
`presented in this Petition. In view of the evidence presented, the Board should
`
`cancel all of the patented claims.
`
`III. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`
`Real party-in-interest (37 C.F.R. § 4i2.8(§o)(1)): Ricoh Americas Corporation
`
`and Xerox Corporation Petition for inter partes review. The real parties—in-interest
`
`

`

`Inter Parties Review of US Patent No. 7,986,426
`
`are Ricoh Americas Corporation (DE corporation, principle place of business in
`
`Malvern, PA); Ricoh Americas Holding, Inc. (DE corporation, principle place of
`
`business in West Caldwell, NJ); Ricoh Company, Ltd (Japanese corporation,
`
`principle place of business in Tokyo, Japan); and Xerox Corporation (CT
`
`corporation, principle place of business in Norwalk, CT).
`
`Notice of reiated matters (37 SEE. § 42.8(b)(2)): The ’426 patent is involved in
`
`a declaratory judgment action in Engineering & Inspection Services, LLC v.
`
`IntPar, LLC, No. 13—0801 (E.D. La..) Engineering & Inspection Services, LLC is
`
`unrelated to the real parties-in-interest. The Vermont Attorney General has filed a
`
`consumer protection lawsuit against MPHJ Technologies alleging
`
`unfair and
`
`deceptive practices associated with assertion of the ‘426 patent, and related patents.
`
`See, State of Vermont v. MPHJ Technology Investments LLC, No. 282-5-13
`
`(Vermont Superior Court, Washington Unit). US. Patent Application, Ser. No.
`
`13/182,857, entitled Distributed Computer Architecture and Process for Document
`
`Management, claims priority to the ‘426 patent.
`
`Designation of lead and back-up counsel (37 C.F.R. § 42.8(b)(3)):
`
`Lead Counsel: Michael D. Specht (Reg. No. 54,463); 202.772.8756
`
`Backup Counsel: Jason D. Eisenberg (Reg. No. 43,447); 202.772.8645
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`Address:
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.,
`
`1100 New York Avenue, NW, Washington, DC 20005,
`
`202.371.2540 (fax)
`
`Service information (37 C.F.R. § 42.8(§)(4)):
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioners
`
`consent
`
`to electronic
`
`service by email
`
`at: Mspecht-
`
`PTAB@skgf.com.
`
`IV.
`
`Grounds For Standing (37 C.F.R. § 42.104(a))
`
`Petitioners certify that the patent for which review is sought is eligible for
`
`inter partes review and that the Petitioners are not barred or estopped from
`
`requesting inter partes review challenging the patent claims on the grounds
`
`identified in this Petition. The required fee is paid via online credit card payment.
`
`The Office is authorized to charge fee deficiencies and credit overpayments to
`
`Deposit Acct. No. 19-0036 (Customer ID No. 45324).
`
`V.
`
`Staiement of Reiief Requested
`
`Petitioners respectfully request
`
`inter partes review and cancellation of
`
`claims 1-11 of the ’426 patent based on the detailed statements presented in
`
`Section VII below.
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`VI.
`
`Claim Construction
`
`Except as noted below, all claims carry their ordinary and customary
`
`meanings. Consistent with the statute and the legislative history of the AIA, the
`
`Board should construe the claims using the broadest reasonable interpretation. See
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37
`
`CFR § 42.100(b). The claim language should be read in light of the specification as
`
`it would be interpreted by one of ordinary skill in the art. In re Am. Acad. 0fSci.,
`
`367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the broadest
`
`reasonable meaning to the claim language, taking into account any definitions
`
`presented in the specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir.
`
`2002)). There is a “heavy presumption” that a claim term carries its ordinary and
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp, 288 F .3d 1359, 1366
`
`(Fed. Cir. 2002). By “ordinary meaning” we refer to e.g., Biotec Biologische
`
`Naturverpackungen GmbH & Co. KG v. Biocorp, Inc, 249 F.3d 1341, 1349 (Fed.
`
`Cir. 2001) (finding no error in nomconstruction of “melting”); Mentor H/S, Inc. v.
`
`Med. Device Alliance, Inc, 244 F .3d 1365, 1380 (Fed. Cir. 2001) (finding no error
`
`in court’s refusal to construe “irrigating” and “frictional heat”).
`
`A person of ordinary skill in the art (“POSA”) is presumed to be aware of all
`
`pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. With respect to the ’426 patent, a POSA is a person holding a
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`Bachelor of Science degree in a computer related technical
`
`field—such as
`
`electrical engineering, computer engineering, or computer science—without
`
`experience in the field. (Melen Decl., RIC 1008, 1] 18.)
`
`The prosecution of the application that matured into the ’426 patent (i.e.,
`
`Appl. No. 12/328,104) included a non-final Office Action, a Response to the
`
`Office Action, an Interview, and subsequent allowance of the application. In the
`
`non-final office action, claims 3-11 (which issued as claims 1-8) were rejected
`
`under 35 U.S.C. § 101 for statutory double patenting over US. Pat. No. 7,477,410
`
`(the parent patent of the ’426 patent). Claims 3—11 were amended to include the “at
`
`least one scanner. . .” limitation to overcome the statutory double patenting
`
`rejection. (See RIC 1009).
`
`The examiner did not explain the reason(s) for allowance of the claims in the
`
`’104 application.
`
`(See RIC 1009). But,
`
`the same examiner considered nearly
`
`identical claims in the ’410 patent, and provided reasons for allowance. Again,
`
`many of the claims of the ’410 patent are identical to the claims in the ’426 patent,
`
`except for the “at least one scanner .
`
`. .” limitation. There, the examiner considered
`
`certain functions of the claimed document management system — i.e., “seamlessly”
`
`replicating and transmitting an image,
`
`integrating an electronic image into a
`
`destination application without the need to modify the destination application,
`
`copying images using a “Go” operation, and adding processing with a single
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`programming step — to be the “novel” features; not the system itself. (See RIC
`
`1010).
`
`Claims 1 and 9 recite the term “seamlessly.” The disclosure does not provide
`
`an explicit definition for this term, nor does it imply a meaning. Rather, the term is
`
`used vaguely—“The VC invention is software that manages paper so that it can be
`
`electronically and seamlessly copied in and out of devices and business
`
`applications .
`
`.
`
`. .” (RIC 1001, 68:26-28); “Virtual Copier will accomplish all
`
`translations between device and applications automatically and seamlessly.” (Id. at
`
`46:54-56). After reviewing the disclosure and claims of the ’426 patent, and after
`
`consulting a technical dictionary published at the time of the ’426 patent, it is Dr.
`
`Melen's opinion that different POSA would likely interpret “seamlessly” in
`
`different ways. Furthermore, as Dr. Melen notes, even a technical dictionary at the
`
`time viewed the use of the term “seamlessly” as vague.2 Dr. Melen opined that
`
`because he was asked to provide a single interpretation for the word “seamlessly,”
`
`2 Petitioners therefore observe that any claim incorporating the term
`
`“seamlessly” is likely invalid under 35 U.S.C § 112. However, Petitioners
`
`recognize that claims cannot be challenged under 35 U.S.C. § 112 within an inter
`
`partes review. Thus, for demonstrating the invalidity of these claims under 35
`
`U.S.C. §§ 102 and 103, Petitioners are providing a required claim construction.
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`under this constraint it is his opinion that a POSA would understand “seamlessly”
`
`to mean: A low amount of effort. (Melen Decl., RIC 1008, ‘J 27.)
`
`The term “Go operation” recited in claims 3, 9, and 11 means: An operation
`
`that begins a process. (Melen Decl., RIC 1008, 11 28.)
`
`The construction of claims invoking 35 U.S.C. § 112(f) “must identify the
`
`specific portions of the specification that describe the structure, material, or acts
`
`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(4). 3
`
`Each limitation in the body of claim 10 is computer-implemented, and
`
`invokes § 112(f). Regarding the term “enable virtual copy operation means,” the
`
`3 The construction of a means—plus-function limitation follows a two-step
`
`approach: (1) identify the claimed function; and (2) identify the corresponding
`
`structures in the written description. All Voice Computing PLC v. Nuance
`
`Commc’ns, Inc, 504 F.3d 1236, 1240 (Fed. Cir. 2007). When a means-plus-
`
`function limitation relates to a computer process, the corresponding structure must
`
`be more than simply a general-purpose computer. Aristocrat Techs. v. Int ’1 Game
`
`Tech, 521 F.3d 1328, 1333 (Fed. Cir. 2008). Instead, the specification should
`
`disclose an algorithm or method to perform the function that “render[s] the bounds
`
`of the claim understandable to one of ordinary skill in the art.” All Voice, 504 F.3d
`
`at 1245.
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`structure performing this function appears to be disclosed at RIC 1001, 77:1-29;
`
`regarding the term “maintain list of available module means,” the structure
`
`performing this function appears to be disclosed at RIC 1001, 73:17-35, FIG. 36;
`
`regarding the term “maintain currently active modules means,” the structure
`
`performing this function appears to be disclosed at RIC 1001, 75:25-30, FIG. 37;
`
`and regarding the term “maintain complete document informatior; means,” the
`
`structure performing this function appears to be disclosed at RIC 1001, 75:40-50,
`
`FIG. 39.
`
`The referenced portions of the Specification do not describe structure
`
`including an algorithm as required;4 rather the Specification explains that these
`
`limitations describe computer software per se.5 (RIC 1001, 68:26 (“The VC
`
`invention is software”); 72:30-58.) Thus, the terms are construed to include any
`
`hardware and/or software that can achieve the stated functions. The same analysis
`
`applies to the means—plus-function elements of claim 6.
`
`VII.
`
`Identification Of Challenge (37 C.F.R. § 42.104(b))
`
`IPR is requested on the Grounds of Unpatentability listed in the index below.
`
`Per 37 CPR. § 42.6(d), copies of the references listed in the index below are filed
`
`with this Petition. In support of the proposed Grounds of Unpatentability, this
`
`4 Raising issues, which cannot be challenged here, under 35 U.S.C. § 112.
`
`5 Raising issues, which cannot be challenged here, under 35 U.S.C. § 101.
`
`-9-
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`Petition is accompanied by a declaration of a technical expert, Dr. Roger Melen
`
`(“Melen Decl.”; RIC 1008), which explains what the art would have conveyed to a
`
`POSA.
`
`
`
`
`Ground
`35 USC
`Index of Reference(s)
`Claims
`1
`1 02(b)
`XNS
`(with
`inherent
`features
`l-l 1
`
`evidenced by GIS 150)
`
`2
`1 02(b)
`Ohkubo
`1-1 1
`
`3
`102(e)
`Salgado
`1-1 1
`
`4
`102(a), (e) Harkins
`l — 1 l
`
`5
`lO3(_a)
`Ohkubo in View of APA
`3, 5—9, 11
`6
`lO3(a)
`Salgado in View of APA
`3, 5-9, 11
`
`7
`103 (a)
`Harkins in View of Motoyama
`1-8
`
`
`
`
`
`
`
`These Grounds are each highly relevant, and are neither horizontally nor
`
`vertically redundant.6 The “meaningful distinction”7 between Grounds is explained
`
`6 When prior art references are applied not in combination to complement
`
`each other, but as distinct and separate alternatives, “each reference has to be better
`
`in some respect or else the references are collectively horizontally redundant.”
`
`CBM2012-00003, Paper 7, p. 5, 11. 8-16 (emphasis added). When a plurality of
`
`prior art is applied both in partial combination and in full combination, “[t]here
`
`must be an explanation of why the reliance in part may be the stronger assertion as
`
`applied in certain instances and why the reliance in whole may also be the stronger
`
`assertion in other instances. Without a bi-directional explanation, the assertions are
`
`vertically redundant.” CBM2012-00003, Paper 7, p. 5, 11. 17-24 (emphasis added).
`
`-10-
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`in detail below. Each of the references used as an anticipation reference is better in
`
`some respect that the other anticipation references. Similarly, with respect to the
`
`obviousness references each combination is stzonger in some instances than the
`
`other Grounds of Unpatentability.
`
`Denial of one of the Grounds of Unpatentability in this Petition for only
`
`being redundant, without reaching its merits, would thwart the statutory mandate to
`
`provide just, speedy and inexpensive resolution of this proceeding, as required by
`
`37 C.F.R. § 42.1(b). CBM2012-00003, Paper 7, p. 2, 11. 8-15. As a threshold
`
`matter, page limitations in an inter partes review petition already place significant
`
`limitations on Petitioners to present a full and complete basis for a review to be
`
`instituted. These page limits (combined with font size and margin limitations)
`
`already recognize the need to balance the objectives of justice and speed. Having
`
`an overly restrictive View on what Grounds of Unpatentability to consider, would
`
`shift this balance inappropriately, thereby undermining the objective of justice.8
`
`Furthermore, given the highly restrictive estoppel provisions, justice and speed are
`
`
`
`7 See, e.g., IPR2013-00057, Paper 21; IPR2013—0001 1, Paper 44.
`
`8 Petitioners have already been forced by the page limit restrictions to use
`
`only a small sampling of references available to demonstrate the unpatentability of
`
`the claims of the present patent.
`
`-11-
`
`

`

`Inter Parties Review of US. Patent No. 7,986,426
`
`better served by taking a broader view (within the page limit restrictions) of
`
`Grounds of Unpatentability that should be considered, particularly when the
`
`relative relevancy of Grounds of Unpatentability may be impacted by later claim
`
`interpretation decisions.
`
`Here, several factors weigh heavily in favor of adopting all Grounds of
`
`Unpatentability. First, the Patent Owner has embarked on an aggressive campaign
`
`of sending assertion letters to many small and mid—size business owners across the
`
`country.9 Therefore, it is likely that significant financial resources are being used
`
`by targeted small businesses to consider the validity of the patents, and may result
`
`in many additional PTAB and court actions by many parties if this inter partes
`
`review proceeding is not perceived as comprehensive. Thus, justice and speed are
`
`well served by being comprehensive in this proceeding. Second, the claims at issue
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`are lengthy and include many different features. Numerous references are needed
`
`to teach or disclose (with differing relative strengths) these myriad of features.
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`Third, as stated above, there is “meaningful distinction” between the Grounds of
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`Unpatentability because each is highly relevant with different relevant strengths
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`and reasons for consideration. Fourth, the references have varying effective dates,
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`such that some cannot be antedated with evidence of conception and diligence to
`
`9 See, e.g., Engineering & Inspection Services, LLC v. IntPar, LLC, No. 13—
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`0801 (ED. La.).
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`-12..
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`Inter Parties Review of US. Patent No. 7,986,426
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`reduction to practice.10
`
`Petitioner now presents each Ground of Unpatentability,
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`in detail, for claims 1—11 of the ’426 patent. Because the preamble and first three
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`limitations of each of claims 1-5 are identical, the claim charts that follow address
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`these limitations (when appropriate) in claim 1 as [LP], [1.1], [1.2], and [1.3a-b].
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`Also,
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`the preamble of claim 9 is addressed in claim 1 as [1.P] because the
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`preambles of claims 1 and 9 are nearly identical (the only difference being claim 1
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`recites, “comprising,” whereas claim 9 recites, “wherein the system comprises”).
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`Finally, all underlining and bold are added emphasis unless otherwise noted.
`
`A.
`
`Ground E: Claims 1-11 are anticipated under 35 U.S.C. § 102(b)
`by XNS, (With inherent features evidenced by G18 1513).
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`XNS was published April 1985, and qualifies as prior art under 35 U.S.C.
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`§ 102(b) because it was published more than one year prior to the earliest priority
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`date claimed by the ’426 patent. GIS 150 (RIC 1003), used to evidence inherent
`
`claim features“, was published January 1985, and also qualifies as prior art under
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`35 U.S.C. § 102(b).
`
`‘0 See, e.g., IPR2013-00024, Paper 22.
`
`11 The Federal Circuit has consistently said that extrinsic evidence can be
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`considered to determine inherency. Schering Corp. v. Geneva Pharmaceuticals,
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`339 F.3d 1373, 1377 (Fed. Cir. 2003) (“Court may consult artisans of ordinary skill
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`-13-
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`Inter Parties Review of US. Patent No. 7,986,426
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`XNS is a comprehensive manual addressing networked integrated office
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`systems and document management.
`
`It describes,
`
`inter alia,
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`technology and
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`equipment for network scanning services, network printing services, electronic
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`mail (Email) services, and network filing services. XNS was published in April
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`1985 — more than 11 years before the earliest effective date claimed by the ’426
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`patent — and clearly establishes that network—based document management was a
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`mature technology long before the ’426 patent (or any of its precursors) was filed.
`
`This reference is particularly relevant as prior art to the ’426 patent because it
`
`provides an extremely early publication date for a comprehensive network
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`scanning system and, as a system manual, demonstrates that network scanning
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`systems were widely known long before the filing date of the present patent. Also,
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`as non-patent system manual, it provides insight to the types of equipment and
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`technology that was commercially available in April 1985. (Melen Decl., RIC
`
`1008, ‘ll 84.) XNS discloses network scanning using the Xerox 150 Scanner. (RIC
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`1002, p. 112) Xerox 150 Graphic Input Station Operator and Reference Manual
`
`(“GIS 150”) (RIC 1003) evidences certain features that are inherent on the Xerox
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`150 Scanner. Claim Chart
`
`I
`
`indicates that XNS, explicitly or inherently (as
`
`to ascertain their understanding about subject matter disclosed in the prior art,
`
`including limitations inherent in the prior art”)
`
`-14-
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`Inter Parties Review of US. Patent No. 7,986,426
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`evidenced by GIS 150) teaches all of the limitations of, and therefore anticipates,
`
`claims 1—1 1.
`
`
`CLAIM CHART 1
`
`
`
`Claim 1 is anticipated by XNS
`[1.P] A computer data management system including at least one of an electronic
`image, graphics and document management system capable oftransmitting 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:
`[1.P]: XNS provides a “system overview” describing a data and document
`
`management system:
`The general objectives of XNS is therefore to increase the
`ROIA by
`facilitating
`the
`creation,
`capture,
`storage,
`communication
`rintin
`and re licatin of electronic or
`a er
`
`documents within the office, especially at the work group and
`departmental
`levels. This
`is what Xerox calls document
`management.”
`(RIC 1002, p. 8.)
`XNS also discloses many network configurations for document management
`and transmission both locally and Via Internet (Id. at 21—42), such as FIG. 11-2 on
`page 112, and FIG. 11-3 on page 113:
`
`Tax! 00mm
`Form-t
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`Sana(ling 5mm
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`
`printing); 107— 16 (network scanning)_.)
`
`
`fine:
`
`figurur»eHz MmodszM-anningservlm
`
`(See also id. at 71 -76, (network filing); 83-90 (Email), 91- 106 (network
`
`[1.1] at least one scanner, digital copier or other multifunction peripheral
`capable ofrendering at least one ofsaid electronic image, electronic graphics and
`electronic document;
`[1.1]: XNS discloses network scanning, and at least one scanner:
`[The graphic input] model enables a user to digitize a hardcopy
`image by scanning it at the scanner. The digitized image (in
`
`
`-15-
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`

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`
`Inter Parties Review of US. Patent No. 7,986,426
`
`
`RES) may be sent to a specified file in a File Service for
`storage, or to a Print Service for printing (using Printer Subset
`of the Filing Protocol). A user interface exists at the scanner to
`allow a user to perform this function, as well as other functions
`such as cropping or scaling the image. The scanner is an XNS
`system element which uses XNS protocols to communicate
`with other devices and services on the internet.
`
`(RIC 1002,_p. 112; FIG. 11-2; see also id. at 126-35.)
`[1.2] at least one memory storing a plurality of interface protocols for
`interfacipg and communicating;
`[1.2]: XNS discloses a plurality of interface protocols for interfacing and—
`communicating:
`The XNS architecture is particularly open-ended in respect to
`multiple transmission protocols corresponding to different types
`of communication services,
`and to multiple
`application
`protocols corresponding to different functions performed within
`the architectural boundaries.
`
`
`1981); M.P.E.P. § 2112(IV) (regarding inherency).)
`
`(RIC 1002, p. 14-20; FIG. 2-4.)
`XNS explains, “The devices that use )QIS protocols and connect to the
`network are called system elements. . .. These system elements are generally
`classified as workstations or servers.” (Id. at 17), and “a directly-connected device
`is expected to implement all the layers of XNS appropriate to its function, which
`would include at
`least all
`layers upward through Courier. .
`. plus selected
`application protocols.” (Id. at 18). XNS also explains that a scanner can be a
`system element: “The scanner is an XNS element which uses XNS protocols to
`communicate with other devices and services on the internet.” (Id. at 112.)
`System elements—such as workstations, servers, scanners, etc—inherently
`include memory storing the protocols in order to implement and use the protocols.
`(Melen Decl., RIC 1008, fl 34; See, e.g., In re 0elrich, 666 F.2d 578 (C.C.P.A.
`
`[1.3a] at least one processor responsively connectable to said at least one
`' memory, and [1.3b] implementing the plurality of interface protocols as a software
`application