By:
`
`Filed on behalf of Ricoh Americas Corporation and Xerox Corporation
`Michael D. Specht (mspecht—PTAB@skgf.com)
`Jason D. Eisenberg Gasone—PTAB@skgf.com)
`H. Keeto Sabharwal (keetos-PTAB@skgf.com)
`Dennies Varughese (dvarughe-PTAB@skgf.com)
`Richard M. Bemben (rbemben-PTAB@skgf.com)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`l 100 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
`
`XEROX CORPORATION
`
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS LLC
`
`Patent Owner
`
`CASE: IPR2013—00302
`
`Patent 7,986,426
`
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Filed on behalf of Ricoh Americas Corporation and Xerox Corporation
`Michael D. Specht (mspecht—PTAB@skgf.com)
`Jason D. Eisenberg Gasone—PTAB@skgf.com)
`H. Keeto Sabharwal (keetos-PTAB@skgf.com)
`Dennies Varughese (dvarughe-PTAB@skgf.com)
`Richard M. Bemben (rbemben-PTAB@skgf.com)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`l 100 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
`
`XEROX CORPORATION
`
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS LLC
`
`Patent Owner
`
`CASE: IPR2013—00302
`
`Patent 7,986,426
`
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Table of Contents
`
`I.
`
`INTRODUCTION .............................................................................................. I
`
`II. THE BOARD SHOULD GIVE NO WEIGHT TO MR. WEADOCK’S
`
`DECLARATION ...................................................................................................... 2
`
`A. Mr. Weadock Is Not Qualified To Opine On The ’426 Patent .................... 2
`
`B. Mr. Weadock Repeatedly Admitted That He Lacked Sufficient Time
`And/Or Money To Properly Prepare His Declaration ........................................... 3
`
`C. Mr. Weadock Failed To Apply Proper Patent Law Principles ..................... 5
`
`D. Mr. Weadock Contradicted Many Of The Statements In His Declaration
`During Cross—Examination .................................................................................... 6
`
`III.
`
`THE BOARD SHOULD REJECT MPJH’S CLAIM CONSTRUCTION
`
`BECAUSE IT IS INCONSISTENT WITH THE SPECIFICATION AND MR.
`
`WEADOCK’S CROSS-EXAMINATION TESTIMONY ...................................... 8
`
`A.
`
`B.
`
`C.
`
`“Applications” .............................................................................................. 8
`
`“Module” .................................................................................................... 10
`
`“Dynamically Combining” ......................................................................... 11
`
`IV. MR. WEADOCK ADMITTED THAT MANY OF THE LIMITATIONS
`
`RECITED IN THE INDEPENDENT CLAIMS WERE KNOWN IN THE PRIOR
`
`ART .......................................................................................... l 2
`
`V. MPHJ'S POR IS DEVOID OF ANY CREDIBLE ARGUMENT
`
`DEMONSTRATING THAT EITHER XNS OR SALGADO FAILS TO
`
`ANTICIPATE CLAIMS 1-1 I ................................................................................. 14
`
`VI. CONCLUSION .............................................................................................. 15
`
`CERTIFICATION OF SERVICE ........................................................................... l7
`
`
`
`I.
`
`INTRODUCTION
`
`The Board properly construed the claims and found that there is a
`
`reasonable likelihood that each of XNS and Salgado anticipates claims 1—11 of the
`
`’426 Patent. (Paper 8, 22-35.) MPH] has provided no credible basis to support
`
`reversal of this finding. Rather, MPHJ’S Patent Owner Response (Paper 30;
`
`“POR”) and the testimony of MPHJ’S expert, Mr. Glenn E. Weadock, further
`
`demonstrate that all claims of the ‘426 Patent should be held unpatentable.
`
`MPHJ failed to demonstrate the validity of the ”426 Patent for at least four
`
`primary reasons. First, MPHJ’s POR relied on the hastily prepared Declaration of
`
`Glenn E. Weadock (EX. 2002; “Weadock Decl.”) that should be given no weight,
`
`and therefore provides no support for the validity of the ”426 Patent claims. Mr.
`
`Weadock is not qualified to opine on the technology disclosed in the ’426 Patent.
`
`Moreover, he (1) repeatedly admitted that he had insufficient time and resources to
`
`prepare his Declaration, (2) failed to apply proper patent law principles, and (3)
`
`contradicted several important aspects of his Declaration. Second, MPHJ’S
`
`arguments that attempt to distinguish over the cited prior art — XNS and Salgado —
`
`hinge on constructions of the terms “applications” and “module” that do not
`
`comport with the governing broadest reasonable interpretation (BRI) standard.
`
`Third, Mr. Weadock admitted that all of the structural limitations recited in the
`
`claims were known in the prior art; in fact, he even authored a book in 1995 that
`
`
`
`disclosed the functional or software aspects of the putative invention. Fourth,
`
`MPHJ’S POR is devoid of any credible argument that rebuts the Board's findings
`
`that the claim elements are anticipated by both XNS and Salgado.
`
`II.
`
`THE BOARD SHOULD GIVE NO WEIGHT TO MR. WEADOCK’S
`
`DECLARATION
`
`A. Mr. Weadock Is Not Qualified To Opine On The ’426 Patent
`
`Mr. Weadock is not qualified to serve as an expert in this matter. In fact
`
`under Dr. Melen’s proposed definition of a person of ordinary skill in the art
`
`(“POSA”), Mr. Weadock is not even a POSA. (RIC 1008 (“Melen Decl.”), 1118.)1
`
`Specifically, since 1985, Mr. Weadock has worked as an IT consultant helping his
`
`clients specify and configure hardware and software for their office networks,
`
`troubleshoot IT issues, set up help desks, develop websites, and provide assistance
`
`in legal matters. (RIC 1013 (“Weadock Depo.”), l60:16-163:6.) He does not
`
`design hardware or software; he helps his clients configure it. (Id. at 163214—
`
`164:10.) In fact, Mr. Weadock has never developed software primarily oriented
`
`towards printing, scanning, copying, or facsimile (id. at 114215—11614); he has
`
`1 Mr. Weadock has inappropriately and conveniently proposed a POSA
`
`definition that is written so broadly as to potentially even cover Mr. Weadock‘s
`
`education and background. (Weadock Decl., 1115.) The Board should reject this
`
`proposed POSA definition.
`
`
`
`never written software for a commercial device (id. at 116:5—13); and he has never
`
`been employed by a scanner or copier company (id. at 133 210—12).
`
`And Mr. Weadock is even less experienced in developing hardware. He
`
`holds a BS Degree in General Engineering — majoring in energy technologies.
`
`(Id. at 12312—3.) Energy technologies are “oil and gas, nuclear, wind, solar
`
`technologies that are used to generate energy sources. That was the focus of [Mr.
`
`Weadock’s] major.” (Id. at 126:5—9.) Thus, it is not surprising that he never took
`
`any courses in circuit design or hardware. (Id. at 116:22-1 17:2.)
`
`By contrast, Petitioners’ Expert, Dr. Roger Melen, is ideally qualified to
`
`opine on the technology at issue; he holds a Ph.D. in Electrical Engineering from
`
`Stanford University and was developing networked digital scanner/copier
`
`technology as the Vice President of R & D at Canon Research Center America
`
`from 1990 to 2001, which includes the earliest possible priority date of the ’426
`
`Patent. (EX. 2003 (“Melen Depo.”), 20:9—2l:4; Melen Decl., 1114, Att. 1.)
`
`B. Mr. Weadock Repeatedly Admitted That He Lacked Sufficient
`Time And/Or Money To Properly Prepare His Declaration
`
`Mr. Weadock stated at least eight times during his deposition that he lacked
`
`sufficient time and/or money to prepare the Declaration he submitted in support of
`
`MPHJ’s POR. (Weadock Depo., 181:24-18212, 195:7-196z2, 196318—21, 19715-8,
`
`20221—21.) Prior to his deposition, Mr. Weadock admitted that he had never seen
`
`MPHJ’s POR — the very document his Declaration allegedly supports. (Id. at 25:9-
`
`-3-
`
`
`
`26:12.) Further, he had never reviewed the deposition testimony of Petitioners’
`
`expert, Dr. Melen. (Id. at 825-11.)
`
`Mr. Weadock admitted that the lack of resources affected his proposed claim
`
`construction. For example, despite “understanding that, in an inter partes review,
`
`claim terms are interpreted according to their broadest reasonable construction in
`
`light of the specification of the patent” (Weadock Decl., 1i 43), Mr. Weadock
`
`acknowledged that he was too busy to analyze the specification when construing
`
`the term “module”:
`
`Q:
`
`if you if you believed at the time you wrote your declaration that there
`
`was support in the specification of the patent for your proposed definition
`
`[of the term “module”], why is it not in your declaration?
`
`A: Well, I think the short answer to that is that I had a limited amount of
`
`time and money to do the project.
`
`.
`
`.
`
`. we had deadlines. I have other
`
`projects. (Weadock Depo., 201 :21 —202:7 (emphasis added).)
`
`And regarding the same claim term, when asked why his proposed construction
`
`cited an Internet publication dated February 2012 — even though the earliest
`
`possible priority date is in the late 1990s — he replied,
`
`I did a web search looking for a reasonably authoritative source, and I
`
`don’t doubt
`
`that
`
`if I had taken more time I could have found a
`
`contemporaneous reference and would have loved to do that. It would be
`
`nice to have an infinite amount of time to work on these reports.
`
`But
`
`you’re exactly right, if I had taken more time with the report I probably —-
`
`that probably would been one of the things that I would have done.
`
`-4-
`
`
`
`(Weadock Depo., 1953—1962 (emphasis added).) Mr. Weadock’s admissions
`
`regarding the claim term “modules” not only demonstrate that his Declaration was
`
`prepared in haste, disregarding proper legal standards, but also that his proposed
`
`claim construction is fatally flawed.
`
`C. Mr. Weadock Failed To Apply Proper Patent Law Principles
`
`Not only was Mr. Weadock given insufficient time and/or money to prepare
`
`his Declaration, he did not receive proper legal guidance. In addition to the
`
`shortcomings identified above with respect to Mr. Weadock’s approach to claim
`
`construction, Mr. Weadock’s Declaration repeatedly refers to paragraphs of Dr.
`
`Melen’s Declaration that address grounds of unpatentability that were not
`
`instituted, which were no longer relevant. (See e.g., Weadock Decl., W 77, 87, 108,
`
`110.)
`
`As another example, Mr. Weadock prepared an analysis of a substitute claim
`
`that MPH] presented.2 (Weadock Decl., pp. 29-39.) The Board has made clear that
`
`a declaration in support of a substitute claim must address all prior art known to the
`
`2 lVIPHJ filed an untimely Motion to Amend on March 3, 2014 (three days
`
`after the due date). Petitioners requested dismissal of the Motion, arguing that it
`
`was untimely and suffered numerous substantive deficiencies. The Board denied
`
`Petitioners’ request in the interest ofjustice. (Paper 32.) MPHJ withdrew the
`
`Motion to Amend shortly after Mr. Weadock’s deposition. (Papers 37 & 38.)
`
`-5-
`
`
`
`patent owner, not just the prior art at issue in the trial. IPR2013-00136, Paper 31,
`
`pp. 3-4. Yet Mr. Weadock’s analysis of the substitute claim only considered the
`
`prior art that trial was instituted on in this and a related proceeding. (Weadock
`
`Depo., 20423—208213 )
`
`D. Mr. Weadock Contradicted Many Of The Statements In His
`Declaration During Cross—Examination
`
`Claims 1-8 require “at least one memory storing a plurality of interface
`
`protocols for interfacing and communication.” (’426 Patent, claims 1-8.) In his
`
`Declaration, Mr. Weadock analyzed this limitation and concluded that it was not
`
`disclosed by either XNS or Salgado. (Weadock Decl., W 70—71, 103.) But when
`
`asked during cross—examination whether the “at least one memory storing a
`
`plurality of interface protocols for interfacing and communication” existed in the
`
`prior art, Mr. Weadock stated, “You know, I don’t think I’ve ever done that
`
`analysis, so I’m not sure.” (Weadock Depo., 213:13—22; see also id. at 214225—
`
`215:12.) When asked again, Mr. Weadock admitted, “Okay, so I think it was
`
`probably in the prior art, looking at it and thinking about it.” (Id. at 215:14-16.)
`
`Another significant contradiction between Mr. Weadock’s Declaration and
`
`his deposition testimony involves the disputed claim term “applications.” MPH]
`
`and Mr. Weadock narrowly construed this term (in contravention of the BRI
`
`standard) to mean “a discrete software program executable on an operating system
`
`for the purpose of accomplishing a task.” (POR, 5—6; Weadock Decl., 1t 22.) In his
`
`-6-
`
`
`
`Declaration, Mr. Weadock stated that Microsoft Office, which is cited as an
`
`example of an application in the specification (’426 Patent, 3 :36, 5:58, 45: 44,
`
`52:52-53), is a “discrete program[], i.e., application[]” that falls within his
`
`proposed construction of the term “application” (Weadock Decl., 11 20). But during
`
`cross examination, Mr. Weadock admitted that Microsoft Office is actually a
`
`“suite” of separate and discrete applications. (Weadock Depo., 4221-12, 98:12—23.)
`
`This contradiction not only illustrates that Mr. Weadock’s Declaration is flawed,
`
`but also that his proposed construction of the term “applications” is incorrect.
`
`In yet another contradiction (mentioned above), Mr. Weadock stated in his
`
`Declaration and at the beginning of his deposition that he had considered all of the
`
`references cited in the Petition. (Weadock Decl., Att. A; Weadock Depo., 181 :4-
`
`18.) Mr. Weadock later admitted that he didn’t have enough time to review them
`
`all — “Well I looked —- I tried to look at all of them. I think I didn’t have time to
`
`analyze each one of them in depth ...” (Weadock Dep0., 181:14-182z2; see also
`
`101., 176:8-179z21, 180:13—183z22.)
`
`The contradictory testimony between Mr. Weadock’s Declaration and his
`
`subsequent deposition is significant — it directly calls into question his analysis of
`
`the claims, his proposed claim construction, and his analysis of the applied prior
`
`art. Mr. Weadock’s contradictory testimony further indicates that his Declaration is
`
`fatally flawed. Thus, the Board should give no weight to Mr. Weadock’s
`
`-7-
`
`
`
`Declaration, including the proposed claim construction and prior art analysis found
`
`therein.
`
`III. THE
`
`BOARD
`
`SHOULD
`
`REJECT
`
`MPJH’S
`
`CLAIM
`
`CONSTRUCTION BECAUSE IT IS INCONSISTENT WITH THE
`
`SPECIFICATION AND MR. WEADOCK’S CROSS-EXAMINATION
`
`TESTIMONY
`
`The Board should reject MPHJ’S claim construction because it is
`
`inconsistent with the specification, as acknowledged by Mr. Weadock during his
`
`cross-examination.
`
`A.
`
`“Applications”
`
`MPHJ’s proposed construction of the term “applications” is inconsistent
`
`with the specification (which it didn’t rely on when construing this term) and
`
`statements made by Mr. Weadock’s during cross—examination. As used in the ’426
`
`Patent, the term “applications” is not limited to “a discrete software program
`
`executable on an operating system for the purpose of accomplishing a task,” as
`
`proposed by MPHJ. (POR, 5-6.) When properly construed, the term is also not
`
`limited to a single “discrete software program”; does not exclude firmware (or
`
`even hardware); and may be implemented using a distributed architecture. (’426
`
`Patent, 52:64—67 (“the architecture can be implemented in many other languages
`
`(cg. Java) and distributed architectures (e.g. COBRA)”).)
`
`The specification broadly blurs any distinction between one software
`
`program and a plurality of software programs. For example, the specification lists
`
`-8-
`
`
`
`both Microsoft Office and Microsoft Word as examples of applications. (’426
`
`Patent, 52:45-63.) Mr. Weadock stated that Microsoft Word is a discrete software
`
`program. (Weadock Depo., 96:20—97:11.) Again, Mr. Weadock admitted that
`
`Microsoft Office is a “suite” of separate and discrete programs. (Id. at 9812-
`
`99210.) As another example, the specification states that “an electronic filing
`
`system” is an application. (’426 Patent, 46:49-50.) When asked, “if you just look at
`
`the word electronic filing system conventionally, you would never call that a
`
`discrete program, right?” Mr. Weadock responded, “I would not be inclined to,
`
`no.” (Weadock Depo., 98:1—7.) Mr. Weadock’s admissions demonstrate that
`
`MPHJ’s proposed construction is inconsistent with the specification — it is too
`
`narrow. Thus, the scope of the term “applications” is not limited to a single
`
`software program, but rather encompasses a plurality of software programs.
`
`As the Board recognized, the specification also “broadly blur[s] any
`
`distinction between a device and a device having a software application.” (Paper 8,
`
`14.) For example, the specification states that “the Internet” is an example of an
`
`application. (”426 Patent, 46:49—50.) Mr. Weadock admitted at his deposition that
`
`the Internet includes hardware, firmware, and software. (Weadock Depo., 85:22-
`
`86:5.) Again, Mr. Weadock’s admission demonstrates that lVIPHJ’s proposed
`
`construction is inconsistent with the specification.
`
`
`
`For at least these reasons, MPHJ’S construction of the term “applications” is
`
`incorrect, and the Board should not deviate from the construction it set forth in the
`
`Decision to Institute. (Paper 8)
`
`B.
`
`“Module”
`
`The Board should not adopt MPHJ’S proposed construction of the term
`
`“module.” First, as previously discussed, MPHJ’S putative expert admitted that he
`
`was too busy with “deadlines” and “other projects” to properly review the
`
`specification when attempting to construe this term. (Weadock Depo., 201221—
`
`20217.) Rather, performing “a web search for a reasonably authoritative source”
`
`led him to an Internet document that was published about 15 years after the earliest
`
`possible priority date of the ’426 Patent, which he then used to explain the meaning
`
`ofthe term “module.” (1d. at l95:3-l96:2 (emphasis added).) Because of this
`
`document’s publication date, it provides no insight as to what a person having
`
`ordinary skill in the art would have understood the term “module” to mean at the
`
`time of the invention.
`
`On the other hand, the Board thoroughly considered the intrinsic evidence,
`
`as well as extrinsic sources, to determine that the term “module” means “a
`
`logically separable part of the recited software application, and may include
`
`another module and may overlap with another module in functionality.” (Paper 8,
`
`16—18.) Dr. Melen’s testimony fully supports the Board’s construction. Dr. Melen
`
`-10-
`
`
`
`testified that he “viewed the word [] ‘module’ as a piece of software.” (Melen
`
`Depo., 110:4—7.) Responding to a question from counsel for MPHJ, Dr. Melen
`
`stated, “I think [] your notion of a [] module is a very specific thing, kind of a, aha,
`
`there it is. And it’s about software, it’s less geographically precise than that.” (Id.
`
`at l42:23—l43:4.) Dr. Melen further stated, “You can have a module inside a []
`
`module. You can have a module which spans machines. Module is not so precise.
`
`But what is more specific is exactly what they do.” (Id. at 14216-11.) Moreover,
`
`during cross—examination, Mr. Weadock admitted that “modules” may overlap in
`
`scope and in functionality. (Weadock Depo., 19123—7, 192:] l—lS.) Again, there is
`
`no reason to disrupt the Board’s well—reasoned construction of the term “module.”
`
`C.
`
`“Dynamically Combining”
`
`Claim 5 recites the term “dynamically combining.” (’426 Patent, 86:48.)
`
`MPH] proposed construing this term to mean “routing an input to an output on the
`
`fly, responsive to receiving an input instruction.” (FOR, 8-9.) As support, MPHJ
`
`provided a single citation in the specification, which states: “In each case VC is
`
`dynamically creating a custom Virtual copier, with a complete understanding of
`
`how paper flows from the source to its destination.” (’426 Patent, 48:37—40.) This
`
`statement merely provides a general description of the putative invention; it
`
`doesn’t provide any support for “routing an input to an output on the fly,
`
`responsive to receiving an input instruction.” For example, there is no mention of
`
`-11-
`
`
`
`“routing,” “on the fly,” or performing routing in response to “receiving an input
`
`instruction.” Thus, there is insufficient support for MPHJ’S proposed construction
`
`and the Board should refuse to adopt it.
`
`IV. MR. WEADOCK ADMITTED THAT MANY
`
`OF
`
`THE
`
`LIMITATIONS RECITED IN THE INDEPENDENT CLAIMS WERE
`
`KNOWN IN THE PRIOR ART
`
`Each of the preambles of claims l-9 recites a “computer data management
`
`system including at least one of an electronic image, graphics and document
`
`management system.” Mr. Weadock admitted that “computer data management
`
`systems that have an electronic document management system” were known in the
`
`prior art. (Weadock Depo., 209: 18—24.) Notably, the prior art Mr. Weadock was
`
`referring to was XNS, Salgado, SJS, and Cotte. (Id. at 205:5—208215 (SJS and Cotte
`
`being references used in grounds of unpatentability that the Board instituted in
`
`related IPR2013-OO3 09).)
`
`Each of claims 1—8 recites, “at least one scanner, digital copier or other
`
`multifunction peripheral.” Mr. Weadock admitted that “scanners[] and
`
`multifunction peripherals” were known in the prior art. (Weadock Depo., 210:6—
`
`l3.) Each of claims 1—8 also recites, “at least one memory storing a plurality of
`
`interface protocols for interfacing and communicating.” Mr. Weadock admitted
`
`that this limitation was known in the prior art. (Id. at 21425—215216.) And, each of
`
`claims 1-8 recites, “at least one processor responsively connectable to said at least
`
`-12-
`
`
`
`one memory ....” Mr. Weadock admitted that “at least one processor responsibly
`
`connectable to said at least one memory, that part was certainly in the prior art.”
`
`(Id. at 214:21—24.)
`
`Thus, Mr. Weadock admitted that all of the structural limitations that are
`
`recited in the claims were known in the prior art. Mr. Weadock also admitted that a
`
`single Go operation was known in the prior art. (Weadock Depo., 22524-8.) A
`
`“single G0 operation” is recited in each of claims 3, 9, and ll.
`
`Mr. Weadock further admitted that the functional or software aspects recited
`
`in the claims of the ”426 Patent were disclosed in Bulletproof Your PC Network,
`
`which he authored and acknowledged was publically available in 1995. (Weadock
`
`Depo., 49:2—19.) Mr. Weadock’s book contains a figure that shows a graphical user
`
`(“GUI”) on a computer for scanning a document. The figure is reproduced below:
`
`K
`
`_
`.
`i} t'lKimifffl if? ”>45 W"
`
`”Ekmmrmférz
`
`g firigfiztnm s
`
`Mr. Weadock explained that the GUI was used to scan a document from an
`
`Epson scanner to a personal computer in a format compatible with the “Target
`
`-13-
`
`
`
`Device.” (Weadock Depo., 57:21—24.) Mr. Weadock further explained that the
`
`document could then be transmitted to the target device over a network. (Id. at
`
`58:24-59:14.) Mr. Weadock attempted to distinguish the technology disclosed in
`
`his book from the putative invention based on number of programs required to
`
`achieve network scanning — he stated that the book required two, and alleged that
`
`the putative invention required only one. (See id. at 55:11—25, 58:15—59:14) But
`
`when properly construed, as discussed above, the claims are not limited to a single
`
`program.
`
`V. MPHJ'S POR IS DEVOID OF ANY CREDIBLE ARGUMENT
`
`DEMONSTRATING THAT EITHER XNS OR SALGADO FAILS TO
`
`ANTICIPATE CLAIMS 1-11
`
`MPHJ’S arguments with respect to the claim limitations hinge on its narrow
`
`construction of the terms “application” and “module.” (POR, 12—42.) For example,
`
`arguing that XNS does not anticipate the “at least one memory” limitation, MPH]
`
`stated, “XNS does not disclose a single software application, as required by the
`
`claims.” (Id. at 16.) But as discussed above, when properly construed, the term
`
`“application” is not limited to a single program. As another example, MPHJ
`
`argued, “Petitioner[s’] analysis of claim 5 fails to even mention the word ‘module’
`
`much less ‘input module.” (POR, 24.) But as explained by Dr. Melen, a module is
`
`“a piece of software.” (Melen Depo., 11014—7.) “Module is not so precise. But what
`
`is more specific is exactly what they do.” (Id. at 14226—11.) And each of XNS and
`
`-14-
`
`
`
`Salgado discloses software that performs the functions recited in the claims of the
`
`’426 Patent. (Id. at 178-242.)
`
`MPHJ’S proposed claim construction is incorrect —— it is inconsistent with the
`
`specification, with Dr. Melen’s testimony, and with the admissions Mr. Weadock
`
`made during cross—examination. MPHJ’S primary arguments rely on this faulty
`
`construction, and are therefore flawed. Thus, MPHJ has provided no credible
`
`evidence indicating that the Board should deviate from the claim construction or
`
`unpatentability determination it rendered in the Decision to Institute. (Paper 8.)
`
`VI. CONCLUSION
`
`In view of the above, Petitioners respectfully request that the Board issue a
`
`final decision invalidating claims 1—11 over the cited art. Petitioners do not
`
`acquiesce to any arguments raised by MPHJ that are not addressed herein.
`
`Date:
`
`517-31 “1‘
`
`1100 New York Avenue, NW.
`
`Washington, DC. 20005—3934
`
`(202) 371-260
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`-
`
`4)
`
`Michael D. Specht
`Attorney for Petitioner
`
`-15-
`
`
`
`UPDATED EXHIBIT LIST
`
`
`
` Exhibit
`DESCRIPTION
`
`U.S. Patent No. 7,986,426 to Klein
`
`RIC 1001
`
`RIC 1002
`
`Xerox Network Systems Architecture General Information
`Manual, April 1985 (“XNS”)
`
`
`
`Xerox 150 Graphic Input Station Operator and Reference
`Manual, January 1985 (“GIS 150”)
`RIC 1003
`
`
`RIC 1004
`
`U.S. Patent No. 5,123,063 to Ohkubo (“Ohkubo”)
`
`RIC 1005
`U.S. Patent No. 5,872,569 to Salgado et a1. (“Salgado”)
`
`
`RIC 1006
`U.S. Patent No. 5,513,126 to Harkins et al. (“Harkins”)
`
`
`RIC 1007
`U.S. Patent No. 5,818,603 to Motoyama (“Motoyama”)
`
`
`
`
`
`
`Declaration of Petitioner’s Expert Dr. Roger Melen (“Melen
`Decl.”) (C/V attached as Attachment 1; Newton ’3 Telecom
`Dictionary attached as Attachment 2.)
`
`
`
`
`RIC 1008
`
`Prosecution History of U.S. Patent Application No. 12/328,104,
`RIC 1009
`as obtained from PAIR C” 104 application”)
`
`
`Prosecution History of U.S. Patent Application No. 10/874,172,
`RIC 1010
`as obtained from PAIR (“’172 application”)
`
`
`
`
`RIC 1011 Declaration of Michael D. Specht
`
`RIC 1012
`
`Affidavit of H. Keeto Sabharwal in Support of Motion for Pro
`Hac Vice Admission
`
`Transcript of the Deposition of Glenn Weadock of April 10,
`RIC 1013
`2014
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing Petitioners’ “Reply to
`
`Patent Owner’s Response” was served electronically Via e—mail on May 28, 2014,
`
`in its entirety on Attorneys for Patent Owner ~ MPHJ Technology Investments
`
`LLC:
`
`
`
`Steven G. Hill (admitted pro hac vice)
`Scott A. Horstemeyer (Lead Counsel)
`scott.horstemeyerQDthomashorstemeyer.com sghchhkw-lawcom
`N. Andrew Crain (Backup Counsel)
`Hill, Kertscher & Wharton, LLP
`
`andrew.crain@thomashorstemeyer.corn
`3350 Riverwood Parkway, Suite 800
`Vivek Ganti (Backup Counsel)
`Atlanta, Georgia 30339
`vivek.ganti(wthomashorstemeyer.com
`Thomas l Horstemeyer, LLP
`400 Interstate North Parkway SE,
`Suite 1500
`
`
`
`Atlanta, GA 30339
`
`
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Michael D. Specht
`
`Attorney for Petitioners
`
`Registration No. 54,463
`
`Date: 5/18/ H
`1100 New York Avenue, N.W.
`
`Washington, D.C.20005—3934
`
`(202) 371-2600
`1857521w1DOCX
`
`
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